Ex Parte Nakashima et al

Patent Trial and Appeal Board

Feb 28, 2019

14234367 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/234,367 01/22/2014
25944 7590 03/04/2019
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Tomonori Nakashima
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.
158574 7631
EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMONORI NAKASHIMA, CHIKARA KA TANO,
and MASATO SAKAMOTO
Appeal2017-002432
Application 14/234,367
Technology Center 1700
Before DONNA M. PRAISS, MICHAEL G. McMANUS,
and MERRELL C. CASHION, Jr., Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-17 of Application 14/234,367
under 35 U.S.C. § 103. Final Act. (Nov. 10, 2015), 3-5. Appellants 1 seek
reversal of the Examiner's decision pursuant to 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b ).
An oral hearing was held February 5, 2019.
For the reasons set forth below, we AFFIRM.
1 The real party in interest is identified as Zeon Corporation. Appeal Br. 1.
Appeal2017-002432
Application 14/234,367
BACKGROUND
The present application generally relates to a nitrile group-containing
highly saturated copolymer rubber composition. Spec. ,r 1. The
composition contains a nitrile group-containing highly saturated copolymer
rubber (A) having a Mooney viscosity of 50 to 200, a nitrile group-
containing highly saturated copolymer rubber (B) having a Mooney
viscosity of 5 to 45, and staple fibers (C) having an average fiber length of
0.1 to 12 mm. Id. ,r 7. The composition is described as being high in tensile
stress, excellent in low heat buildup property, and having excellent
workability. Id. ,r 1.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A nitrile group-containing highly saturated copolymer
rubber composition containing a nitrile group-containing highly
saturated copolymer rubber (A) having a Mooney viscosity
ML 1 +4, 100°C of 50 to 200, a nitrile group-containing highly
saturated copolymer rubber (B) having a Mooney viscosity
MLI +4, 100°C of 5 to 45, and staple fibers (C) having an
average fiber length of 0.1 to 12 mm.
Appeal Br. (Claims App. A-1).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1-17 are rejected under 35 U.S.C. § I03(a) (pre-AIA) as
obvious over Tsukada et al. 2 Final Act. 3--4.
2 US 2007/0197688 Al, published Aug. 23, 2007 ("Tsukada").
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2. Claims 1-17 are rejected under 35 U.S.C. § I03(a) (pre-AIA) as
obvious over Fujii et al. 3 in view ofTsukada. Id. at 4--5.
DISCUSSION
Rejection 1. The Examiner rejected claims 1-17 as obvious over
Tsukada. Id. at 3--4. In support of the rejection, the Examiner determined
that Tsukada teaches a masterbatch composition that comprises a copolymer
having a Mooney viscosity of 5 to 300. Final Act. 3; Tsukada ,r 37. The
Examiner further relied upon Example 1 of Tsukada, which teaches to
combine the masterbatch with a rubber ("Rubber Composition I") including
a commercially available "[a]crylonitrile-butadiene copolymer rubber
hydrogenated product" sold under the name Zetpol 20IOL. Tsukada ,r,r 126-
127. The Examiner found that Zetpol 201 OL has a Mooney viscosity of 57.
Final Act. 3 (citing Fujii's Table 7 (Example 19)). The Examiner
determined that the Zetpol 201 OL of Tsukada falls within the scope of
"copolymer rubber (A)" of claim 1 and that the masterbatch of Tsukada has
a Mooney viscosity (ranging from 5 to 300) that overlaps the claimed range
of 5 to 45 for "copolymer rubber (B)." Final Act. 3. The Examiner further
determined that "[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to have used a copolymer
rubber (B) with the claimed Mooney viscosity because Tsukada discloses an
overlapping range." Id. at 3--4.
Appellants argue that the Examiner has not established that the claims
are prima facie obvious. Appeal Br. 4--6. Appellants assert that Example I
of Tsukada does not teach a masterbatch with the claimed viscosity.
