KOMATSUBARA, Hiroaki et al.

Patent Trials and Appeals Board

Jan 17, 2020

15124752 - (D) (P.T.A.B. Jan. 17, 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.
15/124,752 09/09/2016 Hiroaki KOMATSUBARA P50937 2449
7055 7590 01/17/2020
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
WEDDLE, ALEXANDER MARION
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
01/17/2020 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):
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greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROAKI KOMATSUBARA, MASANAO KOBAYASHI,
TOSHIAKI SHIMIZU, IKUO YAMAUCHI, TAKASHI MORIKAWA,
EIJI TABATA, FUMIO KAWAHARA, and YUZO MATSUDA
Appeal 2019-004309
Application 15/124,752
Technology Center 1700
Before JEFFREY W. ABRAHAM, ELIZABETH M. ROESEL, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
ROESEL, 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, 2, 5–8, and 11–13. 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(a). Appellant identifies the real parties in interest as AOKI
SCIENCE INSTITUTE CO., LTD of Tokyo, Japan, TOYOTA JIDOSHA
KABUSHIKI KAISHA of Aichi, Japan, and MEC INTERNATIONAL
CO., LTD. of Aichi, Japan. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to an oil-based release agent and a method of
applying the release agent to a metal die. Appeal Br. 19, 21 (claims 1
and 12).2 According to the Specification, the release agent and method are
useful for die casting of aluminum, magnesium, zinc, or other non-ferrous
metal to make automobile parts or machine parts. Spec. ¶¶ 1–3. Claim 1 is
illustrative of the claimed subject matter and is reproduced below:
1. An oil-based release agent comprising
a petroleum-based hydrocarbon solvent (a) and
an adhesive (b),
wherein adhesive (b) is dimethyl polysiloxane having a
weight average molecular weight of 100,000 or more, and
wherein the release agent contains 0% water.
Appeal Br. 19 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Morro US 4,059,534 Nov. 22, 1977
Komatsubara US 2011/0250363 A1 Oct. 13, 2011
REJECTION
The Examiner maintains the rejection of claims 1, 2, 5–8, and 11–13
under 35 U.S.C. § 103 as unpatentable over Komatsubara and Morro.

2 Our citations are to the unnumbered pages of the Appeal Brief, consistent
with the Table of Contents.
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OPINION
Claim 1
The Examiner finds that Komatsubara discloses an oil-based release
agent and teaches or suggests all limitations of claim 1, except for the
molecular weight limitation. Final Act. 3. The Examiner finds that Morro
teaches that molecular weight of dimethyl polysiloxane is a result effective
variable for viscosity, and that it would have been obvious to modify the
composition of Komatsubara by choosing an adhesive with the recited
molecular weight through routine optimization. Id.
Appellant argues that Komatsubara teaches away from a water-free
release agent and that the Examiner’s rejection requires selection of an
incomplete portion of Komatsubara’s release agent. Appeal Br. 8–12.
After considering Appellant’s brief,3 the Examiner’s Answer, the
cited teachings of the references, and the record as a whole, we determine
that a preponderance of the evidence supports the Examiner’s rejection of
claim 1 as obvious over Komatsubara and Morro.
Appellant does not challenge the Examiner’s findings regarding
Morro’s disclosure of the molecular weight limitation or modification of
Komatsubara in view of Morro. Instead, Appellant’s arguments focus on the
limitation of claim 1 that recites “the release agent contains 0% water.”
Appeal Br. 8–12, 19.
In the Answer, the Examiner provides the following response to
Appellant’s arguments:
To the extent that [Komatsubara] suggest other agents which,
like water, modify electrical resistance for electrostatic

3 Appellant submitted no reply brief.
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spraying, it would have been obvious to one of ordinary skill in
the art at the time of invention to use these other agents and
omit water. Appellant’s argument that [Komatsubara] teach[es]
away from omitting water altogether (Appeal Brief, p. 9), . . . is
correct to the extent that it suggests using water instead of
other effective agents for modifying electric resistance. That
is, although one would not have modified [Komatsubara] by
omitting every possible component to modify electrical
resistance (in this case water), [Komatsubara] also suggests
that one could use other components instead of water for the
same purpose. [Komatsubara] teaches that, although not
preferred, alcohol or ammonium salt can be used as an
electrostatic assistant agent at a mold casting site.
