Ex Parte Oba

Patent Trial and Appeal Board

Jun 2, 2016

12734948 (P.T.A.B. Jun. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121734,948 06/03/2010
23474 7590 06/06/2016
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Toshia Oba
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.
3400.Pl460US 9839
EXAMINER
SAL VITTI, MICHAEL A
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/06/2016 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TOSHIO OBA
Appeal2015-000656
Application 12/734,948
Technology Center 1700
Before MARK NAGUMO, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
The Examiner finally rejected claims 1-5 of Application 12/734,948
under 35 U.S.C. § 103(a) as obvious. Final Act. 2. Appellant2 seeks
reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 In our opinion below, we refer to the Final Action mailed August 4, 2013
("Final Act."), the Declaration under 37 C.F.R. § 1.132 ofToshio Oba filed
December 12, 2013, and dated November 25, 2013 ("Oba Deel."), the
Appeal Brief filed April 10, 2014 ("App. Br."), and the Examiner's Answer
mailed August 15, 2014 ("Ans.").
2 Momentive Performance Materials Japan LLC is identified as the real party
in interest. Appeal Br. 1 i-f E.
Appeal2015-000656
Application 12/734,948
BACKGROUND
The 12/734,948 Application describes room temperature curable
polyorganosiloxane compositions.
Claim 1 is representative of the claims and is reproduced below:
1. A room temperature-curable polyorganosiloxane
composition comprising:
(A) 100 parts by weight of a substantially straight-chain
polyorganosiloxane having a viscosity of 20 to 1,000,000
centistokes at 25°C and having a molecular chain terminal
sealed with a silanol group or a silicon atom-bonded
hydrolyzable group;
(B) 0.1 to 15 parts by weight of an organic silicon compound
having 3 or more silicon atom-bonded hydrolyzable groups in a
single molecule;
(C) 0 to 15 parts by weight of a condensation reaction
catalyst;
(D) 100 to 400 parts by weight of a non-treated ground
calcium carbonate or a ground calcium carbonate surface-
treated \~\rith a resin acid; and
(E) 1 to 200 parts by weight of a non-treated precipitated
calcium carbonate or a precipitated calcium carbonate surface-
treated with a resin acid,
wherein at least one of (D) component and (E) component is
required to be treated with a resin acid, and
wherein the amount of (D) component relative to the sum of
(D) component and (E) component is within the range of 50 to
99. 9% by weight.
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Application 12/734,948
REFERENCES
Kimura et al. US 2007 /0282061 Al Dec. 6, 2007
("Kimura '061 ")
Iwasaki et al. US 2009/0286916 Al Nov. 19, 2009
("Iwasaki")
Kimura et al. EP 1 464 675 A2 Oct. 6, 2004
("Kimura '6 7 5 ")
REJECTIONS3
Claims 1-5 stand rejected under 35U.S.C§103(a) as being
unpatentable over Kimura '675 in view of Kimura '061 as evidenced by
Iwasaki.
OPINION
The issues on appeal are (1) whether Kimura '675 teaches a ratio of
ground calcium carbonate to precipitated calcium carbonate that overlaps the
ratio claimed, supporting the Examiner's prima facie case of obviousness,
and (2) if so, has Appellant rebutted the prima facie case with evidence of
non-obviousness.
As to the first issue, Appellant acknowledges that Kimura '675
discloses colloidal calcium carbonate that may or may not be surface-treated
with resin acids, paraffin, or other surface-treating agents, and heavy
calcium carbonate, which also may or may not be surface-treated with resin
acids, paraffin, or other surface-treating agents. App. Br. 3. The Examiner
finds, and Appellant has not disputed, that precipitated calcium carbonate is
3 The Final Action and the Answer cite "the originally filed specification"
and "Viscosity Converting Chart" as evidence for the rejections, but make
no further mention of the documents. Therefore, we do not list them in our
restatement of the rejections.
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Appeal2015-000656
Application 12/734,948
equivalent to colloidal calcium carbonate, and ground calcium carbonate is
equivalent to heavy calcium carbonate. Ans. 3 (citing Iwasaki i-f 44).
Appellant contends that Kimura '675 provides merely a generic disclosure
that calcium carbonate can be contained as a filler in the organopolysiloxane
composition. Id. at 4. According to Appellant, only Example 3 of Kimura
'675 uses a mixture of colloidal calcium carbonate and heavy calcium
carbonate, and in the example the amounts of these components ( 50 weight
parts heavy calcium carbonate to 100 weight parts colloidal calcium
carbonate) falls outside the claimed percentage (50% to 99.9% heavy
calcium carbonate compared to colloidal calcium carbonate). Id. 3--4.
However, Kimura '675 is prior art for all it teaches for the purposes of
determining obviousness under 35 U.S.C. § 103. Symbol Techs. Inc. v.
Opticon Inc., 935 F.2d 1569~ 1578 (FecL Cir. 1991); see also Beckman
lnsrrun1ents v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)
("Even if a reference discloses an inoperative device, it is prior mi for all
that it teaches.~') (citations omitted). Here, Kimura ~675 discloses that
colloidal (precipitated) calcium carbonate and heavy (ground) calcium
carbonate can be preferably combined in a weight ratio between 100:0 and
50:50. Kimura '675 i-f 15. Using the 50:50 combination, the amount of
ground calcium carbonate to precipitated calcium carbonate is 50% by
weight, which is within the scope of claim 1. A claimed range overlaps with
a prior art range ifthe two ranges share a common endpoint. In re Geisler,
116 F.3d 1465, 1469 (Fed. Cir. 1997) (finding overlap where a claim range
of 50-100 A overlaps with prior art range of 100-600 A). "In cases
involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
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Application 12/734,948
case of obviousness." Jn re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Thus, the Examiner factually supports a rejection of the claims as prima
facie obviousness.
Moving to the second issue, the Declaration submitted by Appellant
discloses differences in physical properties dependent upon whether ground
calcium carbonate is surface treated with resin acid (as claimed) or paraffin.
Oba Deel. 1-3. The evidence thus presented is of no moment to the
rejection, as it does nothing to address unexpected results within the claimed
range of 50 to 99.9% by weight of ground calcium carbonate relative to
precipitated calcium carbonate, compared to percentages by weight outside
of the claimed range. A prima facie case of obviousness based on
overlapping ranges can be rebutted if the applicant can establish 'the
existence of unexpected properties in the range claimed. In re Malagari,
499 F.2d 1298, 1303 (CCPA 1974); see also In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990) ("The law is replete with cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held that in such a
situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.") (citations omitted, emphasis in original).
Moreover, with respect to the results discussed in the Declaration,
Comparative Example 6 is merely stated to have "inferior properties" when
compared to compositions of the present invention. Ota Deel. 3. But
superiority alone is not sufficient to show that the result is unexpected.
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[A]ny
superior property must be unexpected to be considered as evidence of non-
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Application 12/734,948
obviousness."). Unexpected results must be established by clear and
convincing evidence. In re H eyna, 3 60 F .2d 222, 228 ( CCP A 1966) ("It was
incumbent upon appellants to submit clear and convincing evidence to
support their allegation of unexpected property.") A showing of unexpected
results must be based upon evidence rather than argument or speculation. In
re Mayne, 104 F.3d 1339, 1343--44 (Fed. Cir. 1997).
On the record before us, we are not persuaded of reversible error in
the Examiner's rejection of claims 1-5 as obvious.
DECISION
For the above reasons, the Examiner's rejection of claims 1-5 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)(l )(iv) (2009).
AFFIRMED
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