Ex Parte Miyauchi et al

Patent Trial and Appeal Board

Jun 22, 2016

12599151 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/599,151 11/06/2009 Toshiaki Miyauchi
22850 7590 06/24/2016
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.
349885USOPCT 7301
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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 TOSHIAKI MIY AU CHI and Y ASUSHI ABE
Appeal2014-005315
Application 12/599,151
Technology Center 1700
Before CHUNG K. PAK, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3-7, and 11-24. A hearing was held on June 14,
2016, a transcript of which will be entered into the electronic record in due
course. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We cite to the Specification ("Spec.") filed Nov. 6, 2009; Final Office
Action ("Final Act.") mailed May 9, 2013; Examiner's Answer ("Ans.");
and Appellant's Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellants identify Denki Kagaku Kogyo Kabushiki Kaisha as the real
party in interest. App. Br. 1.
Appeal2014-005315
Application 12/599,151
BACKGROUND
The subject matter involved in this appeal relates to heat resistant
vulcanized rubber. Spec 1. Independent claims 1 and 16 illustrate the
subject matter on appeal and are reproduced from the Claims Appendix of
the Appeal Brief as follows:
1: A vulcanized rubber, comprising a vulcanized acrylic
rubber composition that comprises
100 parts by mass of a carboxyl group-containing acrylic
rubber,
from 10 to 100 parts by mass of carbon black,
2,2-bis[ 4-( 4-aminophenoxy)phenyl]propane,
from 0.1 to 15 parts by mass of a primary antioxidant that
comprises at least one member selected from the group
consisting of an amine antioxidant and a phenolic antioxidant,
and
from 0.1 to 15 parts by mass of a secondary antioxidant
that comprises at least one member selected from the group
consisting of a phosphon1s antioxidant and a sulfur antioxidant,
wherein the vulcanized rubber has an elongation at break of at
least 100% in a tensile test after exposure at 200°C for 7 days in
accordance with JIS K6257,
wherein the carbon black comprises a carbon black
having an average laminated height Le of at least 2 nm in the C-
axis direction of a laminar plane in its crystallite.
16: A vulcanized rubber, comprising a vulcanized acrylic
rubber composition that comprises
100 parts by mass of a carboxyl group-containing acrylic
rubber,
from 10 to 1 00 parts by mass of carbon black,
from 0.1 to 15 parts by mass of at least one first
antioxidant that comprises 4,4'-a,a-
dimethylbenzyldiphenylamine, and
from 0.1 to 15 parts by mass of at least one second
antioxidant that comprises at least one member selected from
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Application 12/599,151
the group consisting of tris(nonylphenyl) phosphite, and
triisodecyl phosphite,
2,2-bis[ 4-( 4-aminophenoxy )phenyl ]propane, and
a vulcanization accelerator, wherein
the vulcanized rubber has an elongation at break of at
least 155% in a tensile test after exposure at 200°C for 7 days in
accordance with JIS K6257,
wherein the carbon black comprises a carbon black
having an average laminated height LC of at least 2 nm in the
C-axis direction of a laminar plane in its crystallite.
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 1, 3-7, and 11-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanba, 4 W atanabe5 and Hagiwara. 6
II. Claims 11 and 16-21 stand rejected under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
DISCUSSION
I
With regard to Rejection I, Appellants argue claims 1, 3-7 and 11-24
as a group. App. Br. 5-1 O; Reply Br. 2-6. Although Appellants address
claim 16 under a separate heading and point out the antioxidant recitations in
that claim, Appellants solely rely on the argument present in connection with
claim 1 as their argument for patentability of claim 16. App. Br. 9. In
3 Ans. 2-11; Final Act. 2-11.
4 US 2004/0266922 Al, published Dec. 30, 2004 ("Kanba").
5 JP2002-302576A, published Oct. 18, 2002 ("Watanabe"), as translated.
6 JP2000-248139A, published Sep. 12, 2000 ("Hagiwara"), as translated.
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Appeal2014-005315
Application 12/599,151
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we limit our discussion to
representative claim 1 and decide the propriety of Rejection I based on the
representative claim alone.
Appellants do not contest the Examiner's determination that the
combined teachings of Kanba, Watanabe and Hagiwara would have led one
of ordinary skill in the art to formulate a vulcanized rubber comprising the
same ingredients, in the same relative amounts, as are recited in claim 1. 7
Compare Ans. 9 ("[T]he resulting composition would have met all of the
composition limitations claimed in claims 1, 3-5, 16, 18 and 19.") with App.
Br. 5-1 O; Reply Br. 2-6. Instead, Appellants argue that "there is no
extrinsic evidence of record that the claimed elongation at break values ...
would necessarily be present" in the prior art composition. App. Br. 7.
The Examiner determined that it was reasonable to presume that the
claimed elongation at break property would flow naturally from formulating
the vulcanized rubber composition in accordance with the teachings of the
cited prior art, given that the so-formulated rubber would have the same
compositional makeup as that which is recited in claim 1. Ans. 10. On this
record, Appellants do not point us to any persuasive evidence or technical
reasoning to rebut the Examiner's determination in that regard. Appellants'
reliance on Comparative Example 5 in the Specification to rebut the
7 Appellants also acknowledge that it was known to add specific
combinations of antioxidants or carbon black to increase heat resistance of
vulcanized rubber for use in high temperature environments, such as the
engine bay of an automobile, App. Br. 4-5, and specifically identify
Watanabe and Hagiwara as examples in the prior art which disclose such use
of antioxidants and carbon black, respectively, to improve heat resistance of
a rubber hose. Spec. 1.
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Appeal2014-005315
Application 12/599,151
Examiner's determination, App. Br. 7; Reply Br. 3--4, is unavailing. That
Comparative Example included less primary antioxidant (0.05 parts per 100
parts acrylic rubber) than is claimed and taught in the cited prior art (0.1 to
15 parts per 100 parts acrylic rubber).
Neither do Appellants dispute the Examiner's findings that: "Kanba,
Watanabe and Hagiwara are all directed towards heat resistant, vulcanized,
acrylic rubber compositions," and that it would have been obvious to
provide the combination of antioxidants taught by Watanabe and the carbon
black material taught by Hagiwara "to increase the heat resistance of the
composition." Ans. 8-9 (emphasis added). To that end, Hagiwara teaches
that "[h ]eat resistance can be experimentally evaluated based on JIS K6257,"
such that maximizing the elongation at break after exposure for seven days
at 200°C in accordance with that test is taken as a measure of the material's
heat resistance. See Hagiwara ,-i,-i 19, 24. We find these teachings in the
cited prior art sufficient to support the Examiner's determination that the
claimed vulcanized rubber, exhibiting the recited elongation at break value
as measured in accordance with JIS K6257, would have been obvious to one
skilled in the art. See also In re Applied Materials, Inc., 692 F.3d 1289,
1295 (Fed. Cir. 2012) ("[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.") (quoting In re Aller, 220 F.2d
454, 456 (CCPA 1955)).
For the foregoing reasons, Appellants have not persuaded us of
reversible error in the Examiner's obviousness determination. Accordingly,
we sustain Rejection I.
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Application 12/599,151
II
The Examiner determined that the specification "does not reasonably
provide enablement for all carboxyl group containing acrylic rubber
compositions that exhibit an elongation at break of at least 155%." Ans. 3.
Appellants contend that the specification provides sufficient disclosure such
that "the experimentation needed by those of ordinary skill ... would not be
undue." App. Br. 12.
The enablement requirement under 35 U.S.C. § 112, first paragraph, is
met where the specification allows those of ordinary skill to make and use
the claimed invention without undue experimentation. In re Wright, 999
F.2d 1557, 1561 (Fed. Cir. 1993). Relevant factors include "(l) the quantity
of experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims." In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner principally relied on the examples described in Tables
1-3 of the Specification, and the fact that some of the described examples
did not exhibit the claimed elongation at break of at least 155%, as evidence
of unpredictability. Ans. 4-6. However, the existence of non-working
embodiments alone is not fatal to enablement, as long as the experimentation
involved in identifying working embodiments is not undue. Here,
Appellants' disclose a list of candidate monomers, including preferred
monomers, for preparing the acrylic rubber component of the claimed
composition, Spec. 3--4, along with a description of exemplary conditions
and steps for polymerization and compounding with the claimed
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Application 12/599,151
antioxidants and carbon black ingredients, Spec. 11-12. Appellants also
disclose 13 specific working examples that exhibit the claimed elongation at
break property. Id. at 12-13, Examples 1, 2, 4-14.
"When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
specification of the application. Wright, 999 F.2d at 1561-62. On this
record, we agree with Appellants' argument, App. Br. 14; Reply Br. 8, that
the Examiner did not satisfy that initial burden by establishing that the
experimentation necessary to practice the full scope of the claimed invention
would have been other than routine.
Accordingly, we do not sustain Rejection II.
DECISION
The Examiner's decision rejecting claims 1, 3-7, and 11-24 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended 37 C.F.R. § 1.136.
AFFIRMED
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