TOYOBO CO., LTD.Download PDFPatent Trials and Appeals BoardMay 5, 202014770696 - (D) (P.T.A.B. May. 5, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/770,696 08/26/2015 Teruyuki Taninaka P25250US00 5412 38834 7590 05/05/2020 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 LEESBURG PIKE SUITE 7500 TYSONS, VA 22182 EXAMINER WEYDEMEYER, ETHAN ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 05/05/2020 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 TERUYUKI TANINAKA, SHINICHI KOBUCHI, and HIROYUKI WAKUI ____________ Appeal 2020-002862 Application 14/770,696 Technology Center 1700 ____________ BEFORE KAREN M. HASTINGS, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1–4, 6, and 7 as unpatentable over Isoda et al., (US 5,639,543, issued June 17, 1997) (hereinafter “Isoda”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Toyobo CO., LTD. (Appeal Br. 2). Appeal 2020-002862 Application 14/770,696 2 Claim 1 is representative and reproduced below (key disputed limitations in italics): 1. A network structure comprising a three-dimensional random loop bonded structure obtained by forming random loops with curling treatment of a continuous linear structure including a polyester-based thermoplastic elastomer and having a fineness of not less than 100 dtex and not more than 60000 dtex, and by making each loop mutually contact in a molten state, wherein the network structure has an apparent density of 0.005 g/cm3 to 0.20 g/cm3, a 50%-constant displacement repeated compression residual strain of not more than 15%, a 50%-compression hardness retention of not less than 88% after 50%-constant displacement repeated compression, and a hysteresis loss of not more than 28%. OPINION Upon consideration of the relied-upon evidence and each of Appellant’s contentions as set forth in the Appeal Brief filed Sept. 3, 2019, and the Reply Brief filed March 5, 2020, we determine that Appellant has not demonstrated reversible error in the Examiner’s rejections (e.g., Ans. 3– 17 (mailed Jan. 7, 2020)). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant to identify the alleged error in the Examiner’s rejection). We sustain the rejections for essentially the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. Appellant argues that Isoda does not explicitly disclose the properties recited in claim 1, and further fails to teach any of the three alternative process steps that Appellant contends is needed to produce a network Appeal 2020-002862 Application 14/770,696 3 structure having the recited properties (Appeal Br. 4, 5). Appellant also relies upon a Declaration submitted May 18, 2018 (Declaration)2 in support of the argument that the process of Isoda would not have produced the claimed product (Appeal Br. 6). Appellant contends that the Examiner has misinterpreted the teachings of Isoda and that Isoda does not teach or suggest that larger hole diameters would lead to lower hysteresis loss (Appeal Br. 6–10). Appellant also argues that Isoda’s process is not substantially identical to that used to produce the claimed invention (Appeal Br 11, 12). These arguments are reiterated in the Reply Brief and are not persuasive of reversible error in the Examiner’s obviousness determination. The Examiner aptly details the similarities in the materials used and the process used in Isoda and the current Specification (e.g., Ans. 4) and concludes that the recited properties would have been obtained by one of ordinary skill in the art optimizing the process parameters detailed in Isoda (Ans. 6). Indeed, Appellant admits that the present invention was made using the process of Isoda (Appeal Br. 10; Spec. ¶ 32 (“[t]he network structure is obtained in accordance with a publicly known method described in [Isoda]”). Thus it seems clear that Appellant at best fine-tuned Isoda’s process to obtain the current product. “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). There is sufficient evidence to support the Examiner’s position that orifice diameter (and 2 The Declaration is by one of the inventors, Shinichi Kobuchi. Appeal 2020-002862 Application 14/770,696 4 concommitantly flow rate) may affect loop diameter which affects hysteresis loss (Ans. 7; see also Ans. 5 (the Examiner states “orifice diameter and spacing has an effect on fineness and loop diameter ([Isoda] col. 7, lines 42- 60 and col. 8, lines 40-46), which consequently have an effect on various properties of the net structure”); Ans. 6 (relying on Isoda col. 9, ll. 13–34 which discusses the resin to be used, fineness, loop diameter and bulk density may all be selected depending on the final use for the product, including “medium density, great fineness and somewhat great loop diameter are preferable . . . [to] improve shape retention with . . . adequate hardness and linear change in hysteresis under compression and keep durability”). Furthermore it is clear that selection of the material used affects the final properties. Notably, claim 1 is generically directed to a vast genus of “polyester-based thermoplastic elastomer.” Turning to Appellant’s argument (and Declaration in support thereof) that Isoda’s process would not have obtained the current product, the Examiner aptly points out that Appellant merely states that their process “may include” one of the three alternative steps they discuss (Appeal Br. 4; Ans. 7). The Examiner also states that one these alternative steps of cooling water of “preferably not less than 80°C” cooling water (Appeal Br. 4; Spec. ¶ 36) basically encompasses Isoda’s process which