Ex Parte Iijima et al

Patent Trial and Appeal Board

Feb 16, 2017

14287492 (P.T.A.B. Feb. 16, 2017)

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.
14/287,492 05/27/2014 Hiroyoshi MIMA 3400.P1474US 1890
23474 7590 02/21/2017
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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 HIROYOSHIIIJIMA and HIDEO TAKAHASHI
Appeal 2015-007516
Application 14/287,492
Technology Center 1700
Before N. WHITNEY WILSON, AVELYN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision below we refer to the Specification filed May 27, 2014
(Spec.), the Non-Final Office Action mailed August 14, 2014 (Non-Final),
the Appeal Brief filed March 9, 2015 (Appeal Br.), the Examiner’s Answer
mailed June 16, 2015 (Ans.), and the Reply Brief filed August 8, 2015
(Reply Br.).
2 Appellants identify the real party in interest as Momentive Performance
Materials Japan LLC, the assignee of the instant application. Appeal Br. 1.
Appeal 2015-007516
Application 14/287,492
STATEMENT OF CASE
The claims are directed to heat-curable silicone rubber composition
having high antistatic properties. Spec. 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A heat-curable silicone rubber composition, prepared by
adding 10 to 100 ppm of (B) a poorly water-soluble or water-
insoluble ionic liquid having bis(trifhioromethanesulfonyl)imide
as an anionic component, is in the liquid state at an ordinary
temperature of 23°C and has a decomposition temperature of at
least 220°C to 100 parts by weight of (A) a heat-curable silicone
rubber.
Appeal Br., Claims Appendix (Claims App’x) 1.
REJECTIONS
The Examiner maintains the following rejections3:
A. Claim 2 stands rejected under 35U.S.C.§101as claiming
the same invention as claim 9 of Iijima.4 Non-Final 2.
B. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sakamoto.5 Id. at 5.
C. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sakamoto in view of Norifusa.6 Id. at 6.
3 The Examiner withdraws nonstatutory double patenting rejections of
claims 1 and 3—12 over claims 1—9 ofU.S. Patent No. 8,779,072 and claims
1—9, 11, and 12 over claims 1 and 2 ofU.S. Patent No. 8,030,379. Ans. 13.
4 Iijima et al., US 8,779,072 B2, issued July 15, 2014 (“Iijima”).
5 Sakamoto et al., US 2006/0058452 Al, published March 16, 2006
(“Sakamoto”).
6 Norifusa et al., JP 2004-346291 A, published December 9, 2004, relying on
the machine translation dated May 10, 2012, which use is not contested
(“Norifusa”).
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D. Claims 1, 3, 4, 8, and 11 stand rejected under 35 U.S.C.
§103 (a) as being unpatentable over Daichi7 in view of
Ikeno.8 Id. at 8.
E. Claims 2, 6, 9, and 12 stand rejected under 35 U.S.C.
§103 (a) as being unpatentable over Daichi in view of
Ikeno and further in view of Mizuta.9 Id. at 9.
F. Claims 2, 7, 8, and 12 stand rejected under 35 U.S.C.
§103 (a) as being unpatentable over Daichi in view of
Ikeno and further in view of Fujihana.10 Id. at 10.
G. Claims 2, 5, and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Daichi in view of Ikeno in view
of Kamei.* 11 Id. at 12.
H. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Daichi in view of Ikeno in view of
Thompson.12 Id. at 14.
7 Daichi et al., JP 2006-225422 A, published August 31, 2006, relying on the
machine translation dated September 17, 2012, which use is not contested
(“Daichi”).
8 Ikeno et al., JP 2005-344102 A, published December 15, 2005, relying on
the machine translation dated September 5, 2012, which use is not contested
(“Ikeno”).
9 Keiichiro Mizuta, WO 2006/123810 Al, published November 23, 2006
(“Mizuta”).
10 Fujihana et al., JP 2005-35076 A, published December 22, 2005, relying
on the machine translation dated May 10, 2012, which use is not contested
(“Fujihana”).
11 Kamei et al., JP 2007-321115 A, published December 13, 2007, relying on
the machine translation dated May 10, 2012, which use is not contested
(“Kamei”).
