Ex parte KOBAYASHI et al.

Board of Patent Appeals and Interferences

Feb 23, 1998

08124747 (B.P.A.I. Feb. 23, 1998)

Application for patent filed September 21, 1993.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HIDEKI KOBAYASHI
and WATARU NICHIUMI
_________
Appeal No. 95-1568
Application 08/124,7471
_________
ON BRIEF
_________
Before DOWNEY, GRON AND ELLIS, Administrative Patent Judges.
DOWNEY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims
1-20, all the claims pending in the application.
Appeal No. 95-1568
Application 08/124,747

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The subject matter on appeal is directed to a flurosilicone rubber
composition useful in forming moldings.
All the claims stand or fall together (Brief, page 2).
Claim 1 is illustrative and reads as follows:
1. A fluorosilicone rubber composition, comprising:
(A) 100 weight parts of a 3,3,3-trifluoropropylmethylsiloxane-methylvinylsiloxane
copolymer gum having a concentration of methylvinylsiloxane unit in a range of about
0.001 to 5 mole percent,
(B) 30 to 200 weight parts of a dimethylsiloxane-methylvinyl siloxane copolymer gum
having a concentration of methylvinylsiloxane unit in a range of about 0.001 to 5 mole
percent,
(C) 0.5 to 20 weight parts of a poly(3,3,3-trifluoropropylmethyl siloxane-
polydimethylsiloxane block copolymer,
(D) a reinforcing silica micropowder having a surface area of at least 50m /g, in an2
amount of 10 to 100 weight parts per 100 weight parts of the total of components (A),
(B), and (C), and
(E) a curing agent in a quantity sufficient to cure the composition.
The references relied upon by the examiner are:
Evans et al. (Evans ‘774) 4,529,774 Jul. 16, 1985
Evans et al. (Evans ‘811) 4,960,811 Oct. 2, 1990

Claims 1-20 stand rejected under 35 U.S.C.§ 103 as unpatentable over
Evans ‘811 in view of Evans ‘744 incorporated by reference. We reverse.
The claims are directed to a five component mixture, (A)-(E) of specific
named ingredients. Appellants indicate that copolymer gums (A) and (B) are well
Appeal No. 95-1568
Application 08/124,747

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known and each has been individually used in rubber making compositions (Page 1 of
specification). Appellants also indicate that when copolymer gums (A) and (B) are
used in combination a compatibility problem arises; namely that, phase separation
often occurs between the two resulting in a composition having substantially lower
mechanical strength. Appellants have solved this problem by adding to the
composition a certain block copolymer, (C). Appellants also add fumed silica (D) and a
curing agent (E) to the composition.
Evans’ 811 is directed to a heavy molecular weight (HMW) fluorosilicone
heat cured rubber composition produced by adding a silicone monomer, a chain
modifier mixture of siloxane polymers and a siloxane monomer and a catalyst to a
reactor, heating to initiate the reaction thus forming a base polymer (A), and mixing into
the base polymer, polydimethylsiloxane gum having vinyl groups (B), simultaneously
with fumed silica and other processing aids. The purpose of the gum is to aid in the
cross-linking through the vinyl groups. Evans’ 811 HMW polymer is said to have the
general formula (III), at column 4, lines 4-28.
It is the examiner’s position that appellants’ components (A), (B), and
(C) each read on Evans ‘811 formula (III). Component A is said to be found noting
repeating units a and b of formula III, component B is said to be found noting repeating
units b and c of formula III. The examiner provides no explanation as to how
Appeal No. 95-1568
Application 08/124,747

The examiner relies on Evans ‘774 to show reinforcing silica fillers2
having a surface area of 150-160 m /gm, a range within the claimed range for2
components.
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component C is to be found in formula III other than his conclusory statement that it
does. The examiner reasons that the term copolymer of the claims does not exclude a
polymer having two or more dissimilar monomers. Evans ‘811 describes the use of
silica, albeit in the reaction process in forming the heat cured rubber composition, the2
examiner takes official notice that since various catalysts are well known curing agents
for silicone compositions crosslinkable through vinyl groups, the addition of a curing
agent would have been prima facie obvious.
The Patent and Trademark Office (PTO) has the burden under 35 U.S.C.
§ 103 of establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). This burden can be satisfied when the PTO presents
evidence, by means of some teaching, suggestion, or inference either in the applied
prior art or generally available knowledge, that would appear to have suggested the
claimed subject matter to a person of ordinary skill in the art or would have motivated a
person of ordinary skill in the art to combine the applied references in the proposed
manner to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074,
Appeal No. 95-1568
Application 08/124,747

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5 USPQ2d 1596, 1598 (Fed. Cir. 1988); Carella v. Starlight Archery, 804 F.2d 135,
139, 231 USPQ 644, 647 (Fed. Cir. 1986); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 291, 227 USPQ 657, 662 (Fed. Cir. 1985); In re
Rinehart, supra.
We cannot agree with the examiner’s initial premise that the Evans ‘811
heat cured HMW polymer, as described by formula (III), satisfies components (A), (B)
and (C) of the instant claims. The claims recite a five component curable mixture
containing two specific copolymer gums in combination with a specific block copolymer
which are not suggested by the examiner’s strained interpretation of the Evans ’811
HMW heat cured polymer. Further, we find no suggestion in Evans ‘811 and the
examiner has pointed to none, to then take the HMW heat cured polymer and add silica
and a curing agent.
Appeal No. 95-1568
Application 08/124,747

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Accordingly, on this record, the examiner has not sustained his burden of
establishing a prima facie case of obviousness, and we therefore reverse the rejection.
REVERSED
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TEDDY S. GRON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOAN ELLIS )
Administrative Patent Judge )
Down Corning Corporation
Appeal No. 95-1568
Application 08/124,747

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