Hitachi Metals, Ltd.

Patent Trials and Appeals Board

Jul 31, 2020

14732687 - (D) (P.T.A.B. Jul. 31, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/732,687 06/06/2015 Makoto IWASAKI PHCF-15055US 2760
21254 7590 07/31/2020
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
MATZEK, MATTHEW D
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
07/31/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MAKOTO IWASAKI, HIROSHI OKIKAWA, MITSURU
HASHIMOTO, and KENICHIRO FUJIMOTO
Appeal 2019-005839
Application 14/732,687
Technology Center 1700
Before ERIC B. GRIMES, LINDA M. GAUDETTE, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7–21, and 23. See Final Act. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Hitachi
Metals, Ltd.” Appeal Br. 1.
Appeal 2019-005839
Application 14/732,687

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CLAIMED SUBJECT MATTER
The claims are directed to an insulated wire “used for rolling stocks or
automobile” with characteristics such as flame retardancy. Spec. 1:20–24.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An insulated wire, comprising:
a conductor; and
an insulating cover layer comprising an inner layer on an
outer periphery of the conductor and an outer layer on an outer
periphery of the inner layer,
wherein the inner layer comprises a halogen-free resin
composition comprising 100 parts by mass of a base polymer
(A), not less than 80 parts by mass and not more than 150 parts
by mass of an inorganic filler (B) and a cross-linking agent (C),
wherein the base polymer (A) comprises a first ethylene-
α-olefin copolymer (a1) and a second ethylene-α-olefin
copolymer (a2) at a ratio of 50:50 to 90:10, the first ethylene-α-
olefin copolymer (a1) having a density of not less than 0.864
g/cm3 and not more than 0.890 g/cm3, a melting point of not more
than 90°C and a melt flow rate of not less than 1 g/10min and not
more than 5 g/10min, and the second ethylene-α-olefin
copolymer (a2) having a melting point of not less than 55°C and
not more than 80°C and a melt flow rate of not less than 30
g/10min,
wherein the outer layer is consisted of a halogen-free
flame-retardant resin composition comprising 100 parts by mass
of a base polymer (D) and not less than 100 parts by mass and
not more than 250 parts by mass of a halogen-free flame
retardant (E),
wherein the base polymer (D) is consisted of an ethylene-
vinyl acetate copolymer (d1) including an ethylene-vinyl acetate
copolymer, with a melting point of not less than 70°C and not
more than 100°C, and an acid-modified polyolefin resin (d2)
having a glass-transition temperature of not more than -55°C at
a ratio of 70:30 to 99:1,
wherein the base polymer (D) further comprises not less
than 25 mass% and not more than 50 mass% of a vinyl acetate
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component derived from the ethylene-vinyl acetate copolymer
(d1), and
wherein the halogen-free flame retardant (E) is treated by
a fatty acid.
Claims Appendix (Appeal Br. 11).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Kimura US 2008/0311328 A1 Dec. 18, 2008
Iwasaki US 2014/0138117 A1 May 22, 2014
Oda JP 02001206993 A July 31, 2001

REJECTION
Claims 1–4, 7–21, and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Iwasaki in view of Oda and Kimura. Final Act. 2.
OPINION
Claim 12
In rejecting claim 1, the Examiner finds that Iwasaki teaches an
insulated wire having a conductor and insulator layer that comprises a
halogen-free base polymer A, inorganic filler B, and cross-linking agent C as
recited. Final Act. 2–3. The Examiner finds that Oda teaches a halogen-free
flame-retardant composition having 100 parts by weight ethylene-vinyl
acetate copolymer and unsaturated carboxylic acid modified polyolefin

2 Appellant does not separately argue for the rejection of claims 2–4, 7–21,
and 23. See Appeal Br. 6–9. These claims stand or fall with claim 1. See id.;
see also 37 C.F.R. § 41.37(c)(1)(iv).
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whereas Kimura teaches a halogen-free flame-retardant insulating sheath
having ethylene-vinyl acetate, and acid modified polyolefin as well as
silane- and stearic acid-treated metal hydroxide particles. Id. at 3–4.
Appellant argues that the Examiner reversibly erred here because
“Oda teaches against the use of the magnesium hydroxide, which is
surface-treated with fatty acid metal salt, etc., in the metal hydroxide . . .
heat resistant flame retardant composition.” Appeal Br. 7 (emphases
removed).
As the Examiner points out in the Final Action, Kimura — instead of
Oda — is cited for the teaching of fatty acid-treated metal hydroxide
particles. Final Act. 4, 5. The Examiner also points out that Appellant’s
argument is based on Oda’s treatment using “fatty acid metal salt” instead of
the recited “fatty acid.” Ans. 4–5. Appellant does not address these findings
by the Examiner. See Appeal Br. 7; see also Reply Br. 2–4. No reversible
error has been identified as a result.
Moreover, we note that claim 1 does not limit the recited flame
retardant to one having only magnesium hydroxide. Appellant’s argument is
unpersuasive for the additional reason that it is incommensurate in scope
with the claim language.
With regard to Appellant’s argument that “there is no reasonable
rationale articulated” to combine the references and that the Examiner takes
the prior art teaching out of context for the rejection (Appeal Br. 8),
Appellant does not address the Examiner’s finding that each reference is
“directed to halogen-free flame retardant resin compositions” and that
combining these known components is within the ordinary skill. Ans. 5;
Final Act. 4–5 (stating that a skilled artisan would have known to “cover
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wires with a base polymer consisting of ethylene-vinyl acetate copolymer
and an acid-modified polyolefin resin, and halogen-free flame retardant at
claimed levels” and “to have added the intermediate layer of Kimura either
between the insulating and sheath layers of Iwasaki, or between the
conductor and the insulating layer, in order to provide even greater
insulation to the conducting wire”). We are not persuaded that reversible
error has been identified.
Appellant also argues that the prior art does not “recognize the
problems addressed by the claimed invention.” Appeal Br. 8. Appellant’s
arguments are unelaborated and unsupported by factual evidence. See
Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’
argument is no substitute for evidence.”); see also In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s rejections
. . . .”). We also note that a proper obviousness analysis does not require
prior art references to recognize or even suggest the problem that applicant
attempted to solve. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20
(2007) (“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. . . . [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.”).
Appellant lastly argues that the Examiner engaged in impermissible
hindsight. Appeal Br. 9. “Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
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skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a reconstruction is
proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellant
does not sufficiently explain why the Examiner engaged in impermissible
hindsight, i.e., by pointing out what knowledge in support of the rejection
was “gleaned only from applicant’s disclosure” (id.) and we are not
persuaded by this argument.
CONCLUSION
The Examiner’s rejection is affirmed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–21,
23
103 Iwasaki, Oda, Kimura 1–4, 7–21,
23

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED