Ex Parte Nishiyama et al

Patent Trials and Appeals Board

Sep 14, 2018

13796186 - (D) (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/796, 186 03/12/2013 Y oshitaka Nishiyama
38834 7590 09/18/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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.
P4606USOO 2777
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
09/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHITAKA NISHIYAMA, MASAHITO IDE,
TAKAO MANABE, and HIROYUKI TANAKA
Appeal2017-001841
Application 13/796, 186
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 2, and 4-18. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
1 Appellant is applicant Kaneka Corporation, which is also identified as the
real party in interest. Appeal Br. 2.
Appeal2017-001841
Application 13/796, 186
THE INVENTION
The subject matter of the claims on appeal relates to a modified
polyhedral polysiloxane obtained by hydrosilylation of an alkenyl group-
containing polyhedral polysiloxane compound, a hydrosilyl group-
containing compound, and a cyclic olefin compound having one carbon-
carbon double bond. Specification filed March 3, 2012 ("Spec"), Abstract.
Independent claim !----directed to the modified polyhedral
polysiloxane-is representative.
1. A modified polyhedral polysiloxane substantially
having SiH groups and no carbon-carbon double bonds, which
is in a liquid form at 20°C, and
which is obtained by hydrosilylation of an alkenyl group-
containing polyhedral polysiloxane compound (a), a hydrosilyl
group-containing compound (b ), and a cyclic olefin compound
( c) having one carbon-carbon double bond in its molecule.
Appeal Brief filed May 20, 2016 ("Appeal Br."), (Claims Appendix) 16.
THE REJECTIONS
Claims 1, 2, and 4--18 are rejected under 35 U.S.C. § I02(b) as
anticipated by Nishiyama. 2
Claims 1, 2, and 4--18 are rejected under 35 U.S.C. § I03(a) as
obvious over Nishiyama.
2 Nishimiya et al., WO 2011/148896 Al; the Examiner relies on publication
US 2013/0131264 Al as the English version; Appellant does not contest the
prior art status or use of US 2013/0131264 Al. We refer to Nishimiya as
"Nishiyama," as it is identified as such by the Examiner, and it matured and
issued as US 9,822,248 B2 issued to Nishiyama et al. on November 21,
2017.
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Application 13/796, 186
Claims 1, 2, and 4--18 are rejected under 35 U.S.C. § I03(a) as
obvious over Manabe3 in view of Nishiyama.
Claims 1, 2, and 4--18 are provisionally rejected on the ground of
nonstatutory double patenting over claims of Application No. 13/823,4974 in
view of Nishiyama.
Claims 1, 2, and 4--18 are provisionally rejected on the ground of
nonstatutory double patenting over claims of Application No. 13/770,0895 in
view of Nishiyama.
Claims 1, 2, and 4--18 are rejected on the ground of nonstatutory
double patenting over claims of U.S. Patent No. 8,399,592 6 in view of
Nishiyama.
Claims 1, 2, and 4--18 are rejected on the ground of nonstatutory
double patenting over claims of U.S. Patent No. 8,299,198 7 in view of
Nishiyama.
DISCUSSION8
Non-Statutory Double Patenting Rejections
Appellant fails to contest the merits of the non-statutory obviousness-
type double patenting rejections. Appeal Br. 14. Appellant maintains that
"[t]he Double Patenting rejections are provisional rejections" (id. at 14),
3 Manabe et al., US 2010/0099790 Al, published April 22, 2010.
4 Application No. 13/823,497 issued as U.S. Patent No. 9,698,320 B2 to
Tanaka et al. on July 4, 2017.
5 Application No. 13/770,089 issued as U.S. Patent No. 9,035,009 B2 to
Manabe et al. on May 19, 2015.
6 U.S. Patent No. 8,399,592 B2 issued to Manabe et al. on March 19, 2013.
7 U.S. Patent No. 8,299,198 B2 issued to Manabe et al. on October 30, 2012.
8 We refer to the Specification, the Final Office Action dated January 8,
2016 ("Final Act."), the Appeal Brief, the Examiner's Answer dated
September 21, 2016 ("Ans."), and the Reply Brief filed November 15, 2016
("Reply Br.").
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Application 13/796, 186
which is incorrect on its face as to the rejections grounded on U.S. Patent
Nos. 8,399,592 and 8,299,198 in view of Nishiyama (Final Act. 34, 38). As
to the provisional rejection over Application No. 13/823,497 in view of
Nishiyama (id. at 23; Ans. 24), the claims of the '497 application have been
amended since the rejection was made, and the application has since
matured into an issued patent. As to the provisional rejection over
Application No. 13/770,089 in view of Nishiyama (Final Act. 29, Ans. 29--
30), the application had already issued, on May 19, 2015, as Patent No.
