Ex Parte Akiyama et al

Patent Trial and Appeal Board

Sep 27, 2016

11629397 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111629,397 03/08/2007 Mitsuharu Akiyama
52835 7590 09/29/2016
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 4434. l l 6USWO 5948
EXAMINER
CHRISS, JENNIFER A
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUHARU AKIYAMA, NAOY A MIZUKOSHI,
and KEISUKE KAJIHARA1
Appeal2014-008207
Application 11/629,397
Technology Center 1700
Before CATHERINE Q. TIMM, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants identify the real party in interest as Nippon Sheet Glass
Company, Limited. Appeal Br. 2.
2 In our opinion below, we reference the Specification filed December 13,
2006 (Spec.), Final Office Action mailed June 26, 2013 (Final), and the
Appeal Brief filed January 23, 2014 (Appeal Br.). We have also considered
the Examiner's Answer mailed May 23, 2014 (Ans.), and the Reply Brief
filed July 23, 2014 (Reply Br.).
Appeal2014-008207
Application 11/629,397
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
to reject claims 1, 4, 8-10, and 16-18 under 35 U.S.C. § 103(a) as obvious
over Obrecht3 in view of Tachibana4 and Onoe. 5 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appellants' claims are directed to a reinforcing cord. See, e.g., claim
1. Appellants' reinforcing cord is particularly useful for reinforcing rubber
belts such as the belt Appellants illustrate in Figure 1, reproduced below:
Figure 1 is an exploded perspective view of toothed belt 10
Each cord 12 includes a plurality of strands 20. Figure 2, reproduced
below, depicts a strand 20 including three fibers 21 and coating 22:
3 Obrecht et al., US 4,826,721, issued May 2, 1989.
4 Tachibana et al., US 5,609,541 issued March 11, 1997.
5 Onoe et al., EP 0 688 973 Al, published December 27, 1995.
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Appeal2014-008207
Application 11/629,397
20
~
Figure 2 is a cross-sectional view of strand 20
Each of the fibers 21 is composed of a large number of filaments, for
instance, 200 glass filaments. Spec. 10: 15-32; claim 1. The Specification
describes a process of aligning the three fibers 21 and applying an aqueous
adhesive and drying to form a coating 22 that covers the surfaces of the
bundle of the three fibers. Id.
To form the cord, a plurality of the strands 20 are consolidated as
shown in Figure 3, which is reproduced below:
Figure 3 is a cross-sectional view of cord 30
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Appeal2014-008207
Application 11/629,397
As is shown in Figure 3, each strand 20 includes coating layer 22
surrounding the surface of the three bundled fibers. The cord further
includes a second coating 31 for improving bonding of the cord to the matrix
rubber 11 of the toothed belt. Spec. 11:1-8.
Appellants' invention is directed to the composition of coating 22.
This coating contains hydrogenated nitrile rubber (H-NBR) and a
maleimide-based crosslinker and does not contain a resorcinol-formaldehyde
condensation product (commonly termed RFL liquid in the art). Claim 1;
Spec. 1:18-31; Spec. 4:12; Tachibana, col. 4, 11. 60-65; Onoe, p. 3, 11. 27-
28.
The sole independent claim on appeal is claim 1, which we reproduce
below from the Claims Appendix of the Appeal Brief with reference
numerals from the Figures added to further illustrate an embodiment within
the scope of the claims:
1. A reinforcing cord [12 (Fig. 1), 30 (Fig. 3)] for rubber
reinforcement for reinforcing a rubber product [10], comprising
a plurality of strands [20], wherein
the strand [20] comprises bundled fibers [bundle of three
fibers 21 of Fig. 2] and a coating layer [22] formed directly on
the bundled fibers [three fibers 21] so that the coating layer [22]
covers a surface of the bundled fibers [three fibers 21] and is
present between fibers [21] of the bundled fibers [three fibers
21],
the plurality of the strands [20] are in tight contact with
one another via the coating layer [22],
the coating layer [22] contains rubber and a crosslinker,
the rubber contained in the coating layer [22] is
hydrogenated nitrile rubber,
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Appeal2014-008207
Application 11/629,397
the crosslinker is a maleimide-based crosslinker, and
the coating layer [22] does not contain a resorcinol-
formaldehyde condensation product.
Appeal Br. 13.
OPINION
Obrecht, Tachibana, and Onoe are, like Appellants, concerned with
improving the adhesive properties of materials such as cords within the
rubber of belts. Obrecht, col. 1, 11. 7-18; Tachibana. col. 1, 11. 7-11 and col.
3, 1. 57---col. 4, 1. 6; Onoe, p. 2, 1. 55-p. 3, 1. 4.
The Examiner relies upon Obrecht for its teaching of applying an
H-NBR-based coating on reinforcing cord. Final 7. The Examiner relies
upon Tachibana for its teaching of applying an H-NBR crosslinked with a
maleimide-based crosslinker on reinforcing cord. Final 7-8. As found by
the Examiner, both Obrecht and Tachibana teach that H-NBR increases the
adhesion of the reinforcing cord to the rubber of the product. Final. 8. The
Examiner characterizes the difference between the claimed cord and that
suggested by Obrecht and Tachibana as a lack of disclosure in the references
as to the structure of the cord. Final 9. The Examiner attempts to fill this
gap by turning to the teachings of Onoe. Id. Based on the teachings of
Onoe, the Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to have used cords having
the structure taught by Onoe as the cords of Obrecht as modified by
Tachibana to enhance impregnation of the H-NBR within the glass fiber
strands and fibers forming the stands, which reduces abrasion resistance and
increases the adhesive properties. Final 9-10.
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Appeal2014-008207
Application 11/629,397
There are two problems with the Examiner's reasoning.
First, the coating suggested by Obrecht and Tachibana is a coating on
the cord, and is more akin to Appellants' unclaimed second coating 31 than
to the coating 22, the coating formed directly on the bundled fibers that is
the subject of claim 1.
Second, Onoe is directed to a different kind of coating system
involving impregnating a strand of fibers with water-based latex adhesive
containing blocked isocyanate dispersion and RFL liquid, twisting the
impregnated strands to form cord material, and coating the cord material
with epoxy adhesive. Onoe, p. 6, 11. 6-29. Onoe's epoxy adhesive coating
is on the cord, like the H-NBR coating of Obrecht and Tachibana. Although
Onoe teaches a coating directly on the bundled fibers of the strand, Onoe's
strand coating contains RFL liquid, which is excluded from Appellants'
strand coating.
Given the differences in coating location and chemistry between the
Onoe strand coating and the H-NBR coating suggested by Obrecht and
Tachibana, we agree with Appellants that the evidence does not support the
Examiner's conclusion of obviousness. Appeal Br. 4--12. As applied by the
Examiner, the evidence lacks a suggestion of using an H-NBR coating on
the strands that is free of RFL liquid. Instead, the references suggest a
crosslinked H-NBR cord coating with no mention of a strand coating
(Obrecht and Tachibana). The references also suggest a chemical coating
combination with a RFL liquid containing strand coating combined with an
epoxy cord coating (Onoe).
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Appeal2014-008207
Application 11/629,397
CONCLUSION
We do not sustain the Examiner's rejection.
DECISION
The Examiner's decision is reversed.
REVERSED
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