Ex Parte Ogoe et al

Patent Trial and Appeal Board

Feb 14, 2017

13496928 (P.T.A.B. Feb. 14, 2017)

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.
13/496,928 03/19/2012 Hiroyuki Ogoe SNA-105-A 9941
21828 7590 02/16/2017
PARRTFR RT .APKMAN AND ASSOPTATFS PC
EXAMINER
22960 VENTURE DRIVE VINEIS, FRANK J
SUITE 100
NOVI, MI 48375 ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
02/16/2017 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):
cbalaw @ gmail.com
wblackman@ ameritech.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROYUKI OGOE, SHINYA NISHIMURA,
and KENTARO OKUBO
Appeal 2015-008297
Application 13/496,928
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
DEBRA L. DENNETT, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—7, 9-18, 20 and 21. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a sliding contact surface-forming material.
Claim 1 is illustrative:
1. A sliding contact surface-forming material comprising a
reinforcing base impregnated with a resol phenolic resin having
polytetrafluoroethylene resin dispersed therein,
Appeal 2015-008297
Application 13/496,928
the reinforcing base comprising a woven fabric formed
by using, respectively as each of the warp and the weft, a ply
yam which is formed by paralleling exactly two strands of:
a single twist yam spun from fluorine-containing resin
fiber, and
a single twist yam spun from polyphenylene sulfide fiber,
and by twisting them in a direction opposite to the
direction in which the single twist yams were spun; and
wherein the reinforcing base is a flat-woven fabric
having a density of 36 to 44 ends/inch for the warp (vertical
yam), and 36 to 44 picks/inch for the weft (horizontal yam).
K.K. Chawla, Fibrous materials 13 (Cambridge Press 1998).
J.W.S. Hearle, High-performance fibres 21 A—11 (CRC Press 2001).
Avraham Hamoy, Bearing Design in Machinery - Engineering Tribology
and Lubrication Ch. 11, Bearing Materials 1—41 (CRC Press 2002).
Carl A. Lawrence, Fundamentals of Spun Yarn Technology 47-48 (CRC
Press 2003).
The claims stand rejected as follows: claims 1—5, 9—16, 20 and 21
under 35 U.S.C. § 103 over Ogoshi in view of Hamoy, Hearle, Lawrence,
Chawla and Onda, claims 6, 7, 17 and 18 under 35 U.S.C. § 103 over Ogoshi
in view of Hamoy, Hearle, Lawrence, Chawla, Onda and Roos, and
1 Like the Examiner (Ans. 2) we refer to JP 2009-91446 A as “Onda” and
JP 2009-103193 A as “Ogoshi”.
The References
Roos
Onda (as translated)1
Ogoshi (as translated)
US 7,226,213 B2 June 5, 2007
JP 2009-91446 A Apr. 30, 2009
JP 2009-103193 A May 14, 2009
The Rejections
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Application 13/496,928
claims 1—7, 9—18, 20 and 21 provisionally on the ground of nonstatutory
obviousness-type double patenting over claims 1—5, 9—15, 20 and 21 of
copending Application No. 13/496,915 in view of Hamoy and Hearle.
OPINION
We affirm the rejections.
Rejections under 35 U.S.C. § 103
In each rejection under 35 U.S.C. § 103 the Appellants argue the
claims as a group (Br. 9—20). We therefore limit our discussion to one claim
in each rejection, i.e., claims 1 and 6. Claims 2—5, 9-16, 20 and 21 stand or
fall with claim 1, and claims 7, 17 and 18 stand or fall with claim 6. See
37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claim 1
Ogoshi discloses a sliding face material comprising 1) twisted union
yam of spun synthetic fiber yam (which can be polyester fiber) and spun or
filament polytetrafluorene resin (PTFE) fiber yam, and 2) thermosetting
synthetic resin (which can be resol phenolic resin) impregnated with PTFE
particles flflf 8—11, 15, 18, 22—26).
Lawrence discloses that doubling, plying or twisting yams attains a
particular physical characteristic that cannot be obtained with singles yam of
similar count to the plied yam (p. 47), “[i]n doubling, two or more singles
yams are assembled together and then twisted around each other, making a
new yam of a quite different character” (p.48), “[i]n most cases, the singles
twist will be in the Z direction, so plying with S-on-Z is a common practice”
{id.), and “[pjlying with the S-on-Z twist produces a doubled or plied yam in
which the fibers in the constituent singles appear to lie approximately
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Application 13/496,928
parallel to the plied yam axis. This gives the plied yam a more smooth and
lustrous appearance than a singles yam or a Z-on-Z folded yam” (id.).