[Komatsubara ¶ 16.] Thus, [Komatsubara] suggests that it
would have been obvious to modify the release agent to be
water-free by substituting in other agents like alcohol or an
ammonium salt, which permits the omission of water.
Ans. 4–5; see also id. at 6 (repeating the same text).4 We find that the
Examiner’s reasoning is persuasive and supported by Komatsubara.5
Komatsubara teaches that electrostatic spraying is an “effective
means” to solve problems that occur when applying oil type lubricant to a
die. Komatsubara ¶¶ 12–16. In the context of discussing electrostatic
spraying as a solution for applying oil type lubricant to a die, Komatsubara
discusses the teachings of two references that relate to electrostatic spraying
of paint. Specifically, Komatsubara discloses:

4 Appellant has waived any argument that the Examiner’s Answer presents a
new ground of rejection. See 37 C.F.R. § 41.40(a).
5 In the Answer, the Examiner asserts that Komatsubara teaches or suggests
a water-free composition in two alternative ways: (1) by teaching an “oil
type lubricant” that does not contain water; and (2) by suggesting the
substitution of alternative electric resistance modifiers for water. Ans. 3.
We affirm the Examiner’s rejection on the basis of alternative (2) and do not
express an opinion regarding alternative (1).
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(JP-A) No. 9-235496 relates to technologies used as the
measures taken to impart conductivity to a paint to thereby drop
the electric resistance by adding an alcohol or ammonium salt
as an electrostatic assistant agent. However, alcohol or
ammonium mists are not preferable at the casting site. JP-A
No. 2000-153217 relates to technologies which hint the
addition of an electrostatic assistant agent to a paint. However,
“an electrostatic assistant agent having high polarity” is
dissolved only in an amount of 0.3% by mass in “an oil type
lubricant having low polarity,” and an electrostatic assistant
agent tends to cause sedimentation and separation, which is not
preferable. . . . If a polar solvent is added, the dissolution of
the electrostatic assistant agent may be increasingly solved.
However, the health of a site worker may be damaged because
of the polar solvent. For this, polar solvents are not preferable
in the composition of the oil type lubricant in consideration of
human health.
Komatsubara ¶ 16. Komatsubara paragraph 16 teaches that electrostatic
spraying is a desirable solution for applying oil type lubricant to a die, but
that an electrostatic assistant agent must be added to impart electrical
conductivity to the oil type lubricant. Id. In addition, Komatsubara
paragraph 16 teaches that electrostatic assistant agents known for use in
paint are “not preferable” for use in die casting due to human health
concerns. Id. Such known electrostatic assistant agents include alcohol and
ammonium salt. Id.
In paragraph 17, Komatsubara discloses the inventors’ solution to the
problem of electrostatic spraying of an oil type lubricant:
In order to solve the additional problems according to the
electrostatic spraying as mentioned above, the present inventors
have proposed such a technology that water and a solubilizing
agent are blended in an oil type lubricant to impart slight
conductivity for electrostatical spraying in the case of a high-
pressure die casting.
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Komatsubara ¶ 17. Taken together, Komatsubara paragraphs 16 and 17
teach that the combination of water and a solubilizing agent is an alternative
to alcohol and ammonium salt for imparting conductivity to an oil type
lubricant for electrostatic spraying. Id. ¶¶ 16, 17. Conversely, Komatsubara
paragraphs 16 and 17 teach that alcohol and ammonium salt are less
desirable alternatives to the combination of water and a solubilizing agent
for imparting conductivity to an oil type lubricant for electrostatic spraying.
Id. Based on these teachings, we agree with the Examiner that Komatsubara
“suggests that it would have been obvious to modify the release agent to be
water-free by substituting in other agents like alcohol or an ammonium salt,
which permits the omission of water.” Ans. 5, 6.
Appellant argues that Komatsubara teaches away from an oil-based
release agent that is water-free and that “water is specifically required by
Komatsubara et al. in order to achieve the correct resistance for electrostatic
application of its release agent.” Appeal Br. 8–11 (citing Komatsubara
¶¶ 67, 74, 148). We disagree. Appellant’s argument fails to address the
substitution of alcohol or ammonium salt for the combination of water and a
solubilizing agent as electrostatic assistant agents for imparting conductivity
to an oil type lubricant, as proposed by the Examiner (Ans. 5, 6) and
suggested by Komatsubara paragraphs 16 and 17.
