Ex Parte Noguchi et al

Patent Trial and Appeal Board

Mar 27, 2013

11822671 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TORU NOGUCHI, KAZUHITO KAWATA,
TAKASHI WANIBUCHI and
KOICHI ARITA
____________________

Appeal 2011-006327
Application 11/822,671
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, HYUN J. JUNG, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3-6, 8-11, 13, and 14. We have jurisdiction under 35 U.S.C. § 6(b). A
hearing was held on March 7, 2013.
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the appealed
subject matter.
1. A piston seal used for a caliper body
for a disc brake,
wherein the piston seal fluid-tightly and
slidably maintains a piston in a cylinder bore, the
piston sliding inside the cylinder bore, and the
piston is rolled back,
wherein the piston seal is formed of an
ethylene propylene rubber composition,
comprising at least 100 parts carbon black per
hundred parts rubber, that does not use a process
oil in a manufacturing process of the ethylene
propylene rubber composition.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:

Kehr US 3,803,067 Apr. 9, 1974
Sullivan US 5,076,593 Dec. 31, 1991
Koizumi US 5,252,659 Oct. 12, 1993
Chino US 6,642,291 B2 Nov. 4, 2003
Honma JP 55-69636 May 26, 1980

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REJECTIONS
Appellants seek our review of the following rejections.
1. Claims 1, 5, 6, 10, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sullivan and Honma.
2. Claims 3 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sullivan, Honma, and Chino.
3. Claims 4 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sullivan, Honma, and Koizumi.

ANALYSIS
Appellants argue that Honma teaches away from using the “ethylene
propylene rubber composition” recited in claim 1 (App. Br. 8-10; Reply Br.
6-9), noting that Honma states “[t]he use of propylene as the α-olefin is
excluded according to the present invention since its strength is inadequate”
(Honma, p. 7, ll. 2-4).1 The Examiner counters that Honma does not teach
away from the claimed invention because Honma discloses that its rubber
compound may include some EPDM (ethylene-propylene diene monomer)
or EPM (ethylene-propylene monomer) and “[t]hus it appears that Honma et
al. do not teach away from the use of ethylene-propylene in the rubber
composition.” Ans. 7-8 (citing Honma, p. 13, ll. 20-23). Appellants respond
that Honma discloses using EPDM and EPM only in quantities that would
not compromise the rubber compound’s strength, hardness and rubber-like
properties. Reply Br. 8-9. Appellants argue that a rubber composition

1 All citations to Honma refer to the translation of Honma entered in the
record on December 21, 2010 and/or to the English Abstract of Honma
entered in the record on November 2, 2009.
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including EPDM and EPM in such quantities would not meet the claim
language “ethylene propylene rubber composition.” Id. at 8.
Because Honma explicitly discloses that a compound according to its
disclosure may include EPDM or EPM, we agree with the Examiner that
Honma does not teach away from using some EPDM or EPM in the rubber
composition. This leaves us to consider whether the claim language
“formed of an ethylene propylene rubber composition” encompasses rubber
compositions that include some EPDM or EPM.
The Specification states that a “piston seal 8 is formed of a rubber
composition in which 100 parts by weight or more of carbon black is added
to 100 parts by weight of ethylene propylene rubber.” Spec., p. 7, ll. 1-3.
The Specification indicates that EPDM and EPM constitute ethylene
propylene rubber, stating that “[a]s the ethylene propylene rubber (EPR), an
ethylene-propylene-diene copolymer (EPDM), an ethylene-propylene
copolymer (EPM), or the like may be used.” Spec., p. 7, ll. 13-14.
Additionally, the Specification indicates that Appellants’ rubber composition
may include ingredients other than ethylene propylene rubber. See, e.g.,
Spec., p. 7, ll. 15-19; p. 12, ll. 2-6, 12-15, and 22-25. These portions of the
Specification suggest that the claim language encompasses a rubber
compound that includes some EPDM and/or EPM in combination with other
components, as disclosed by Honma. Appellants do not cite any
countervailing evidence in support of their position that the claim language
requires ethylene propylene rubber in quantities greater than the amounts of
EPDM or EPM Honma suggests using. Accordingly, Appellants’ argument
that Honma teaches away from the claimed invention does not apprise us of
error in the rejection.
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Appellants also assert that the Examiner has not provided adequate
reason for combining the teachings of the references, and that a person of
ordinary skill in the art would not have had a reasonable expectation of
successfully using the compound of Honma in a piston seal for a disc brake.
App. Br. 10-14; Reply Br. 2-5. Appellants advance various arguments in
support of these assertions.
Appellants take issue with the Examiner’s determination that a person
of ordinary skill in the art would have had reason to use Honma’s rubber
compound to make Sullivan’s piston seal because Honma discloses its
compound has “good deformation restoration and mechanical strength.”
Ans. 5; App. Br. 13. Appellants argue that “[s]uch a general statement is not
sufficient to provide a motivation to combine the teachings of Sullivan and
Honma on the basis that good deformation restoration and mechanical
strength are properties desirable in all rubber materials in general.” App. Br.
13. We disagree. As noted by the Examiner, Sullivan does not disclose the
specific material of its piston seal. Ans. 4. Thus a person of ordinary skill in
the art endeavoring to employ Sullivan’s system would have to choose some
material for the piston seal. Honma’s disclosure of a rubber compound that
has good deformation restoration and mechanical strength would have given
a person of ordinary skill in the art ample reason to select that rubber
compound to make Sullivan’s piston seal.
Appellants also argue that the cited references do not render claim 1
obvious because Honma does not disclose that its rubber compound solves
the problem Appellants endeavored to solve: stabilizing the amount of
rollback provided by the piston seal over a wide range of temperatures.
App. Br. 12 and 13-14. This argument rests on the incorrect assumption that
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a person of ordinary skill in the art would look only to those references in
the prior art directed to the same problem. The fact that Honma does not
address the specific problem Appellants endeavored to solve does not negate
the fact that Honma discloses beneficial properties of its rubber compound
that would have provided ample reason to use it for Sullivan’s piston seal.
Asserting that Honma focuses on providing a rubber compound for
exterior trim parts of a vehicle, Appellants further argue that a person of
ordinary skill in the art would not have had any reason to use Honma’s
rubber compound for Sullivan’s seal because a person of ordinary skill in the
art would not have expected that Honma’s rubber composition could seal
and roll back a sliding brake piston while withstanding temperatures up to
150° C experienced by brake piston seals. App. Br. 10-14. The Examiner
responds that Honma discloses using its rubber compound in other fields,
specifically in the manufacture of gaskets, which serve a sealing function
like brake piston seals. Ans. 8 (citing Honma, p. 15, ll. 13-14). And the
Examiner indicates that a person of ordinary skill in the art would have
reasonably expected that the thermal properties of Honma’s rubber
compound could be tailored to the specific heat ranges experienced by piston
seals of brakes. See Ans. 8. The Examiner also notes that Honma suggests
its rubber compound provides good elasticity and restorative force when
deformed. Id.
Consistent with the Examiner’s findings, Honma discloses a rubber
compound meeting Appellants’ claims, noting that the compound has a
number of outstanding properties that commend its use in a range of
applications, including sealing applications. Honma indicates that its rubber
compound “is outstanding in impact and embrittlement resistance, restitutive
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force with respect to deformation caused by external forces, weatherability,
and heat resistance.” Honma, p. 6, ll. 4-7.
We agree with the Examiner that Honma’s unqualified suggestion that
its rubber compound works for gaskets would have suggested to a person of
ordinary skill in the art that the compound would likewise work for other
sealing components, including brake piston seals. We also agree with the
Examiner that Honma’s indication of outstanding toughness and elasticity
would suggest to a person of ordinary skill in the art that the compound
would work well to seal a sliding component like a brake piston. Aside from
toughness and elasticity, Appellants identify no property that a compound
needs to successfully seal a sliding brake piston. See, e.g., App. Br. 12-13
(“For example, a piston seal is required to have sufficient toughness for
securely sealing brake fluid and elasticity for returning a piston that has been
moved forward.”). Additionally, given Honma’s disclosure that its
compound has outstanding heat resistance, we agree with the Examiner’s
finding that a person of ordinary skill in the art would have reasonably
expected that compound would endure the temperatures experienced by a
piston seal in a brake caliper.
Accordingly, the Examiner has supported the finding that a person of
ordinary skill in the art would have had a reasonable expectation of success
sufficient to establish a prima facie case of obviousness. Ans. 9; see also In
re O’Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988) (“Obviousness does
not require absolute predictability of success . . . . [A]ll that is required is a
reasonable expectation of success.”). Appellants offer attorney argument but
no evidence to rebut the Examiner’s prima facie case. Specifically,
Appellants offer various arguments suggesting that a person of ordinary skill
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in the art would glean from Honma that its compound has properties only
good enough for automobile exterior trim parts and certain gaskets other
than brake piston seals, but Appellants do not cite any evidence supporting
this position. See, e.g., Reply Br. 5. Accordingly, on the record before us,
we cannot agree with Appellants’ assertions that a person of ordinary skill in
the art would not have had a reasonable expectation of success in combining
Honma with Sullivan.
Appellants also argue that it would not have been obvious in view of
Honma to use zero process oil in combination with carbon black2, as
required by claim 1. App. Br. 17-20; Reply Br. 9-10. The Examiner finds
Honma discloses that omitting process oil may provide a rubber compound
having high strength, high hardness, and a rubbery property, while also
providing good machinability. Ans. 8-9 (citing Honma, p. 10, ll. 5-14).
Appellants do not dispute this finding.
Instead, Appellants argue that Honma suggests using process oil
whenever using any carbon black. App. Br. 19-20; Reply Br. 9. Appellants
do not point to any portion of Honma that suggests any reason that process
oil should accompany carbon black. Without more, Appellants’ observation
that Honma discloses a few examples that either omit process oil and carbon
black or include process oil and carbon black does not suggest that process
oil necessarily should accompany carbon black. See Reply Br. 9-10.

