Ex Parte Kutsuna et al

Board of Patent Appeals and Interferences

Jul 24, 2012

10602637 (B.P.A.I. Jul. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/602,637 06/25/2003 Takaaki Kutsuna 396.42795X00 1073
20457 7590 07/24/2012
ANTONELLI, TERRY, STOUT & KRAUS, LLP
1300 NORTH SEVENTEENTH STREET
SUITE 1800
ARLINGTON, VA 22209-3873
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
07/24/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte TAKAAKI KUTSUNA and TAKESHI KOYAMA
_______________

Appeal 2010-009405
Application 10/602,6371
Technology Center 1700
________________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection2 of claims 1, 2, 6, and 8 through 25. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM-IN-PART.

1 Application 10/602,637 (Application’637), filed on June 25, 2003.
2 Office action mailed December 10, 2008 (“Final Rejection”; cited as
“FR”).
Appeal 2010-009405
Application 10/602,637

2
INTRODUCTION
Details of the appealed subject matter are recited in representative
appealed claims 1 and 23 of Application’637, which are reproduced below
from the Claims Appendix to the Appeal Brief3:
1. A fuel system comprising a fuel vessel, molded parts
for the fuel vessel and/or a tube for a fuel in which bodies
thereof are constituted from a thermoplastic resin and/or a
rubber, wherein:
a coating layer is formed on the surfaces in at least one
sides of the insides and the outsides of the fuel vessel body, the
molded part bodies for the fuel vessel and/or the tube body for a
fuel or at least one of connected parts in these bodies;
the above coating layer is formed by curing an epoxy
resin composition comprising an epoxy resin and an epoxy
resin curing agent as principal components;
the above coating layer, which is barrier layer for
gasoline, has a gasoline permeability coefficient of
2 g·mm/m2·day or less at 60°C and a relative humidity of
60% RH;
the epoxy resin described above comprises at least one
selected from an epoxy resin having a glycidylamine part
derived from metaxylylenediamine, and an epoxy resin having a
glycidylamine part derived from 1,3-bis(aminomethyl)-
cyclohexane; and
the epoxy resin curing agent comprises a reaction
product of (A) and (B) or a reaction product of (A), (B) and (C):
(A) metaxylylenediamine or paraxylylenediamine,
(B) a multifunctional compound having at least one acyl
group which can form an amide group part by reacting with
polyamine to form an oligomer, the multifunctional compound
being selected from the group consisting of acrylic acid,

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Appeal 2010-009405
Application 10/602,637

4
(2) Claim 23 under 35 U.S.C. § 103(a) as being unpatentable
over the combined teachings of Gerdes, Tashiro, and Huang, as
applied to claim 1 above, further combined with Watanabe.8,9

DISCUSSION
REJECTION (1) of claims 1, 2, 6, 8 through 22, 24, and 25
As a preliminary manner, Appellants do not raise distinct arguments
of patentability of the subject matter recited in claims 2, 6, 8 through 22, 24,
and 25. App. Br. 11-31. Accordingly, we select claim 1 as representative
and confine our discussion to this selected claim. Claims 2, 6, 8 through 22,
24, and 25 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that the teachings of Gerdes, Tashiro, and Huang are
not properly combinable under 35 U.S.C. § 103(a). App. Br. 11. Appellants
argue further that even assuming, arguendo, that the teachings of those
references were properly combinable under 35 U.S.C. § 103(a), the
teachings of the three cited references as applied by the Examiner would not
have suggested a fuel system having a coating layer as recited in appealed

