Ex Parte Kawachi

Patent Trial and Appeal Board

Mar 25, 2016

12735231 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121735,231 06/24/2010
32628 7590 03/29/2016
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Yasushi Kawachi
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.
HIR-021 8732
EXAMINER
REYNOLDS, STEVEN ALAN
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
03/29/2016 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):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUSHI KAW ACRI
Appeal2013-008447
Application 12/735,231 1
Technology Center 3700
Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yasushi Kawachi ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-11. Claims 12 and 13 were
canceled. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1 and 5, the independent claims on appeal, are representative
of the claimed subject matter and reproduced below.
1 Appellant identifies Daikyo Seiko, Ltd. as the real party in interest.
Appeal Br. 3.
Appeal2013-008447
Application 12/735,231
1. A molded rubber article for sealing a container or an
instrument used in medication or medical care application,
compnsmg:
a fluorine resin film layer covering at least a surface of
the molded rubber article which contacts with chemicals, and
a polyolefin film layer being interposed between the
fluorine resin film layer and a bare rubber surface.
5. A molded rubber article for sealing a container or an
instrument used in medication or medical care application,
compnsmg:
a rubber base;
a polyolefin film layer present on a bare rubber surface of
the rubber base; and
a fluorine resin film layer present on the polyolefin film
layer,
wherein a polyolefin of the polyolefin film layer is an
ultrahigh molecular weight polyethylene and has adhesion
property to the rubber base and the fluorine resin film layer to
thereby prevent interface detachment between the rubber base
and the fluorine resin film layer.
Appeal Br. 13-14, Claims App.
Rejections
Appellant seeks review of the following rejections:
I. Claims 1 and 5-9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sudo (US 6,090,081, iss. July 18, 2000) in view of Miller
(US 2007/0246468 Al, pub. Oct. 25, 2007);
II. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sudo, Miller, and Cook (US 5,060,659, iss. Oct. 29,
1991); and
III. Claims 4, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sudo, Miller, and Schwartz (US 3,628,681, iss. Dec. 21,
1971 ).
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Application 12/735,231
We AFFIRM.
SUMMARY OF DECISION
ANALYSIS
Rejection I- Obviousness of Claims 1 and 5-9 over Sudo and Miller
The Examiner concludes that the combination of the teachings of
Sudo and Miller would have rendered the subject matter of claims 1 and 5-9
obvious to one of ordinary skill in the art at the time of invention. Ans. 2--4.
The Examiner finds that Sudo discloses a molded rubber article "for sealing
a container or an instrument used in medication or medical care application,
comprising a polyolefin film layer (ultrahigh molecular weight polyethylene
film layer 3 - column 5, lines 47-48) covering at least a surface of a bare
rubber surface (rubber base 2-See Fig. le)." Id. at 2. The Examiner finds
that Sudo fails to disclose "the specifics of the fluorine film layer covering at
least a surface of the rubber article and being in contact with chemicals." Id.
The Examiner finds that Miller discloses "a stopper for a container
comprising a fluorine resin film barrier layer (33 - See Fig. 3 and
paragraph 25) on a surface between the stopper and the sample contained in
the container for the purpose of protecting against contamination of the
sample from the stopper (paragraph 25)." Id. The Examiner determines that
it would have been obvious to one of ordinary skill in the art at the time of
the invention "to have provided the outermost chemical facing surface
(top-most surface of 3 as shown in Fig. le) of the rubber article of Sudo with
a fluorine resin film layer as taught by Miller in order to better protect
against any contamination from the rubber article." Id. at 2-3. Additionally,
the Examiner finds that Sudo supports the finding that one of ordinary skill
in the art would have been prompted to combine the teachings of Sudo and
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Application 12/735,231
Miller because Sudo teaches "that it is desirable to laminate surfaces of
sealing stoppers with ultrahigh molecular weight polyethylene in addition to
fluoro resins." Id. at 3 (citing Sudo, 2:47-53).
Appellant's arguments in response to this rejection focus on two
aspects: ( 1) that neither reference teaches or suggests using two layers, as
opposed to one layer, to protect against rubber-chemical contamination; and
(2) that the Examiner's rationale-to better protect against contamination
from the rubber article-"is based on an improper assumption that the
ultrahigh molecular weight polyethylene coating already provided on
Sudo[' s] arrangement is at least partially inoperative for its intended
protective purpose and that some modification in the form of another layer,
is necessary." Appeal Br. 6.
In response to Appellant's argument, the Examiner maintains that one
of ordinary skill in the art would have been prompted to use two layers of
protection rather than one, relying on the following disclosure from Sudo:
polytetrafluoroethylene "is most suitable, and that high molecular weight
polyethylene ... is preferably used in addition to fluoro resins, as compared
with other fluoro resins." Sudo, 2:47-53, cited in Ans. 6.
Appellant's Reply Brief asserts that the Examiner misinterprets
Sudo's disclosure regarding polytetrafluoroethylene and high molecular
weight polyethylene because Sudo's statement that one can be used "in
addition to" the other does not teach using both at the same time; rather, it
teaches using one or the other. See Reply Br. 2-3.
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Application 12/735,231
Claim 12 is directed to a molded rubber article with at least two
