Ex Parte Hara

Patent Trial and Appeal Board

Aug 27, 2015

12281348 (P.T.A.B. Aug. 27, 2015)

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.
12/281,348 09/02/2008 Yuichi Hara 21713-00107-US1 1458
30678 7590 08/28/2015
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
(DC OFFICE)
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
08/28/2015 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 YUICHI HARA
__________

Appeal 2014-000661
Application 12/281,348
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1‒4, 8‒10, and 20. Claims 5‒7 and 11‒19 are also pending but have
been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, the sole independent claim on appeal, is reproduced below from the
Claims Appendix of the Appeal Brief dated July 12, 2013 (“App. Br.”).
1. An elastomer composition (C) having no thermoplasticity
which comprises a matrix of a thermoplastic resin (A) in which a
dispersed phase of an elastomer component (B) is finely dispersed to
form an island-in-sea structure, wherein volume ratios of the
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thermoplastic resin (A) and the elastomer component (B) satisfy the
following formula (I):
Φd/Φm>ηd/ηm (I)
where Φd and ηd, respectively, indicate a volume ratio and a melt
viscosity of the elastomer component (B) and Φm and ηm,
respectively, indicate a volume ratio and a melt viscosity of the
thermoplastic resin (A).
App. Br. 10.
The claims on appeal stand rejected as follows:
(1) claims 1‒3 and 8 under 35 U.S.C. § 102(b) as anticipated by
Okamoto;1 and
(2) claims 4, 9, 10, and 20 under 35 U.S.C. § 103(a) as unpatentable over
Okamoto in view of Watanabe.2
The rejections are sustained for the reasons set forth in the Examiner’s
Answer dated August 5, 2013 (“Ans.”). We add the following for emphasis.
B. DISCUSSION
The Appellant indicates that formula (I) recited in claim 1 can be rewritten
as follows:
ηm/ηd · Φd/Φm > 1
(App. Br. 4).
According to the Appellant, “[t]his is the same as the formula (A) of
Okamoto.”3,4 App. Br. 4. However, the Appellant argues “there is no proof or

1 JP 05-125228 A, published May 21, 1993. In this Decision on Appeal, we refer
to the English translation dated September 29, 2011, which is of record in the
instant Application.
2 US 5,919,864, issued July 6, 1999.
3 In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“To anticipate a claim, a
prior art reference must disclose every limitation of the claimed invention, either
explicitly or inherently.”).
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support in Okamoto that the statement ‘a [sic, α] > 1’ is correct, as asserted by the
Examiner” (App. Br. 6), and contends that Okamoto’s formula should instead read
as follows:
ηa/ηb · Φb/Φa = α < 1
(App. Br. 4).5
We understand the Appellant to be arguing that Okamoto does not provide
an enabling disclosure for a composition that satisfies the formula in paragraph 4
of Okamoto (i.e., α > 1). In re Antor Media Corp., 689 F.3d 1282, 1287 (Fed. Cir.
2012) (“A prior art reference cannot anticipate a claimed invention ‘if the allegedly
anticipatory disclosures cited as prior art are not enabled.’” (quoting Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003))). The
Appellant, not the Examiner, bears the burden of showing nonenablement. Antor
Media, 689 F.3d at 1289.

4 The formula referred to by the Appellant as “formula (A)” is disclosed in
Okamoto as follows:
ηa/ηb · Φb/Φa = α > 1
wherein ηa and Φa are the melt viscosity and the volume fraction, respectively, of
ingredient “a” (i.e., the thermoplastic containing constituent) and ηb and Φb are the
melt viscosity and the volume fraction, respectively, of ingredient “b” (i.e., the
rubber-like resin). Okamoto ¶ 4 (identifying formula as “Mathematical formula
2”).
5 In the Reply Brief, for the first time on appeal, the Appellant relies on “Kobunshi
Ronbunshu, Vol. 48, No. 10, pp. 657 – 662 (Oct. 1951)) by Masami Okamoto and
Takashi Inoue” to show that the values of “α” in Okamoto Table 1 are not correct.
Reply Brief dated October 7, 2013, at 5‒6. According to 37 C.F.R. § 41.41(b)(1),
“[a] reply brief shall not include any new or non-admitted amendment, or any new
or non-admitted affidavit or other Evidence.” Therefore, “Kobunshi Ronbunshu”
will not be considered on appeal.

