Ex Parte Sano et al

Patent Trial and Appeal Board

Dec 10, 2014

12083525 (P.T.A.B. Dec. 10, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/083,525 04/14/2008 Shinichiro Sano 14048-41 1734
80711 7590 12/11/2014
BGL/Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
EXAMINER
SHOSHO, CALLIE E
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
12/11/2014 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 SHINCHIRO SANO, KATSUMI ABE,
and KIYOFUMI FUKASAWA
____________

Appeal 2013-002316
Application 12/083,525
Technology Center 1700
____________

Before TERRY J. OWENS, GRACE KARAFFA OBERMANN, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7, 9–11, 13, 15, and 16, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify NOK Corporation as the real party in interest. App. Br.
1.
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Application 12/083,525

2
The Invention
Appellants’ invention relates to a composition for use as a primer in
the production of a metal/primer/adhesive/rubber laminate, and a metal-
rubber laminate using the same. Spec. ¶ 1. The primer composition is
capable of providing water resistance and acid resistance in vulcanization
bonding of a plated steel sheet and unvulcanized rubber and bonding of a
plated steel sheet and vulcanized rubber. Id. ¶ 7. Claim 1, the only
independent claim, is representative of the claims on appeal, and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A metal/primer/adhesive/rubber laminate, in which the
primer comprises a composition that include [sic] 100 parts by
weight of unsubstituted polyparavinylphenol having a structural
formula of:

and 50–300 parts by weight of an organometallic compound.
The References
Lindert US 4,376,000 Mar. 8, 1983
Tarumi US 5,837,774 Nov. 17, 1998
Fukasawa2 WO 2005/023949 A1 Mar. 17, 2005
Katsumi (as translated) JP 2006-206616 Aug. 10, 2006

2 Citations herein to Fukasawa are to US 2006/0251908 A1 (Nov. 9, 2006),
which the Examiner relies upon as an English language equivalent of WO
2005/023949. Final Office Action (“FOA”) 6 (October 27, 2011).
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The Rejections
The claims stand rejected as follows:
1. Claims 1–7, 9–11, 13, 15, and 16 are rejected under 35 U.S.C.
§ 112, ¶ 1 as failing to comply with the written description
requirement;
2. Claims 1–6, 9, 10, 13, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Katsumi in view of Lindert;
3. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Katsumi in view of Lindert and further in view of Tarumi;
4. Claims 1–7, 9, 10, 15, and 16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Fukasawa in view of Lindert; and
5. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fukasawa in view of Lindert and further in view of Tarumi.
OPINION
We reverse the rejection of claims 1–7, 9–11, 13, 15, and 16 under 35
U.S.C. § 112, ¶ 1 and affirm the rejections of claims 1–7, 9–11, 13, 15, and
16 under 35 U.S.C. § 103(a).
Rejection under 35 U.S.C. § 112, first paragraph
Because we reverse the rejection of claims 1–7, 9–11, 13, 15, and 16
under 35 U.S.C. § 112, ¶ 1, we need only address claim 1, the sole
independent claim on appeal.
The Examiner asserts that Appellants’ original disclosure fails to
provide written descriptive support for “unsubstituted polyparavinylphenol,”
which the Examiner contends is a negative or exclusionary limitation that
introduces a new concept into claim 1. FOA 2; Ans. 3–4.
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In traversing the Examiner’s rejection, Appellants point out that claim
1 recites the structural formula of MARUKA LYNCUR M, an unsubstituted
polyparavinylphenol that is used in examples 1 and 2 of Appellants’
Specification. App. Br. 4. Appellants further argue that “unsubstituted” is
not a negative limitation, but, even if it is considered as such, the limitation
finds support in Appellants’ Specification. Id. at 5.
To comply with the written description requirement, an applicant’s
specification must “convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention.” Carnegie Mellon Univ. v. Hoffman-LaRoche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F. 2d
1555, 1563–64 (Fed. Cir. 1991)). “Whether an applicant has complied with
the written description requirement is a finding of fact, to be analyzed from
the perspective of one of ordinary skill in the art as of the date of the filing
of the application.” In re Alonso, 545 F.3d 1015, 1018 (Fed. Cir. 2008). In
order to establish a prima facie case of unpatentability for failure to meet the
written description requirement, the Examiner must show that, as a matter of
fact, the claim encompasses “embodiments of the invention that are
completely outside the scope of the specification.” In re Alton, 76 F.3d
1168, 1175–76 (Fed. Cir. 1996).
Here, claim 1 requires “unsubstituted polyparavinylphenol” having
the structural formula:
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Application 12/083,525