layers-a fluorine resin film layer and a polyolefin layer. The recited
polyolefin film layer is "interposed between the fluorine resin film layer and
a bare rubber surface." Appeal Br. 13, Claims App. As reflected above, the
Examiner finds that Sudo and Miller disclose each element of the recited
claims. The Examiner's rationale for using two layers of protection rather
than one- to better protect against any contamination from the rubber
article-is reasonable and has rational underpinnings, i.e., two layers protect
better than one.
Appellant's argument-that neither Sudo nor Miller teaches using the
two recited layers-is well taken. That, however, does not address the
Examiner's combination of teachings from Sudo and Miller, and, thus, is not
persuasive to show Examiner error. Additionally, we disagree with
Appellant's argument that the Examiner's rationale assumes Sudo's single
layer is partially inoperative for its intended purpose-protection. We agree
with the Examiner that, in many instances, two layers, where each layer is
taught to be effective to prevent contamination, will provide better
protection than a single layer. That conclusion, in and of itself, however,
does not mean that a single layer fails to provide the protection sought by a
2 Although Appellant briefly points out that claim 5 includes an additional
element, Appellant does not include a "separate subheading" indicating that
claim 5 is argued separately. See 37 C.F.R. § 41.37(c)(l)(iv) ("Under each
heading identifying the ground of rejection being contested, any claim( s)
argued separately or as a subgroup shall be argued under a separate
subheading that identifies the claim( s) by number."). We, thus, select
claim 1 as representative. Accordingly, claims 5-9 stand or fall with
claim 1.
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Application 12/735,231
single layer. In other words, that one of ordinary skill in the art would add a
second layer to Sudo' s teachings does not mean that Sudo' s single layer
alone is not effective, to whatever degree Sudo intended. 3
Accordingly, we sustain the Examiner's rejection of claims 1 and 5-9.
Rejection II - Obviousness of Claims 2 and 3 over Sudo, Miller, and Cook
The Examiner concludes that the combination of the teachings of
Sudo, Miller, and Cook would have rendered the subject matter of claims 2
and 3 obvious to one of ordinary skill in the art at the time of the invention.
Ans. 4--5. The Examiner relies upon Sudo and Miller to the same extent
discussed in the context of Rejection I, but finds that neither Sudo nor Miller
disclose that the rubber comprises a thermoplastic elastomer, as recited in
claim 2, or one of the specific thermoplastic elastomers, as recited in
claim 3. Id. at 5. The Examiner finds that Cook "teaches a stopper ( 10) for
sealing a container, wherein the stopper is made from a thermoplastic rubber
such as polyester elastomer (column 3; line 41)." Id. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
at the time of the invention "to have made the rubber article of Sudo-Miller
3 Although we reach the conclusion that the Examiner provided reasoning
with rational underpinnings to sustain the rejection, we note that we do not
read Sudo' s language regarding using polytetrafluoroethylene "in addition"
to fluoro resins as teaching or suggesting the use of two layers at the same
time. See Sudo, 2:47-53. Rather, the most reasonable understanding of
Sudo' s teaching, in light of Sudo' s entire disclosure, is that one or the other
is most suitable. The reason as to why one of ordinary skill in the art would
be prompted to combine Sudo' s and Miller's teachings, however, need not
be expressly recited in either reference. And, the reason provided by the
Examiner here, is more than sufficient to justify the conclusion of
obviousness.
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Application 12/735,231
from polyester elastomer as taught by Cook in order to give the stopper
sufficient resilience and compressibility." Id.
Appellant asserts that the Examiner's proposed modification of
Sudo-Miller "completely undoes the Examiner's case. If the rubber stopper
is not made of rubber then there can be no rubber-chemical contamination.
The Examiner's motivation is therefore rendered moot." Appeal Br. 11.
Appellant's argument is unpersuasive. Claim 2,4 which depends from
claim 1, recites "wherein the rubber comprises a thermoplastic elastomer."
Appeal Br. 13, Claims App. Cook teaches constructing a stopper with
"thermoplastic rubbers such as polyester elastomer." Cook, 3:36-41. Thus,
the Examiner's proposed combination does not result in a stopper not made
of rubber; it results in a stopper made of a polyester elastomer, which Cook
teaches is a thermoplastic rubber. Accordingly, we sustain the Examiner's
rejection of claims 2 and 3.
Rejection Ill - Obviousness of Claims 4, 10, and 11
over Sudo, Miller, and Schwartz
The Examiner concludes that the combination of the teachings of
Sudo, Miller, and Schwartz would have rendered the subject matter of
claims 4, 10, and 11 obvious to one of ordinary skill in the art at the time of
the invention. Ans. 5---6. Appellant's sole argument in response to this
rejection is that Schwartz teaches only a single layer of protection on a
stopper and therefore does not lead one of ordinary skill in the art toward the
claimed subject matter. See Appeal Br. 12. The Examiner's positions with
4 As with the Appellant's arguments in response to the Examiner's first
rejection, Appellant does not separately argue claims 2 and 3. Accordingly,
claim 3 stands or falls with claim 2. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/735,231
respect to this rejection and response to Appellant's argument are well-taken
and supported. See Ans. 5---6, 9-10. Thus, we adopt them as our own.
Accordingly, we sustain the rejection of claims 4, 10, and 11.
DECISION
We affirm the Examiner's decision rejecting claims 1-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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