Ex Parte Nishiyama et alDownload PDFPatent Trials and Appeals BoardSep 14, 201813796186 - (D) (P.T.A.B. Sep. 14, 2018) Copy Citation 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. 2 Appeal2017-001841 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."). 3 Appeal2017-001841 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). 4 Appeal2017-001841 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 5 Appeal2017-001841 Application 13/796, 186 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. 6 Appeal2017-001841 Application 13/796, 186 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. 7 Appeal2017-001841 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 8 Appeal2017-001841 Application 13/796, 186 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)). 9 Appeal2017-001841 Application 13/796, 186 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). 10 Appeal2017-001841 Application 13/796, 186 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. 11 Appeal2017-001841 Application 13/796, 186 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. 12 Appeal2017-001841 Application 13/796, 186 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 13 Copy with citationCopy as parenthetical citation