Masui, Toshiaki et al.

Patent Trials and Appeals Board

Jan 29, 2020

13884945 - (D) (P.T.A.B. Jan. 29, 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.
13/884,945 05/10/2013 Toshiaki Masui UNIU113.008APC 1056
20995 7590 01/29/2020
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIAKI MASUI, TAKESHI INABA, YUUKI KUWAJIMA,
KOSHIRO HAMAGUCHI, and MOTOKI KITAGAWA

Appeal 2019-003075
Application 13/884,945
Technology Center 1700
Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, 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 1–6, 8, 9, and 11–23. 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 DAIKIN
INDUSTRIES, LTD. Appeal Br. 3.
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Application 13/884,945

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a laminated body
useful for fuel transporting rubber hoses and having low fuel permeability.
Spec. ¶¶ 1–3. In particular, Appellant describes the invention as a providing
“a laminated body in which a fluorine-contained polymer having a
copolymerization unit originating from chlorotrifluoroethylene is strongly
bonded to epichlorohydrin rubber.” Id. ¶ 9. Claim 1 is the only independent
claim on appeal and is illustrative:
1. A laminated body, comprising a rubber layer (A) and a
fluororesin layer (B) laminated over the rubber layer (A), wherein the
rubber layer (A) is a layer comprising a rubber composition for
vulcanization,
the rubber composition for vulcanization comprises an
epichlorohydrin rubber (a1), at least one compound (a2) selected from
the group consisting of salts of 1,8-diazabicyclo(5.4.0) undecene-7,
salts of 1,5-diazabicyclo(4.3.0)-nonene-5, 1,8-diazabicyclo(5.4.0)
undecene-7, and 1,5-diazabicyclo(4.3.0)-nonene-5, an epoxy resin
(a3), and at least one water-carrying substance (a4) selected from a
hydrate of a sulfate of a metal selected from the group consisting of
calcium, magnesium, sodium, and copper, and/or a hydrate of an
acetate of calcium, and a quinoxaline vulcanizing agent, and
the fluororesin layer (B) is a layer comprising a fluorine-
contained polymer composition and the fluorine-contained polymer
composition comprises a fluorine-contained polymer (b1) consisting
of a chlorotrifluoroethylene copolymer consisting of (i)
chlorotrifluoroethylene and (ii) at least one kind of monomer selected
from the group consisting of tetrafluoroethylene, hexafluoropropylene
and perfluoro(alkyl vinyl ether),

2 In this Decision, we refer to the Final Office Action dated May 31, 2018
(“Final Act.”), the Appeal Brief filed August 27, 2018 (“Appeal Br.”), the
Examiner’s Answer dated January 10, 2019 (“Ans.”), and the Reply Brief
filed March 8, 2019 (“Reply Br.”).
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Application 13/884,945

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wherein the rubber composition for vulcanization further
comprises at least one vulcanizing agent (a6) selected from the group
consisting of thiourea vulcanizing agents, quinoxaline vulcanizing
agents, sulfur-contained vulcanizing agents, peroxide vulcanizing
agents, and bisphenol vulcanizing agents.
Appeal Br. 12 (Claims App’x).

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Robinson et al.
(“Robinson”)
Ilo et al.
(“Ilo”)
Funayama et al.
(“Funayama ’518”)
Resmini et al.
(“Resmini”)
Funayama et al.
(“Funayama ’000”)
Shimono et al.
(“Shimono”)
Hagiwara et al.
(“Hagiwara”)

Reference
US 3,341,491

US 2005/0208248 A1

US 2006/0216518 A1

US 2007/0264495 A1

US 8,492,000 B2

US 9,266,986 B2

JP 53125297
Date
Sept. 12, 1967

Sept. 22, 2005

Sept. 28, 2006

Nov. 15, 2007

July 23, 2013

Feb. 23, 2016

Nov. 1, 1978

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 8, 9, and 13–22 under 35 U.S.C. § 103 as obvious over Ilo
in view Resmini, Hagiwara, Funayama ’518, and Shimono. Ans. 3.
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Application 13/884,945