3 US 6,489,385 Bl, issued Dec. 3, 2002 ("Fujii").
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Appellants assert that "in the Examples of Tsukada et al, a combination of
two nitrile group-containing copolymer rubbers is present, either having a
Mooney viscosity of 57 and 78, or 57 and 70. Neither of these combinations
meets the terms of the present claims." Id. at 5. That is, Appellants argue
that Example I does not teach a masterbatch having a viscosity between 5
and 45, therefore, it would not have been obvious to use such a masterbatch.
As noted above, Tsukada discloses a masterbatch having a Mooney
viscosity range from 5 to 300. Tsukada ,r 37. "[A] prior art reference that
discloses a range encompassing a somewhat narrower claimed range is
sufficient to establish a prima facie case of obviousness." In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003) (emphasis omitted). "[T]he existence
of overlapping or encompassing ranges shifts the burden to the applicant to
show that his invention would not have been obvious." Id. Thus, the
Examiner has made out a prima face case that a person of ordinary skill in
the art would have found it obvious to use a masterbatch within the claimed
range.
Appellants additionally argue that Tsukada teaches that "any
ordinarily known rubber can be used as the matrix component rubber" and
that it is mere "happenstance" that the rubber used in some examples has a
Mooney viscosity of 57. Appeal Br. 5. In response, the Examiner
determined that "[ o ]ne does not need a reason to use Tsukada as it is
disclosed, even in non-exemplified embodiments." We adopt the
Examiner's reasoning in this regard. See Final Act. 3--4; Answer 6.
In addition, we note that Tsukada teaches as follows:
The rubber contained as the matrix component in the
rubber composition of the present invention is not particularly
limited insofar as it is ordinarily known rubber, and the rubber
used is preferably a diene rubber containing nitrile group or a
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Application 14/234,367
hydride thereof, for example, acrylonitrilebutadiene
copolymer rubber or a hydride thereof, because such rubber
can exhibit a significant reinforcing effect upon dispersion of
the short fibers. In particular, the hydride is preferably used
where heat aging resistance and weather resistance are required.
Tsukada ,r 105 ( emphasis added). The Zetpol 201 OL is described as an
"[a]crylonitrile-butadiene copolymer rubber hydrogenated product." Id.
,r 127. Thus, Tsukada does give additional guidance regarding the matrix
rubber. See also id. ,r 102 (regarding compatibility between the masterbatch
and matrix rubber).
Accordingly, we determine that Appellants have not shown that
Tsukada gives inadequate guidance for one of ordinary skill to select Zetpol
201 OL copolymer as a component of a rubber composition nor have
Appellants shown that Tsukada teaches away from the use of Zetpol 201 OL
in such context.
Appellants additionally argue that, even if the Examiner had
established a prima facie case of obviousness, "comparative data in the
specification, together with all the evidence of record on patentability, when
considered anew, rebut any such case." Appeal Br. 13.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCP A 197 6). The burden of establishing unexpected results rests on
Appellants. Appellants may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972).
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The comparative data that Appellants rely on is found in Tables 1 and
2 of the Specification. Appeal Br. 6. Table 1 presents workability, tensile
strength, and heat buildup property data for eight different formulations.
The formulations were made with four different high viscosity copolymer
rubbers designated al through a4 (Spec. ,r,r 86-90) and two different low
viscosity copolymer rubbers designated bl and b2 (id. ,r,r 91-92). The
Mooney viscosities for these copolymer rubbers are shown below.
Copolymer Rubber Mooney Viscosity
al 100
a2 75
a3 85
a4 72
bl 25
b2 25
Appellants seek to rely upon workability, tensile strength, and heat buildup
property data to show that the claimed rubber compositions show
unexpected benefits relative to the prior art as indicated by the comparative
examples. Appeal Br. 6-12; Reply Br. 3-5.
Appellants may show that the claimed invention has an unexpected
property over the prior art "with evidence that the claimed invention exhibits
some superior property or advantage that a person of ordinary skill in the
relevant art would find surprising or unexpected." In re Mayne, 104 F.3d
1339, 1343 (Fed. Cir. 1997). An examination for unexpected results is a
factual, evidentiary inquiry. Id. "It is the established rule that objective
evidence of non-obviousness must be commensurate in scope with the
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Application 14/234,367
claims which the evidence is offered to support." Allergan, Inc. v. Apotex
Inc., 754 F.3d 952, 965 (Fed. Cir. 2014) (internal citation omitted).
