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Patent Trials and Appeals Board

Dec 2, 2020

2019006968 (P.T.A.B. Dec. 2, 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.
14/438,447 04/24/2015 Hideo Takahashi 3400.P1486US 1003
23474 7590 12/02/2020
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
ZIMMER, MARC S
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIDEO TAKAHASHI, HIROYOSHI IIJIMA,
and HIDEFUMI TAGAI

Appeal 2019-006968
Application 14/438,447
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–11. 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 Momentive
Performance Materials Japan LLC. Appeal Brief dated May 22, 2019
(“Appeal Br.”) 1.
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STATEMENT OF THE CASE
The present application was filed April 24, 2015 claiming priority to
JP2013/079694, filed Nov. 1, 2013. The Examiner issued a non-final
rejection on November 4, 2015. On February 4, 2016, Appellant submitted
a response to the non-final rejection. On March 16, 2016, the Examiner
issued a final rejection. On June 16, 2016, Appellant submitted a response
after final action. By advisory action dated July 7, 2016, the Examiner
determined that the response after final did not place the application in
condition for allowance.
A notice of appeal was filed July 15, 2016, followed by an appeal
brief dated September 12, 2016. In the Examiner’s answer dated December
2, 2016, the Examiner incorporated the statement of rejection dated
November 4, 2015. On March 1, 2018, the Board affirmed the Examiner’s
rejection.
On May 1, 2018, Appellant submitted additional evidence, argument,
and claim amendments in support of patentability. Appellant narrowed
limitation (E) of claim 1 from “30 to 3000 ppm of an ionic liquid” to “40 to
2000 ppm of an ionic liquid.” Request for Continued Examination (RCE
Amendment) dated May 1, 2018. Appellant additionally added new
dependent claim 11. Id.
On May 23, 2018, the Examiner issued a non-final rejection. On
September 19, 2018, Appellant submitted additional evidence and argument.
On November 23, 2018, the Examiner issued a final rejection. Appellant
submitted a request for reconsideration dated February 22, 2019. By
advisory action dated March 15, 2019, the Examiner determined that the
request for reconsideration did not place the application in condition for
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allowance. On March 22, 2015 Appellant filed a Notice of Appeal for the
presently pending appeal followed by an Appeal Brief dated May 22, 2019.

CLAIMED SUBJECT MATTER

The present application generally relates to a heat-curable silicone
rubber composition exhibiting high transparency and antistatic property.
Spec. ¶ 1.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A heat-curable silicone rubber composition comprising:
(A) 100 parts by mass of an organopolysiloxane having an
average polymerization degree of 50 to 10000 and containing at
least two alkenyl groups bonded to a silicon atom in one
molecule;
(B) 10 to 400 parts by mass of a silicone resin which includes
units selected from a R3SiO1/2 unit as unit M, SiO4/2 unit as
unit Q, R2SiO2/2 unit as unit D, and RSiO3/2 unit as unit T,
whereas R is a monovalent hydrocarbon group having 1 to 6
carbon atoms and at least two in one molecule are alkenyl
groups and in which a sum of the unit M, unit Q and unit T in
all of the structural units is 80% by mole or more;
(C) an organohydrogenpolysiloxane containing at least two
hydrogen atoms bonded to a silicon atom in one molecule, in an
amount such that the number of the hydrogen atoms bonded to
a silicon atom per one alkenyl group bonded to a silicon atom
in the component (A) and the component (B) is 1.0 to 10.0;
(D) a hydrosilylation reaction catalyst, and
(E) 40 to 2000 ppm of an ionic liquid serving as an antistatic
agent,
wherein the ionic liquid of the component (E) has a
difference in refractive index from the refractive index of a
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cured product formed of a base silicone rubber mixture of
the components (A), (B), (C) and (D) within a range of ±
0.04.
Appeal Br. (Claims App. 1) (reformatted for clarity; emphasis added).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Hardman et al.
(“Hardman”)
US 4,329,273 May 11, 1982
Lai et al. (“Lai”) US 2005/0038219 A1 Feb. 17, 2005
Mogi US 2009/0062499 A1 Mar. 5, 2009
Iijima et al. (“Iijima”) US 2011/0039991 A1 Feb. 17, 2011

