Ex Parte Kubota et alDownload PDFPatent Trial and Appeal BoardSep 29, 201612161750 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/161,750 07/22/2008 23373 7590 10/03/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Kouji Kubota 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. Q92896 4603 EXAMINER CHRISS, JENNIFER A ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KOUJI KUBOTA and NORIMASA UESUGI Appeal2015-005371 Application 12/161, 7 50 Technology Center 1700 Before BEYERL YA. FRANKLIN, MONTE T. SQUIRE, and DEBRA L. DENNETT, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal the Examiner's final rejection of claims 1, 7-10, and 12. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Daikin Industries, Ltd. as the Real Party in Interest. App. Br. 2. Appeal2015-005371 Application 12/161, 7 50 The Claimed Invention Appellants' disclosure relates to "a fluorine-containing polymer; a water- and oil-repellent agent to be added to a thermoplastic resin; a thermoplastic resin composition comprising the water- and oil-repellent agent and the thermoplastic resin; and a molded article formed from the thermoplastic resin composition." Spec. i-f 1. Claim 1 is representative of the claims on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 12, 13): 1. A water- and oil-repellent agent compnsmg a fluorine- containing polymer which consists of: (A) repeating units derived from a fluorine-containing monomer having a fluoroalkyl group or fluoroalkenyl group, and (B) repeating units derived from a monomer having an imide group, the monomer having the imide group being at least one compound selected from the group consisting of maleimide and phenyl maleimide wherein a weight ratio of the repeating units (A) to the repeating units (B) is from 10/90 to 95/5, and the fluorine-containing monomer 1s represented by the general formula ( 1): C(-A)(-D)=C(-X)-Y-[Q-Z-]p -T-Rf (1) wherein A, D and X each is a hydrogen atom, a methyl group, a linear or branched alkyl group having 2 to 20 carbon atoms, a fluorine atom, a chlorine atom, a bromine atom, an iodine atom, a CFL 1L2 group (wherein L 1 and L 2 is a hydrogen atom, a fluorine atom or a chlorine atom), a cyano group, a linear or branched fluoroalkyl group having 1 to 20 carbon atoms, a substituted or unsubstituted benzyl group, or a substituted or unsubstituted phenyl group; Y is -C(=0)-0-, -C(=O)-NH-, -0- or-O-(CF2 CF(-CF3 )0-)g- in which g is 1to21; Q is -(CH2)n - or -(CH2)n -N(-Q 1)- in which n is 1to10, Q 1 is a hydrogen atom or CqH2q+1 wherein q is 1 to 30; Z is -S-, -SO-, -S02 - or-C(-Z1)(-Z2)- in which Z1 and Z2 each is a hydrogen atom, -OH or -OCO-CwH2w+1 wherein w is 1to30; 2 Appeal2015-005371 Application 12/161, 7 50 T is a direct bond, an aliphatic group having 1 to 10 carbon atoms, or an aromatic or cycloaliphatic group having 6 to 20 carbon atoms; Rf is a linear or branched fluoroalkyl group or fluoroalkenyl group having 1 to 21 carbon atoms; and pis 0 or 1. The References The Examiner relies on the following prior art as evidence in rejecting the claims on appeal: Kobayashi JP 06-222224 A Kita et al., US 5,556,991 (hereinafter "Kita") Yamana JP 10-168324 The Rejection Aug. 12, 1994 Sept. 17, 1996 June 23, 1998 On appeal, the Examiner maintains the following rejection: Claims 1, 7-10, and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi in view of Kita and Yamana. OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner's rejections for the reasons set forth in the Answer to the Appeal Brief dated February 26, 2015 and the Final Office Action dated April 29, 2014, which we adopt as our own. Nevertheless, we highlight and address specific findings and arguments for emphasis as follows. 3 Appeal2015-005371 Application 12/161, 7 50 Appellants argue claims 1, 7-10, and 12 as a group. We select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37( c )(1 )(iv). The Examiner finds that the combination of Kobayashi, Kita, and Yamana suggests all of claim 1 's limitations and would have rendered claim 1 obvious. Ans. 2---6. The Examiner finds that Kobayashi discloses the majority of claim 1 's limitations, but that it does not disclose "the claimed imide monomer or Rf group." Id. at 2--4 (citing Kobayashi, claim 1, i-f 17, i-f 18, Chemical Formula 9, i-f 22, Chemical Formula 10). The Examiner, however, relies on Kita and Yamana for disclosing these missing limitations. Id. at 4. In particular, the Examiner finds that Kita discloses "a stabilized maleimide compound, which is hard to discolor during storage" and that the "maleimide compounds that may be used to form Kita['s] stabilized maleimide compound include N-alkyl maleimide and phenyl maleimide." Ans. 4 (citing Kita, Abstract, col. 2, 11. 