12 Thompson et al., US 6,592,988 Bl, issued July 15, 2003 (“Thompson”).
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Application 14/287,492
Appellants seek our review of rejections A—H. See generally Appeal
Br.
OPINION
Rejection A — Double Patenting Rejection (claim 2)
The Examiner rejects claim 2, under 35 U.S.C. § 101, as claiming the
same invention as claim 9 of Iijima. Non-Final 2.
Appellants argue that Iijima’s claim 9 “requires that a cationic
component selected from the group consisting of a pyridinium cation, a
pyrrolidinium cation and an ammonium cation be present in the heat-curable
silicone rubber composition,” while appealed claim 2 does not require the
presence of a specific cationic component. Appeal Br. 3. Thus, Appellants
urge that instant claim 2 is not the same invention as claim 9 of Iijima. Id.
We agree with Appellants that instant claim 2 does not recite the same
invention as claim 9 of Iijima. A rejection based on same invention type
double patenting under 35 U.S.C. § 101 requires that the inventions recited
in the two sets of claims be exactly the same, i.e., identical subject matter is
being claimed. In re Vogel, 422 F.2d 438, 441 (CCPA 1970). “A good test,
and probably the only objective test, for ‘same invention,’ is whether one of
the claims could be literally infringed without literally infringing the other.
If it could be, the claims do not define identically the same invention.” Id.
In this case, claim 9 of Iijima (by virtue of its dependence from claim
8) requires that the cationic component of component B is “selected from the
group consisting of a pyridinium cation, a pyrrolidinium cation and an
ammonium cation” while claim 2 of the instant application is broader. As a
result, while claim 2 may be infringed by a poorly water-soluble or water-
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insoluble ionic liquid, claim 9 of Iijima would not necessarily be infringed
by the same ionic solution. Therefore, we do not sustain the Examiner’s
double patenting rejection of claim 2 under 35 U.S.C. § 101.
Rejections B and C— Obviousness (claims 1—3)
The Examiner rejects claims 1 and 3 as obvious over Sakamoto and
claim 2 as obvious over Sakamoto in view of Norifusa. Non-Final 5 and 6.
Appellants’ arguments opposing the rejection of claims 1—3 (Rejections B
and C) are the same. See Appeal Br. 4—5. We therefore focus our
discussion below on claim 1 (Rejection B) to resolve the issues for
Rejections B and C.
The Examiner finds that Sakamoto discloses
an antifouling or fouling release curing composition comprising
a diorganopolysiloxane [abstract] with rubber properties [0003;
0043] and an ionic liquid [abstract] included in amount as low as
0.01 parts by weight (100 ppm) [0012], The ionic liquids have a
melting point below 20°C [0033]. The cationic an alkyl or
alkoxyalkyl ammonium type cation [0034-0036] and the anion is
preferably bis(trifhioromethansulfiiyl)imide (TFSI) [0037-
0038],
Non-Final 5. The Examiner further finds that Sakamoto teaches a heat-
curable silicon rubber because the Sakamoto composition cures at room
temperature. Id. In addition, the Examiner finds that “the claimed effects
and physical properties, i.e., water insolubility and decomposition
temperature of 220°C or more, would inherently be achieved by a
composition with all the claimed ingredients.” Id. at 6.
Appellants argue that “claim 1 requires that the ionic liquid be present
in an amount of from 10 to 100 ppm which is clearly lower than the required
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amount in the Sakamoto et al reference.” Appeal Br. 4. Appellants also
argue that the unexpected results associated with the claimed invention
rebuts the showing of a prima facie case of obviousness. Id. Specifically,
Appellants contend that “Examples 1—5 in the present specification show
that as low as 10 ppm of the ionic substance of the present invention
provides an unexpected improvement in anti-static property with a long
duration, even after a secondary vulcanization at a high temperature.” Id. at
5.
Appellants do not persuade us of reversible error by the Examiner. In
this case, and as the Examiner aptly explains, Sakamoto discloses the use of
100 ppm of the bis(trifhioromethansulfonyl)imide anion (i.e., 0.01 weight
%) and therefore, “[t]he disclosed and claimed ranges for amount of ionic
liquid overlap at 100 ppm.” Ans. 14. The Federal Circuit has held “[i]n
cases involving overlapping ranges . . . even a slight overlap in range
establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d
1325, 1329-30 (Fed. Cir. 2003).
