Yuki Horiuchi

Patent Trials and Appeals Board

Sep 11, 2019

13803957 - (D) (P.T.A.B. Sep. 11, 2019)

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.
13/803,957 03/14/2013 Yuki HORIUCHI Q202612 8184
65565 7590 09/11/2019
SUGHRUE-265550
2000 PENNSYLVANIA AVE. NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
HALL, DEVE V.
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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):
PPROCESSING@SUGHRUE.COM
SUGHRUE265550@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte YUKI HORIUCHI
_______________
Appeal 2018-002547
Application 13/803,957
Technology Center 1700
_______________
Before MARK NAGUMO, GEORGE C. BEST, and JEFFREY R. SNAY,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1–6 of Application 13/803,957
under 35 U.S.C. § 103(a) as obvious.1 Final Act. (April 6, 2017).
Appellant2 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 This is the ’957 Application’s second appearance before the Board. See Ex
parte Horiuchi, Appeal No. 2015-002201, slip op. (PTAB August 1, 2016)
(available at https://go.usa.gov/xVa3T).
2 Yazaki Corp. is identified as the applicant and real party in interest.
Appeal Br. 2.
Appeal 2018-002547
Application 13/803,957
2
BACKGROUND
The ’957 Application describes a resin composition that can be used
to insulate low-voltage automotive cables. Spec. ¶¶ 1–2. Conventional
insulating materials do not have sufficient heat resistance unless they are
cross-linked by electron beam of radiation after they are molded on to the
wire. Id. ¶ 2. The electron beam irradiation is a low throughput step that
requires expensive equipment. Id. Thus, a resin that has sufficient heat
resistance in the absence of a cross-linking treatment is desirable. One such
alternative is a polyphenylene ether material. Id. ¶ 3. Such materials have
excellent mechanical and electrical properties, including heat resistance and
dimensional stability, but they have poor molding processability, impact
resistance, and organic solvent resistance. Id.
The ’957 Application’s Specification describes a resin composition
comprising a blend of polyphenylene ether, polypropylene-based resin, a
styrene-based elastomer, a polyamide, and an acid-modified polyolefin.
Id. ¶ 9. This blend is said to have high-temperature melt resistance
characteristics and excellent thermal aging resistance and battery fluid
resistance, and to be useful as an insulator in a heat-resistant electric wire.
Id. ¶ 8.
Claim 1 is representative of the ’957 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A resin composition for a heat-resistant electric wire, the
resin composition comprising:
from 25 to 60 parts by weight of a polyphenylene ether;
from 15 to 42 parts by weight of a polypropylene-based
resin;
from 8 to 27 parts by weight of a styrene-based
elastomer;
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Application 13/803,957
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from 5 to 15 parts by weight of a polyamide; and
from 1 to 10 parts by weight of an acid-modified
polyolefin,
wherein the polyamide has a melting point of 201°C or
more, and
wherein a sum of the polyphenylene ether, the
polypropylene-based resin, the styrene-based elastomer, the
polyamide, and the acid-modified polyolefin totals 100 parts by
weight.
Appeal Br. 19.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Norisue.3 Final Act. 2.
2. Claims 3–5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Norisue and Itoh.4 Final Act. 4.
DISCUSSION
Rejection 1. Appellant argues for reversal of this rejection based
upon the limitations of claim 1 and does not present separate arguments for
reversal the rejection of claims 2 and 6. We, therefore, select claim 1 as
representative of the group of claims subject to this ground of rejection. 37
C.F.R. § 41.37(c)(1)(iv). Claims 2 and 6 will stand or fall with claim 1. Id.
In rejecting claim 1, the Examiner found that Norisue describes a
thermoplastic resin comprising the component recited in claim 1. Final

