Ex Parte Nagasaka et al

Patent Trial and Appeal Board

Dec 30, 2016

13262395 (P.T.A.B. Dec. 30, 2016)

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.
13/262,395 09/30/2011 Masahiko Nagasaka 110215 7669
23850 7590 01/03/2017
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
01/03/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAHIKO NAGASAKA, MASAKI MAEDA,
ISAMU MOCHIZUKI, and KAZUYA EGAWA
____________

Appeal 2016-001270
Application 13/262,395
Technology Center 1700
____________

Before PETER F. KRATZ, KAREN M. HASTINGS, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–16. We have jurisdiction under 35 U.S.C.
§ 6(b).2
We AFFIRM.

1 Techno Polymer Co., Ltd. is identified as a real party in interest. Br. 2.
2 In our opinion below, we reference the Specification filed September 30,
2011 (Spec.), the Final Office Action mailed September 24, 2014 (Final
Action), the Appeal Brief filed May 19, 2015 (Br.), and the Examiner’s
Answer mailed August 25, 2015 (Ans.).
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STATEMENT OF THE CASE
Claimed Invention
Appellants claim automobile interior assembly comprising a first
member that is an automobile interior part made of a thermoplastic resin
composition [D] and a second member that is a molded article of a
thermoplastic resin [Y], wherein the first member and the second member
are in contact with and can rub against each other. Br. 25 (claim 1).
According to the Specification, one objective is to provide an automobile
interior part that reduces squeaking noises caused by one part rubbing
against another, that retains such reduced noise property after heat aging,
and that is superior in impact resistance. Spec. ¶¶ 1 and 11.
Claim 1 is the only independent claim and is representative of the
subject matter on appeal. Claim 1 reproduced below from Appellants’
Claims Appendix:
1. An automobile interior assembly comprising:
a first member that is an automobile interior part made of
a thermoplastic resin composition [D] comprising:
100 parts by mass of a rubber-reinforced vinyl resin [A],
and
0.2 to 8 parts by mass of a silicone oil [B] having a
kinematic viscosity at 25°C of 10 to 100,000 cSt,
wherein:
the rubber-reinforced vinyl resin [A] comprises a diene
rubber polymer [a1] and an ethylene-α-olefin rubber polymer
[a2],
a total amount of the diene rubber polymer [a1] and the
ethylene-α-olefin rubber polymer [a2] is 5 to 30% by mass,
based on 100% by mass of the whole amount of the rubber-
reinforced vinyl resin [A], and
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a mass ratio of the diene rubber polymer [a1] to the
ethylene-α-olefin rubber polymer [a2], [a1] : [a2], is 25 to 75 :
75 to 25; and
a second member that is a molded article of a
thermoplastic resin [Y];
wherein the first member and the second member are in
contact with and can rub against each other.
Br. 25.
References3
Ford US 6,284,833 B1 Sept. 4, 2001
Augustyniak US 2006/0145504 A1 July 6, 2006
Mozer US 2010/0212813 A1 Aug. 26, 2010
Matsuzaka JP 2000 119477 Apr. 25, 20004
Matsumoto JP 2002 020574 Jan. 23, 20025
Ueshima JP 2004 107400 Apr. 8, 20046
Kaito WO 2008/062779 May 29, 20087
Higaki EP 1 956 043 A1 Aug. 13, 2008

3 We identify each reference using the first-named inventor only.
4 An English machine translation and Espacenet English abstract of
Matsuzaka were made of record April 1, 2014.
5 An English machine translation and Espacenet English abstract of
Matsumoto were made of record February 25, 2013, and an English Patent
Abstracts of Japan was made of record September 30, 2011.
6 An English machine translation, an English Derwent document, and an
Espacenet English abstract of Ueshima were made of record April 1, 2014.
7 The Examiner relies on EP 2085425 A1 as an English language equivalent
of Kaito. Final Action 14.
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Rejections8
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
1. Claims 1–2, 4–9, and 11–16 as unpatentable over Higaki,
Matsumoto, and Augustyniak, as evidenced by Mozer. Final Action 6–12.
2. Claims 3 and 10 as unpatentable over Higaki, Matsumoto, and
Augustyniak in view of any one of Ford, Kaito, or Matsuzaka. Id. at 12–16.
3. Claims 1–14 as unpatentable over Matsuzaka, Ueshima, and
Augustyniak, as evidenced by Mozer. Id. at 17–25.
ANALYSIS
Appellants do not contest that each ground of rejection, as set forth in
the Final Action, is sufficient to establish prima facie obviousness of the
subject matter of the appealed claims. Instead, Appellants argue that the
rejections are overcome by a showing of unexpected results. Br. 8–24.
Appellants rely on the data set forth in Tables 1 and 2 of the Specification
and in a Declaration under 37 C.F.R. § 1.132.9 See Br. 9–12. The Examiner
finds that Appellants’ data is not persuasive because it is not commensurate
in scope with the claims. Ans. ¶¶ 55, 59, 91.
Upon consideration of the evidence on this appeal record in light of
the respective positions advanced by the Examiner and Appellants, we are
not persuaded that Appellants identify reversible error in the Examiner’s
§ 103(a) rejections of claims 1–16. The basis for this conclusion and the