And, Appellants’ argument that the claimed range of 10 to 100 ppm
results in an unexpected improvement in anti-static properties is
unpersuasive of reversible error for the reasons identified by the Examiner.
Specifically, the Examiner explains that “[t]he comparative examples use
either no ionic liquid (CE1), a lithium cation based ionic liquid (CE2) or a
tetrafluoroborate anion based ionic liquid (CE3).... [while] Sakamoto
discloses an ionic liquid based on ammonium cation and
bis(trifhioromethanesulfonyl)imide anion.” Ans. 14—15. The Examiner
finds that Sakamoto is closer to the inventive examples than the comparative
examples (Ans. 15) and as a result, Appellants unexpected results are not
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based on comparison to the closest prior art.13 The burden rests with
Appellants to establish (1) that the alleged unexpected results presented as
being associated with the claimed invention are, in fact, unexpected, (2) that
the comparisons are to the disclosure of closest prior art, and (3) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972)
(emphasis added); see also In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”). In the present case, Appellants do not dispute the
Examiner’s finding that the comparative examples are not based on the
closest prior art. See generally Reply Br. 2—3. Therefore, on this record, we
sustain the Examiner’s rejection of claims 1—3 (Rejections B and C).
Rejections D—H— Obviousness (claims 1—12)
The Examiner rejects claims 1—12 as obvious over Daichi in view of
Ikeno, in addition to tertiary references—Mizuta, Fujihana and Thompson—
relevant to certain dependent claims. Non-Final 8—14. Appellants’
arguments opposing Rejection D are the same for Rejections E—H. See
Reply Br. 5 (“the tertiary references cited by the Examiner do not cure the
deficiencies contained in the previously discussed [primary] references”);
13 We note also that the inventive examples 1—5 use 10 ppm of ionic fluid
and do not demonstrate unexpected results over the entire range claimed,
i.e., 10 ppm to 100 ppm. Therefore, should prosecution continue, the
Examiner may wish to consider whether the inventive examples are
commensurate in scope with the claimed range.
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see also Final Act. 6—9. We therefore focus our discussion below on claim 1
(Rejection D) to resolve the issues for Rejections D—H.
The Examiner rejects claims 1, 3, 4, 8, and 11 as obvious over Daichi
and Ikeno (Rejection D). Non-Final 8. The Examiner finds that
Daichi discloses a silicone rubber composition with ion
electroconductive antistatic agent present in 0.0001 — 5 parts by
mass per 100 parts of silicone rubber [claim 1], this is as low as 1
ppm of the antistatic agent. Daichi discloses the agent comprising
LiN(S02CF3)2, i.e. lithium bis(trifhioromethanesulfonyl)imide and
other alkali metal atom salts [claim 5].
Id. The Examiner acknowledges that Daichi does not teach the specific
insoluble ionic liquid as claimed but finds that Ikeno teaches “[preferred
ionic liquids include bis(trifluoromethane sulfonyl)imide anions combined
with alkyl and alkoxyalkyl functional ammonium, pyrrolidinium and
morpholinium cations [0054-0056].” Id. The Examiner also finds that
Ikeno discloses LiN(S02CF3)2 and other alkali metal atom salts of Daichi and
further that “Ikeno teaches that the lithium and onium salts [e.g.,
ammonium] of TFSI are functional equivalents for the purpose of combining
with siloxane rubber as antistatic agents.” Id. at 9. Thus, the Examiner
reasons that the person of ordinary skill in the art would have found it
obvious “to use the claimed water insoluble salts of TFSI in Daichi because
Ikeno teaches that they are functionally equivalent to the salts of Daichi and
it is prima facie obvious to substitute art-recognized functional equivalents
known for the same purpose.” Id.