There is other evidence in Komatsubara that water is not “specifically
required,” as argued by Appellant. Appeal Br. 10. The range of water
content in Komatsubara’s release agent is “7.5% by mass or less,” which
includes “0% water,” as presently claimed. Komatsubara, Abstract, ¶ 40.
Comparative Example 1 and Example 1 of Komatsubara both contain 0%
water. Id. ¶ 151, Table 2. Although the electric resistance for both of these
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examples was “infinite,” Komatsubara does not exclude the 0% water
example from the scope of its disclosure, finding “from these facts that water
is preferably in the range 7.5% by mass or less.” Id. ¶ 151. Komatsubara
offers several possible explanations, including that the measured resistance
“may have no correlation” with the resistance “in an actual machine,” which
operates at much higher voltage, and “that a lubricant formulated with a
polar lubricating additive can be used even in a wider range of electric
resistance.” Id. Accordingly, we are not persuaded that water is specifically
required by Komatsubara’s release agent composition.
Next, Appellant argues that the Examiner’s rejection requires
selection of an incomplete portion of Komatsubara’s release agent without a
reasonable expectation of success. Appeal Br. 11–12. Again, Appellant’s
argument fails to address the substitution of alcohol or ammonium salt for
the combination of water and a solubilizing agent as electrostatic assistant
agents for imparting conductivity to an oil type lubricant, as proposed by the
Examiner (Ans. 5, 6) and suggested by Komatsubara paragraphs 16 and 17.
Next, Appellant argues that Komatsubara teaches away from
ammonium salt for its electrostatic release agent. Appeal Br. 12–15.
Although Appellant presents this argument for claims 6 and 8, we consider it
in the context of the Examiner’s obviousness rationale for claim 1, to which
it equally applies. Ans. 4–5, 6. Citing the paragraph 16 teaching that
“alcohol or ammonium mists are not preferable at the casting site,”
Appellant argues that Komatsubara “teaches that ammonium salt cannot be
used with electrostatic spray application of mold release agent” and “is
dismissing such inclusion entirely.” Appeal Br. 12–13 (quoting
Komatsubara ¶ 16). We disagree with Appellant’s interpretation of
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Komatsubara paragraph 16 and agree with the Examiner’s interpretation.
Ans. 5–7. As the Examiner aptly explains,
The word “preferable” is a comparison among alternatives; that
there exist more desirable or better alternatives is not to say that
less preferable alternatives would not be used. In this case, it is
clear from the text of [Komatsubara] that the inventor
considered alcohol and ammonium mists not only as agents for
modifying electrical resistance of paint, but also specifically for
mold coatings and did not dismiss them entirely, but instead
found other agents more desirable.
Id. at 7. The Examiner’s analysis is consistent with recent Federal Circuit
guidance, as follows:
[T]he teaching away inquiry does not focus on whether a person
of ordinary skill in the art would have merely favored one
disclosed option over another disclosed option. In assessing
whether prior art teaches away, that “better alternatives exist in
the prior art does not mean that an inferior combination is inapt
for obviousness purposes.” . . . When there are only two
possible formulations and both are known in the art at the time,
the fact that there may be reasons a skilled artisan would prefer
one over the other does not amount to a teaching away from the
lesser preferred but still workable option.
Bayer Pharma AG v. Watson Labs., Inc., 874 F. 3d 1316, 1327 (Fed. Cir.
2017) (quoting In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)). Here,
similar to the facts presented in Bayer, the evidence shows that a skilled
artisan would have preferred a release agent formulation containing water
and a solubilizing agent over a formulation containing alcohol or ammonium
salt as an electrostatic assistant agent. Komatsubara ¶ 16. But that evidence
is not sufficient to support a finding of teaching away from Appellant’s
claimed release agent that contains 0% water. Id. at 1328.
Accordingly, we sustain the Examiner’s rejection of claim 1.
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Claim 6
Claim 6 depends indirectly from claim 1 and recites that the oil-based
release agent comprises a conductive modifier selected from a group that
includes “an ammonium salt.” Appeal Br. 20.
The Examiner finds that it would have been obvious “to modify the
composition of [Komatsubara] by adding ammonium salt to modify
conductivity, because [Komatsubara] discloses that it was known in the prior
art to add an ammonium salt to modify conductivity of oil based lubricants.”
Final Act. 4 (citing Komatsubara ¶ 16).
Appellant challenges the Examiner’s finding, presenting the same
argument regarding teaching away from ammonium salt as discussed above
for claim 1. Appeal Br. 12–13. We are not persuaded by Appellant’s
argument for the reasons discussed above for claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 6.
Claim 8
Claim 8 is an independent claim and recites “[a]n electrostatic
spraying oil-based release agent comprising a petroleum-based hydrocarbon
solvent . . . and a conductive modifier,” where the conductive modifier is
selected from a group that includes “an ammonium salt” and “the electric
resistance is 2 to 400 MΩ.” Appeal Br. 21.
The Examiner finds that Komatsubara suggests an electric resistance
of 5–400 ohms. Final Act. 4 (citing Komatsubara ¶ 74). The Examiner
repeats the same finding regarding ammonium salt as discussed above for
claim 6. Id. (citing Komatsubara ¶ 16).
Appellant does not challenge the Examiner’s finding concerning the
electric resistance limitation of claim 8. Instead, Appellant focuses on the
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Examiner’s finding regarding ammonium salt, presenting the same teaching
away argument as discussed above for claim 1. Appeal Br. 12–13. We are
not persuaded by Appellant’s argument for the reasons discussed above for
claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 8.
Claim 12
Claim 12 recites a “method for applying an oil-based release agent,
comprising applying the oil-based release agent according to claim 1 to a
metal die,” and specifies a range of particle speeds and mist diameters.
Appeal Br. 21.
The Examiner finds that Komatsubara suggests applying a release
agent to a metal die by electrostatic spraying. Final Act. 5. In addition, the
Examiner finds that particle speed and mist diameter are result-effective
variables and that the recited ranges could be determined by one of ordinary
skill in the art through routine optimization. Id.
Appellant argues that Komatsubara teaches away from a water-free
release agent and that the Examiner’s rejection requires applying an
incomplete portion of Komatsubara’s release agent to a metal die. Appeal
Br. 16–17.
The bulk of Appellant’s argument regarding claim 12 is the same as
Appellant’s argument regarding claim 1. Compare Appeal Br. 16
(addressing claim 12), with id. at 8, 11–12 (addressing claim 1). We are not
persuaded by Appellant’s argument for the reasons discussed above for
claim 1.
In addition, Appellant presents the following argument regarding
claim 12:
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Further to the rejection of claim 1, the rejection of claim 12
requires envisioning that one of skill in the art would apply only
the non-water portion of the release agent of [Komatsubara] to a
metal die. However, the only reasonable suggestion in
[Komatsubara] would be to apply the entirety of its release
agent to a metal die. There would be no reasonable expectation
of success in applying only a portion of the fully described
release agent of [Komatsubara] to a metal die.
Appeal Br. 17.
We agree with the Examiner that “Appellant’s argument is valid only
in the case that water is chosen as the electric resistance modifying agent . . .
and not one of the other ones suggested in” paragraph 16 of Komatsubara.
Ans. 8 (emphasis omitted). Appellant’s argument fails to address the
substitution of alcohol or ammonium salt for the combination of water and a
solubilizing agent as electrostatic assistant agents for imparting conductivity
to an oil type lubricant, as proposed by the Examiner (Ans. 6–8) and
suggested by Komatsubara paragraphs 16 and 17.
Accordingly, we sustain the Examiner’s rejection of claim 12.
Remaining claims
Appellant presents no arguments specifically directed to dependent
claims 2, 5, 7, 11, or 13 separate from its arguments regarding independent
claims 1 and 8. Accordingly, we sustain the Examiner’s rejections of these
dependent claims for the reasons discussed above regarding independent
claims 1 and 8.
CONCLUSION
The Examiner’s rejection is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. § Reference/Basis Affirmed Reversed
1, 2, 5–8,
11–13 103
Komatsubara,
Morro
1, 2, 5–8,
11–13
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