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B. Claims 2–6, 11, and 12 under 35 U.S.C. § 103 as obvious over Ilo in
view Resmini, Hagiwara, Funayama ’518, and Shimono and further in
view of Robinson. Id. at 8.
C. Claims 2 and 23 under 35 U.S.C. § 103 as obvious over Ilo in view
Resmini, Hagiwara, Funayama ’518, and Shimono and further in view
of Funayama ’000. Id. at 9.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in 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.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant does not present any substantively distinct arguments for
the Examiner’s second or third rejection or for any dependent claims. See
Appeal Br. passim. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv) (2013), we limit our discussion to claim 1, and all other
claims on appeal stand or fall together with claim 1.
The Examiner rejects claim 1 as under 35 U.S.C. § 103 as obvious
over Ilo in view Resmini, Hagiwara, Funayama ’518, and Shimono. Ans. 3.
Appellant does not dispute the prima facie rejection, but instead argues that
claim 1 is not obvious in view of unexpected results. Appeal Br. 6–9.
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Our reviewing court has explained that “an applicant may overcome
a prima facie case of obviousness by establishing that the [claimed] range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.” Peterson, 315 F.3d at 1330 (internal
quotes and citation omitted). We have carefully considered Appellant’s
evidence and arguments, but the proffered evidence is ultimately
unpersuasive.
Appellant’s burden requires Appellant to identify factual evidence that
shows unexpected results relative to the closest prior art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Here, Appellant makes
a comparison between Example 1 of Appellant’s Specification and the same
composition but substituting the fluorine resin RP5000 for Appellant’s
fluororesin. Appeal Br. 6–7; see also Jan. 24, 2018, Declaration of Yuk
Kuwajima ¶¶ 4–6 (“Kuwajima Decl.). The Examiner maintains that this
comparison is not a proper comparison to an example of Ilo, and we agree.
Ans. 10.
Ilo’s explanation of its experimental results refers to the RP5000
component Appellant tested as “Acid-Modified ETFE.” Ilo ¶¶ 66–67.
Different possible components include, for example, “PPS Resin Containing
a Softening Component” and “Acid-Modified Conductive ETFE.” Id. ¶¶ 56–
77.3 Ilo’s “Acid-Modified Conductive ETFE” consists of RP5000/AS rather
than the RP5000 that Appellant tested. Id. ¶¶ 68–69.
Ilo’s Table 5 through Table 9 provide Ilo’s experimental results. Id.
¶¶ 88–93. Ilo states that each of its twenty-six examples (in contrast to Ilo’s

3 PPS refers to polyphenylene sulfide. Ilo ¶ 22.
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five comparative examples) have “excellent interlaminar adhesion.” Id. ¶ 93.
Only two of Ilo’s twenty-six examples make use of the Acid-Modified ETFE
(i.e., RP5000)—examples four and sixteen. Example four uses the Acid-
Modified ETFE only as an outer layer alongside acid-modified electrically
conductive ETFE. Id. at Table 5. Example sixteen uses the Acid-Modified
ETFE in conjunction with an intermediate layer of PPS containing a
softening component.
Appellant’s “Added Comparative Example 4” does not include, for
example, the acid-modified electrically conductive ETFE of Ilo example
four or the PPS containing a softening component of Ilo example sixteen. As
such, Appellant’s comparison does not establish superior results as
compared to any example of Ilo. Indeed, the preponderance of the evidence
(from Ilo) indicates that when Ilo’s teachings are followed (rather than
modified as Appellant has done), Ilo achieves excellent adhesion. Ilo ¶ 93.
Evidence of unexpected results also must also be reasonably
commensurate with the scope of the claims. In re Peterson, 315 F.3d 1325,
1330–31 (Fed. Cir. 2003) (explaining that applicant may overcome a prima
facie case of obviousness by showing unexpected results but the showing of
unexpected results “must be commensurate in scope with the claims which
the evidence is offered to support”) (internal quotes and citation omitted).
“If an applicant demonstrates that an embodiment has an unexpected result
and provides an adequate basis to support the conclusion that other
embodiments falling within the claim will behave in the same manner, this
will generally establish that the evidence is commensurate with scope of the
claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
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Application 13/884,945

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The Examiner finds that Appellant’s examples (both the inventive and
comparative example) include numerous components that are not recited in
claim 1 and determines that claim 1, therefore, has a broader scope than the
materials Appellant tested. Ans. 12. We agree with the Examiner that
Appellant’s proffered evidence of unexpected results is not commensurate
with the scope of claim 1. On this record, Appellant has not established that
Appellant’s claimed invention (as set forth by claim 1) achieves superior
results rather than the combination of all tested components achieving the
superior results. Appellant has also not established that inclusion or
exclusion unrecited components does not impact the superior results.
Appellant argues that a person of skill in the art would understand that the
unrecited components “would be recognized as not essential to the
adhesiveness between the rubber layer and fluoroesin layer,” but Appellant
identifies no evidence to support this argument. Reply Br. 4. “[A]rguments
of counsel cannot take the place of evidence lacking in the record.” Estee
Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (internal
quotes and citation omitted).
Appellant, therefore, has not adequately established unexpected
results and, as such, has not identified reversible error in the Examiner’s
rejections.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8, 9, 13–
22
103 Ilo, Resmini,
Hagiwara, Funayama
’518, Shimono
1, 8, 9, 13–
22

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Application 13/884,945

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–6, 11, 12 103 Ilo, Resmini,
Hagiwara, Funayama
’518, Shimono,
Robinson
2–6, 11, 12
2, 23 103 Ilo, Resmini,
Hagiwara, Funayama
’518, Shimono,
Funayma ’000
2, 23
Overall
Outcome
1–6, 8, 9,
11–23

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