DISCUSSION
The Examiner rejects claims 1–11 under pre-AIA 35 U.S.C. § 103(a)
as obvious over Iijima in view of Lai and further in view of Hardman and
Mogi. Final Office Action dated November 23, 2018 (“Final Act.”) 2–3.
The Examiner, however, does not set forth a description of where each claim
element is taught by the prior art, nor propose any rationale for combination
of the teachings of the references in the November 2018 Office Action. Id.
In the Examiner’s Answer dated July 29, 2019 (“Ans.”), the Examiner states
that “[e]very ground of rejection set forth in the Office action dated
November 4, 2015 from which the appeal is taken is being maintained by the
examiner.” Ans. 3.
The November 4, 2015 Office Action provides a basis for the
rejection of claims 1–10 over the cited references but does not address (later
added) claim 11. See November 4, 2015 Office Action 2–5. The
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Examiner’s May 23, 2018 Office Action includes some analysis of claim 11.
We will interpret that analysis as applicable to the present rejection.
In our prior decision, we summarized the November 4, 2015 rejection
as follows:
[T]he Examiner found that the primary reference, Iijima,
teaches each element of claim 1 other than element B, an
alkenyl functional silicone resin. [November 4, 2015] Non-
Final Act. 3. Iijima further teaches that the composition may
include silica as an additive. Iijima ¶¶ 14–15.

The Examiner additionally found that Lai and Hardman
teach that alkenyl-functional silicone resins (such as those
required by element B of claim 1) are functionally equivalent to
silica “when employed in the capacity of a reinforcing agent in
a hydrosilylation-curable organopolysiloxane.” [November 4,
2015] Non-Final Act. 3. Accordingly, the Examiner determines
that it would have been obvious to one of skill in the art to
modify the composition of Iijima to include an alkenyl-
functional silicone resin as a reinforcing agent/filler rather than
silica. Id. at 3–4; [March 16, 2016] Final Act. 4.

In re Takahashi, Appeal No. 2017-005025 (PTAB March 1, 2018) 3–4. The
Examiner finds that favorable light transmittance properties would be
inherent to such a composition. Ans. 5.
Claim 11 depends from claim 1 and further specifies the range of
components that may satisfy limitations (A) through (D). Appeal Br.
(Claims App. 3). The Examiner addresses claim 11 in the May 23, 2018
Non-Final Rejection. In this regard, the Examiner finds as follows:
The Examples [from Iijima], for instance, disclose the
employment of a dimethylsiloxane/methylvinylsiloxane
copolymer for which the end groups are not specified but the
broader description contemplates linear polysiloxanes bearing
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methyl groups and vinyl groups of which a vinyl-terminated
polydimethylsiloxane would be immediately obvious.
May 23, 2018 Non-Final Rejection 2–3.
The Examiner additionally determines that a difference in the haze
and transmittance properties of the composition of the claims relative to the
composition of Iijima would not have been surprising to one of ordinary
skill in the art. November 23, 2018 Final Rejection 2–3. The Examiner
finds that such differences would be expected because the refractive
properties of silica particles (which exist as a discontinuous phase) were
known to differ from those of silicone resin. May 23, 2018 Non-Final
Rejection 3–5.
Appellant argues that the rejection should be reversed. Appeal Br. 3–
7. Appellant argues that none of the cited references recognize the need to
employ an ionic liquid having a refractive index similar to the remainder of
the composition. Id. at 3–5. Appellant further argues that it has proffered
data in the Specification showing that the inventive composition exhibits
superior haze and transmittance properties relative to the closest prior art
(Iijima). Id. at 6. Appellant additionally refers to data submitted in
Declarations indicating that compositions including silica (as taught by
Iijima) had poor transmittance and haze characteristics. Id. at 6–7 (citing
Declarations of Hiroyoshi Iijima dated June 8, 2016 and August 28, 2018).
In the Answer, the Examiner contends that Appellant has not offered
sufficient evidence to rebut the prima facie case of obviousness. Ans. 5–6.
The Examiner asserts that it was well known that differences in refractive
index have a negative effect on transmittance and haze. Id. at 6–7. The
Examiner further finds that the several of the ionic liquids taught by Iijima
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(¶ 19) are enumerated in pending dependent claim 5. Accordingly, the
Examiner reasons, they would exhibit the claimed refractive index. Id. at 7.
The Examiner further indicates that the degree of transmittance/haze of a
composition is affected by the compatibility of the materials and the
resulting (lack of) uniformity of the composition. Id. at 8.
The Examiner additionally directs us to the Board’s determination in
the prior decision that Appellant’s showing is not commensurate in scope
with the breadth of the claims. Id. at 10.