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App. Br. 18 (Claims App’x). Appellants’ specification states that
“Polyparavinylphenol for use as one component for the primer
composition[] includes commercially available products, for example,
Maruka Linker [sic] M, a product of Maruzen Petrochemical Co.” Spec. ¶
10. Appellants’ examples 1 and 2 also describe a primer comprised of, inter
alia, “polyparavinylphenol (Maruka Linker [sic] M, a product of Maruzen
Petrochemical Co., Ltd.).” Id. ¶¶ 21, 24. During prosecution, Appellants
submitted to the Examiner the product brochure for MARUKA LYNCUR
M, which states that “‘MARUKA LYNCUR’ is a homo-polymer of para-
vinyl phenol” and provides the same structural formula for MARUKA
LYNCUR that is recited in Appellants’ claim 1. App. Br. 22, Ex. A
(Product Brochure for MARUKA LYNCUR M).
Given the foregoing, we are not persuaded the Examiner has
established that Appellants’ Specification failed to convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of “unsubstituted polyparavinylphenol” having the structural
formula set forth in claim 1. Further, even assuming the term
“unsubstituted” is a negative limitation, as the Examiner contends, we are
not convinced on this record that the Examiner has established that claim 1
contains embodiments outside of the scope of Appellants’ invention.
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Accordingly, we reverse the rejection of claims 1–7, 9–11, 13, 15, and
16 under 35 U.S.C. § 112, ¶ 1.
Rejection over Katsumi in view of Lindert
The Examiner finally rejected claims 1–6, 9, 10, 13, 15, and 16 as
obvious over Katsumi in view of Lindert. FOA 3–5.
Appellants argue claims 1–6, 9, 10, 13, 15, and 16 together as a group.
We therefore select claim 1 as the representative claim for this group and the
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv)
(2013).
Katsumi relates to the art of metal surface treatment and teaches a
primer composition containing an organometallic compound and a phenolic
resin. FOA 3; Katsumi abstract. The primer composition includes 5–250
parts by weight of organometallic compound and 100 parts by weight of
phenolic resin, and can be used to manufacture a
rubber/adhesive/primer/metal laminate. FOA 3; Katsumi ¶ 17 and abstract.
When the primer composition is used as the primer for manufacturing the
rubber/adhesive/primer/metal laminate, it exhibits excellent water resistance
and acid resistance. Katsumi abstract.
Lindert relates to the art of metal surface treatment and teaches a
coating for metal comprising unsubstituted poly-4-vinylphenol. FOA at 3;
Lindert 1:7–8; 2:54–3:6; 3:23–26. Lindert teaches that using the
unsubstituted poly-4-vinylphenol to treat metal surfaces results in improved
paint adhesion and corrosion resistance. FOA 4; Lindert 4:3–6. Lindert’s
composition also provides good salt spray and humidity resistance to metal
surfaces. FOA 4; Lindert 5:10–15.
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Appellants argue the Examiner’s finding that a skilled artisan would
have been motivated to combine Katsumi and Lindert is in error because
Lindert’s salt spray testing results fail to establish that the compositions
providing good salt spray protection are due to the use of unsubstituted poly-
4-vinylphenol. App. Br. 7–8.
Appellants’ argument is not persuasive for several reasons. First, as
the Examiner recognized, Lindert characterizes the testing results as
demonstrating that all of the examples provide good salt spray and humidity
resistance to a metal surface. Ans. 5–6; Lindert 5:11–14.
Moreover, although Appellants only point to Lindert’s salt spray
results to support their argument, all of the disclosures in a prior art
reference must be evaluated for what they would have fairly suggested to
one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 965 (CCPA
1966). The Examiner did not rely exclusively on good salt spray protection
to support the finding that a skilled artisan would have been motivated to
combine Katsumi with Lindert. Rather, the Examiner relied on the entirety
of the disclosure in finding that Lindert teaches a combination of beneficial
properties achieved when treating a metal surface with unsubstituted poly-4-
vinylphenol, including improved paint adhesion, improved corrosion
resistance, good salt spray resistance, and good humidity resistance. FOA 4;
Ans. 5. Thus, the Examiner had a reasonable basis to conclude that Lindert
would have fairly suggested, to one of ordinary skill in the art, using
unsubstituted poly-4-vinylphenol in the Katsumi composition to achieve
improved adhesion and corrosion resistance on the metal surface of
Katsumi’s disclosed rubber-metal laminates and, more specifically, gaskets.
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Appellants argue the Examiner’s finding that a skilled artisan would
have been motivated to combine Katsumi and Lindert is in error because
Lindert does not teach a formulation of a primer layer for a
metal/primer/adhesive/rubber laminate. App. Br. 8–9.
Appellants’ argument is not persuasive because “the test for
combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art.” In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971). Here, the Examiner did not rely on Lindert
as teaching a metal/primer/adhesive/rubber laminate. Rather, the Examiner
relied on Lindert’s teaching of unsubstituted poly-4-vinylphenol combined
with Katsumi’s teaching of a metal/primer/adhesive/rubber laminate.
Appellants argue that Lindert only concerns salt corrosion of the metal
surface and paint adhesion and, therefore, is concerned with a different
problem than Katsumi. App. Br. 9–10. Thus, argue Appellants, there is no
basis to support the Examiner’s finding that using Lindert’s poly-4-
vinylphenol with the organometallic compound of Katsumi would produce a
rubber-metal laminate with enhanced properties. Id. at 9.
Appellants’ arguments are not supported by the relevant case law, as
references need not be combined for the purpose of solving the same
problem solved by Appellants. See, e.g., In re Dillon, 919 F.2d 688, 693
(Fed. Cir. 1990) (en banc); Cross Med. Prods., Inc. v. Medtronic Sofamor
Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in
the art need not see the identical problem addressed in a prior art reference
to be motivated to apply its teachings.”).
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Application 12/083,525