3 EP 0 547 229 A1, published December 15, 1993.
4 US 2002/0022686 A1, published February 21, 2002.
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Application 13/803,957
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Act. 2–3. Moreover, the Examiner found that each component in Norisue’s
resin other than the polyamide is present in an amount that falls within a
range that overlaps the range set forth for that component in claim 1. Id.
The Examiner found that Norisue describes a composition having a
minimum of 16% polyamide. Id. at 3. Claim 1 requires the polyamide to be
present in an amount between 5 and 15 parts per hundred.
Nevertheless, the Examiner, citing Titanium Metals Corp. of America
v. Banner, 778 F.2d 775 (Fed. Cir. 1985), concluded that Norisue renders the
subject matter of claim 1 prima facie obvious. Id. (“A prima facie case of
obviousness exists where the claimed ranges and prior art range do not
overlap but are close enough that one skilled in the art would have expected
them to have the same properties.”).
Appellant argues, inter alia, that the Examiner erred by finding that
Norisue describes a composition having a minimum of 16% polyamide and
that the Examiner’s reliance on Titanium Metals is inappropriate. Appeal
Br. 8. We address these arguments below.
As an initial matter, Appellant argues that the Examiner erred in
calculating that Norisue describes a composition having a minimum of 16
parts per hundred polyamide. Id. at 8–9. According to Appellant, when the
calculations are performed correctly, Norisue describes a composition
having a minimum of 16.5 parts per hundred polyamide. Id. at 9 n.1. The
Examiner’s Answer does not contest Appellant’s calculations. Answer 6.
The Examiner, however, maintains the position that a person of ordinary
skill in the art would reasonably have expected Norisue’s composition
having 16.5 parts per hundred polyamide to have the same properties as the
claimed composition, which has a maximum of 15 parts per hundred
polyamide. Id. (citing Titanium Metals).
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5
We, therefore, turn to Appellant’s argument that the Examiner’s
reliance on Titanium Metals is misplaced. See Appeal Br. 13–17. In
particular, Appellant argues that the Examiner erred by finding that a person
having ordinary skill in the art reasonably would have expected claim 1’s
composition to have the same properties as Norisue’s composition. Id.
Appellant also argues that Titanium Metals is distinguishable from the facts
at hand. Id. (citing In re Patel, 566 F. App’x 1005 (Fed. Cir. 2014)).
We agree with Appellant.
We begin by describing the facts of Titanium Metals. The claims at
issue in Titanium Metals were directed to a titanium alloy comprising small
amounts of nickel and molybdenum. 778 F.2d at 776. For ease of reference,
we reproduce claims 1 and 3 below.
1. A titanium base alloy consisting essentially by weight of
about 0.6% to 0.9% nickel, 0.2% to 0.4% molybdenum, up to
0.2% maximum iron, balance titanium, said alloy being
characterized by good corrosion resistance in hot brine
environments.
Id. As can be seen, claim 3 is directed to a preferred embodiment of the
alloys recited in claim 1:
3. A titanium base alloy as set forth in Claim 1 having 0.8%
nickel, 0.3% molybdenum, up to 0.1% maximum iron, balance
titanium.
Id.
During prosecution, the Examiner rejected claims 1 and 2 as
anticipated by a Russian journal article. Id. The Examiner rejected claim 3
as obvious in view of the same journal article. Id. The Patent and
Trademark Office Board of Appeals affirmed the Examiner, but erroneously
proceeded on the assumption that all three claims had been rejected as
anticipated. Id. The applicant, being dissatisfied with this outcome, brought
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Application 13/803,957
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an action under 35 U.S.C. § 145. Id. at 777. The District Court determined
that none of the claims should have been rejected and ordered the
Commissioner to issue a patent. Id. at 779.
On appeal, the Federal Circuit determined that it was confronted with
the question of “the propriety of the rejection of claims 1 and 2 under § 102
and the rejection of claim 3 under § 103, both rejections having been held by
the district court to have been erroneous.” Id. at 780. The Federal Circuit
reversed the District Court, concluding that claims 1 and 2 were anticipated
by the Russian journal article’s disclosure of a titanium base alloy containing
0.25 % by weight molybdenum and 0.75% nickel. Id. at 781. The Federal
Circuit explained that claims 1 and 2 encompass such an alloy. Id.
With respect to claim 3, the Federal Circuit determined that the
Russian journal article’s disclosure of two alloys having compositions very
close to that of claim 3 rendered the subject matter of claim 3 prima facie
obvious. Id. at 783. The Federal Circuit stated that “[t]he proportions [of
the elements comprising the alloy] are so close that prima facie one skilled
in the art would have expected them to have the same properties.” Id.
For ease of reference, we summarize the composition of these alloys
as well as the alloys encompassed within claims 1 and 3 in the table below.
Claim 1 Prior Art Alloy A Claim 3
Prior Art
Alloy B
Mo 0.2%–0.4% 0.25% 0.3% 0.31%
Ni 0.6%–0.9% 0.75% 0.8% 0.94%
Fe ≤ 0.2% - ≤ 0.1% -
Bal. Ti Ti Ti Ti

