12061467 (P.T.A.B. Aug. 1, 2014)

Ex Parte Meguriya et al

Patent Trial and Appeal BoardAug 1, 2014

12061467 (P.T.A.B. Aug. 1, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NORIYUKI MEGURIYA, SHINICHI IDE, and TOSHIO YAMAZAKI ____________ Appeal 2013-000695 Application 12/061,4671 Technology Center 1700 ____________ Before FRED E. McKELVEY, SALLY GARDNER LANE, and KIMBERLY J. McGRAW, Administrative Patent Judges. McGRAW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3-9, and 11-15. Claims 22 and 10 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is SHIN-ETSU CHEMICAL CO., LTD. Appeal Br. 3. 2 We note that the Examiner states that claim 2 is pending. (Ex. Ans. (1) Grounds of Rejection to be Reviewed on Appeal.) The records before us indicate that claim 2 was properly cancelled. Aug. 9, 2011, Amendment under § 1.114. Appeal 2013-000695 Application 12/061,467 2 BACKGROUND The present invention relates to an addition curing silicon rubber composition and to its cured product. Abstract, Claims. The Claims Claims 1 and 12 are the only independent claims at issue. Claim 1 is illustrative of the invention (disputed limitations indented and in italics). 1. An addition curing silicone rubber composition comprising: (A) 100 parts by weight of a polyorganosiloxane containing, on average, at least two alkenyl groups which are bonded to silicon atom, which is represented by the following average compositional formula (1): R1aSiO(4-a)/2 (1) wherein Rl is independently a monovalent moiety selected from the group consisting of alkyl, aryl, aralkyl, alkenyl and trifluoropropyl, and a is a positive number of 1.5 to 2.8; (B) 0.3 to 20 parts by weight of an organohydrogenpolysiloxane having 11 to 300 silicon atoms per molecule and containing at least two hydrogen atoms which are bonded to silicon atom (SiH functional groups) per molecule, which is represented by the following average compositional formula (3): R2bHcSiO(4-b-c)/2 (3) wherein R2 is a monovalent moiety selected from the group consisting of alkyl, aryl, aralkyl and trifluoropropyl, b is a positive number of 0.7 to 2.1, and c is a positive number of 0.001 to 1.0, with the proviso that b+c is 0.8 to 3.0; and Appeal 2013-000695 Application 12/061,467 3 (C) a catalytic amount of an addition reaction catalyst; wherein ratio of the SiH functional group in the component (B) to the alkenyl group bonded to the silicon atom in the component (A) (SiH/Alkenyl group) is in the range of 0.6 to 3.0 and ratio of the total number of hydrogen atoms which are bonded to the silicon atom to the total number of carbon atoms in the component (B) ([hydrogen atom]/[ carbon atom]) is less than 0.6, and content of the polyorganosiloxane having a degree of polymerization of up to 10 and containing at least one SiH functional group per molecule is up to 0.30 % by weight in relation to the entire composition, wherein the polyorganosiloxane having a degree of polymerization of up to 10 and containing at least one SiH functional group is a cyclic polyorganosiloxane derived from the organohydrogenpolysiloxane (B). The Prior Art Rejection The Examiner rejected the pending claims as being unpatentable under 35 U.S.C. § 103(a) over Lewis et al. (US Patent No. 5,025,073.) Briefly, the Examiner found that Lewis discloses addition curing compositions that expressly meet the limitations of (A), (B), and (C). The Examiner concluded that limitations requiring that the content of the polyorganosiloxane having a degree of polymerization up to 10 (“low DP”) and at least one SiH functional group per molecule is up to 0.3% by weight and that the polyorganosiloxane is a cyclic polyorganosiloxane derived from Appeal 2013-000695 Application 12/061,467 4 the organohydrogenpolysiloxane (B) would have been obvious in view of the teachings of Lewis. See Examiner’s Ans. 2-3; Dec. 6, 2010 Action.3 In particular, the Examiner found that (1) Lewis discloses the same equilibration reaction to prepare the organohydrogensiloxane (B) as the Appellants, (2) volatile cyclic siloxanes are the typical by-products obtained in the equilibration reaction employed by both Lewis and Appellants, (3) Lewis teaches it is desirable to remove the volatile cyclic siloxane by- products from the organohydrogensiloxane (B) by “stripping”, and (4) stripping is the same method that Appellants used to lower the polyorganosiloxane to the claimed level. The Examiner held that it would have been obvious to one skilled in the art to remove the cyclic siloxane by- products from the organohydrogensiloxane (B) to the greatest extent possible using the identified stripping technique. Examiner’s Ans. 3; see also August 3, 2010 Office Action, p. 4 (noting that removal of the largest fraction of volatiles possible without degrading other components would have been obvious). In so far as the same process is to remove by products, it would be possible for the skilled practitioner of the Lewis invention to reduce the cyclosiloxane content so that its weight contribution was less than 0.3 wt %. Examiner’s Ans. 3. 