Chawla discloses that “[m]ost yams have filaments that are twisted.
The main reason for this is that an untwisted yam is difficult to weave or
knit. Two types of twists can be given to the yam, a counterclockwise twist
or S twist and a clockwise twist of Z twist” (p. 13), and “[w]e can also make
a ply yam by using reverse twist directions. This serves to balance out
residual stresses” (id.).
Onda discloses a fiber-reinforced resin composition for a sliding
member, comprising a spun or filament polyester fiber fabric impregnated
with a resol phenolic resin 9-10). “The form of spinning can be equally
a filament yam obtained by twisting and joining long fibers or a spun yam
obtained by twisting and joining short fibers” (| 20). An exemplified flat
woven polyester fiber fabric has a vertical yam density of 43 ends/inch and a
horizontal yam density of 42 picks/inch (141).
Hamoy discloses that “[cjorrosion wear is due to chemical attack on
the surface, such as in the presence of acids or water in the lubricant. In
particular, a combination of corrosion and fatigue can often cause an early
failure of the bearing” (p. 8), “[cjorrosion-resistant materials should be
applied in all applications where corrosives may be present in the lubricant
or the environment” (p. 10), and “[a]n important property of plastics is their
ability to operate in adverse chemical environments, such as acids, without
appreciable corrosion” (p. 22).
Hearle discloses that polyphenylene sulfide’s “[resistance to
non-oxidizing acids is excellent, as is that to hot alkalis, thereby showing
that in spite of PPS being a condensed polymer, it has considerable
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Application 13/496,928
resistance to hydrolysis” (p. 276) and “[w]hen compared with conventional
fibres such as polyester, acrylic and polypropylene, its resistance to both hot
acid (50% sulphuric acid) and alkali is demonstrated even after only short
exposures of 24 hours or so” (id.).
The Appellants argue that Ogoshi’s disclosure that “[t]he mode of
yams of the above-mentioned synthetic fibers is desirably a spun yam from
the perspective of impregnating and holding thermosetting resin” (| 22)
indicates that Ogoshi’s goal is to optimize absorption and retention of the
synthetic resin by the yam making up the fabric and that, therefore, Ogoshi,
Lawrence and Chawla would not have suggested twisting the twisted union
yam’s individual component strands because doing so likely would make
them less absorbent (Br. 12—16).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In
making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 550 U.S. at 418.
Chawla’s disclosures that S twist or Z twist of yams makes them
easier to weave and that using reverse twist directions balances out residual
stresses in a ply yam (p. 13) would have led of ordinary skill in the art,
through no more than ordinary creativity, to S twist or Z twist Ogoshi’s
individual strands and to use reverse twist directions for the ply strands to
obtain those benefits. Lawrence’s disclosure that S-on-Z twist is common
practice and Lawrence’s indication that such a twist provides a smoother ply
yam surface (p. 48) would have led of ordinary skill in the art, through no
more than ordinary creativity, to use S-on-Z twisting to make Ogoshi’s ply
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yam to achieve those benefits. Even if, as the Appellants assert, such
twisting likely would make the twisted union yam’s individual component
strands less absorbent, the Appellants have not established that one of
ordinary skill in the art would have considered any such absorbency
reduction to render S-on-Z twisted Ogoshi ply strands unsuitable for
absorbing the required amount of matrix thermosetting resin, and the record
provides evidence to the contrary.2
Claim 6
Claim 6, which depends from claim 1, requires that “each single twist
yam has a twist count of 260 to 300 T/m.”
Roos discloses a multilayer plane bearing’s gliding layer comprising
S-on-Z twisted primary and secondary thread components embedded in an
epoxy matrix, wherein the primary thread component is a single spun
PTFE/polyethersulfone mixed fiber yam and the secondary thread
component is a polyethersulfone filament or fiber yam (col. 2,11. 6—27;
col. 3,11. 48—63; col. 6,11. 49-67). “[T]he level of yam rotation influences
on one hand the strength of the binding of the staple fibers in the yam bond
and on the other hand the receiving capacity of the primary thread
component or the secondary thread component for the epoxy resin” (col. 4,
11. 34—38). The preferred Z rotation values vary between 300 rotations/m
and 800 rotations/m, particularly between 400 rotations/m and
700 rotations/m (col.4,11. 39-44). The preferred rotation values of the
2 Roos discloses that the level of yam rotation influences the receiving
capacity of the thread components for the epoxy resin and indicates that
single twist yams preferably having 300-800 rotations/m and S-on-Z yams
preferably having 80-400 rotations/m effectively absorb matrix resin (col. 3,
11. 28-34; col. 4,11. 34—53; col. 6,11. 49-67).
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thread layer formed from the thread components vary between 80
rotations/m and 400 rotations/m, particularly between 120 rotations/m and
250 rotations/m (col. 4,11. 45—53). Exemplified Z rotation and S rotation
values are, respectively, 600 rotations/m and 140 rotations/m (col. 6,11. 49-
61).
Roos’s disclosures that the level of yam rotation influences on one
hand the strength of the binding of the staple fibers in the yam bond and on
the other hand the receiving capacity of the primary thread component or the
secondary thread component for the epoxy resin and that single twist yams
preferably3 having 300—800 rotations/m and S-on-Z yams preferably having
80 to 400 rotations/m effectively absorb matrix resin (col. 3,11. 28—34;
col. 4,11. 39-53; col. 6,11. 49-67)4 would have led one of ordinary skill in
the art, through no more than ordinary creativity, to optimize the single twist
rotation and S-on-Z rotation of Ogoshi’s yams as modified by Lawrence and
Chawla to achieve the most desirable combination of degree of matrix
thermosetting resin impregnation (Ogoshi | 8), weaving ease and ply yam
residual stress balancing (Chawla p. 13), and smoother ply yam surface
(Lawrence p. 48). See In re Alter, 220 L.2d 454, 456 (CCPA 1955) (“where
3 Roos is not limited to its preferred embodiments. See In re Kohler, 475
L.2d 651, 653 (CCPA 1973); In re Mills, 470 L.2d 649, 651 (CCPA 1972);
In re Bozek, 416 L.2d 1385, 1390 (CCPA 1969). Instead, all disclosures
therein must be evaluated for what they would have fairly suggested to one
of ordinary skill in the art. See In re Boe, 355 L.2d 961, 965 (CCPA 1966).
4 By “a varying thread rotation, in which particularly advantageous thread
rotations vary between 80 rotations/m and 400 rotations/m” (col. 4,11. 50—
52), Roos appears to mean that the preferred rotations/m are within those
ranges, not that the number of rotations/m varies along the length of the
thread layer.
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Application 13/496,928
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation”). Because Ogoshi (| 8), like the Appellants, makes a
sliding contact surface material, it appears that such optimization would
result in twist counts including values within the Appellants’ recited range.
The Appellants assert that Roos does not disclose a woven fabric
having improved strength based on the interlocking threads of a specific
weave or that threads configured in a twist/countertwist configuration will
make an interlocking reinforcing base that is able to be impregnated with
resin (Br. 19—20).
That argument is deficient in that the Appellants are attacking Roos
individually when the rejection is based on a combination of references. See
In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754,
757—58 (CCPA 1968). Modifying Ogoshi’s yams to have the Appellants’
recited twist/countertwist configuration would have been suggested to one of
ordinary skill in the art by the combination of Lawrence, Chawla and Roos
as discussed above. Moreover, to establish a prima facie case of
obviousness the references need not be combined for the purpose of
obtaining improved strength based on the interlocking threads of a specific
weave. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie,
974F.2d 1309, 1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed.
Cir. 1990) (enbanc); In reLintner, 458 F.2d 1013, 1016 (CCPA 1972).
Thus, we are not convinced of reversible error in the rejections under
35U.S.C. § 103.
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Application 13/496,928
Provisional obviousness-type double patenting rejection
The Appellants do not provide a substantive challenge to the
provisional obviousness-type double rejection (Br. 20). Accordingly, we
summarily affirm that rejection.
DECISION/ORDER
The rejections of claims 1—5, 9-16, 20 and 21 under 35 U.S.C. § 103
over Ogoshi in view of Hamoy, Hearle, Lawrence, Chawla and Onda,
claims 6, 7, 17 and 18 under 35 U.S.C. § 103 over Ogoshi in view of
Hamoy, Hearle, Lawrence, Chawla, Onda and Roos, and claims 1—7, 9-18,
20 and 21 provisionally on the ground of nonstatutory obviousness-type
double patenting over claims 1—5, 9-15, 20 and 21 of copending Application
No. 13/496,915 in view of Hamoy and Hearle are 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
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