Ex Parte Hosoi et al

Patent Trial and Appeal Board

Jun 11, 2013

11565145 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MASAYOSHI HOSOI and RIICHIRO TAKESHITA
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Appeal 2011-008517
Application 11/565,145
Technology Center 3700
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Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants have requested rehearing of the decision entered March 5,
2013 (“Decision”), which affirmed rejections of claims 1-3, 6, and 9 (all of
the pending claims) for obviousness. Appellants also included a request for
an expanded panel. The request for the expanded panel, as well as the
request for rehearing, is denied.

Appeal 2011-008517
Application 11/565,145

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DISCUSSION
Appellants disagree with the panel’s determination that Whitbourne
1

does not teach away from the combining the references as proposed by the
Examiner. Specifically, Appellants argue that the “Board panel’s
characterization and assertions of WHITBOURNE are factually inaccurate,
and as such, constitute a clear and reversible error” (Req. Reh’g 9).
Specifically, Appellants assert that Whitbourne “specifically teaches that
chlorinated polyolefins will not suitably work on a polyolefin substrate, such
as polyethylene” (id. at 11). Thus, according to Appellants, Whitbourne
teaches away from the combination proposed by the Examiner (id. at 12).
These arguments are not persuasive. First, Whitbourne, in reviewing
the Fan patent, specifically teaches that Fan had three examples in which
chlorinated polyolefins were applied to a polyethylene tube (Whitbourne,
col. 8, ll. 8-39). Whitbourne does teach that Fan’s coating is preferably
penetrated into the substrate, and is not useful for non-penetrable surfaces
such as metals; however, that is not an issue when a polyolefin substrate,
such as polyethylene, is used.
Moreover, as noted in the decision on appeal (Decision 9), and also
quoted by Appellants in the Request (Req. Reh’g 4), Whitbourne teaches:
The present coatings have unexpectedly superior adhesion and
abrasion resistance as compared to the prior art coatings. Thus,
while the prior art chlorinated polyolefin coating is suitable for
less stringent applications such as on polyurethanes and
polyesters that do not require high specific adhesion, the
improved coatings of the present invention allow for use in a
much broader range of applications. These additional

1
Whitbourne, US 6,306,176 B1, issued Oct. 23, 2001.
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Application 11/565,145

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applications include use on substrates such as metals, including
nickel titanium alloy, nickel, gold, chrome, platinum and
stainless steel, and plastics, including polyolefins such as
polyethylene and polypropylene, silicones, latex rubbers,
polyisocyanates, and others, for which the prior art coatings are
not sufficiently adherent nor sufficiently abrasion resistant.

(Id. at col. 9, 11. 20-34.)
Whitbourne does not teach, as alleged by Appellants, that “chlorinated
polyolefins will not suitably work on a polyolefin substrate, such as
polyethylene” (Req. Reh’g 11). What Whitbourne teaches is that its
coatings may have superior adhesion and abrasion resistance over coatings
of the prior art.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[T]he
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418. “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. In
determining whether obviousness is established by combining the teachings
of the prior art, “the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” In re Keller,
642 F.2d 413, 425 (CCPA 1981). In addition, a reference disclosure is not
limited only to its preferred embodiments, but is available for all that it
discloses and suggests to one of ordinary skill in the art. In re Lamberti,
545 F.2d 747, 750 (CCPA 1976).
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Like our appellate reviewing court, “[w]e will not read into a
reference a teaching away from a process where no such language exists.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006). Moreover, “just because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334
(Fed. Cir. 2012).
Thus, just because Whitbourne teaches that its coatings may have
superior adhesion and abrasion resistance over prior art coatings is not
sufficient to teach away from the combination of references as suggested by
the Examiner. Appellants have not provided any scientific reasoning or
evidence that the polyolefin coatings on polyethylene tubing, as disclosed by
Whitbourne, would not have sufficient adhesion and abrasion resistance for
the purposes of the combination as set forth by the Examiner.
In the request for an expanded panel, Appellants recognize that the
decision was not designated as “Informative” or “Precedential” (Req. Reh’g
19). Appellants assert, however, that an expanded panel is warranted, as the
decision is now “citable authority and will likely have a significant impact
upon the examiners in the Patent Corps that examine patent applications that
involve this issue” (id.). We do not agree. If we were to accept Appellants’
reasoning, every request for rehearing would be entitled to an expanded
panel.

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SUMMARY
Accordingly, while we have granted Appellants’ request for rehearing
to the extent that we have reconsidered our previous decision, the request is
denied with respect to an expanded panel to reconsider the appeal, and
similarly denied with respect to making any modification to the Decision.
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)(iv).

REHEARING DENIED

cdc