3 Although the pages of the Answer Brief are not numbered, for convenience we will refer to the second page of the brief as p. 2, the third page as p. 3, and so on. Appeal 2013-000695 Application 12/061,467 5 ANALYSIS Appellants argue the Examiner erred in rejecting the subject matter of the claims as obvious over Lewis and raise five points to support their non- obviousness position. First, the Appellants assert that Lewis fails to recognize “the problems to be solved” and “the solution thereof” presented by the present invention. Appeal Br. 11-16 – Point 1. Appellants contend that they discovered that it was difficult to remove deposits made by the low DP polyorganosiloxane and that the solution was to limit the amount of the particular low DP polyorganosiloxane to up to 0.3 wt %. Id. We are unpersuaded by this argument. It is “not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” In re Linter, 458 F.2d 1013 (CCPA 1972). Rather, the relevant issue is the objective reach of the claim and whether the claimed subject matter would have been obvious apart from an applicant’s purpose in making an invention. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 419 (2007). The art suggests removing “undesirable cyclics” from siloxane hydride “by stripping” (Lewis, col. 4, ll. 27-30) and that preferably, “excess cyclics are stripped off so that the linear polymer will have a low volatile content” (Lewis, col. 3, ll. 1-2). Even if the Appellants have recognized another advantage that would flow naturally from following the suggestion of the art, such recognition cannot be the basis for patentability when the differences would otherwise have been obvious. Second, the Appellants argue that the claimed invention is structurally distinct from Lewis because Lewis does not disclose whether the “disclosed Appeal 2013-000695 Application 12/061,467 6 undesirable cyclic is the cyclic polyorganosiloxane having lower DP and containing at least one SiH functional group per molecule and/or cyclic polyorganosiloxane having no functional group” and because Lewis fails to recognize why the content of cyclic polyorganosiloxane having lower DP and containing at least one SiH functional group per molecule should be reduced up to 0.30 wt % in relation to the entire composition. Appeal Br. 16-18 – Point 2.4 These arguments are also unpersuasive. The Examiner has made sufficient factual findings to support the conclusion that Lewis teaches or suggests the disputed claim limitations and that the claimed subject matter would have been obvious over Lewis. The Examiner found, and Appellants have not challenged, that Lewis teaches the organohydrogensiloxane (B) of the claimed invention as well as that the organohydrogensiloxane (B) is prepared by the same equilibration reaction as the Appellants. Examiner’s Answer 3; Reply to 12/6/10 OA, p. 10; Lewis, col. 4, ll. 3-29, Lewis Example 1; Appeal Br. 17. Lewis also teaches that it is desirable to remove volatile cyclic siloxanes, which are the typical by products obtained in the equilibration reaction, by “stripping”. 4To the extent that Appellants argue that Lewis does not disclose or suggest “the organohydrogenpolysiloxane (B) [having] 11 to 300 silicone atoms per molecule (high DP) and [containing] at least two hydrogen atoms which are bonded to silicon atom (SiH functional groups) per molecule” (See Appeal Br. 16-17), we find any such argument unpersuasive. The Examiner found, and Appellants agreed, an organohydrogenpolysiloxane (B) having between 11 and 300 silicon atoms per molecule was well known to those skilled in the art. See March 9, 2011 Action 2-3 citing US Patent No. 7,687,591; June 9, 2011 Reply under § 1.116 p. 3. Appeal 2013-000695 Application 12/061,467 7 Lewis, col. 4, ll. 27-29; see also col. 3, ll. 1-2 (noting that excess cyclics from the equilibration reaction used to prepare the base polymer are stripped off so that the linear polymer will have a low volatile content). Stripping refers to the removal of low molecular weight materials, usually at reduced pressure and heat. Examiner’s Answer 3; see also November 3, 2010 Amendment pp. 10-11. Stripping is the same process used by the Appellants to lower the concentration of the particular cyclic siloxanes recited in the claims. Spec. 19, ll. 26-32. Lewis suggests the removal of all cyclic siloxane by-products. Lewis, col. 4, ll. 27-29. Removal of all cyclic siloxane by-products would result in a 0 wt % of cyclic siloxane by-products, including the particular cyclic polyorganosiloxanes recited in the claims. The range claimed by Appellants (up to 0.3 wt %) overlaps with the range taught by Lewis (down to 0 wt %). As such, we agree that the Examiner has established a prima facie case of obviousness. Appellants concede that Lewis teaches lowering the concentration of the cyclic siloxanes to as low as 0%, stating that “it is presumed