Analysis
A prima facie case of obviousness may be rebutted by evidence of
“secondary considerations,” such as “commercial success, long felt but
unsolved needs, [and] failure of others.” Graham v. John Deere Co., 383
U.S. 1, 17 (1966). Rebuttal evidence may also include evidence that the
claimed invention yields unexpectedly improved properties not present in
the prior art. In re Fenn, 639 F.2d 762, 765 (CCPA 1981). When such
evidence 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 (CCPA 1976).

Unexpected Results
The Federal Circuit has held that “[w]hat is important regarding
properties that may be inherent, but unknown, is whether they are
unexpected. All properties of a composition are inherent in that
composition, but unexpected properties may cause what may appear to be an
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obvious composition to be nonobvious.” Honeywell Int’l Inc. v. Mexichem
Amanco Holding, 865 F.3d 1348, 1355 (Fed. Cir. 2017).
Here, Appellant offers declaratory evidence from an inventor that “the
heat-curable silicone rubber composition of the present invention has
unexpectedly superior properties with respect to transmittance and haze
when compared to the comparative compositions which did not use the
claimed silicone resin.” Iijima Declaration dated August 28, 2018, 2.
The Examiner has consistently maintained that the observed optical
properties of the claimed composition are not surprising. See Ans. 5–10;
Final Rejection dated November 23, 2018, 2–3; Non-Final Rejection dated
May 23, 2018, 3–5. The Examiner makes findings that the three factors that
are known to affect light scattering in a composition are i) similarity of
refractive indices, ii) compatibility, and iii) particle size. Non-Final
Rejection dated May 23, 2018, 4–5.
As persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent
legal error or contrary factual evidence, those findings can establish a prima
facie case of obviousness. Id.
Here, Appellant addresses the Examiner’s findings regarding
similarity of refractive indices. Reply Br. 2. Appellant does not, however,
squarely address the Examiner’s findings regarding compatibility and
particle size. Accordingly, we accept the Examiner’s findings.
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As a result, we determine that Appellant has not shown adequate
evidence that one of skill in the art would have found the optical properties
of the claimed composition to be surprising or unexpected.

Commensurate in Scope
“It is the established rule that ‘objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.’” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965 (Fed.
Cir. 2014) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). This is as
true for evidence of unexpected results as it is for any other type of objective
evidence of non-obviousness. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (“the applicant’s showing of unexpected results must be
commensurate in scope with the claimed range”); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980) (“In order to establish unexpected results for a
claimed invention, objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”).
Here, claim 1 includes 5 separate limitations (A–E). Appeal Br.
(Claims App. 1). Limitation (A) requires, in part, “an organopolysiloxane
having an average polymerization degree of 50 to 10000.” Id. The
Specification describes the structure of the organopolysiloxanes of limitation
(A) as follows:
A group bonded to silicon atom other than alkenyl group
can include a monovalent hydrocarbon group.
Examples of the monovalent hydrocarbon group can
include an alkyl group such as methyl, ethyl, propyl or butyl; an
aryl group such as phenyl or tryl; a cycloalkyl group such as
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cyclohexyl; an aralkyl group such as benzyl or 13-phenylethyl;
or chrolomethyl, cyanoethyl or the like in which a part or the
whole of hydrogen atoms bonded to carbon atoms of those
groups is substituted by a halogen atom (excluding fluorine
atom), cyano group and the like, and methyl is preferable.
The alkenyl group bonded to silicon atom includes vinyl,
allyl, and the like, and vinyl is preferable.
Spec. ¶ 8. Appellant offers test results for two organopolysiloxanes having a
polymerization degree of 200 and 940. Spec. ¶ 29; Iijima Declaration dated
August 28, 2018, 2.
Limitation (B) requires, in part, “10 to 400 parts by mass of a silicone
resin.” Appeal Br. (Claims App. 1). The Specification describes exemplary
silicone resins of limitation (B) as follows:
Examples of the silicone resin of the component (B) can
include a copolymer of vinyldimethylsiloxy group and the unit
Q, a copolymer of vinyldimethylsiloxy group trimethylsiloxy
group and the unit Q, a copolymer of vinyldimethylsiloxy
group dimethylsiloxane unit and the unit Q, a copolymer of
vinyldimethylsiloxy group phenylsilsesquioxane unit and the
unit Q, a copolymer of vinyldimethylsiloxy group dimethyl
siloxane unit phenylsilsesquioxane unit and the unit Q, a
copolymer of trimethylsiloxy group vinylmethylsiloxane unit
and the unit Q, and the like.
Spec. ¶ 12. Appellant appears to provide test data for a single silicone resin.
Id. ¶ 30. The tested compositions described in the Specification and the
Iijima Declaration include amounts of silicone resin ranging from 10 parts to
400 parts. Spec. ¶ 38, Tables 1 and 2; Iijima Declaration, dated August 28,
2018, 2. We have not been directed to any tested compositions having a
quantity of silicone resin falling outside the claimed range.
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Limitation (C) requires organohydrogenpolysiloxane. Appeal Br.
(Claims App. 1). The Specification describes the scope of limitation (C) as
follows:
Examples of the component (C) can include a
diorganopolysiloxane blocked with a dimethylhydrogensilyl
group, a copolymer of a dimethylsiloxane unit and a
methylhydrogensiloxane unit and end trimethylsiloxane unit, a
low-viscosity fluid of a dimethylhydrogensiloxane unit and
SiO2 unit, 1,3,5,7-tetrahydrogen-1,3,5,7-
tetramethylcyclotetrasiloxane, 1-propyl-3,5,7-trihydrogen-
1,3,5,7-tetramethylcyclotetrasiloxane, 1,5-dihydrogen-3,7-
dihexyl-1,3,5,7tetramethylcyclotetrasiloxane, and the like.
Spec. ¶ 14. Appellant appears to provide test data for a single exemplary
organohydrogenpolysiloxane. Id. ¶ 31.
Limitation (D) requires a hydrosilylation reaction catalyst in any
quantity. Appeal Br. (Claims App. 1). The Specification describes the
scope of limitation (D) as follows:
A platinum element, a platinum compound, and a
platinum complex can be used as the hydrosilylation reaction
catalyst as the component (D), and specific examples thereof
can include a platinic acid chloride such as platinic primary acid
chloride or platinic secondary acid chloride; a platinum--based
complex such as a complex of a platinic acid chloride with an
alcohol compound, aldehyde compound, ether compound or
various olefins; a platinum-vinylsiloxane complex, and the like.

