12790391 (P.T.A.B. Jun. 27, 2016)

Ex Parte Hommura et al

Patent Trial and Appeal BoardJun 27, 2016

12790391 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121790,391 05/28/2010 Satoru HOMMURA 22850 7590 06/29/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 360634USO 1487 EXAMINER GILLIAM, BARBARA LEE ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 06/29/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SATORU HOMMURA, SUSUMU SAITO, TETSUJI SHIMOHIRA, ATSUSHI WATAKABE Appeal2014--007075 Application 12/790,391 Technology Center 1700 Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and JULIA HEANEY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 1-13. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). An oral hearing was held on June 17, 2016. STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below: 1. An electrolyte material, which comprises a polymer (H) having ion exchange groups converted from precursor groups in the following polymer (F), and having an ion exchange capacity of at least 1.35 meq/g dry resin: Appeal2014-007075 Application 12/790,391 polymer (F): a polymer which has repeating units (A) based on a perfluoromonomer having a precursor group of an ion exchange group and a dioxolane ring and repeating units (B) based on a perfluoromonomer having no ion exchange group nor its precursor group and having a dioxolane ring, and which has a TQ as defined below of at least 200Â°C: TQ: a temperature at which the melt volume rate becomes 100 mm3/sec, when the polymer (F) is subjected to melt extrusion under an extrusion pressure condition of 2.94 MPa from a nozzle having a length of 1 mm and an inner diameter of 1 mm. The Examiner relies on the following prior art references as evidence of unpatentability: Watakabe '291 Watakabe '207 US 2005/0266291 Al US 2002/0142207 Al THE REJECTION Dec. 1, 2005 Oct. 3, 2002 Claims 1-13 under 35 U.S.C. Â§103(a) as being unpatentable over Watakabe '291 in view of Watakabe '207. ANALYSIS On the current state of the record, we reverse the rejection for the reasons identified by Appellants, and add the following. The determinative issue before us is whether the combination of applied references suggests the claimed subject matter, and in particular, the claimed element pertaining to an electrolyte material comprising a polymer (H) having ion exchange groups converted from precursor groups of a polymer (F) whereby the polymer (F) has a TQ value of at least 200Â°C. On page 4 of the Final Office Action, the Examiner states the Watakabe '291 does not expressly teach that the polymer has a TQ of at least 200Â°C, or that the repeating units (B) have structure as recited in claims 2 Appeal2014-007075 Application 12/790,391 7 and 8. The Examiner relies upon Watakabe '207 for teaching these elements and determines that the combination of applied art suggests these claimed elements. Final Act. 4--5. With particular regard to the claimed TQ value, the Examiner states that the modified Watakabe '291 electrolyte is capable of exhibiting a TQ as recited because the modified structure is the same as claimed. Final Act. 5. In reply, on page 7 of the Appeal Brief, Appellants argue that the TQ value involves more than structure (in other words, according to their invention, structure alone does not determine an associated TQ value). On page 6 of the Appeal Brief, Appellants argue that how the precursor polymer is prepared affects the resultant claimed TQ value, in addition to structure. In reply, the Examiner states, inter alia, that Appellants do not recite how the polymer is made. Ans. 4. The Examiner states that Watakabe '291 does use processes similar, if not the same as, the processes used by Appellants. Ans. 5. The Examiner takes the position that the TQ value would naturally flow from following the suggestion of the prior art. Ans. 3- 4. In the Reply Brief, Appellants reiterate that whether or not both the claimed ion exchange capacity and TQ features are met depends upon the particular preparation conditions. Reply Br. 3. Appellants refer to parts of their Specification regarding the preparation steps involved to adjust the ion exchange capacity and/or to adjust the TQ value. Reply Br. 3--4. Even more relevant, Appellants dispute the Examiner's findings that Watakabe teaches the use of methods similar to those employed by Appellants. Reply Br. 6. Appellants state that there is no mention in Watakabe '291 of preparation involving adjusting ion exchange capacity or 3 Appeal2014-007075 Application 12/790,391 TQ values according to the preparation steps disclosed in their Specification. Id. We agree, as the Examiner's findings do not address how Watakabe '291 's process includes such steps. Ans. 4. Thus, we are persuaded by Appellants' argument on this point. Therefore, Appellants' position (contrary to the Examiner's position), that any advantage that Appellants have recognized would not flow naturally from the suggestion of the prior art (Reply Br. 5), is supported by a preponderance of the evidence because the Examiner has not sufficiently demonstrated that the preparation methods are the same. Appellants also argue that their clams are not product-by- process claims (Reply Br. 6), and we agree for the reasons stated therein by Appellants. In view of the above, we reverse the rejection. DECISION The rejection is REVERSED. ORDER REVERSED 4