Ex Parte Furusawa

Patent Trial and Appeal Board

Feb 28, 2018

14119017 (P.T.A.B. Feb. 28, 2018)

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.
14/119,017 11/20/2013 Masamori Furusawa 6500-P50096 6445
13897 7590 (
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
TATESURE, VINCENT
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAMORI FURUSAWA
Appeal 2017-006223
Application 14/119,017
Technology Center 1700
Before ROMULO H. DELMENDO, BRIAN D. RANGE,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-20 of Application 14/119,017
under 35 U.S.C. § 103(a) as obvious. Final Act. (May 19, 2016) 2-5.
Appellant1 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 Nippon Sheet Glass Company, Limited is identified as the real party in
interest. App. Br. 3.
Appeal 2017-006223
Application 14/119,017
BACKGROUND
The present application generally relates to a reinforcing cord for use
in a rubber product such as a rubber belt of the sort used to transmit power in
a mechanical device. Spec. ^ 2.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A reinforcing cord for reinforcing a rubber product,
comprising at least one strand, wherein
the strand comprises: a bundle of filaments that are
bundled and twisted together in one direction; and a coating
layer that is formed on at least a surface of the bundle,
the bundle consists essentially of carbon fiber filaments,
the coating layer is a coating layer that is formed from an
aqueous treatment agent which is free of a resorcinol-
formaldehyde condensation product and contains a rubber latex
and a crosslinking agent as essential components and a filler as
an optional component, and
in the aqueous treatment agent, a mass of the crosslinking
agent is in a range of 1 to 25% with respect to a mass of rubber
in the rubber latex.
App. Br. 17 (Claims App.).
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Appeal 2017-006223
Application 14/119,017
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claims 1-9 and 11-202 are rejected under 35 U.S.C. § 103(a) as
obvious over Knutson3 in view of Akiyama4 and Akiyama 20 065.
Final Act. 2-5; Answer 2.
DISCUSSION
Claim 1, as amended, stands rejected as obvious over Knutson in view
of Akiyama and further in view of Akiyama 2006. Final Act. 2-5; Answer
2-3. Appellant’s first argument is that the Examiner erred in stating a basis
to combine the teachings of Knutson and Akiyama. App. Br. 6-10.
Claim 1 requires a “coating layer that. . . contains ... a crosslinking
agent as essential components and a filler as an optional component.” In
support of the rejection of claim 1, the Examiner found, inter alia, that
Knutson teaches a reinforcing cord having a coating layer formed of “an
aqueous treatment agent containing rubber latex, a crosslinking agent
(curative) and fillers.” Final Act. 2 (citing Knutson ^ 15, 24, and 34). The
Examiner further found that, although Knutson teaches a coating having
fillers and crosslinking agents, it does not teach “the types of these
components or amounts in which to include them.” Id. at 3. Accordingly,
the Examiner finds, one of skill in the art would have looked to the prior art
2 Claim 10 was canceled by amendment. See Amendment Under 37 C.F.R.
§ 1.116 (dated July 13,2016).
3 US 2004/0132571 Al, published July 8, 2004.
4 US 2008/0166576 Al, published July 10, 2008.
5 US 2006/0063884 Al, published Mar. 23, 2006
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Appeal 2017-006223
Application 14/119,017
for exemplary crosslinking agents and fillers. Id. The Examiner determines
that this provides a reason to combine the teachings of Knutson and
Akiyama which teaches a reinforcing cord 15 having a coating film that
includes a “vulcanizing agent.” Id. at 3; Akiyama 11, 33.
Appellant argues that the stated reason to combine is in error as the
portion of Knutson relied upon by the Examiner as teaching the crosslinking
agent and filler for the coating layer (paragraph 15) pertains to the belt body
elastomer rather than the coating layer. App. Br. 7-10.
In the Answer, the Examiner appears to modify the basis of the
rejection such that the belt body elastomer of Knutson is regarded as a
coating layer. Answer 2 (“The elastomeric composition of the body
necessarily provides a coating layer formed on at least a surface of the
bundle of fibers.”). Accordingly, we construe the term “coating layer” as
used in claim 1.
The Specification describes the coating layer as follows:
The reinforcing cord of the present invention is a
reinforcing cord for reinforcing a rubber product, including
at least one strand. In this reinforcing cord, the strand includes:
a bundle of filaments that are bundled and twisted together in one
direction; and a coating layer that is formed on at least a
surface of the bundle. The bundle consists essentially of carbon
fiber filaments. The coating layer is a coating layer that is formed
from an aqueous treatment agent containing a rubber latex and a
crosslinking agent as essential components and a filler as an
optional component. In the aqueous treatment agent, a total of a
mass of the crosslinking agent and a mass of the filler is in a
range of 1 to 50% of a mass of rubber in the rubber latex.
The rubber product of the present invention is reinforced
by the reinforcing cord of the present invention.
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Application 14/119,017
Spec. 9-10. The foregoing makes clear that the coating layer is
considered a substituent of the reinforcing cord and that the reinforcing cord
is separate from the “rubber product.”
The Specification further provides that “[i]n order to increase the
adhesion to the matrix rubber, the reinforcing cord of the present invention
may include a second coating layer formed on the above-described coating
layer (first coating layer).” Spec. ^ 33. Similar to the foregoing, this portion
of the Specification indicates that the “coating layer” is separate from the
rubber body of the device.
Additionally, the Specification addresses the mass of the coating layer
as follows:
The mass of the coating layer may be in a range of 7 to