9,035,009 prior to the Final Office Action.
In exercising our discretion to reach the provisional obviousness-type
double patenting rejections, we decline to reach the provisional rejections
over Application Nos. 13/823,497 and 13/770,089 in view of Nishiyama.
See Ex parte Moncla, 95 USPQ2d (BP AI 2010).
As to the obviousness-type double patenting rejections over U.S.
Patent Nos. 8,399,592 and 8,299,198 in view of Nishiyama, in the absence
of any argument contesting their propriety, we are unpersuaded of any error
and sustain proforma these rejections as set forth in the Final Office Action.
Anticipation Rejection
On this record, we are persuaded that the Examiner erred in rejecting
claims 1, 2, and 4--18 as anticipated by Nishiyama. 9
"[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "A claim is anticipated
9 Appellant argues the claims on the basis of independent claim 1. All
claims, accordingly, stand or fall together with representative claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/796, 186
only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference." Verdegaal
Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628,631 (Fed. Cir.
1987). Anticipation, including by inherency, "may not be established by
probabilities or possibilities." In re Oelrich, 666 F .2d 578, 581 (CCP A
1981 ).
Nishiyama relates to a cured polysiloxane composition obtained by
reacting a modified polyhedral polysiloxane ( component A) with an
organopolysiloxane containing at least two alkenyl groups ( component B),
which functions as a crosslinker, and, optionally, either an organosilicon
compound with one alkenyl or hydrosilyl group (Cl) or a cyclic olefin
compound containing one carbon-carbon double bond (C2). The Examiner
relies on Nishiyama disclosing "a polysiloxane composition that includes a
modified polyhedral polysiloxane (Component A) made from (a) an alkenyl
group[-]containing polyhedral polysiloxane compound and (b) a hydrosilyl
group containing compound" and a "Component ( C) which can be ( C2) a
cyclic olefin compound that contains one carbon-carbon double bond." Ans.
2-3 (citing Nishiyama, Abstract). As noted by the Examiner, Component
(A) and Component (C) are disclosed in Nishiyama's abstract as separate
compounds included in a composition. See Nishiyama, Abstract ("The
polysiloxane composition ... includes (A) ... and (B) ... and/or (C).").
The Examiner further relies on Nishiyama' s paragraph 121 for its disclosure
that "the component (C2) contains one carbon-carbon double bond in a
molecule [that] reacts with the hydrosilyl group of the component (A)." Id.
at 3. The Examiner reasons that
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a person of ordinary skill in the art would have immediately
envisaged the modified polyhedral polysiloxane (A) made from
(a) and (b) to also be a modified polyhedral siloxane made from
the reaction of (A) (which is (a) and (b )) and (C2), a cyclic
olefin with one carbon-carbon double bond, because Nishimaya
in i"f[0121] discloses that (C2) reacts with (A) which is (a)
reacted with (b ).
Id. The Examiner further sets forth that it is "reasonably suggested" that the
product of reacting (A) with (C2) would not have carbon-carbon double
bonds because Component (A) lacks double bonds and "the reaction of the
C2 would be expected to go to completion." Id. at 3--4 (citing Nishiyama
,r,r 99, 131 ). The Examiner, thus, determines that "the modified polyhedral
polysiloxane made by reacting ( A ( (a) + (b)) + ( C2) anticipates the modified
polyhedral polysiloxane that is liquid recited by instant claim 1." Id. at 4.
Appellant contends that Nishiyama does not disclose or teach "any
reaction products of components (A) and (C2) only, excluding component
(B)." Appeal Br. 6. As to paragraph 121, Appellant contends that it "merely
discloses that one carbon-carbon double bond of the cyclic olefin compound
(C2) reacts with the hydrosilyl group of the component (A) in the curing
process of the curable composition comprising components (A), (B), and
(C2)." Id. at 7. Citing a declaration, 10 Appellant further contends that, at
most, the reference teaches "reacting component (A) with components (B)
and (C2) simultaneously." Id. at 8.
On this record, we agree with Appellant that Nishiyama does not
disclose the reaction of component (A) with component (C2) in the absence
10 The date cited for the declaration appears to be in error, as noted by the
Examiner, who nonetheless addresses a declaration filed at a later date that
sets forth the relied on testimony and experimental data. Ans. 52-55.
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of component (B). The Examiner's reliance on paragraph 121 as disclosing
such is misguided as this paragraph simply sets forth its characteristic
reactivity with the hydrosilyl group of component (A), just as paragraph 124
sets forth its reactivity with component (B). Nishiyama ,r,r 121, 124.