includes cooling water of 70°C (Ans. 7, 8). We also note that, in contradiction to Appellant’s position that Isoda only teaches locating the cooling water 50 mm below the nozzle (and the Declaration uses this 50 cm spacing), Example 11 of Isoda exemplifies spacing the cooling water only 10 mm below the nozzle surface (Isoda, col. 16, ll. 12–13). Appellant admits that location of the cooling water closer to the nozzle is an important parameter to achieve the claimed Appeal 2020-002862 Application 14/770,696 5 properties (Reply Br. 4, 5 explaining that the longer distance of 50 cm in Isoda cannot be used to achieve the product and is different than Appellant’s use of 28 cm). This is yet another reason Appellant’s Declaration evidence falls short of showing that Isoda’s process would not have been able to produce the claimed product. Furthermore, the Examiner is not relying upon a theory that Isoda’s product inherently has the claimed properties, rather, the Examiner is relying upon adjusting process parameters to achieve improved hysteresis loss (and durability) as indicated in Isoda (Ans. 8). Although Appellant points out that the disputed hardness property recited in claim 1 is present after 80,000 compressions and Isoda only discusses 20,000 compressions (Appeal Br. 6; Reply Br. 6), the recited property is not qualified by any such number. Cf. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Although Appellant states that changing the throughput “would not affect significantly the strength of contact points” (Reply Br. 7), Appellant presents Isoda’s data that consistently shows that higher throughput results in larger loop diameter (which can impact hysteresis loss and durability) (Appeal Br. 14). Thus, they have not sufficiently refuted the Examiner’s position that orifice size will impact loop diameter, because a larger orifice size will enable a larger throughput. As the Examiner pointed out, Appellant admitted the apparatus used for the Declaration evidence “was not capable of the flowrate achieved by Isoda” (Ans. 8). In summary, a preponderance of the evidence supports the Examiner’s position that Isoda and Appellant use similar materials and a similar process Appeal 2020-002862 Application 14/770,696 6 to make the same material useful for the same purpose of a cushioning material. Appellant’s arguments fail to take into account the breadth of the claim language as well as the inferences and ordinary creativity that one of ordinary skill in the art would have used to optimize Isoda’s process parameters. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“In particular, the statement [in In re Wright] that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law.”) (overruling-in-part In re Wright, 848 F.2d 1216 (Fed. Cir. 1988)); also Dillon, 919 F.2d at 692 (explaining that where the prior art gives reason or motivation to make the claimed invention, the burden and opportunity to produce evidence such as unexpected results then falls on an applicant to rebut that prima facie case). Appellant, for the first time in the Reply Brief, urges that the invention has unexpected results (Reply Br. 5, 6). An attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, Appeal 2020-002862 Application 14/770,696 7 1405 (CCPA 1974).3 Furthermore, Appellant has not shown good cause why these arguments could not have been presented in the Appeal Brief. Newly raised arguments in the Reply Brief need not be considered absent good cause. 37 C.F.R. § 41.41(b)(2). In any event, in the appeal before us, it is questionable whether any of the results shown by the Specification and/or in contrast to the Declaration data are properly characterized as unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness” (citation omitted)). We emphasize that nowhere in the Specification do the Inventors characterize the compounds described therein as achieving results that are unexpected. It is only a conclusory heading/statement in the Reply Brief that describes these results without explanatory embellishment as “unexpected” (Reply Br. 5). Under these circumstances, we view the Specification data as merely representing the optimization of the compounds described in Isoda which would have been within the skill of and, thus, obvious to the artisan. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1371 (“At most, then, Pfizer engaged in routine, verification testing to optimize selection of one of several known and clearly suggested pharmaceutically-acceptable salts to ease its 3 The burden rests with Appellant to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellant has not met this burden. Appeal 2020-002862 Application 14/770,696 8 commercial manufacturing and marketing of the tablet form of the therapeutic amlodipine.”). In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc., 480 F.3d at 1372 (“[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.” (Citation omitted.)). Here, the case of obviousness established by the Examiner is strong such that when the teachings of the reference are weighed against Appellant’s alleged unexpected results, the preponderance of the evidence of record still weighs in favor of a conclusion of obviousness. For all the reasons set out by the Examiner and above, a preponderance of the evidence supports the Examiner’s obviousness determination of the claimed subject matter. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6, 7 103 Isoda 1–4, 6, 7 Appeal 2020-002862 Application 14/770,696 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation