Ex Parte Senda et al

Patent Trial and Appeal Board

Jan 31, 2018

13978087 (P.T.A.B. Jan. 31, 2018)

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.
13/978,087 07/02/2013 Osamu Senda 140709.03301 9793
136404 7590 02/02/2018
Pepper Hamilton LLP/Boston
Attn: Boston IP Docketing Department
125 High Street
19 th Floor
Boston, MA 02110-2736
EXAMINER
CHANG, JOSEPHINE L
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
docketingbn @ pepperlaw .com
davisdr @ pepperlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSAMU SENDA
and TOMONORINAKASHIMA
Appeal 2017-002334
Application 13/978,087
Technology Center 1700
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1 and 4—6 of Application
13/978,087 under 35 U.S.C. § 103(a) as obvious. Final Act. (November 13,
2015). Appellants1 seek 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 reverse.
1 Zeon Corp. and Nippon Sheet Glass Co., Ltd. are identified as the real
parties in interest. Appeal Br. 1.
Appeal 2017-002334
Application 13/978,087
BACKGROUND
The ’087 Application describes a reinforcing cord for use in rubber
products such as automobile timing belts. Spec. 2—5. According to the
’087 Application’s Specification, known cord-reinforced rubber belts have
poor oil resistance at the boundaries between the reinforcing cord and the
rubber matrix. Id. ^ 5. The claimed reinforcing cord is said to have
excellent oil resistance. Id. 17.
Claim 1 is representative of the ’087 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A reinforcing cord for rubber product comprising:
a reinforcing fiber; and
a coating on the surface of the reinforcing fiber,
wherein the coating contains:
a latex of a highly saturated nitrile rubber having
an acrylonitrile content of 34 wt % to 44 wt %, a
methacrylic acid content of 6 wt % to 8 wt %, an iodine
value of 120 or less, and a tetrahydrofuran insoluble
fraction of 30 wt % or more;
cross-linking agents comprising diphenylmethane-
4,4'-bismaleimide and polyisocyanate; and
a resorcin-formaldehyde condensate.
Appeal Br. 11 (emphasis added).
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Appeal 2017-002334
Application 13/978,087
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1 and 4—6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mori2 and Tai.3 Final Act. 3.
DISCUSSION
Appellants argue for reversal of the rejection of claims 1 and 4—6 on
the basis of the limitations of claim 1. See Appeal Br. 3—9. Dependent
claims 4 and 5 are alleged to be patentable on the basis of the arguments
provided by Appellants with respect to claim 1. Id. at 9. Independent claim
6 incorporates the features of claim 1 and, therefore, is alleged to be
patentable for the same reasons that claim 1 is patentable. Id. Accordingly,
we select claim 1 as representative of the claims on appeal. 37 C.F.R.
§ 41.37(c)(l)(iv) (2013). The remaining claims stand or fall with claim 1.
In rejecting claim 1, the Examiner found that Mori describes or
suggests each limitation recited in claim 1 except for the cross-linking
agents. Final Act. 3. As the Examiner found, Mori does not expressly
describe the THF-insoluble fraction of the highly saturated nitrile rubber. Id.
The Examiner, however, found that Mori’s highly saturated nitrile rubber is
made by a method that is identical or substantially identical to that disclosed
in the ’087 Application’s Specification. Id. Based upon this finding, the
Examiner concluded that Appellants had the burden to prove that Mori’s
highly saturated nitrile rubber did not inherently have a THF-insoluble
2 US 5,861,212, issued January 19, 1999.
3 US 2010/0221520 Al, published September 2, 2010.
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Appeal 2017-002334
Application 13/978,087
fraction of at least 30 wt %. Id. at 3^4 (citing In re Best, 562 F.2d 1252,
1255 (CCPA 1977); see also Advisory Act. 2 (same); Answer 5 (same).
In particular, the Examiner found:
Mori discloses a rubber latex of a carboxyl group-
containing highly saturated nitrile-conjugated d[ying]
copolymer rubber . . . but is silent as to (i) the tetrahydrofuran
insoluble fraction value of said highly unsaturated nitrile rubber
as presently claimed ....
As to (i), Mori at Col. 4 lines 30-48 discloses that the
carboxyl group-containing highly saturated nitrile rubber is
prepared in a manner identical to that set forth at [0023] to
[0024] of the present specification. As a result, because Mori
teaches a reinforcing cord for rubber product and rubber
product having substantially identical chemical structure, the
tetrahydrofuran insoluble fraction of claim 1 would have been
inherently present.
Alternatively, even assuming, arguendo, that the above-
mentioned rubbers are not identical, in view of the substantially
similar composition of Mori to the present claim, it is the Office
position that a person having ordinary skill in the art at the time
of [the] invention would have expected to derive [sic, arrive] at
the claimed tetrahydrofuran insoluble fraction with a reasonable
expectation of success as per In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977). Since the USPTO does not
have equipment to carry out the analytical experiments, the
burden is therefore shifted to the applicants to prove otherwise.
In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Final Act. 3^4.
It has long been the law that an examiner can assume that a product
produced by a process that is substantially identical to the process used to
produce the claimed product inherently has the same properties as the
claimed product. In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). In this case, however, we