The content of the component (D) in the composition is
preferably 0.1 to 200 ppm as a platinum atom relative to the
component (A), more preferably 1 to 50 ppm.
Spec. ¶¶ 16–17. The Specification and Declarations appear to provide test
data for a single exemplary catalyst. Id. ¶ 31; Iijima Declaration, dated
August 28, 2018.
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Limitation (E) requires from “40 to 2000 ppm of an ionic liquid.”
Appeal Br. (Claims App. 1). The Specification teaches that “[e]xamples of
the anion are an alkyl sulfate-based anion, a tosylate anion, a sulfonate-based
anion, bis(trifluoromethanesulfonyl)imide anion, bis(fluorosulfonyl)imide
anion, hexafluorophosphate anion, tetrafluoroborate anion, a halide anion,
and the like.” Spec. ¶ 20. The Specification teaches additional exemplary
ionic liquids. Id. ¶¶ 20–22.
The Specification provides test data for a number of different ionic
liquids. Spec. ¶ 38, Tables 1 and 2. Most of the ionic liquids are present in
an amount of 1000 ppm but Examples 9–12 include an ionic liquid at 50
ppm, 3000 ppm, 700 ppm, and 2700 ppm, respectively. Id.
Given the broad scope of limitations (A) through (D) and the limited
quantity of testing data in the Specification and Declarations, we cannot
conclude that Appellant has supplied evidence of unexpected results that is
commensurate with the scope of claim 1. We do not address whether the
evidence of unexpected results is commensurate with scope of the dependent
claims at this time.
In view of the foregoing, we determine that Appellant has not shown
that the compositions of claims 1–11 have properties that would have been
surprising or unexpected to those of skill in the art. We further determine
that Appellant has not proffered evidence of unexpected properties
commensurate with the scope of claim 1.
We understand Appellant’s arguments to be limited to rebuttal of the
prima facie case of obviousness on the basis of criticality. To the extent that
Appellant alleges error in the prima facie case, such argument is not
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persuasive for the reasons set forth in our prior decision. See In re Herr, 377
F.2d 610, 611–612 (CCPA 1967).

CONCLUSION

For the reasons set forth in the Office Actions dated November 4,
2015, May 23, 2018, and November 23, 2018, and the Advisory Action
dated March 15, 2019, as well as the Examiner’s Answer, the Examiner’s
rejection is affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11 103(a) Iijima, Lai,
Hardman, Mogi
1–11

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