2 Appellants sometimes use the terms “carbon black” and “filler”
interchangeably, as Honma discloses carbon black as an example of a
preferred type of filler used in its compound. Honma, p. 11, ll. 4-7; see also
App. Br. 19; Reply Br. 9. Similarly, Appellants sometimes use the terms
“process oil” and “softening agent” interchangeably, as Honma discloses
process oil as an example of a type of softening agent used in its compound.
Honma, p. 10, ll. 15-17; see also Reply Br. 9.
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As noted by Appellants, Honma discloses that its compound satisfies
the relationships 0 < X + Y < 300 and 0 < X < 75, where X is parts by
weight of process oil (i.e., softening agent) and Y is parts by weight of
carbon black (i.e., filler). Honma, p. 5, ll. 15-22; Reply Br. 9. Contrary to
Appellants’ arguments, however, these relationships are not ratios (Reply
Br. 9), but ranges for the amounts of softening agent and filler (Honma, p. 5,
ll. 6-11). See Reply Br. at 9. These ranges do not suggest any
proportionality or that process oil necessarily accompanies carbon black.
Indeed, taken in conjunction with Honma’s disclosure that its compound
includes 0 to 300 parts by weight of carbon black (i.e., filler) (Honma,
English Abstr.), Honma’s disclosure that the total of carbon black and
process oil cannot exceed 300 dictates that when 300 parts by weight of
carbon black are used, zero process oil is used. Accordingly, we cannot
agree with Appellants that Honma suggests using process oil whenever
using any carbon black.
Appellants further argue that Honma’s disclosure of 0-300 parts
carbon black includes far too many possible values to make it obvious to a
person of ordinary skill in the art to use an amount of carbon black meeting
Appellants’ claims. Reply Br. 9. This argument overlooks the fact that the
majority of the values in Honma’s disclosed range of 0-300 fall within
Appellants’ claimed range of at least 100. Given that most of the possible
values of carbon black disclosed by Honma meet Appellants’ claim, we
cannot agree with Appellants that the large number of disclosed values
would have prevented a person of ordinary skill in the art from selecting a
value meeting Appellants’ claim. Indeed, since Honma indicates that the
quantities of carbon black and process oil are result-effective variables when
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making its rubber compound (see e.g., Honma, p. 4, l. 10-p. 6, l. 13; p. 9, l.
21-p. 10, l. 14), the Examiner correctly determined that it would have been
obvious to optimize the amounts of these components for the application at
hand, including for use in a brake piston seal like Sullivan’s (Ans. 5).
Appellants also argue that the Examiner has not considered
Appellants’ claimed invention as a whole because the Examiner has not
considered “the source of the problem discovered by the inventors of the
claimed subject matter.” App. Br. 16. As evidentiary support for this
argument, Appellants cite only page 2, lines 4-12 and 15-19 of the
Specification. While this portion of the Specification discusses a problem, it
does not state that the inventors discovered the problem or that others did not
know of the problem prior to the inventors. This does not support
Appellants’ position that discovery of the source of the problem patentably
distinguishes the claimed invention over the prior art. See In re Wiseman,
569 F.2d 1019, 1022-1023 (CCPA 1979) (Attorney arguments for
nonobviousness based on discovery of a problem were not supported by a
portion of the Specification that discussed the problem but did not clearly
and persuasively assert that the problem was the discovery of the
appellants).
For the foregoing reasons, Appellants’ arguments do not apprise us of
error in the rejection of claims 1, 5, 6, 10, 11, 13, and 14 as obvious over
Sullivan and Honma.
Regarding the rejections of claims 3, 4, 8, and 9, Appellants state that
Chino and Koizumi, do not cure the deficiencies of Sullivan and Honma
with respect to claims 1, 13, and 14. App. Br. 15. This observation does not
apprise us of error in the rejection because Appellants have not apprised us
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of any deficiencies in Sullivan and Honma with respect to claims 1, 13, and
14.

DECISION
We affirm the Examiner’s decision regarding claims 1, 3-6, 8-11, 13,
and 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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