Here, the Examiner determined that Appellants' viscosity data is not
commensurate in scope with the claims at issue. Answer 7. Claim 1
requires that copolymer rubber (A) have a Mooney viscosity of 50 to 200
and that copolymer rubber (B) have a Mooney viscosity of 5 to 45. The
Specification provides testing data for various copolymer rubber (A)
formulations having viscosities ranging from 72-100. The Specification
further provides testing data for two copolymer rubber (B) formulations each
of which has a viscosity of 25. Spec. ,r,r 91-92. This viscosity data is
inadequate to justify the range of viscosities set forth in claim 1.
Appellants do not supply sufficient data to demonstrate the
importance of the lower or upper boundary of the range of viscosities
claimed for copolymer rubber (A). Similarly, Appellants do not supply
sufficient data to demonstrate the importance of the lower or upper boundary
of the range of viscosities claimed for copolymer rubber (B).
Further, the Examiner points out that claim 1 does not specify relative
quantities of copolymer rubbers and it is not clear that the claimed benefits
would result from every possible ratio of copolymer rubber (A) and (B).
Answer 7 ("independent claim 1 has no amounts required of the components
(A) and (B), and the inventive Ex3 and Ex4 cast doubt on the whether the
full range of O to 100% content of each component (A) and (B) of the claims
shows the unexpected results.").
Appellants additionally argue claims 9 and 10 separately. Appeal Br.
13. Claim 9 depends from claim 1 and further requires that "copolymer
rubber (A) has a Mooney viscosity of 50 to 120." Id. (Claims App. A-2).
Claim 10 depends from claim 1 and further requires that "copolymer rubber
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(A) has a Mooney viscosity of 60 to 110." Although these claims require a
narrower range of viscosities, they are still significantly broader than the test
data supplied in the Specification. Further, such claims underscore the
absence of any showing of criticality for any particular range - the
Appellants have not expressly argued or shown that there are three critical
overlapping ranges (the ranges set forth in claims 1, 9, and 10).
We adopt the analysis of the Examiner regarding the data in the
Specification failing to be commensurate in scope with the claims.
Considering all of the foregoing as a whole, we determine that
Appellants have failed to show error in the Examiner's prima facie case of
obviousness. We further find that Appellants fail to rebut the Examiner's
prima facie case of obviousness.
Rejection 2. The Examiner alternatively rejected claims 1-17 as
obvious over Fujii in view of Tsukada. Final Act. 4--5. In support of the
rejection, the Examiner determined that a person of ordinary skill in the art
would have had reason to combine the staple fibers of Tsukada with the
copolymer compositions of Fujii because Tsukada teaches that staple fibers
may improve the mechanical properties of hydrogenated nitrile butadiene
rubbers. Id. at 5.
Appellants argue that one of skill in the art would not have had reason
to combine the teachings of Fujii and Tsukada as proposed by the Examiner.
Appeal Br. 14--16. Appellants assert that Fujii teaches to combine lengthy
"cord-like" fibers with copolymer rubbers rather than shorter staple fibers as
required by the claims. Id. at 14--15. Specifically, Appellants argue that
Example 36 and Comparative Example 27 concern cord-like fibers. Id.
This argument is not persuasive. First, the Examiner does not rely upon the
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embodiments cited by Appellants for the fibers. Final Act. 4--5. Rather, the
Examiner relies upon the secondary reference, Tsukada, as teaching staple
fibers. Id. at 5 ( citing Tsukada ,r 2). Second, Fujii does, in fact, teach to use
staple fibers. Fujii includes a discussion titled "Composite of Rubber with
Fiber" which, in part, provides that "fibers are used in the form of a staple
fiber, a filament, a cord, a rope, and woven fabrics." Fujii, col. 11 :47--49
( emphasis added).