that all cyclics are removed according to Lewis since Lewis does not mention specific problems caused by such cyclics.” Reply 7-8 (emphasis added). Appellants assert that Lewis’ teaching to remove all volatile cyclic siloxanes is somehow deficient stating that “while such low-molecular weight siloxane can be removed by volatizing at reduced pressure or at high temperature, complete removal has been difficult, and the resulting product always contained such low-molecular weight siloxanes at a concentration of approximately 1% by weight, or at a lower concentration of about 0.5% by Appeal 2013-000695 Application 12/061,467 8 weight.” Reply Br. 8, citing spec. pp. 1-2. However, Appellants have not directed us to evidence sufficient to support this allegation.5 Attorney argument or conclusory statements in the specification does not suffice. Appellants next two arguments relate to unexpected results. The Appellants contend that the “up to 0.30% by weight” limitation of the claimed cyclic low molecular weight siloxanes component having lower DP and at least one SiH functional group per molecule is critical and provides unexpected results. Appeal Br. 19-23 – Point 3; Appeal Br. 23-25 – Point 4. Appellants have provided “contact angle” data allegedly demonstrating that compositions having 0.3 wt % or below of the particular cyclic siloxanes recited in the claims exhibit superior results in a “contact angle” test while compositions having above 0.3 wt % demonstrate inferior results. Appeal Br. 19-23 – Point 3. The Appellants also provide argument that the reason compositions having up to 0.3 wt % demonstrate superior results is due to the lower reactivity of the low DP siloxanes in the cross- linking reaction. Appeal Br. 23-25 – Point 4. Appellants’ arguments are unpersuasive. Unexpected results can be demonstrated by a showing that the claimed invention exhibits some 5 Indeed, Appellants allegation that prior art products always contained at least 0.5 wt % of low molecular weight siloxanes is belied by their own statements during prosecution. In a November 3, 2010 Amendment, Applicants stated that the prior art stripping method of Kishita, US Patent No. 4,985,526, resulted in a product with a low molecular weight siloxane concentration of 0.37%. See Comparative Example 4, Table November 3, 2010 Amendment pp. 10-11; September 16, 2010 Declaration. Appellants amended claims from 0.5 to 0.3 wt % at the same time the 0.37 wt % data was submitted. Appeal 2013-000695 Application 12/061,467 9 superior property or advantage that a person of ordinary skill in the art would have found surprising or unexpected. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997). Significantly, there is no statement from one skilled in the art, that these test results were unexpected. Merely providing test data without evidence that the results of the data were unexpected is not sufficient to establish unexpected results. Attorney argument or conclusory statements in the specification does not suffice. See Geisler, 116 F.3d at 1470 (noting that applicant did not offer evidence or statements from inventors, third party, or other objective evidence from a respected source, that the test results would be regarded as unexpected by one of ordinary skill in the art). Additionally, we agree with the Examiner that Appellants have not provided sufficient data to demonstrate unexpected results. Examiner’s Ans. 9. The data points below 0.3 wt % showing allegedly superior results are 0.05 wt % and 0.11 wt %. These data points are much smaller than the alleged critical upper level and thus do not serve to illustrate criticality associated with a composition content of low DP organohydrogensiloxane of up to 0.3 wt %. See id. Only Comparative Example 4 in the Declaration having a 0.37 wt % is relatively close in magnitude to the alleged critical upper level of 0.3 wt %. See Appeal Br. 20-22. However, this data point is insufficient to establish the criticality of the up to 0.3 wt % range limitation. Based on a consideration of the entire record, we find that the Appellants have not established by a preponderance of the evidence that the Examiner erred in concluding that the subject matter of claim 1 would have been obvious over the cited art. Appeal 2013-000695 Application 12/061,467 10 Appellants have not provided separate arguments regarding the remaining claims.6 CONCLUSION Because the prior art makes out a prima facie case for the obviousness of Appellants’ claimed invention, which is not persuasively rebutted by Appellants, we agree with the Examiner that the claimed compositions would have been obvious. Accordingly, the final rejection of claims 1, 3-9, and 11-15 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 sl 6 Appellants’ Brief did include “Point 5: Distinctions of Dependent Claims 3-9, 11 and 13-15.” Appeal Br. 25 – Point 5. However, a statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. 37 C.F.R. § 41.37(c)(iv).