Ex Parte Nakanishi et al

Patent Trial and Appeal Board

Nov 20, 2014

10527671 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TETSUO NAKANISHI, KOJI SAKUTA, and
KIYOMI TACHIBANA
__________

Appeal 2012-001109
Application 10/527,671
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
ERIC B. GRIMES, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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Application 10/527,671

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STATEMENT OF CASE
The following claim is representative.
2. An organopolysiloxane polymer having a glycerol derivative
which can swell up by containing at least its own weight of a liquid oil
selected from the group consisting of hydrocarbon oil, ester oil, natural
animal and vegetable oils, semi-synthetic oil, and silicone oil selected from
the group consisting of dimethylpolysiloxane, methylphenylpolysiloxane,
methylhydrogenpolysiloxane and dimethylsiloxane-methylphenyl siloxane
copolymer, cyclosiloxanes, branched siloxanes, higher alkoxy-modified
silicones, alkyl-modified silicones and amino-modified silicones, wherein
fluorinated silicones are excluded,
obtained by the addition polymerization of an
organohydrogenpolysiloxane expressed by the following general formula
R1dHeSiO(4-d-e)/2, with a glycerol derivative having alkenyl groups expressed
by at least one of the following general formulae,

wherein,
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R1 may be identical or different and is a substituted or unsubstituted
monovalent hydrocarbon group having 1-30 carbon atoms which does not
contain an alkenyl group,
R3 is an alkenyl group having 2-20 carbon atoms,
d and e are respectively defined by:
1.0≤d≤2.3, 0.001≤e≤1.0, l.5≤d+e≤2.6, and
s, t, u and v are respectively integers in the range 1-20;
and wherein, the organopolysiloxane polymer has a three-dimensional
cross-linked structure.

Cited References

Shioya et al. US 5,144,054 Sept. 1, 1992
Sakuta ’115 US 6,747,115 B2 June 8, 2004
Harai et al. EP 0 350 951 A2 Jan. 17, 1990
Sakuta ’375 WO 01/92375 A1 Dec. 6, 2001

Grounds of Rejection
Claims 2, 37, and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shioya and Sakuta ’375 [using the equivalent US Patent
No. 6,747,115 for translation], and Harai.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages
5–9.

Discussion
ISSUE
The issue is: Does the cited prior art support the Examiner’s finding
that the claimed subject matter is obvious? Does the Examiner provide an
adequate reason or motivation to combine Harai with Shioya and Sakuta?
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PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office). The Board “determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Under § 103, “there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citation omitted).

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ANALYSIS
There has been both a restriction requirement and election of species
in this application. (Ans. 9.) Appellants have elected “ingredient
(R1dHeSiO(4-d-e/2) and polyglycerol diallylether . . . as the two components of
the polymer elected.” (Id.)
We do not find that the Examiner has provided evidence to support a
prima facie case of obviousness. Both of the Shioya and Sakuta references
address siloxane derivatives for use in cosmetic preparations. (Shioya,
abstract; Sakuta ’115, col. 1, ll. 5–12.) Harai discloses a silicone rubber
adhesive with excellent heat resistance, durability and weatherproofness.
(Harai, page 2, ll. 1–7.)
As to the reason or motivation to combine the cited references, the
Examiner reasons that, “[t]he person of ordinary skill in the art would be
motivated to combine the teachings [of Shioya, Sakuta and Harai] because
imparting tack (adhesiveness) to the organohydrogen polysiloxane allows
these polymers to be useful emulsifiers with excellent emulsification
stability with good cosmetic adhesiveness.” (Ans. 18.)
Appellants respond to this argument, as follows:
[T]he Office Action alleges that the reason for the alleged
combination is that one of ordinary skill in the art would expect
“good cosmetic adhesiveness.” . . . However, there is no
support for such an allegation. Harai et al teaches a silicone
rubber adhesive agent and, therefore, it is completely different
from the organopolysiloxane polymer of the present application
used for cosmetic material in the way of using. As such, one of
ordinary skill in the art wound [sic] not consider “tack”
(adhesiveness) required in cosmetic materials which is applied
on the human face, for example, and “tack” (adhesiveness)
required in a silicone rubber adhesive agent which bonds
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various physical objects to each other as having the same
requisite qualities.
In addition, it is unreasonable in this art to allege that
components added for bonding physical objects to each other
are useful for cosmetic material applied to human faces.

(App. Br. 6.) We find that Appellants have the better argument. The
Examiner has failed to provide evidence that one of ordinary skill in the art
would have considered that a diallyl ether compound added to the silicone
rubber adhesive of Harai to improve durability of adhesion (page 4, ll. 15–
23) would be appropriate for cosmetic applications. Thus, the Examiner has
failed to provide or articulate reasoning with some rational underpinning to
combine the cited references and support the legal conclusion of
obviousness in the present case. The obviousness rejection is reversed.

CONCLUSION OF LAW
The cited references do not support the Examiner’s obviousness
rejection.

REVERSED

cdc