13679568 (P.T.A.B. Dec. 20, 2018)

Ex Parte KIMURA et al

Patent Trial and Appeal BoardDec 20, 2018

13679568 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/679,568 11/16/2012 23117 7590 12/25/2018 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Hiroshi KIMURA 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. 4849-49 4985 EXAMINER CAMPANELL, FRANCIS C ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 12/25/2018 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROSHI KIMURA, SHINY A KONDO, TETSUO OGAWA, MAKOTO HAY AMA, KOJI MAESAKA, SHIN MORISHITA, KEN NAKANO, and TOSHIHIKO SHIRAISHI Appeal2017-010227 Application 13/679,568 Technology Center 1700 Before KAREN M. HASTINGS, CHRISTOPHER L. CRUMBLEY, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-010227 Application 13/679,568 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134 from a rejection2 of claims 1 and 3-12. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A magneto-rheological grease composition comprising: (a) a base oil comprising at least 30% by mass of an ether type synthetic oil having a kinetic viscosity at 40Â°C of 60 to I40mm2/sÂ· ' (b) an aliphatic diurea thickener; and ( c) magnetic particles in an amount of 45 to 95% by mass based on the total mass of the composition, wherein the aliphatic diurea thickener is represented by formula (1 ): R'-NHCONH-OCH,-ONHCONH-R2 (1) (1) wherein RI and R2 are a straight-chain or branched alkyl group having 6 to 20 carbon atoms, and wherein RI and R2 are the same. REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Naka us 5,462,684 Oct. 31, 1995 1 The real parties in interest are identified as "Kyodo Yushi Co., Ltd. a corporation of Japan, and Yokohama National University, a university of Japan." Appeal Brief of December 12, 2016 ("Br."), 3. 2 Final Office Action of February 11, 2016 ("Final Act."). In this opinion, we also refer to the Examiner's Answer of May 25, 2017 ("Ans."). No Reply Brief was filed. 2 Appeal2017-010227 Application 13/679,568 Kakizaki Iyengar US 2007/0099801 Al May 3, 2007 US 2009/0014681 Al Jan. 15, 2009 REJECTIONS Claims 1 and 3-12 stand rejected under pre-AIA 35 U.S.C. I03(a) as being unpatentable over the combined disclosures of Iyengar, Kakizaki, and Naka. Final Act. 4. OPINION Claim 1 In rejecting claim 1, the Examiner finds that "Iyengar does not specifically state ... the viscosity of the base oil" and cites Naka for the teaching "that the known viscosities of alkyldiphenyl oils used in grease composition with urea thickeners, as taught in the composition of Iyengar, have a known viscosity range of 20 to 300 cSt." Final Act. 4, 6. Appellants argue that the Examiner reversibly erred because Naka refers to a dynamic viscosity whereas "the claim recites a kinetic viscosity of the base oil itself, not the kinetic viscosity of a component of the base oil." App. Br. 12 ( emphases in original). In this Examiner's Answer, the Examiner does not specifically address this argument and merely states: "Naka teaches a composition with a diphenyl ether base oil ( column 3 lines 1-10) with a viscosity of 20 to 300 cSt at 40Â°C." Ans. 7. Each element in a claim is material to defining the scope of the invention. Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997). To establish a prima facie case of obviousness, the examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the 3 Appeal2017-010227 Application 13/679,568 knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). In this case, because the Examiner has not explained why the prior art dynamic viscosity- or what the Examiner generalizes as "viscosity" (see Ans. 7)-teaches or suggests the recited "kinetic viscosity," the record before us is devoid of evidence showing that "a base oil comprising at least 30% by mass of an ether type synthetic oil having a kinetic viscosity" as recited in the claims is taught or suggested in the prior art. That is, given that the Examiner's analysis equates the recited "kinetic viscosity" with "viscosity" which is then equated with the prior art "dynamic viscosity," we find that the construction is erroneous for it is so broad as to vitiate an express limitation. See Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1171 (Fed. Cir. 1993) ("[T]o construe the claims in the manner suggested by TI would read an express limitation out of the claims. This we will not do."). To the extent that Appellants additionally argue that the kinetic viscosity applies to the recited "base oil itself' rather than the "ether type synthetic oil," (see App. Br. 12), we decline to reach this argument as unnecessary because of the lack of evidence for the recited "kinetic viscosity" of either. 3 3 We likewise decline to reach the remaining arguments raised by Appellants as unnecessary for the disposition of the appeal. 4 Appeal2017-010227 Application 13/679,568 DECISION The Examiner's rejection of claims 1 and 3-12 is reversed. REVERSED 5