5 United States Patent No. 4,719,135, issued to Ernst Gerdes on January 12,
1988.
6 United States Patent No. 3,704,229, issued to Hiro Tashiro on November
28, 1972.
7 United States Patent No. 3,683,044, issued to Ching Yun Huang on August
8, 1972.
8 United States Patent No. 5,474,853, issued to Noriyoshi Watanabe on
December 12, 1995.
9 In the Examiner’s Answer, the Examiner introduced the rejection of
claim 23 as a new ground of rejection. Ans. 3-4.
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claim 1. App. Br. 11-12. Appellants argue further that “even assuming,
arguendo, that the teachings of the applied references would have
established a prima facie case of obviousness, the evidence of record [i.e.,
the showing in Appellants’ Specification and in the Declaration filed under
37 C.F.R. § 1.132, executed by Shinichi Yonehama on August 11, 2008,
filed on September 2, 2008 (“Yonehama Declaration”)] . . . overcomes such
prima facie case of obviousness, and establishes unobviousness of the
presently claimed invention.” App. Br. 12-13.
Thus, the issues presented here are:
(1) Has the Examiner reversibly erred in determining that one of
ordinary skill in the art from the teachings of Gerdes, Huang, and Tashiro
would have been led to a fuel system having a coating layer that:
(a) has the gasoline permeability coefficient recited in appealed
claim 1;
(b) is formed by curing an epoxy resin composition comprising the
particular epoxy resin and the particular epoxy curing agent as recited in
appealed claim 1; and
(c) contains the skeletal structure represented by formula (1) in the
amount as recited in appealed claim 1?
(2) If so, have Appellants demonstrated that the evidence of
secondary considerations relied upon is sufficient to overcome the prima
facie case of obviousness?
On this record, we answer both Questions (1) and (2) in the negative.
Our reasons follow:
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6
There is no dispute that Gerdes discloses a fuel system comprising a
fuel tank molded from high density polyethylene, where the external surface
of said molded fuel tank has a coating layer formed by curing an epoxy
composition comprising a suitable epoxy resin and a suitable amine-
containing curing agent. Compare Ans. 5, citing col. 1, ll. 8-11, and 51-55,
col. 2, ll. 41-45 and 50-55, and col. 3, ll. 36-37, with App. Br. 22-23, citing
col. 2, ll. 1-11, 37-41, and 56-68, and col. 3, ll. 1-35.
According to Gerdes at col. 1, ll. 51-55, the object of its invention is
to “provide a substantially fuel impervious polymeric article for the coating
of a suitable varnish . . .” (emphasis added). Gerdes discloses that it is
desired that the coating layer have a “suitable amount of crosslinking” for
fuel impermeability. Ans. 5, citing Gerdes, col. 3, ll. 36-37. Gerdes, at
col. 4, ll. 58-61, also discloses that the cured epoxy-containing coating layer
“effect[s] a barrier action of 60-80% or more with respect to gasoline and
diesel fuel, as compared with an untreated tank, at standard temperature and
pressure” (emphasis added). As correctly found by the Examiner in the
Answer, p. 5, the Gerdes description of its coating layer having “fuel
impermeability,” i.e., no fuel permeability, is within the gasoline barrier
layer limitation having “a gasoline permeability coefficient
of 2 g·mm/m2·day or less at 60°C and a relative humidity of 60% RH”
(emphasis added), recited in appealed claim 1. Thus, Appellants’ argument
that Gerdes does not teach or suggest a coating layer having the specified
gasoline permeability coefficient recited in appealed claim 1 in the Appeal
Brief, pp. 11 and 24, is not persuasive.
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As recognized by the Examiner, Gerdes does not specifically identify
its suitable epoxy resin as an “epoxy resin having a glycidylamine part” as
recited in appealed claim 1or its suitable amine curing agent as a reaction
product of (A) metaxylylenediamine or paraxylylenediamine and (B) “a
multifunctional compound having at least one acyl group which can form an
amide group part by reacting with polyamine to form an oligomer” as recited
in appealed claim 1. Ans. 5.
However, as acknowledged by Appellants in the Appeal Brief, p. 22,
Gerdes discloses that “suitable epoxy resins are those containing more than
one epoxide group, e.g., 1.5-5, in the monomeric unit. See column 2,
lines 56-58.” Appellants further acknowledged that Gerdes, at col.3,
ll. 1-35, discloses examples of suitable curing agents “for use in forming the
fuel impervious polymeric article of Gerdes, et al.” App. Br. 22-23.
According to Gerdes at col. 3, ll. 1-3 and 20-21, suitable curing agents are
“those structured on amine basis to permit curing to occur at room
temperature at suitable rates . . . preferably 2,2,4-trimethylhexa-
methylenediamine, the xylidenediamines . . . ” (emphasis added). The
Gerdes disclosure of “xylidenediamines” as examples of preferred amine
curing agents appears to contradict Appellants’ argument that there is no
disclosure in Gerdes of using xylylenediamines. App. Br. 23-25.
The Examiner correctly finds that Huang teaches “an epoxy resin
having a glycidylamine part derived from metaxylylenediamine” as recited
in appealed claim 1. Ans. 6, citing col. 2, ll. 1-6. Also see, Example 1 of
Huang at col. 5, ll. 64 to col. 6, ll. 18, which describes a glycidylamine resin,
which is obtained by reacting metaxylylenediamine and epichlorohydrin,
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Application 10/602,637

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having an epoxy equivalent of 123. According to Huang at col. 3, ll. 56-61,
trigylcidyl xylyleneidamine having an epoxy equivalent of 101 has three
glycidyl groups bonded to one molecule of xylylenediamine; while
diglycidyl xylylenediamine, having an epoxy equivalent of 124 has two
glycidyl groups bonded to one molecule of xylylenediamine. Based on the
teachings of Huang, the Huang glycidylamine resin in Example 1, which has
an epoxy equivalent of 123, has from two or more to less than three glycidyl
[i.e., epoxide] groups bonded to one molecule of metaxylylenediamine. The
Huang Example 1 glycidylamine resin is within the Gerdes teachings of
suitable epoxy resins containing more than one epoxide group, e.g., 1.5-5, in
a monomeric unit, as discussed above.
As acknowledged by Appellants in the Appeal Brief, p. 27, Huang, at
col. 4, ll. 37-41, discloses that its glycidylamine resin can be “readily cured
with the aid of curing agents customarily used for curing of glycidyl
compounds, such as aliphatic or aromatic polyamines.” In the Huang
Example 1 at col. 6, l. 49, Huang exemplifies the use of the aromatic
polyamine curing agent, metaxylylenediamine. The use of the
metaxylylenediamine curing agent disclosed by Huang is also within the
Gerdes teachings of suitable amine curing agents, e.g., the preferred
xylidenediamines. As correctly found by the Examiner, the Huang cured
glycidylamine resin has excellent heat resistance. Id., citing col. 5, ll. 57-59.
As acknowledged further by Appellants in the Appeal Brief, id., Huang also
discloses that its glycidylamine resin “has a relatively low viscosity resulting
in a good workability, and gives cured products exhibiting a high heat
temperature distortion. Note column 1, lines 6-9 and 61-67.”
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Further, the Examiner correctly finds that Tashiro teaches an amine
curing agent that is formed by reacting metaxylylenediamine with an acrylic
acid ester. Ans. 5, citing col. 1, ll. 28-31 and 59-63, and col. 2, l. 14. As
acknowledged by Appellants, the Tashiro amine curing agent is the reaction
product of (A) an acrylic or methacrylic acid ester, (B) a slightly water-
soluble or insoluble aliphatic amine having a primary amine radical or an
amine mixture therefore, and (C) a xylylenediamine having a specified
structural formula and having both properties of aliphatic amine and
aromatic amine, and a 70:30 mixture of metaxylylenediamine and
paraxylylenediamine. App.Br. 27, citing col. 1, l. 59, to col. 2, l. 16, and col.
2, ll. 17-49. The Tashiro reactant (C) meets the reactant (A) recited in
appealed claim 1. The Tashiro reactant (A), i.e., acrylic acid ester, is within
the compositional limitation of the reactant (B) recited in appealed claim 1.
According to Tashiro at col. 2, ll. 44-46, 0.8 to 1.0 mole of the
xylylenediamine reactant (C) is added to one mole of ester groups at the
terminals of the reaction product of (B), (C), and (A) “to effect amidation
[i.e., forming an amide].” The Tashiro reactant (A), i.e., (meth)acrylic acid
ester, meets the limitation that the multifunctional compound (B) acyl group
“can form an amide group part by reacting with polyamine to form an
oligomer” recited in appealed claim 1.
Appellants argue that because the Tashiro amine curing agent is
obtained by the three reactants (A), (B), and (C), it is “completely different
from the reaction products of present claim 1 utilized as the curing agent.”
App. Br. 19. However, the language in appealed claim 1, i.e., “a reaction
product of (A) and (B),” does not exclude the additional Tashiro reaction
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component (B). Therefore, the Tashiro amine curing agent is within the
compositional limitations of the reaction product of (A) and (B) recited in
appealed claim 1.
The Tashiro amine curing agent is also within the teachings of both
Gerdes and Huang of using aromatic amine curing agents for curing epoxy
resin compositions. As acknowledged by Appellants in the Appeal Brief,
p. 27, Tashiro discloses that its amine curing agent can be used for epoxy
resin compositions “having room temperature curability.” In addition,
Tashiro teaches that its amine curing agent is less toxic. See Abstract.
Notwithstanding Appellants’ arguments to the contrary, for the
reasons discussed above, Huang provides reason or suggestion for a person
having ordinary skill in the art to use its glycidylamine resin as the suitable
epoxy resin in forming the cured epoxy coating layer in the fuel system
disclosed by Gerdes; and Tashiro provides reason or suggestion for a person
having ordinary skill in the art to use its aromatic amine-containing curing
agent as the suitable amine curing agent of the cured epoxy coating layer
suggested by the combined teachings of Gerdes and Huang. As also
indicated supra, Gerdes teaches that the desired fuel impermeability can be
achieved via a “suitable amount of crosslinking” of the suitable epoxy
coating, inclusive of the glycidylamine resin taught by Huang.
Given the above factual circumstances, we concur with the Examiner
that one of ordinary skill in the art would have been led to a fuel system
having an epoxy cure coating layer having a gasoline permeability of
2 g·mm/m2·day or less at 60°C and a relative humidity of 60% RH formed
from the epoxy resin and the epoxy curing agent recited in appealed claim 1
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in view of the collective teachings of Gerdes, Huang, and Tashiro.
Regarding the amount of the skeletal structure represented by formula (1) in
the epoxy coating recited in appealed claim 1, it would have been reasonably
expected by one of ordinary skill in the art from the suggestion of Gerdes,
Hwang, and Tashiro regarding the use of the particular amounts of the epoxy
resin and the epoxy resin curing agent recited in claim 1or would have
naturally flowed from following the suggestion of Gerdes, Hwang, and
Tashiro regarding the use of particular amounts of the epoxy resin and the
epoxy resin curing agent recited in claim 1. See, e.g., In re Kubin, 561 F.3d
1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly
discusses the [limitation], [applicants’] application itself instruct that [the
limitation] is not an additional requirement imposed by the claims on the
[claimed invention], but rather a property necessarily present in [the claimed
invention]”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact
that appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the difference would otherwise have been obvious.")
Appellants’ arguments in the Appeal Brief, pp. 25-26 and 31, that the
combined teachings of the cited references would not have provided a cured
coating layer comprising 30% by weight or more of the skeletal structure of
formula (1) as recited in appealed claim 1 are not persuasive. According to
Appellants, if the aliphatic amine curing agents in the coating formulation
disclosed in the Gerdes Example are replaced with xylylenediamine, the
resultant cured coating layer would comprise the skeletal structure of
formula (1) in an amount smaller than 17% by weight of the coating layer.
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App. Br. 25-26. However, Appellants’ calculation or determination is not
based on the epoxy coating layer suggested by the collective teachings of
Gerdes, Huang, and Tashiro since it does not take into account the
glycidylamine resin exemplified and suggested by Huang in the amount
suggested by Gerdes.10 Thus, on this record, Appellants have not shown that
a cured coating layer comprising 30% by weight or more of the skeletal
structure of formula (1) as recited in appealed claim 1 would not have been
reasonably expected by one of ordinary skill in the art or would not have
naturally flowed from the suggestion of Gerdes, Hwang, and Tashiro
regarding the use of the particular amounts of the particular epoxy resin and
the particular epoxy resin curing agent recited in claim 1.
We also do not subscribe to Appellants’ position that Huang and
Tashiro are nonanalogous art to the fuel system disclosed by Gerdes and the
fuel system of the present invention. App. Br. 11, 28-31. First, Appellants’
position is flawed since it appears to be based on a wrong legal standard.
Both In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992) and In re Clay,
966 F.2d 656, 659 (Fed. Cir. 1992) require that for a prior art reference to be
analogous, the reference must be "in the field of applicant's endeavor" or, if

10 For example, when the epoxy resin in the Gerdes Example coating
formulation is replaced with the Huang Example 1 glycidylamine resin
obtained by reacting metaxylylenediamine and epichlorohydrin, the
resultant cured coating layer would comprise the skeletal structure of
formula (1) in an amount of 74% by weight [i.e.,
(59+5.67)/(59+5.67+7+7.79+6.38+1.70)]. The amount of 74% by weight is
within the amount range of 30% by weight or more recited in appealed
claim 1.  
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not, the reference must be "reasonably pertinent to the particular problem
with which the inventor was concerned.”
In any event, the disclosures of Huang and Tashiro are deemed
analogous art even under the Clay test since they are reasonably pertinent to
the particular problem with which Gerdes and the inventors are concerned.
In particular, we find that the subject matter described in both Huang and
Tashiro, which is like the subject matter in Gerdes and that claimed by
Appellants, is directed to curing epoxy resin compositions comprising an
epoxy resin and an amine-containing curing agent. For example, as found
by the Examiner, the Huang cured glycidylamine resin is said to have
excellent heat resistance. According to the “Description of the Related Art”
in Appellants’ Specification at p. 1, l. 20 to p. 2, l. 1, [w]hen a fuel vessel is
loaded in automobiles, various performances such as a heat resistance, a
water resistance and an impact resistance are required to the vessel.”
Accordingly, we hold that the teachings of Gerdes, Huang, and
Tashiro are combinable and that combination would have rendered a fuel
system having the curing epoxy compositions recited in appealed claim 1
prima facie obvious within the meaning of 35 U.S.C. § 103(a).
After a prima facie case of obviousness has been established, the
burden shifts to Appellants to come forward with evidence of non-
obviousness. In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990)(en banc).
Appellants’ arguments in the Appeal Brief, pp. 12-13, that the
evidence of secondary considerations, i.e., unexpected advantages of
unexpectedly low gasoline permeability coefficient while having good
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mechanical properties as shown in the Specification examples and the
Yonehama Declaration, would overcome the prima facie case of
obviousness and “establish unobviousness of the presently claimed
invention” are not persuasive.
When an obviousness rejection is based on a combination of the prior
art reference as here, the comparison to show unexpected results need only
be between the closes prior art reference and the claimed invention. In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Chapman,
357 F.2d 418, 422 (CCPA 1966). It need not be between the claimed
invention and the invention suggested by the combined teachings of the prior
art references. Chapman, 357 F.2d at 422. To do so would require
Appellants to compare the claimed invention against itself.
An indirect comparison of the claimed invention against the closest
prior art with respect to unexpected results is also permissible. See, e.g., In
re Boesch, 617 F.2d 272, 276-277 (CCPA 1980) (citing In re Payne, 606
F.2d at 316, and cases cited therein) (“proof of unexpected properties may
be in the form of direct or indirect comparative testing of the claimed
compounds (here, alloys) and the closest prior art”); see also In re Blondel,
499 F.2d 1311, 1317 (CCPA 1974). To that end, Appellants may compare
the claimed invention with something closer than the closest prior art to
indirectly show that the claimed invention imparts unexpected results
relative to the closest prior art. However, in such case, Appellants must
establish that the asserted indirect evidence demonstrates unexpected results
for the claimed invention relative to the closest prior art. See, e.g., In re
Blondel, 499 F.2d at 1317 (“Appellants’ brief goes through a detailed, step-
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by-step analysis of the evidence in support of the conclusion to be drawn
from the indirect comparison,” establishing that the indirect evidence
provided a reliable indication of the performance of the closest claimed and
prior art compounds).
Here, we agree with the Examiner’s conclusion that the showings in
the Yonehama Declaration and the Specification examples relied upon by
Appellants do not directly or indirectly compare the claimed invention
against the closest prior art, Gerdes. As noted by the Appellants in the
Appeal Brief at pp. 25-26, the epoxy coating composition described in the
Gerdes Example comprises not only the epoxy resin [sold under the
trademark EPIKOTE 828] and amine curing agents, but 7 parts by weight of
a flexibilizer which reacts with the epoxy resin to form a different epoxy
resin. See the Gerdes Example at col. 5, ll. 11-13, which uses the flexibilizer
sold under the tradename DESMOCAP 11 by Bayer. Gerdes, at col. 3, ll.
58-62, identifies the DESMOCAP 11 flexibilizer as an isocyanate-
containing prepolymer. According to Gerdes, “a certain flexibility of the
varnish film [cured coating layer] is greatly preferred in order to obtain
suitable elasticity, improved impact strength and shock resistance. For this
purpose, the epoxy resin varnish comprising of the epoxy and amine curing
agent is preferably combined with a suitable flexibilizer.” Col. 3, ll. 52-57.
Gerdes also discloses that it is believed that “the crosslinkable NCO groups
in these prepolymers [of the flexibilizers] react under crosslinking conditions
with the diamine curing agent component.” Col. 3, ll. 64-66. Gerdes further
teaches that greater impermeability than that exemplified in its examples can
be achieved by a suitable amount of a crosslinking as indicated supra. Yet,
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none of the comparative examples in Appellants’ Specification or the
Additional Comparative Examples 1 and 2 in the Yonehama Declaration
exemplify such an epoxy coating product directly or indirectly. In
Appellants’ Comparative example 4 of the Specification, the coating
composition comprises 33 parts by weight of the curing agent F, 50 parts by
weight of an epoxy resin having a glycidylamine part derived from
metaxylylenediamine, and 0.02 parts by weight of an acryl base wetting
agent. Appellants’ Specification, p. 49. In Additional Comparative
Examples 1 and 2 in the Yonehama Declaration, the coating composition
comprises 40 parts by weight of the Tashiro Example 1 curing agent and
60 parts by weight of the EPIKOTE 828 epoxy resin. See the Yonehama
Declaration, p 2.
Moreover, Appellants have not demonstrated that the showings in the
Specification and in the Declaration are reasonably commensurate in scope
with appealed claim 1. In re Grasselli, 713 F.2d 731,743 (Fed. Cir. 1983),
quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971) ("It is well settled 'that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.”) While the showings
are limited to a specific acrylonitrile-butadiene molded rubber tube filled
with a specific coating composition comprising 50 parts by weight of a
specific epoxy resin having a glycidylamine part derived from
metaxylylenediamine, 115 parts by weight of a specific epoxy resin curing
agent obtained by reacting one mole of metaxylilenediamine and 0.67 mole
of methyl acrylate, and 0.02 part by weight of the acryl base wetting agent,
claim 1is not so limited. On this record, Appellants have not evinced that
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these showings are also applicable to the materially different coating
compositions and thermoplastic resin or rubber bodies covered by claim 1.
Accordingly, having fully considered the evidence and arguments
advanced by both the Examiner and Appellants, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the invention recited in claims 1, 2, 6, 8 through 22, 24, and 25 within the
meaning of 35 U.S.C. § 103(a).
REJECTION (2) of claim 23
Claim 23 was rejected over the collective teachings of Gerdes,
Tashiro, Huang, and Watanabe for the reasons discussed in the Examiner’s
Answer, pp. 3-4. Appellants contend that the combined teachings of the
cited references would not have suggested a fuel system having a coating
layer formed by curing an epoxy resin having a glycidylamine part derived
from 1,3-bis(aminomethyle)-cyclohexane, where the coating layer having
epoxy resin also contains the skeletal structure represented by formula (1) in
an amount thereof as recited in appealed claim 23. App. Br. 32-33; Reply
Br.11 5.
Thus, the issue presented here is: Has the Examiner reversibly erred
in determining that the combined teachings of the cited references would
have suggested a fuel system having a cured epoxy resin coating layer
comprising an epoxy resin having a glycidylamine part derived from 1,3-
bis(aminomethyle)-cyclohexane and the skeletal structure represented by
formula (1) in the amount of 30 % by weight or more based on the weight of

11 Reply Brief (“Reply Br.”) filed on January 4, 2010.
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the coating layer, as recited in appealed claim 23? On this record, we
answer the question in the affirmative. Our reasons follow:
According to the Examiner, “Watanabe et al. teaches an epoxy resin
having a glycidylamine part derived from bis(aminomethyl)-cyclohexane
(column 7, lines 38-41) for the purpose of obtaining cured products having
improved rigidity (column 7, line 5).” Ans. 3. The Examiner urges that
because Gerdes teaches that the blending portion of the epoxy resin to the
epoxy resin curing agent falls in the range of 1.2 to 3.0 in terms of the ratio
of active hydrogen to epoxy group, the skeletal structure of formula (1)
would therefore be contained in the coating layer in the amount of 30% by
weight. Ans. 4, citing Gerdes, col. 3, l. 65, to col. 4, l. 2.
However, contrary to the Examiner’s statement, Watanabe, at col. 7,
ll. 5, does not disclose that the particular epoxy resin improves the rigidity of
the cured product. Rather, Watanabe attributes the rigidity improvement to
the use of the particular inorganic filler, wollastonite. Moreover, Watanabe
at col. 7, ll. 38-41, merely discloses that examples of the glycidylamine type
epoxy resin include “an epoxy resin produced from epichlorohydrin and . . .
bis(aminomethyl)cyclohexane.” On this record, the Examiner has not shown
why or how the use of the Watanabe glycidylamine epoxy resin, which does
not appear to have any phenylene groups, i.e., the skeletal structure
represented by formula (1) included in appealed claim 23, as the epoxy resin
in the coating composition of Gerdes as proposed by the Examiner would
have provided an epoxy coating layer comprising the skeletal structure of
formula (1) in an amount of 30% by weight or more based on the weight of
the layer included in appealed claim 23. Indeed, when the Watanabe epoxy
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resin is used as the epoxy resin in the coating composition of Gerdes, as
exemplified in the Gerdes Example, which is reproduced in Appellants’
Appeal Brief, p. 25, the amount of the skeletal structure of formula (1)
would be much less than the minimum 30% by weight based on the weight
of the coating layer recited in appealed claim 1.
Furthermore, the Examiner has failed to show that the cited references
would have prompted a person having ordinary skill in the art to use the
Watanabe resin in the coating composition suggested by the combined
teachings of Gerdes, Huang, and Tashiro. In particular, the Examiner has
not shown that the polyglycidyl xylylenediamine resin suggested by Huang
would be useful with the particular epoxy resin taught by Watanabe. For
example, according to Huang, its polyglycidyl xylylenediamine resin can be
used alone or combined with known glycidyl ethers of polyhydric phenol
having 1,2-epoxy equivalency greater than one, e.g., a commercially
available novolak-type epoxy resin. Col. 5, ll. 21-48. Nor has the Examiner
shown that the Watanabe epoxy resin comprises more than one epoxide
group, e.g., 1.5-5, in the monomeric unit, as required by Gerdes.
Accordingly, we concur with Appellants that the Examiner has not
established a prima facie case of obviousness regarding the subject matter
recited in claim 23 within the meaning of 35 U.S.C. § 103(a).
ORDER
We AFFIRM the REJECTION of claims 1, 2, 6, 8 through 22,
24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over the
combined teachings of Gerdes, Tashiro, and Huang.
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20
We REVERSE the REJECTION of claim 23 under
35 U.S.C. § 103(a) as being unpatentable over the combined teachings
of Gerdes, Tashiro, Huang, and Watanabe.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

sld