30% (for example, in a range of 10 to 25% or in a range of 15 to
20%) of the mass of the bundle of filaments. The cord containing
a larger amount of the coating layer is more flexible and thus has
an improved bending property. However, if the amount of the
coating layer is too large, the cord may be more affected by oil
or the dimensional stability in the resulting rubber product may
decrease. On the other hand, if the amount of the coating layer is
too small, the reinforcing fibers cannot be protected sufficiently,
and as a result, the life of the resulting rubber product may be
reduced.
Spec. ^ 40. Thus, the Specification teaches that the coating should not be
“too large.” This tends to suggest that the coating would not encompass the
body of an elastomer product.
In view of the foregoing, we construe “coating layer” as excluding the
body of the rubber product. Specifically with regard to Knutson, “coating
layer” would exclude the elastomeric composition of the belt body described
in paragraph 15.
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Application 14/119,017
Accordingly, we determine that paragraph 15 of Knutson is not
applicable to a coating layer for a reinforcing cord and that a person of
ordinary skill in the art would not have looked to the teachings of Knutson
regarding the elastomeric composition of the belt body in determining the
components to use in forming a reinforcing cord.6 Moreover, the Examiner
does not account for Knutson’s teaching that “an RFL composition ... is
applied as a cord treatment.” Knutson 24. As a result, we will reverse the
rejection of claim 1 and all claims depending therefrom.
Appellant additionally argues that Akiyama teaches a coating liquid
for a reinforcing sheet rather than a reinforcing cord. App. Br. 10-12.
Akiyama primarily concerns the composition of a coating liquid for a
reinforcing sheet. Akiyama 11-35. As the Examiner notes, however,
paragraph 33 of Akiyama provides that the coating composition for the
reinforcing cord may be the same composition as the coating of the
reinforcing sheet. Answer 3. Accordingly, Appellant has not shown error in
this regard.
Appellant additionally argues that the resorcinol-formaldehyde
condensation product is an essential component of the Knutson disclosure
and that Knutson’s teachings as to the importance of resorcinol-
formaldehyde condensation product “teach away” from any modification.
App. Br. 13-14. A reference may be said to teach away from a certain
technical feature when it provides “clear discouragement” from
6 In the Answer, the Examiner includes a new basis of rejection that
Akiyama 2006 includes both crosslinking agents and fillers. Answer 3.
There is, however, no stated reason to combine such teachings of Akiyama
2006 with the teachings of Knutson.
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Application 14/119,017
implementing such feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed.
Cir. 2017). “A reference teaches away when it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012) (quotations omitted).
Appellant has not cited to any portion of Knutson that provides clear
discouragement from use of components other than of resorcinol-
formaldehyde condensation product nor has Appellant cited to any
suggestion that use of some other resin is unlikely to be productive.
Accordingly, Knutson has not been shown to teach away from resins other
than resorcinol-formaldehyde condensation product.
Appellant further argues that the Examiner has not stated an adequate
basis to modify Knutson so as use a coating layer that is free of resorcinol-
formaldehyde condensation product. App. Br. 14-15. In support of the
rejection of claim 10, the Examiner found that Akiyama 2006 teaches a
reinforcing cord for rubber products that lacks resorcinol-formaldehyde
condensation product.7 Final Act. 5. The Examiner further found that
Akima 2006 teaches that resorcinol-formaldehyde products impose a burden
on the environment and create an unsafe environment for workers. Id.
(citing Akima 2006 ^ 6.). Akima 2006 provides as follows:
Furthermore, since this reinforcing cord for rubber
reinforcement is manufactured using the condensate of
resorcinol and formalin and aqueous ammonia in forming the
first coating layer and an organic solvent such as toluene in
forming the second coating layer, a severe burden is imposed
7 We regard this rejection as applicable to claim 1, as amended subsequent to
the final rejection. See Amendment Under 37C.F.R. § 1.116 (dated July 13,
2016); see also Answer 2, 3.
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Application 14/119,017
on the environment and especially it is indispensable to take
measures to provide safe environments for workers.
Akima 2006 ^ 6. Appellant argues that the foregoing passage indicates only
that organic solvents such as toluene are environmentally burdensome.
App. Br. 14-15; Reply 4-5. Appellant further argues that the same
inventors do not regard resorcinol-formaldehyde condensate as unsafe as, in
the subsequently filed Akiyama application, they make use of resorcinol-
formaldehyde condensate. App. Br. 15.
The Examiner maintains that Akiyama “clearly teaches that the
environmental burden is due to the fact that the cord is manufactured using
both the condensate of resorcinol and formalin” as well as organic solvent.
Answer 4. Given the plain language of Akiyama 2006, Appellant has not
shown error in the Examiner’s finding that Akiyama 2006 teaches that
resorcinol-formaldehyde condensate imposes a burden on the workplace
environment.
The Examiner rejected claim 10 as obvious over Knutson in view of
Akiyama and further in view of Akiyama 2006. Final Act. 5. Claim 10 was
canceled by amendment dated July 13, 2006, and Appellant does not seek
review of the rejection of claim 10. Accordingly, we need not address the
rejection of claim 10.
CONCLUSION
The rejection of claims 1-9 and 11-20 as obvious over Knutson in
view of Akiyama and Akiyama 2006 is reversed.
REVERSED
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