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Appellants argue that even if a skilled artisan would have been
motivated to combine Katsumi and Lindert, Appellants’ invention provides
unexpected results over the prior art. App. Br. 12.
Appellants’ argument is not persuasive because Appellants have not
provided a proper side-by-side comparison of the claimed invention with the
closest prior art, or evidence that any such results would have been
unexpected by a skilled artisan. See In re Freeman, 474 F.2d 1318, 1324
(CCPA 1973).
Accordingly, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a), as well as claims 2–6, 9, 10, 13, 15, and 16, which depend
therefrom.
Rejection over Katsumi in view of Lindert and Tarumi
The Examiner finally rejected claim 11 as obvious over Katsumi in
view of Lindert and Tarumi. FOA 5–6.
Appellants rely on the same arguments made in support of
patentability of independent claim 1 to support the patentability of claim 11,
and do not rely upon the particulars of Tarumi. For the same reasons
expressed in connection with claim 1, Appellants’ arguments fail to show
reversible error in the Examiner’s rejection. Accordingly, we affirm the
rejection of claim 11 under 35 U.S.C. § 103(a).
Rejection over Fukasawa in view of Lindert
The Examiner finally rejected claims 1–7, 9, 10, 15, and 16 as obvious
over Fukasawa in view of Lindert. FOA 6–9.
Fukasawa relates to the art of metal surface treatment and discloses a
primer composition for forming a metal-rubber composite. Id. at 6;
Fukasawa ¶¶ 6–7. The primer composition includes an organometallic
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Application 12/083,525

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compound and a copolymerization oligomer of an amino group-containing
alkoxysilane and a vinyl group-containing alkoxysilane. FOA 6–7;
Fukasawa ¶ 7. The organometallic compound is used in a proportion of
about 10 to about 100 parts by weight on the basis of 100 parts by weight of
the copolymerization oligomer. FOA 7; Fukasawa ¶ 14. The primer
composition can be used to make a metal/primer/adhesive/rubber laminate.
FOA 7; e.g., Fukasawa ¶ 16.
Appellants argue that the rejection should be reversed because there is
no basis to combine Fukasawa with Lindert. App. Br. 14.
Appellants argument is not persuasive because, as previously
discussed, it fails to identify error in the Examiner’s finding that Lindert’s
unsubstituted poly-4-vinylphenol, when used to treat metal, results in
improved adhesion, corrosion resistance, good salt spray and humidity
resistance to the metal surface, all of which would have been characteristics
a skilled artisan would have considered in engineering a rubber-metal
laminate. Ans. 9. Thus, the Examiner had a reasonable basis for combining
Fukasawa and Lindert.
Appellants’ remaining arguments to support the patentability of
claims 1–7, 9, 10, 15, and 16 over the combination of Fukasawa and Lindert
are the same as those made with respect to the rejection of claims 1–6, 9, 10,
13, 15, and 16 as obvious over the combination of Katsumi and Lindert. See
Reply Br. 4. Appellants’ arguments fail to show reversible error in the
Examiner’s rejection for the same reasons expressed in connection with the
Examiner’s rejection over Katsumi and Lindert.
Accordingly, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a), as well as claims 2–7, 9, 10, 15, and 16, which depend therefrom.
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Application 12/083,525

11
Rejection over Fukasawa in view of Lindert and Tarumi
The Examiner finally rejected claim 11 as obvious over Fukasawa in
view of Lindert and Tarumi. FOA 9–10.
Appellants rely on the same arguments made in support of
patentability of independent claim 1 to support the patentability of claim 11,
and do not rely upon the particulars of Tarumi. For the same reasons
expressed in connection with claim 1, Appellants’ arguments fail to show
reversible error in the Examiner’s rejection. Accordingly, we affirm the
rejection of claim 11 under 35 U.S.C. § 103(a).

DECISION/ORDER
The Examiner’s rejection of claims 1–7, 9–11, 13, 15, and 16 under
35 U.S.C. § 112, ¶ 1 is reversed.
The Examiner’s rejections of claims 1–7, 9–11, 13, 15, and 16 under
35 U.S.C. § 103(a) 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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