Ex Parte Nakayama et al

Patent Trial and Appeal Board

Sep 19, 2012

10812304 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAAKI NAKAYAMA,
DAIJI TAHARA, and MASAFUMI IGO
____________

Appeal 2010-006871
Application 10/812,304
Technology Center 3700
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
SCOTT A. DANIELS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
10, 11, and 22-26. App. Br. 5. Claims 12, 13, 20, and 21 have been
cancelled. Claims 1-9 and 14-19 have been withdrawn from consideration.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2010-006871
Application 10/812,304

2
CLAIMED SUBJECT MATTER
Claim 10 is representative of the claimed subject matter on appeal:
10. A disc roll comprising:
a plurality of annular disc members each defining a hole
and having a peripheral surface; and
a rotary shaft fitted into the holes of said annular disc
members by insertion, whereby the peripheral surfaces of said
disc members serve as a conveying surface of the disc roll,
wherein said disc members comprise an inorganic fiber,
mica and a clay having a content of particles with a particle size
of 5 µm or larger of not higher than 30% by weight based on the
weight of the clay, the clay being either elutriated or subjected to
a wet sizing separation purification process,
wherein said inorganic fiber is present in an amount of 5 to
40% by weight based on the total weight of said disc members,
and said clay is present in an amount of 20 to 40% by weight
based on the total weight of said disc members, and
wherein said mica is present in an amount of 5 to 60% by
weight based on the total weight of the disc member.

REJECTIONS
Claims 10, 22, 24, and 25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kaiser (US 2003/0181302 A1; pub. Sep. 25, 2003)
and Ohshima (US 5,763,345; iss. Jun. 9, 1998).
Claims 11 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaiser, Ohshima, and Asaumi (US 4,533,581; iss. Aug. 6,
1985).
Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kaiser, Ohshima, and Yoshida (US 4,533,968; iss. Aug. 6, 1985).

Appeal 2010-006871
Application 10/812,304

3
ANALYSIS
Claims 10, 22, 24, and 25 as unpatentable over Kaiser and Ohshima
Claim 10
The Examiner found that Kaiser discloses a disc roll with a plurality
of annular disc members 29 and a rotary shaft 17 fitted into holes of the disc
members 29 with the disc members 29 comprising inorganic fiber, mica, and
clay in the claimed ranges. Ans. 3 (citing para. [0056]). The Examiner
found that Kaiser does not explicitly teach that the clay has particles with a
particle size of 5 µm or larger of not higher than 30% by weight based on the
weight of the clay or the clay being elutriated as called for in claim 10. Ans.
4. The Examiner found that Ohshima discloses that it is well known for
natural clay to contain an average particle size of 0.5 µm after purification
by elutriation and concluded that it would have been obvious to provide
Kaiser with elutriated natural clay having an average particle size of 0.5 µm
and free of impurities “in order to form a high precision disc roll comprised
of desired and suitable material content.” Ans. 4. The Examiner further
found, and Appellants have not contested the Examiner’s finding that it is
“mathematically impossible to have clay content of particles [in Ohshima]
with a particle size of 5 µm or larger in an amount of 30% or higher by
weight based on the weight of the clay.” Id.
The Examiner noted that Appellants claimed a range of clay of 5 to
55% throughout the course of prosecution until an amendment filed on
January 30, 2009 that cancelled that range and claimed a range of 20 to 40%
of clay. Ans. 8-9. The Examiner also found that Appellants’ Specification
does not support a finding of the criticality of a claimed range of 20 to 40%
because Table 1 shows that a disc member with 50% clay by weight (which
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Appeal 2010-006871
Application 10/812,304

5
Table 1 discloses the results of Examples 1B-6B and Comparative
Examples 1B-3B.
Appellants acknowledge that Kaiser discloses a clay content range of
40-50% by weight that abuts the claimed range of 20 to 40% by weight and
establishes a prima facie case of obviousness. App. Br. 10. Appellants then
argue that the Specification discloses the criticality of the claimed range by
providing evidence of the unexpected results that are commensurate with the
claimed range thereby overcoming this prima facie case of obviousness.
App. Br. 10-11. In particular, Appellants argue that the lower limit of the
claimed range of 20% by weight of clay provides superior results of surface
hardness and wear resistance that are present at clay amounts of 30 to 40%
by weight as shown in Examples 4B and 5B. App. Br. 10. Appellants also
argue that the upper limit of 40% by weight of clay is a critical parameter
that defines the maximum amount of clay that can be used to provide good
wear resistance without damaging the plate glass by scratching the plate
glass. App. Br. 10-11. In particular, Appellants argue that an elutriation
treatment cannot remove all impurities from the clay so that when elutriated
clay is used in excess of 40% by weight, scratches and other damage occurs
to the glass plate as evidenced by Example 6B. App. Br. 10, 11.
Weighing all of the evidence and arguments, we find that Appellants
have not established the criticality of the claimed clay range of 20 to 40%
with evidence of unexpected results that are commensurate in scope with the
claimed range. Table 1B discloses that a disc with a clay content of 50%,
which is outside of the claimed range and within the prior art range of Kaiser
of 40-50% heat resistant binder (i.e., clay) (see paras. [0010, 0056]) is rated
better than a disc with a clay content of 20% (Example 3B). Therefore, to
Appeal 2010-006871
Application 10/812,304

6
the extent that Appellants are relying on the ratings that appear in Table 1B
to establish unexpected results, the evidence is not commensurate in scope
with the claimed range of 20 to 40%. If anything, Table 1B appears to
indicate that the superior results are present in discs with a clay content by
weight of 30 to 50%, which encompasses and overlaps the prior art range
disclosed in Kaiser. Table 1B only provides results or ratings for discs with
clay contents of 20%, 30%, 40%, and 50% and does not provide ratings for
discs with clay contents between those amounts.1 Therefore, it is not clear at
what point a clay content of more than 40% by weight results in scratches to
the glass and Appellants rate discs with 50% clay content and 2 scratches/m2
as “Excellent” in two of three categories while discs with 20% clay content
are rated “Excellent” in only one of three categories. Appellants also tout
the benefits of a clay content of not higher than 30% by weight:
The results shown in Table 1B reveals that the disc roll of
each Example containing the mica and the clay having a content
of particle components of 5µm or larger of not higher than 30%
by weight has practically problem free heat resistance and wear
resistance, does not scratch the glass surface, and has moderate
flexibility.

1 Therefore, we are not persuaded by Appellants’ argument that “the defined
maximum amount of specific clay at 40% by weight is a critical parameter
that prevents damage to the plate glass while maintaining good wear
resistance.” App. Br. 11. Although a clay content of 50% results in 2
scratches/m2 as shown in Table 1B, Appellants have not provided any
evidence of the properties and scratches that result from discs with a clay
content of 41% to 49%, which clay contents are within the prior art range
disclosed in Kaiser. In re De Blauwe, 736 F.2d 699, 705 (CCPA 1984)
(unexpected results must be established by factual evidence comparing the
claimed invention to the closest prior art, and not by mere argument or
conclusory statements).
Appeal 2010-006871
Application 10/812,304

7
Spec. 33, ll. 1-6. Appellants’ attorney arguments regarding scratches and
wear resistance (App. Br. 12) is not evidence and does not persuade us of
error in the Examiner’s obviousness determination. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997). In view of the foregoing, we do not find
sufficient evidence of unexpected results as compared to the closest prior art
that also is commensurate in scope with the claimed clay content range of 20
to 40% to rebut the facie case of obviousness of the Examiner. We sustain
the rejection of claim 10.
Dependent claims 22, 24, 25
The Examiner found that Kaiser and Ohshima disclose a disc roll with
a clay particle size of 0.5 µm or larger of not higher than 30% by weight
based on the weight of the clay but do not explicitly teach a content of a clay
particle size of 5 µm or larger of not higher than 15% by weight (claim 24)
or a content of impurities of 10% by weight or less (claim 25). Ans. 5-6.
The Examiner also found that Appellants do not disclose any criticality to
these claimed content ranges and actually disclose that it is most suitable to
contain no particles having a clay particle size of 5 µm or larger. Ans. 5-6
(citing Spec. 19, ll. 1-10). As a result, the Examiner concluded that the exact
impurity content of the clay would have been obvious as a matter of design
choice and Appellants have not disclosed any particular benefits associated
with the claimed ranges. Ans. 6.
Appellants argue that claims 22, 24, and 25 are allowable at least due
to their dependency from claim 10. App. Br. 12. Appellants also argue that
the Examiner has not established that Ohshima has clay content of particles
with a particle size of 5 µm or larger in the claimed amounts of 15% and
10% by weight based on the weight of the clay. App. Br. 12; Reply Br. 2-3.
Appeal 2010-006871
Application 10/812,304

8
These arguments are not persuasive because we sustain the rejection of
claim 10 for the reasons discussed supra and because the Examiner found
that the claimed contents of claims 24 and 25 are obvious as a matter of
design choice. Appellants have not persuaded us of error in the Examiner’s
findings or conclusion of obviousness of claims 24 and 25. As such, we
sustain the rejection of claims 22, 24, and 25.
Dependent claims 11, 23, and 26
The Examiner relied on Asaumi to disclose muscovite and the mica
particle size recited in claims 11 and 26, and Yoshida to disclose kibushi
clay as recited in claim 23. Ans. 6-7. Appellants argue that Asaumi and
Yoshida do not cure the deficiencies of Kaiser and Ohshima as to claim 10
from which claims 11, 23, and 26 depend. App. Br. 13. Because we sustain
the rejection of claim 10, there are no deficiencies for Asaumi and Yoshida
to cure. Accordingly, we sustain the rejection of claims 11, 23, and 26.
DECISION
We AFFIRM the rejections of claims 10, 11, and 22-26.
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)(iv).

AFFIRMED

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