Ex Parte Ishikawa et alDownload PDFPatent Trial and Appeal BoardSep 8, 201612600889 (P.T.A.B. Sep. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/600,889 03/15/2010 28596 7590 09/09/2016 W, L GORE & ASSOCIATES, INC 551 PAPER MILL ROAD P. 0. BOX 9206 NEWARK, DE 19714-9206 FIRST NAMED INVENTOR Masahiko Ishikawa UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. MI/325 3060 EXAMINER GATEWOOD, DANIELS ART UNIT PAPER NUMBER 1729 MAILDATE DELIVERY MODE 09/09/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte MASAHIKO ISHIKAWA and TOMOYUKI TAKANE1 Appeal2015-002581 Application 12/600,889 Technology Center 1700 Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1, 5, 6, and 8-10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to a method for fabricating a reinforced solid polymer electrolyte membrane. E.g., Spec. 1 :8-12; 1 According to the Appellants, the Real Party in Interest is W.L. Gore & Associates, Co., Ltd., f/k/a Japan Gore-Tex Inc. App. Br. 2. W.L. Gore & Associates, Co., Ltd. is a wholly owned subsidiary of W.L. Gore & Associates, Inc. Id. Appeal2015-002581 Application 12/600,889 Claim 1. Claim 1 is reproduced below from page 8 (Appendix A) of the Appeal Brief: 1. A method for fabricating a reinforced solid polymer electrolyte membrane, comprising the steps of: preparing a sheet-like porous reinforcing member formed from a porous expanded polytetrafluoroethylene and a polymer electrolyte precursor; obtaining a composite membrane in which at least a portion of said polymer electrolyte precursor is impregnated into said sheet- like porous reinforcing member so as to form a composite structure therewith by causing said polymer electrolyte precursor to infiltrate into said sheet-like porous reinforcing member, in the absence of a solvent, at a temperature higher than the melting point of said sheet-like porous reinforcing member but lower than the thermal decomposition temperature thereof; and transforming said polymer electrolyte precursor into a polymer electrolyte by hydrolyzing said polymer electrolyte precursor. ANALYSIS Claims 1, 5, 6, and 8-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Oka (JP 2005-327500, published Nov. 24, 2005) in view ofOtsuzumi et al. (JP 2006-253124, published Sept. 21, 2006). The Examiner finds that Oka teaches a method comprising each step of claim 1, including heating the composite, but that Oka does not teach the temperature at which the composite should be heated. See Ans. 2-3, 6. The Examiner finds that Otsuzumi teaches a similar method that includes heat treatment at 200-500°C. See id. at 3 (citing Otsuzumi ,-r,-r 34 and 35, teaching an "especially" preferred temperature range of 300-350°C and explaining that a temperature above melting point and below decomposition temperature is preferred). The Examiner concludes that it would have been 2 Appeal2015-002581 Application 12/600,889 obvious to use the temperature taught by Otsuzumi in the process of Oka. Ans. 4. The Appellants do not challenge the Examiner's findings concerning the teachings of the prior art or the motivation to combine the prior art. See App. Br. 5---6. Instead, they argue that unexpected results rebut the prima facie case of obviousness set forth by the Examiner. Id. In particular, they argue that data in the Specification indicates that "the invention provides drastic improvements over the prior art." Id. The Appellants' argument does not persuade us that unexpected results support a conclusion of nonobviousness. Even if we were to agree that the Appellants' invention "provides drastic improvements over the prior art," see App. Br. 5---6, "any superior property must be unexpected to be considered as evidence of non-obviousness," see Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (emphasis in original); see also In re Klosak, 455 F .2d 1077, 1080 (CCP A 1972) ("[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.") (emphasis in original). Here, the Appellants fail to carry their burden of showing unexpected results because they provide no explanation as to why the results would have been unexpected; they focus on whether the results were superior. See App. Br. 5---6; cf In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) ("Once a prima facie case of obviousness has been established, the burden shifts to the applicant to come forward with evidence of nonobviousness to overcome the prima facie case."). The portion of the Specification relied upon by the Appellants likewise appears to focus on the 3 Appeal2015-002581 Application 12/600,889 alleged superiority of the results; not whether the results would have been unexpected to a person of ordinary skill in the art. See Spec. 18-22. Moreover, where the Appellants are relying on unexpected results to rebut a prima facie case of obviousness, the Appellants must show results that are commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). The Appellants have not directed us to evidence that would meet this burden. Claim 1 permits, for example, the use of any polymer electrolyte precursor and a range of heating temperatures. The Specification includes only three examples, all of which appear to use the same polymer electrolyte precursor and the same heating temperature. See Spec. 18-20. The Appellants provide no explanation as to why the results obtained by those three examples are representative of the full scope of claim 1. See In re Greenfield, 571F.2d1185, 1189 (CCPA 1978) ("Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."') (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). On this record, we are not persuaded that unexpected results rebut the prima facie case of obviousness. CONCLUSION We AFFIRM the Examiner's rejection of claims 1, 5, 6, and 8-10. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 4 Copy with citationCopy as parenthetical citation