As to Appellant's arguments and the discussion by the Examiner and
Appellant as to the reactivity of a component (A) with either a component
(B) or a component (C), we find it to highlight that the Examiner has failed
to establish that it is necessarily the case that the reaction between
component (A) and component (C2) results in "[a] modified polyhedral
polysiloxane substantially having SiH groups and no carbon-carbon double
bonds, which is in a liquid form at 20QC." As crosslinking component (B),
includes at least two alkenyl groups, its initial reaction with a first
component (A) introduces at least one double bond that is only eliminated
upon further reaction, thereby, effecting crosslinking. Thus, if component
(B) reacts with component (A) before component (C2) reacts with
component (A), the resulting material includes carbon-carbon double bonds
until crosslinking is complete. On this record, the Examiner fails to set forth
both a basis for component (A) reacting with component (C2) prior to the
initial reaction between component (A) and crosslinker component (B) and
for the product after crosslinking is complete being a liquid at 20QC. See
generally Final Act.; Ans. Moreover, the declaration of Satoshi Sugiyama,
dated June 15, 2015 ("Decl'n"), discussed by the Examiner (Ans. 52-55),
indicates greater reactivity of a component (B) with component (A) at lower
temperatures than component (C2) has with component (A) (Decl'n 2-3).
For these reasons, we find the Examiner has failed to establish a
prima facie case of anticipation by Nishiyama.
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Application 13/796, 186
Obviousness Rejection over Nishiyama
The Examiner again relies on Nishiyama's disclosure of component
(A) and a component (C2) a cyclic olefin compound containing one carbon-
carbon double bond (Nishiyama, Abstract) and that component (C2)'s one
carbon-carbon double bond reacts with the hydrosilyl group of component
(A) (id. at if 121 ).
The Examiner finds that both the alkenyl component (B) and
component (C2) contain an alkenyl group and would compete for SiH
groups on the modified polyhedral polysiloxane (A). Ans. 9 (citing
Nishiyama ,r 87). The Examiner further finds that "[ c ]omponent (B) can
lead to curing in the composition" and that one "of ordinary skill in the art
would be motivated to react the (C2) to the modified polyhedral
polysiloxane (A) ... prior to curing with (B) because curing locks in all the
components in the structure." Id. at 9--10. The Examiner further finds that
"[a] skilled artisan would have a reasonable expectation of success." Id.
The Examiner, thus, concludes that "a person of ordinary skill in the
art would find obvious a modified polyhedral polysiloxane obtained by
reacting (a) [an alkenyl group-containing polyhedral polysiloxane ], (b) [a
hydrosilyl group-containing compound] and ( c) [ a cyclic olefin compound
that contains one carbon-carbon double bond] together by the disclosure of
Nishiyama" in order to ensure the properties associated with including
component (C2) were more homogenously distributed in the composition
prior to curing with component (B). Id.
Appellant contends that "there is no recognizable problem or need
regarding the homogeneity of addition of (C2) to the polyhedral
polysiloxane in [Nishiyama]." Appeal Br. 10. Appellant further contends
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that the cured article obtained "is transparent" and that "transparency is an
evidence of unifonn dispersion of (C2)" indicating that "there is no need ...
to modify the preparation steps only to control the homogeneity of (C2)."
Id. at 11.
Appellant's argument is not persuasive of reversible error because it
fails to address that one of ordinary skill in the art would have been
motivated to obtain greater uniformity of the dispersion of component (C2).
See, e.g., Ans. 60. Neither the failure of Nishiyama to address the issue, nor
its satisfaction with the resulting product, is evidence that one of ordinary
skill in the art would not seek greater uniformity. Cf Dystar Textilfarben
Gmbh & Co. Deutschland KG v. CH Patrick Co., 464 F.3d 1356, 1367
(Fed. Cir. 2006) (The "suggestion test is in actuality quite flexible and not
only permits, but requires consideration of common knowledge and
common sense."). Moreover, the obviousness analysis "can take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007);
See also In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]t is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.").
Appellant contends that "[Nishiyama] actually teaches that component
(B) is first added into component (A), and then component (C2) is added
into a mixture of components (A) and (B)." Appeal Br. 11; see also Reply
Br. 6 ( arguing that Nishiyama does not disclose forming a compound
comprising components (A) and (C2) only, excluding component (B)).
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Appellant's argument as to what Nishiyama teaches, including in its
examples, fails to address what would have been obvious to one of ordinary
skill in the art, rather than what was anticipated. See also Ans. 60-61.