42---61 ). The Examiner finds further that Yamana discloses "a thermoplastic resin composition consisting of thermoplastic resin and an additive for giving water and oil repellency to [the] resin, which consists of a fluorine polymer comprising a monomer having a polyfluoro alkyl group which polymerizes in the presence of an alpha methylstyene dimer with an independent or polymerizable monomer." Id. at 4, 5 (citing Yamana, claim 2, i-f 7, formula 1, i-f 9, 11. 1-2). Based on the above findings, the Examiner concludes that it would have been obvious to a person having ordinary skill in the art at the time of the invention: (1) "to substitute the N-alkyl maleimide of Kobayashi with the phenyl maleimide of Kita because Kita teaches the functional equivalency of maleimides in making a discolor[-]resistant polymer" (Ans. 4 Appeal2015-005371 Application 12/161, 7 50 4); and (2) "to have added the thermoplastic resin of Yamana and modified the fluorine polymer of Kobayashi with the Rf group of Yamana with the motivation of forming a water and oil repellent resin as disclosed by Yamana" (id. at 5) (citing Yamana, claims 1 and 2). Appellants argue that the Examiner's rejection should be reversed because "[ o ]ne of ordinary skill in the art would not have been motivated to combine the teachings of Kobayashi and Yamana." App. Br. 8 (emphasis omitted). In particular, Appellants contend that because Kobayashi and Yamana relate to different technical fields and "the problems to be solved are quite different," one skilled in the art "would not have referred to Kobayashi" and "would not have contemplated substituting the fluorine- containing monomer of Kobayashi with that of Yamana." Id. We do not find Appellants' argument persuasive. For one thing, the Supreme Court has stated that it is error to "look only to the problem the patentee [or applicant] was trying to solve." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). Appellants' argument is not well-taken because it too narrowly characterizes the scope of the prior art's teachings, including the applicable fields of endeavor and the pertinence of the problems addressed to the problem in which the invention is involved. See In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). As the Examiner found (Ans. 5, 6) and contrary to Appellants' argument, Kobayashi and Yamana are both directed to the same field of endeavor, i.e., fluoroalkyl polymers, which inherently possess water- and oil- repellency. See Kobayashi, claim 1; Yamana, claim 1, i-f 1. As the Examiner also points out (Ans. 6), even if the two fluoroalkyl polymers disclosed by the references are used in different types of inventions or to solve different problems, both polymers have very similar property 5 Appeal2015-005371 Application 12/161, 7 50 characteristics and functions, which are directly pertinent to and serve as a basis for the Examiner's rationale for combining the references' teachings to arrive at the Appellants' claimed invention. Moreover, based on the record before us, we find that the Examiner's stated rationale and finding (Ans. 5, 7) that one of ordinary skill in the art would have readily recognized the benefit of water- and oil-repellency to an optical wire covering because it would prevent damage to the optical wire and that adding the fluorine group of Yamana to the Kobayashi monomer would make the monomer further repellent is supported by a preponderance of the evidence and based on sound technical reasoning. Kobayashi, claim 1, i-f 17, i-f 18, Chemical Formula 9, i-f 22, Chemical Formula 10; Yamana, claims 1, 2, i-f 7, formula 1, i-f 9, 11. 