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To support the argument for nonenablement, the Appellant relies on the
following portion of Okamoto paragraph 20:
It turns out that it thickens by adding a cross linking agent by
preparation presentation even if there is much rubber-like resin
(NBR), and constructing a bridge in a rubber composition, phase
reversal is carried out in about 4 minutes in the middle of a mull, and
a rubber composition becomes a disperse phase so that more clearly
than Table 1 and 2.
Okamoto ¶ 20 (emphasis added); see also App. Br. 5.6
The Appellant argues that “in order to make the rubber a dispersed phase,
the condition of ‘α < 1’ should be satisfied.” App. Br. 6. For support, the
Appellant relies on Exhibit 1 attached to the Appeal Brief.7 App. Br. 6.
The Appellant does not direct us to any specific disclosure in Exhibit 1 that
supports this argument. Moreover, our review of Exhibit 1 does not reveal any
value for α based on the formula and parameters of the working example disclosed
in Okamoto. We note that in the Appellant’s invention, the value of α may be
greater than 1 (i.e., α > 1) when rubber is in a dispersed phase. See, e.g., Spec. 4,
l. 35‒5, l. 5 (α is greater than 1 when an elastomer component is present as a
dispersed phase); see also Ans. 7‒8 (pointing out that the phase reversal disclosed
in Okamoto paragraph 20, resulting in α > 1 in Okamoto’s inventive examples, “is
exactly what the claimed invention requires”). Therefore, the Appellant’s
argument is not persuasive of reversible error.

6 The Appellant’s quotation from Okamoto paragraph 20 at the bottom of page 5 of
the Appeal Brief does not appear to have been reproduced from the English
translation of Okamoto dated September 29, 2011.
7 The Appellant identifies Exhibit 1 as “Journal of Macromolecular Science-
Reviews in Macromolecular Chemistry vol. C18, No. 1 (1980), pages 143 ‒ 147.”
App. Br. 5.
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The Appellant also argues that α becomes smaller “as a result of the increase
in the viscosity of the composition due to crosslinking.” App. Br. 6 (emphasis
omitted). More specifically, the Appellant explains:
Since the viscosity ηb of the rubber component in the formula (or
equation) in Okamoto is in the denominator, the value α after the
mixing should therefore be smaller than the value α before the mixing.
App. Br. 6. However, the relative values of α before and after mixing do not,
without more, show that the formula in Okamoto paragraph 4 is not enabled.
Based on the foregoing, the Appellant has failed to establish that the
disclosure of Okamoto does not enable a composition that satisfies the formula
disclosed in Okamoto paragraph 4.
Turning to the preamble of claim 1 which recites “[a]n elastomer
composition (C) having no thermoplasticity,” the Appellant argues that Okamoto
explicitly mentions “thermoplastic” and suggests that the final composition is
thermoplastic because the composition is obtained by mixing. App. Br. 6.
Although the composition disclosed in Okamoto comprises a thermoplastic
constituent and a rubber-like resin, the Examiner finds, and the Appellant does not
dispute, that Okamoto teaches the disclosed composition loses its thermoplasticity
and becomes elastomeric. Ans. 5 (citing Okamoto ¶¶ 3, 20); see also Okamoto ¶¶
3, 20 (disclosing that the composition has the character of an elastomer).
Moreover, the Examiner finds that the Appellant’s composition, like Okamoto’s
composition, may be obtained by mixing. Ans. 8. Thus, the fact that Okamoto
mixes constituents to obtain the disclosed composition does not distinguish
Okamoto’s composition from the claimed composition.
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In sum, the Appellant has failed to show that the Examiner’s finding of
anticipation is erroneous. Therefore, the § 102(b) rejection of claims 1‒3 and 8 is
sustained.
The Appellant does not present arguments in support of the separate
patentability of claims 4, 9, 10, and 20. Therefore, the § 103(a) rejection of claims
4, 9, 10, and 20 is also sustained.
C. DECISION
The decision of the Examiner is 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
kmm