Appellants argue that the claimed invention possesses superior
properties to the closest prior art. Appeal Br. 6—7. Appellants rely upon two
declarations by Hiroyoshi Iijima, one of the co-inventors of the instant
application. Appellants urge that the first declaration, dated August 21,
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2013, shows that the antistatic agent of Daichi is “lacking” and that “this
antistatic agent takes a long time until the antistatic property is obtained and
that a large amount, 100 ppm, is needed to obtain the antistatic property as
compared to the compositions of the present invention.” Appeal Br. 6. The
second declaration, dated October 25, 2013, “illustrated the criticality of the
poorly water-soluble or water-insoluble ionic liquid of the present invention
having an ionic component of bis(trifluoromethanesulfonyl)imide combined
with a heat-curable silicone resin was filed in the parent application” and
shows that the
the inventive compositions exhibited superior antistatic
properties, even after secondary vulcanization at a high
temperature, stably imparted an antistatic property to the silicone
polymer having a poor compatibility with an ionic substance for
an extended period of time and provided the product composition
with a superior appearance as compared to the ionic component
specifically disclosed in Daichi et al, and tested in Comparative
Example 2 in the present application.
Id. 6—7. Appellants also argue that Ikeno, the secondary reference, discloses
no less than 1000 ppm of the ionic liquid, which is outside the scope of the
claims. Ans. 4—5.
We find this evidence unavailing for the reasons presented by the
Examiner. Ans. 15—16. In particular, the Examiner explains that while the
results reported “appear” to be unexpected, Appellants have not conducted
testing commensurate in scope with the claims. Ans. 15—16. “[T]he
inventive examples only show results for 10 ppm of ionic liquid . . . [while]
[t]he independent claims 1 and 4 limit the amount of ionic fluid to 10 to 100
ppm and 0.05 to 10 ppm respectively.” Id. at 15. Appellants have not
adequately explained why the amounts of ionic liquid reported in the
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inventive examples are representative of the entire range of the amounts
encompassed by the claims. Appellants must establish that the showing
relied upon actually demonstrates unexpected results, In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997), and is reasonably commensurate in scope with
the degree of protection sought by a claim, In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983). On this record, Appellants have not adequately shown
that the evidence relied upon is reasonably commensurate in the scope with
the claims.
Appellants also argue that the amount of ionic antistatic used in
tertiary references Ikeno, Kaimei, and Thompson exceeds that of the claims.
Appeal Br. 4—5 and 9. Appellants’ argument is not persuasive of error. As
the Examiner correctly explains, the rejections rely upon Daichi for the
amount of ionic liquid. Ans. 16. Appellants’ arguments amount to an
attack on the references individually and fail to address the combined
teachings as presented by the Examiner. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Rather, “[t]he test for obviousness is what
the combined teachings of the references would have suggested to those
having ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Accordingly we affirm the Examiner’s rejection of claims 1—12 under
35 U.S.C. § 103 (a) (Rejections D-H) for the reasons presented by the
Examiner and given above.
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CONCLUSION
The Examiner reversibly erred in rejecting claim 2 under 35 U.S.C.
§ 101 as claiming the same invention as claim 9 of Iijima.
The Examiner did not reversibly err in rejecting claims 1 and 3 under
35 U.S.C. § 103(a) as being unpatentable over Sakamoto.
The Examiner did not reversibly err in rejecting claim 2 under
35 U.S.C. § 103(a) as being unpatentable over Sakamoto in view of Norifusa.
The Examiner did not reversibly err in rejecting claims 1, 3, 4, 8, and
11 under 35 U.S.C. § 103(a) as being unpatentable over Daichi in view of
Ikeno.
The Examiner did not reversibly err in rejecting claims 2, 6, 9, and 12
under 35 U.S.C. §103(a) as being unpatentable over Daichi in view of Ikeno
and further in view of Mizuta.
The Examiner did not reversibly err in rejecting claims 2, 7, 8, and 12
under 35 U.S.C. §103(a) as being unpatentable over Daichi in view of Ikeno
and further in view of Fujihana.
The Examiner did not reversibly err in rejecting claims 2, 5, and 12
under 35 U.S.C. §103(a) as being unpatentable over Daichi in view of Ikeno
in view of Kamei.
The Examiner did not reversibly err in rejecting claim 10 under
35 U.S.C. §103 (a) as being unpatentable over Daichi in view of Ikeno in
view of Thompson.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—12 is
affirmed.
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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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