1-2; see also Ans. 5 (explaining that one of ordinary skill in the art would have added the thermoplastic resin of Yamana and modified the fluorine polymer of Kobayashi with the Rf group of Yamana with the motivation of forming a water and oil repellent resin as disclosed by Yamana) (citing Yamana, claims land 2). Appellants fail to direct us to sufficient evidence or provide an adequate technical explanation as to why the Examiner's articulated reasoning for combining the teachings of the prior art to arrive at the claimed invention lacks a rational underpinning or is otherwise based on some reversible error. Appellants' disagreement with the Examiner's reason for combining the references, without more, is insufficient to establish reversible error in this regard. KSR, 550 U.S. at 420 (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed). Appellants argue that the Examiner's rejection should be reversed because Kobayashi and Yamana disclose "monomers other than [the 6 Appeal2015-005371 Application 12/161, 7 50 claimed] monomers (A) and (B)" in their examples and working examples and "do not teach or suggest that the other monomers should be omitted" from the composition. App. Br. 9. Appellants also argue that "one skilled in the art would not have conceived of the elimination of such other monomers based on the teachings of Kobayashi and Yamana." Id. We are not persuaded by this argument because Kobayashi's and Yamana's teachings are not limited to the disclosures in their examples. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) ("[A] reference is not limited to the disclosure of specific working examples."). Appellants also do not provide an adequate technical explanation or direct us to sufficient evidence in the record to support the argument. Attorney argument cannot take the place of evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants' conclusory assertion that "one skilled in the art would not have conceived of the elimination of such other monomers based on the teachings of Kobayashi and Yamana" (App. Br. 9), without more, 1s msufficient to establish reversible error in the Examiner's factual findings and analysis in this regard. Appellants argue that the Examiner's rejection should be reversed because Kobayashi, Kita, and Yamana either alone or in combination do not disclose or suggest the "claimed monomer (B) ... consisting of maleimide and phenyl maleimide" and the "superior results provided by the claimed invention." App. Br. 10, 11 (emphasis omitted). Appellants further argue that the "N-alkyl maleimide used in Kobayashi cannot provide high heat resistance." Id. at 10 (citing Spec. i19). We are not persuaded by Appellants' arguments in this regard because a naked assertion that the references fail to teach or suggest a claim limitation is not an argument in support of separate patentability. Cf In re 7 Appeal2015-005371 Application 12/161, 7 50 Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(l)(iv) (2013). Moreover, considering the combined teachings of the prior art as a whole, the Examiner's finding that the combination of Kobayashi, Kita, and Yamana teaches all of claim 1 's limitations, including the claimed monomer (B) "having ... at least one compound selected from the group consisting of maleimide and phenyl maleimide" and the Examiner's rationale for combining the references' teachings to arrive at the claimed invention (Ans. 2---6) are supported by a preponderance of the evidence and based upon sound technical reasoning. Kobayashi, claim 1, i-f 17, i-f 18, Chemical Formula 9, i-f 22, Chemical Formula 10; Kita, Abstract, col. 2, 11. 42---61; Yamana, claims 1, 2, i-f 7, formula 1, i-f 9, 11. 1-2. We do not find Appellants' arguments that the claimed invention provides "superior results" and that the "N-alkyl maleimide used in Kobayashi cannot provide high heat resistance" persuasive because Appellants, again, do not provide an adequate technical explanation to support them. De Blauwe, 736 F.2d at 705. On the record before us, we also concur with the Examiner's conclusion (Ans. 9) that it would have been obvious to one having ordinary skill in the art at the time the invention was made to substitute the N-alkyl maleimide of Kobayashi with the phenyl maleimide of Kita because Kita teaches the functional equivalency of maleimides in making a discolor-resistant polymer (Kita, Abstract, col. 2, 11. 42-61) and because the simple substitution of one known element for another to obtain predictable results is obvious, see KSR, 550 U.S. at 398. Accordingly, we affirm the Examiner's rejection of claims 1, 7-10, and 12 under 35 U.S.C. § 103(a) as unpatentable over the combination of Kobayashi, Kita, and Yamana. 8 Appeal2015-005371 Application 12/161, 7 50 DECISION/ORDER The Examiner's rejection of claims 1, 7-10, and 12 is affirmed. It is ordered that the Examiner's decision 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). AFFIRMED 9 Copy with citationCopy as parenthetical citation