Ex Parte Ebata et al

Patent Trial and Appeal Board

Aug 20, 2014

12314154 (P.T.A.B. Aug. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/314,154 12/04/2008 Hiroki Ebata 055053-0174 8365
22428 7590 08/20/2014
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
08/20/2014 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 HIROKI EBATA, KOTARO ICHINO,
and MASAO KUNIZANE
____________

Appeal 2012-009007
Application 12/314,1541
Technology Center 1700
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner finally rejecting claims 1 and 4-16. We
have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 According to the Appellants, the real party in interest is Mitsui Chemicals,
Inc. (Appeal Brief filed February 3, 2012, hereinafter “App. Br.,” 3).

Appeal 2012-009007
Application 12/314,154

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BACKGROUND
The invention relates to “a copolymer rubber[,] which contains only
small amounts of impurities and is excellent in kneading processability,
extrusion processability[,] and retention of shape . . . .” (Specification,
hereinafter “Spec.,” ¶ 8). Representative claim 1 is reproduced from page 20
of the Appeal Brief (Claims App’x) (disputed limitations shown in bolded
italics), as follows:
1. A copolymer rubber comprising structural units
derived from
[A] ethylene,
[B] an α-olefin of 3 to 20 carbon atoms,
[C] a non-conjugated polyene having one double bond
between adjacent carbon atoms in one molecule, said double
bond being capable of polymerization by a metallocene
catalyst, and
[D] a non-conjugated polyene having two of the above
double bonds in one molecule,
said copolymer rubber satisfying the following
requirements (1) to (5):
(1) the molar ratio ([A]/[B]) of the structural units
derived from ethylene [A] to the structural units derived from
the α-olefin [B] is in the range of 50/50 to 85/15,
(2) the total of molar quantities of the structural units
derived from the non-conjugated polyene [C] and the structural
units derived from the non-conjugated polyene [D] is in the
range of 0.5 to 4.5% by mol in all the structural units,
(3) the intrinsic viscosity [η] as measured in decalin at
135°C is in the range of 1.0 to 5.0 dl/g,
(4) the molar ratio ([C]/[D]) of the structural units
derived from the non-conjugated polyene [C] to the structural
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units derived from the non-conjugated polyene [D] is in the
range of 90/10 to 99/1, and
(5) the copolymer rubber satisfies the following formula
(I):
Log{η*(0.01)}/Log{η*(10)}>0.0753x {apparent (I)
iodine value derived from the non-conjugated polyene
[D]}+ 1.42
wherein η*(0.01) is a viscosity (Pa·sec) at 190ºC and
0.01 rad/sec, and η*(10) is a viscosity (Pa·sec) at 190°C and 10
rad/sec; and further wherein the non-conjugated polyene [C] is
5-ethylidene-2-norbornene (ENB), and the non-conjugated
polyene [D] is 5-vinyl-2-norbornene (VNB).

The Examiner rejected the claims as follows:
I. Claims 1, 7, and 8 under the judicially-created doctrine of
obviousness-type double patenting as unpatentable over
claims 1, 4, and 10 of Kawasaki;2
II. Claims 1 and 7-16 under 35 U.S.C. § 103(a) as
unpatentable over Kawasaki; and
III. Claims 1 and 4-16 under 35 U.S.C. § 103(a) as
unpatentable over Kawasaki and Mangold.3
(Examiner’s Answer entered March 21, 2012, hereinafter “Ans.,” 5-26; Final
Office Action entered April 4, 2011, hereinafter “Final Act.,” 3-11; Office
Action entered September 29, 2010, hereinafter “Non-Final Act.,” 2-14.)