Appellant contends that "[ t ]here is no reason or motivation in
[Nishiyama] to change the step of the reaction, and a person of ordinary skill
in the art would not have made the process more complicated by reacting
(C2) and (A) first in light of [Nishiyama]" and that "[i]t is improper for the
Examiner to hold that '[a]ny scientific or logical rationale can be used to
motivate the decision of a person of ordinary skill in the art when reading
Nishiyama."' Appeal Br. 12 ( quoting Final Act. 4 7). Appellant further
contends that "[t]he Examiner's position of component (A) reacting with
(C2) first or alone is an impermissible hindsight." Id.
Appellant's argument ignores the motivation set forth by the
Examiner, including "to ensure that the (C2) is reacted to (A)
homogenously." See, e.g., Ans. 61-62. Appellant's argument fails to
identify why consistent, complete, and homogenous reaction between (A)
and (C2) would not be desired. Appellant's argument further fails to
identify why complete reaction of (A) and (C2) prior to introducing
crosslinker (B2) would not lead to the desired consistent, complete, and
homogeneous results that the Examiner reasonably determines would have
been sought by one of ordinary skill in the art at the time of the invention.
Id. It follows that we are not persuaded that the Examiner relied on
improper hindsight. See In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)
(requiring "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness") ( cited with approval in KSR,
550 U.S. at 418).
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Appellant also contends improper hindsight on the basis that
"[Nishiyama] fails to disclose, teach, or suggest any benefit, preference, or
desirability of compositions comprising components (A) and (C2) only."
Appeal Br. 12. Appellant further argues that "[o ]ne of ordinary skill in the
art would not have derived the lowered reactivity of component (C2) than
component (B)" and, as such, "it would not have been obvious ... to react
components (A) and (C2) first." Id. at 12-13.
Appellant's arguments are unpersuasive of reversible error because, as
explained above, they fail to address the rejection grounded on ensuring the
complete reaction between components (A) and (C2) prior to introduction of
crosslinker (B). The relative reactivity of components (C2) and (B) is of no
import as to the propriety of the rejection, as the complete and homogenous
reaction of components (A) and (C2) is ensured, whatever their relative
reactivity, by excluding component (B) until the reaction is complete, as set
forth by the Examiner.
For these reasons, we are not persuaded of reversible error in the
obviousness rejection over Nishiyama.
Obviousness Rejection over Manabe in view of Nishiyama
Like Nishiyama, "Manabe discloses a modified polysiloxane
(Component A) made from (a) an alkenyl group[-]containing polyhedral
polysiloxane compound and (b) a hydrosilyl group containing compound."
Ans. 16 (citing Manabe, Abstract).
As to the cyclic olefin with one carbon-carbon double bond, reacted
with the other components (a) and (b ), the Examiner relies on Nishiyama' s
disclosure of a cyclic olefin. Id.
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The Examiner finds Nishiyama to be in a similar field of endeavor and
to disclose the use of its "modified polysiloxane composition with a cyclic
olefin containing one carbon-carbon double bond ... allow[ing] reduction in
the elastic modulus of the cured article and enhancement in properties such
as breaking strength, gas barrier properties, and crack resistance including
hot and cold impact resistance." Id.
The Examiner concludes that
It would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify the modified
polyhedral siloxane taught by Manabe by reacting [it] [with] the
cyclic olefin comprising one carbon-carbon double bond taught
by Nishiyama for the advantage of reducing the elastic modulus
of the cured article and enhancing properties such as breaking
strength, gas barrier properties, and crack resistance including
hold and cold impact resistance in the resulting product.
Id. ( citing Nishiyama ,r 121 ). The Examiner further determines that one of
ordinary skill in the art would have been motivated "to react the cyclic olefin
to the modified polyhedral polysiloxane rather than just add it to the
polysiloxane composition ... as this would ensure the [associated]
properties ... [ would be] more homogenously distributed in the composition
prior to curing with (B)." Id. at 16-1 7.
Appellant relies on the arguments set forward as to the obviousness
rejection over Nishimaya alone. Appeal Br. 13-14. Appellant highlights its
contentions that Nishimaya "fails to disclose, teach, or suggest reacting ( C2)
with component (A) first, and then making it into a formulation with
component (B) ... [t]hat [t]here is no recognizable problem or need
regarding the homogeneity of addition of (C2) to the polyhedral
polysiloxane in [Nishimaya]." Id. at 14.
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For the reasons set forth above with respect to the rejection over
Nishiyama, we are not persuaded of reversible error in the obviousness
rejection over Manabe in view of Nishiyama.
DECISION
The Examiner's rejection of the claims under 35 U.S.C. § 102(b) is
REVERSED.
The Examiner's rejections of the claims under 35 U.S.C. § 103(a) are
AFFIRMED.
We decline to reach the Examiner's provisional rejections of the
claims on the ground of non-statutory obviousness-type double patenting.
The Examiner's rejections of the claims on the ground of non-
statutory obviousness-type double patenting are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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