As can be seen from the table, when the compositions of Prior Art
Alloy A and Prior Art Alloy B are considered at the claimed number of
significant digits, both fall within the scope of claim 1. As a preferred
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embodiment, the alloy recited in claim 3 also falls within the scope of claim
1. Thus, a person of ordinary skill in the art at the time of the invention
would have had adequate reason to believe that the properties of all three
alloys were substantially the same.
This is not the situation in the case at hand. The Examiner’s Answer
states that
the examiner has fully considered the appellant’s arguments and
re-calculations, however, the examiner takes the position that
16.5 parts is close enough to 15 parts that one of ordinary skill
in the art would reasonably expect the same properties. A
prima facie case of obviousness exists where the claimed ranges
and prior art range is do not overlap but are close enough that
one skilled in the art would have expected them to have the
same properties, see Titanium Metals Corp. of America v.
Banner, 778[ ]F.2d 775,[ ]227 USPQ 773 (Fed. Cir. 1985). See
MPEP 2144.051. Moreover, the applicant has not provided a
showing/evidence that the calculated 16.5 parts a polyamide of
EP ’229 would not produce the same composition/properties as
the present invention. Furthermore, the applicant has not
established that the difference between 15 parts and 16.5 parts
by weight of polyamide necessarily makes a difference in the
properties of the composition.
Answer 6–7 (emphasis added).
We cannot sustain the obviousness rejection of claim 1 on the basis of
the reasoning set forth in the Examiner’s Answer. As the passage quoted
above makes clear, the rejection is based upon the Examiner’s mere
assertion that the prior art range and the claimed range “are close enough.”
Based upon this unsupported conclusory statement, the Examiner attempts to
shift the burden of proof to Appellant and points out that Appellant has not
made evidentiary showings regarding the properties of the claimed
composition and the prior art composition. Id.
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The Examiner has not done enough to establish a prima facie case of
obviousness. As the Federal Circuit has pointed out, “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). In this case, the Examiner has not
provided any explanation or reasoning to support the assertion that 15 parts
per hundred is “close enough” to 16.5 parts per hundred. Such an
explanation must be provided or (as in Titanium Metals) be readily evident
from the record before an applicant can be burdened with having to present
evidence sufficient to rebut a prima facie case of obviousness. This is
because the Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner meets
that burden, the applicant bears the burden of coming forward with evidence
or argument. Id.
We, therefore, reverse the rejection of claim 1 as obvious over
Norisue. Accordingly, we also reverse the rejection of claims 2 and 6.
Rejection 2. As discussed above, Appellant asserts that claims 3–5
are patentable based upon their dependence from claim 1. Because we have
reversed the rejection of claim 1, we also reverse the rejection of claims 3–5.
CONCLUSION
In view of the foregoing, we reverse the rejection of claims 1–6 of the
’957 Application.
REVERSED