2 United States Patent 5,698,651 issued December 16, 1997.
3 PCT International Application Publication WO 98/49212 published
November 5, 1998.
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DISCUSSION
Because we find no error in the Examiner’s factual findings, analyses,
and conclusions of law in each of the rejections, we adopt them as our own.
For emphasis, we add the following comments. In re Jung, 637 F.3d 1356,
1364-65 (Fed. Cir. 2011).
I.
With respect to Rejection I, the Appellants argue the rejected claims
together (App. Br. 11-12). Therefore, we confine our discussion to claim 1,
which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii).
Claims 7 and 8 stand or fall with claim 1.
The Appellants’ principal argument against the double patenting
rejection is that, in resolving the differences between the claimed subject
matter and Kawasaki’s claims, “the Examiner incorrectly relied on the
disclosure of the cited patent, rather than on a comparison of claims as the
law requires . . . .” (App. Br. 11). That argument ignores the fundamental
reason for the doctrine of obviousness-type double patenting, i.e., to prevent
an unjustified timewise extension of the right to exclude granted by a patent,
regardless of how the extension arose. In re Van Ornum, 686 F.2d 937, 943-
44 (CCPA 1982).
In this case, we find that the Examiner’s reliance on the Appellants’
Specification (Ans. 7-8) was permissible because the Specification was used
merely to show the preferred embodiments covered by the claims of the
Kawasaki patent. In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371, 1378
(Fed. Cir. 2008) (“[T]he specification of the ’987 patent itself refers to
ethylene, propylene, butene, and other olefins which indicates that those
olefins were intended to fall within the meaning of the claims. Thus, the
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PTO had good basis for its conclusion that the claims of the ’987 patent
rendered obvious the claims of the ’687 patent and that the latter claims are
invalid for obviousness-type double patenting.”).
Because the allowance of claim 1 would result in the unjustified
timewise extension of the right to exclude others from making a copolymer
rubber made of, inter alia, 5-ethylidene-2-norbornene (ENB) and 5-vinyl-2-
norbornene (VNB) in overlapping molar ratios already conferred in claims 1,
4, and 10 of the Kawasaki patent (see Kawasaki col. 6, l. 47 to col. 7, l. 44),
we affirm.
II.
With respect to Rejection II, the Appellants argue claims 1 and 7-16
together (App. Br. 13-16). Therefore, we confine our discussion to claim 1,
which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii).
As acknowledged by the Appellants (App. Br. 14-15), Kawasaki
describes a range of [c’]/[d’] molar ratios that overlaps with the range of
[C]/[D] molar ratios recited in claim 1 (Kawasaki’s col. 8, ll. 43-46). That
fact supports the Examiner’s prima facie case of obviousness and, at the
same time, undercuts the Appellants’ “teaching away” argument (App. Br.
15). See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In
cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.”).
Moreover, we find ourselves in complete agreement with the
Examiner (Ans. 13) that the disclosure of a reference is not limited to its
preferred embodiments or working examples. Merck & Co. Inc. v. Biocraft
Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[I]n a section 103 inquiry,
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‘the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’”) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)).
The Appellants contend that the claimed copolymer rubber exhibits a
greater number of long chain branches (App. Br. 15). The Appellants,
however, fail to explain how claim 1 specifies any degree of long chain
branching. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Relying on the description in the current Specification (¶¶ 54, 55;
¶¶ 73, 74 of the published application), the Appellants contend that
satisfaction of formula (I), as specified in claim 1, provides unexpected and
improved results (App. Br. 15). The Appellants, however, fail to direct us to
persuasive experimental evidence demonstrating unexpected results over
Kawasaki’s copolymer rubber.
For these reasons and those set forth by the Examiner, we uphold the
Examiner’s rejection.
III.
As in Rejections I and II, the Appellants argue the claims subject to
Rejection III together. Therefore, we confine our discussion to claim 1,
which we select as representative.
The Appellants argue that “Mangold does not teach the specific
embodiment of a copolymer rubber composition comprising VNB together
with ENB, nor . . . any guidance on the amount or molar ratio of ENB to
VNB . . . .” (App. Br. 16-17). Again, however, we find ourselves in
agreement with the Examiner’s analysis (Ans. 23-24). Though Mangold
teaches the use of metallocene catalysts, including the catalyst specified in
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claim 4, to be useful (page 10) in the polymerization of ethylene, a C3-20 α-
olefin, and “a diene monomer” (page 2), a person of ordinary skill in the art
would have reasonably expected that these catalysts would also be useful in
the polymerization of ethylene, a C3-20 α-olefin, and a mixture of diene
monomers, such as ENB and VNB as shown in Kawasaki. In re Kerkhoven,
626 F.2d 846, 850 (CCPA 1980).
Relying on Example 1 and Comparative Example 1 of the current
Specification, the Appellants contend that the use of a specific catalyst does
not always result in a fulfillment of requirement (5), as recited in claim 1
(App. Br. 17). We find this argument unpersuasive for the reasons given by
the Examiner (Ans. 26).
For these reasons and those set forth by the Examiner, we uphold
Rejection III.

ORDER
Rejections I through III are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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