conclude that the Examiner is not entitled to make this assumption because
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Appeal 2017-002334
Application 13/978,087
the Examiner has not demonstrated that the prior art describes a method of
production that is substantially identical to that set forth in the ’087
Application’s Specification.
As the Examiner found, the Specification describes a generic
emulsion polymerization process for making the nitrile rubber used to
produce the latex recited in claim 1:
The highly saturated nitrile rubber constituting the latex
of the present invention is obtained by copolymerizing the
above-mentioned monomers, and, optionally, hydrogenating the
carbon-carbon double bond in the resulting copolymer. The
polymerization method is not limited to a specific one, and so
any well-known method such as emulsion polymerization or
solution polymerization can be used. However, emulsion
polymerization is preferred in terms of industrial productivity.
As an emulsion polymerization method, any
conventionally well-known method may be employed.
Generally, used as an emulsifier for use in polymerization may
be an anionic surfactant, cationic surfactant, nonionic
surfactant, amphoteric surfactant, and so on. ... In addition,
any polymerization initiators and the like that are commonly
used may be employed. Further, the polymerization scheme is
also not limited to a specific mode and may be either batch,
semi-batch or continuous. There is also no limitation on
polymerization temperature or pressure.
Spec. 1122-23.
The Specification further describes method used to control the size of
the THF-insoluble fraction of the nitrile rubber:
The highly saturated nitrile rubber needs to have a
tetrahydrofuran insoluble fraction of 30 wt % or more. ... A
too small tetrahydrofuran insoluble fraction will deteriorate the
oil resistance of coatings formed by curing the aqueous treating
agent, as well as the oil resistance of a rubber product obtained
by using a reinforcing cord with these coatings formed thereon.
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Appeal 2017-002334
Application 13/978,087
The tetrahydrofuran insoluble fraction of the highly
saturated nitrile rubber is adjusted in such a way that the
amount of a molecular weight modifier in the final
polymerization conversion rate are controlled to fall within a
predetermined range at the time of polymerization.
Specifically, the molecular weight modifier is used in an
amount of 0.25 to 0.55 parts by weight, preferably 0.35 to 0.48
parts by weight, per 100 parts by weight of total monomer, and
the final polymerization conversion rate is controlled to be
88 % to 92 %. A preferred molecular weight modifier is
t-dodecylmercaptan.
Spec. 1132-33.
As the Examiner also found, Mori contains a generic disclosure
regarding methods that can be used to make the nitrile rubber:
Usually the copolymerization of the above-mentioned
monomers is carried out by an emulsion polymerization. The
emulsion polymerization procedure is not particularly limited,
and may be conventional. Any of a batchwise, semi-batchwise
or continuous method can be employed. The polymerization
temperature and pressure also are not particularly limited.
The emulsifier used for the emulsion polymerization is
not particularly limited. Anionic, cationic, nonionic and
ampholytic surface active agents can be employed ....
Conventional polymerization initiators and molecular
weight modifiers can be employed.
Mori col. 4,11. 30-47.
As can be seen, Mori contained only a generic teaching that molecular
weight modifiers can be used and does not discuss the degree of
polymerization at all. This is in contrast to the detailed disclosure in
Appellants’ Specification. The Examiner concluded that this difference was
not significant:
Page 7 of the brief states that “Mori neither discloses the
amount of molecular weight modifier nor any need to control
the polymerization conversion rate.” This is not persuasive
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Appeal 2017-002334
Application 13/978,087
because the present claims are likewise completely silent as to
an amount of molecular weight modifier. Nonetheless, by
disclosing the use of molecular weight modifiers, Mori does
suggest the need to control the polymerization conversion rate
and is permissive as to the manner of accomplishing this.
Answer 6.
The Examiner’s argument regarding the significance of Mori’s failure
to describe the details of the amount of molecular weight modifier and
degree of polymerization conversion is not persuasive. Even though these
details of Appellants’ method of production are not recited in claim 1, the
result of using an emulsion polymerization process consistent with the
disclosure in paragraph 33 of the Specification—i.e., the size of the THF-
insoluble fraction—is recited in the claim. Furthermore, the Examiner’s
argument that a person having ordinary skill in the art would have been
expected to arrive at the claimed THF-insoluble fraction is not supported by
any factual findings or reasoning. See Final Act. 4.
In view of the foregoing, we conclude that the Examiner has not
established the necessary predicate to rely upon the assumption discussed in
In re Best. We, therefore, reverse the rejection of claim 1 because the
Examiner has not established a prima facie case of obviousness.
Because we reverse the Examiner’s rejection of claim 1, we also
reverse the rejection of claims 4—6.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1
and 4—6 of the ’087 Application.
REVERSED
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