Appellants additionally argue, on the same basis, that Fujii teaches
away from the use of staple fibers. In view of Fujii's express teaching to use
staple fibers, we find such argument unpersuasive. Even absent such
teaching, Fujii's discussion of Example 36 and Comparative Example 27
( concerning cord-like fibers) would not have amounted to a clear teaching
away from using staple fibers. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) ("mere disclosure of alternative designs does not teach away");
see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F .3d
1314, 1327 (Fed. Cir. 2009) (a reference does not teach away if it does not
"criticize, discredit, or otherwise discourage" investigation into the claimed
invention).
Appellants additionally argue that a person of ordinary skill in the art
would not have had reason to combine the teachings of Fujii and Tsukada
because such person could not have been certain that the desirable results
described in the Specification would be obtained. Appeal Br. 16-20. This
argument is not persuasive. "[ A ]ny need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed." KSR Int 'l Co. v.
Teleflex, Inc., 555 U.S. 398, 1397 (2007). Here, the Examiner has stated that
a person of ordinary skill in the art would have been motivated to combine
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the rubber composition of Fujii with the staple fibers of Tsukada in order to
improve mechanical properties. Appellants have not shown error in this
stated motivation.
Further, "obviousness cannot be avoided simply by a showing of
some degree of unpredictability in the art so long as there was a reasonable
probability of success." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364
(Fed. Cir. 2007). Tsukada teaches that "[i]t is known that by incorporating
short fibers into a rubber composition, the mechanical properties of the
resulting rubber molded product, such as tensile strength and tensile stress,
are improved." Tsukada ,r 2. Further Fujii teaches that its rubber
compositions may be used in conjunction with fibers as follows:
The highly saturated nitrile group-containing copolymer
rubber prepared by the high-shearing-force applying treatment
according to the invention exhibits good processability and good
adhesion to nylon and other fibers, and thus, a composite of the
copolymer rubber with a fiber results, when the rubber is
vulcanized and adhered, in a rubber article having an enhanced
adhesion and mechanical strength. This rubber article is useful
for a belt and a hose. As examples of the reinforcing fiber used,
there can be mentioned natural fiber such as cotton, regenerated
fibers such as rayon, synthetic fibers such as nylon, a polyester
fiber, vinylon and an aromatic polyamide fiber, a steel fiber, a
glass fiber and a carbon fiber. These fibers may be used either
alone or as a combination of at least two thereof. These fibers
are used in the form of a staple fiber, a filament, a cord, a rope,
and woven fabrics such as canvas and a cord fabric. The fibers
are embedded as a tensile reinforcer within the highly saturated
nitrile group-containing copolymer rubber. The kind of fiber
and the shape of the fiber article can be suitably chosen
depending upon the particular use or article thereof, e.g., the
belt or other articles.
Fujii, col. 11:34--54 ( emphasis added). Thus, while there may have been
some degree of unpredictability as to the exact mechanical properties of a
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given rubber composition with a particular fiber, there is ample support in
the record for the Examiner's conclusion that a person of ordinary skill in
the art would have had reason to combine the staple fibers of Tsukada with
the rubber composition of Fujii and would have had a reasonable expectation
of success that the composition's mechanical properties would have been
improved.
Appellants additionally incorporate their "arguments made under
Ground (A), supra to the extent these arguments add to the arguments made
in section B.1." Appeal Br. 20. We construe this to incorporate Appellants'
arguments regarding unexpected results made in regard to Rejection 1.
Appellants additionally briefly set forth arguments that they have shown
unexpected results commensurate in scope with claims 9 and 10. Id. at 20-
21. As we have not found such arguments to be persuasive, as discussed
above, we determine that none of the foregoing shows error in Rejection 2.
Considered as a whole, we determine that the arguments put forward
by Appellants do not show reversible error in the rejection of claims 1-17 as
obvious over Fujii in view of Tsukada.
In addition to the foregoing, we adopt the findings and analysis of the
Examiner as set forth in the Final Office Action and the Examiner's Answer.
Any argument made by Appellants but not addressed in the foregoing is
deemed not to comply with 37 C.F.R. § 4I.37(c)(l)(iv).
CONCLUSION
The rejections of all claims are affirmed.
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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
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