8 A rejection under 35 U.S.C. § 112, second paragraph, was withdrawn in an
Advisory Action mailed March 11, 2015.
9 Declaration of Hiroshi Sakiyama filed February 23, 2015 (hereinafter, the
“Declaration”).
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reasons that Appellants’ arguments fail to reveal error are well expressed by
the Examiner in paragraphs 55, 59, 62–78, 84, 91, and 100–102 of the
Answer, which we adopt as our own. We add the following primarily for
emphasis.
The burden of showing unexpected results rests on the person who
asserts them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). A showing
of unexpected results must be reasonably commensurate in scope with the
claims on appeal. In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
Appellants assert that the data in Tables 1 and 2 and the Declaration
show an unexpected improvement in three properties: noise reduction
(including after heat aging), impact resistance, and molded appearance.
Br. 8–9. The Examiner finds that Appellants’ data are not reasonably
commensurate in scope with the claims on appeal, identifying six parameters
with respect to which the inventive examples are not representative of the
breadth of the claims. Ans. ¶¶ 55, 59, 91. All six parameters are relevant to
the asserted improvement in noise reduction, and five of them relate to the
asserted improvements in impact resistance and molded appearance. Id.
¶¶ 55 and 59 (discussing six parameters); id. ¶ 91 (discussing five
parameters).
The Appeal Brief addresses the extent to which the inventive
examples in Tables 1 and 2 and the Declaration cover the claimed ranges of
the six parameters identified by the Examiner. Br. 13–16. With respect to
four of the identified parameters—kinematic viscosity, amount of silicone
oil, rubber content, and ratio of [a1] to [a2]—Appellants assert that the value
shown by the inventive examples is in the middle of the range recited in
claim 1. Id. at 14–15. With respect to the remaining two parameters—the
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rubber-reinforced vinyl resin [A] and the thermoplastic resin [Y]—
Appellants assert that they are not critical and would not be expected to
affect the criticality of the other claim limitations. Id. at 14.
Applying the legal standards provided by our reviewing court, we are
not persuaded by Appellants’ arguments and find that a preponderance of the
evidence supports the Examiner’s position. Providing an example having a
composition that is at or near the midpoint of the claimed range is not
sufficient to demonstrate unexpected results commensurate in scope with the
claims. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“the showing of
unexpected results is not commensurate in scope with the degree of
protection sought by the claimed subject matter because the elemental
composition of [the inventive example] is at or near the midpoint of the
claimed range”). To the extent that Appellants argue that a claim limitation
is not critical or would not affect the criticality of other claim limitations, we
are not persuaded by Appellants’ position because it lacks evidentiary
support, e.g., in the form of a declaration. “Argument in the brief does not
take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (noting the lack of disclosure or affidavit supporting criticality
of a claim limitation).
Appellants are correct that the inventive examples in Tables 1 and 2 of
the Specification include rubber contents, ratios of [al] to [a2], and kinematic
viscosities that cover a large fraction of the claimed ranges of these
parameters. Br. 16. Nevertheless, by our calculations, an equal or larger
fraction of the claimed ranges of rubber content and kinematic viscosity is
not represented by the inventive examples, namely 69% of the rubber
content range and 50% of the kinematic viscosity range. Furthermore,
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Appellants’ argument does not address three other parameters that the
Examiner finds are not adequately represented by the inventive examples,
namely the rubber-reinforced vinyl resin [A], the thermoplastic resin [Y],
and the amount of silicone oil. Ans. ¶ 55.
Appellants present no argument for reversal that does not rely upon an
assertion of unexpected results based on the data in Tables 1 and 2 of the
Specification and the Declaration. We are not persuaded of reversible error
in the Examiner’s finding that Appellants’ data is not commensurate in
scope with claim 1. Appellants do not separately argue any of the dependent
claims. Accordingly, we are not persuaded that Appellants identify
reversible error in the Examiner’s rejections.
CONCLUSION OF LAW AND DECISION
The decision of the Examiner rejecting claims 1–16 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) (1).
AFFIRMED