Ex Parte Takahashi et al

Patent Trial and Appeal Board

Feb 27, 2018

14438447 (P.T.A.B. Feb. 27, 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.
14/438,447 04/24/2015 Hideo Takahashi 3400.P1486US 1003
23474 7590 03/01/2018
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
ZIMMER, MARC S
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEO TAKAHASHI, HIROYOSHIIIJIMA
and HIDEFUMI TAGAI
Appeal 2017-005025
Application 14/438,447
Technology Center 1700
Before BRADLEY R. GARRIS, MARK NAGUMO,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—10 of Application 14/438,447
under 35 U.S.C. § 103(a) as obvious. Final Act. (March 16, 2016) 2—5.
Appellant1 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 Appellant is the Applicant, Momentive Performance Materials Japan LLC,
which is further indicated to be the real party in interest. Appeal Br. 1.
Appeal 2017-005025
Application 14/438,447
BACKGROUND
The present application generally relates to a heat-curable silicone
rubber composition exhibiting high transparency and antistatic property.
Spec. 11.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A heat-curable silicone rubber composition comprising:
(A) 100 parts by mass of an organopolysiloxane
having an average polymerization degree of 50 to 10000 and
containing at least two alkenyl groups bonded to a silicon atom
in one molecule;
(B) 10 to 400 parts by mass of a silicone resin which
includes units selected from a R3 SiOl/2 unit as unit M, Si04/2
unit as unit Q, R2Si02/2 unit as unit D, and RSi03/2 unit as
unit T, whereas R is a monovalent hydrocarbon group having 1
to 6 carbon atoms and at least two in one molecule are alkenyl
groups and in which a sum of the unit M, unit Q and unit T in
all of the structural units is 80% by mole or more;
(C) an organohydrogenpolysiloxane containing at least
two hydrogen atoms bonded to a silicon atom in one molecule,
in an amount such that the number of the hydrogen atoms
bonded to a silicon atom per one alkenyl group bonded to a
silicon atom in the component (A) and the component (B) is 1.0
to 10.0;
(D) a hydro silylation reaction catalyst, and
(E) 30 to 3000 ppm of an ionic liquid serving as an
antistatic agent,
wherein the ionic liquid of the component (E) has a
difference in refractive index from the refractive index of a
cured product formed of a base silicone rubber mixture of the
components (A), (B), (C) and (D) within a range of ± 0.04.
Appeal Br. (Claims App. 1).
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Application 14/438,447
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claims 1—10 are rejected under 35 U.S.C. § 103(a) as obvious over
Iijima2 in view of Lai3, Hardman4, and Mogi5. Final Act. 2—5.
DISCUSSION
Appellant argues the claims at issue collectively. Appeal Br. 3, 8.
We select claim 1 as representative of the group so that claims 2—9 will
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
In the Final Rejection, the Examiner indicated that the claims are
rejected “for the reasons outlined previously,” (Final Act. 2), thereby
incorporating the non-final rejection dated November 4, 2015 (hereafter
“Non-Final Act.”). There, the Examiner found that the primary reference,
Iijima, teaches each element of claim 1 other than element B, an alkenyl
functional silicone resin. Non-Final Act. 3. Iijima further teaches that the
composition may include silica as an additive. Iijima 14—15.
The Examiner additionally found that Lai and Hardman teach that
alkenyl-functional silicone resins (such as those required by element B of
claim 1) are functionally equivalent to silica “when employed in the capacity
of a reinforcing agent in a hydrosilylation-curable organopolysiloxane.”
Non-Final Act. 3. Accordingly, the Examiner determines that it would have
2 US 2011/0039991 Al, published Feb. 17,2011.
3 US 2005/0038219 Al, published Feb. 17, 2005.
4 US 4,329,273, issued May 11, 1982.
5 US 2009/0062499 Al, published Mar. 5, 2009.
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Application 14/438,447
been obvious to one of skill in the art to modify the composition of Iijima to
include an alkenyl-functional silicone resin as a reinforcing agent/filler
rather than silica. Id. at 3^4; Final Act. 4.
Prima Facie Case of Obviousness
Appellant argues that, in the context of the present invention, there is
no equivalence between the claimed alkenyl-functional silicone resin and
silica. Appeal Br. 4. Appellant asserts that such equivalence is lacking
because substitution of silica for the claimed resin would cause the claimed
composition to lose its transparency due to the difference in refractive index
between silica and the silicone polymer. Id.
It is well settled that neither the particular motivation nor the avowed
purpose of an applicant controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.
KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007); In re Kemps, 97
F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he motivation in the prior art to
combine the references does not have to be identical to that of the applicant
to establish obviousness.”). Here, the Examiner has posited that a person of
skill in the art would have regarded an alkenyl-functional silicone resin as a
filler equivalent to the silica used in the composition of Iijima. Final Act. 2.
Appellant does not contest such finding. Appeal Br. 2—5. Moreover, Lai is
directed to “relatively high refractive index polymeric compositions . . .
useful in the production of ophthalmic devices such as for example
intraocular lenses and corneal inlays.” Lai, Abstract. Thus, the
polysiloxanes with vinyl functional groups recommended as alternatives to
silica fillers would have been expected to have similar refractive indices, and
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Application 14/438,447
to provide similarly transparent compositions. Accordingly, on the present
record, the proposed modification is merely the combination of familiar
elements according to know methods. See KSR, 550 U.S. at 416. Further,
Appellant has not argued that the modification of Iijima to add silicone resin
would yield a composition less transparent than Iijima. Accordingly, the
Examiner has established a prima facie case of obviousness.
Rebuttal of the Prima Facie Case of Obviousness
Appellant additionally argues that, even if the claims are determined
to be prima facie obvious, such determination is rebutted by test data
showing the benefits of the claimed composition. Appeal Br. 6.
Appellant argues that it is critical that the ionic liquid of claim
element E have a refractive index similar to the remainder of the
composition. Id. at 6—7. In support of such argument, Appellant cites to the
tables found in the Specification. See Spec. 14—15. Such tables show the
results of tests of various examples (within the scope of the claims) and
comparative examples (outside the scope of the claims). Id. Comparative
Example 1 is a composition made without any ionic liquid (element E of the
claims). Id. at 15. The remaining comparative examples (2 through 5)
include an ionic liquid having a refractive index that differs from the silicone
rubber mixture by more than .04, therefore falling outside claim 1. The
results show that the compositions with an ionic liquid having a refractive
index similar to the other components of the composition have greater
transmittance and less haze than compositions with a greater difference in
the refractive indices. Id. at 14—15.
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Application 14/438,447
Appellant additionally relies upon the declaration of inventor
Hiroyoshi Iijima, dated June 8, 2016 (hereinafter “Iijima Declaration”). The
Iijima Declaration describes test results for a composition described as
“prepared according to Example 1 of application Serial No. 14/438 447
except that 50 wt. % of the polymethylvinylsiloxane resin used in Example 1
was replaced with silica.” Iijima Declaration 1. The Declarant states that
“[i]f all of the polymethylvinylsiloxane resin used in Example 1 was
replaced by the silica, the amount of silica would be too voluminous to
formulate and the composition would not be well-balanced in terms of cross-
linking to enable proper curing.” Iijima Declaration 1—2.
The test results reported in the Iijima Declaration indicate that the
tested composition had a transmittance of 70% at a thickness of 12 mm and
of 84% at a thickness of 2 mm. Id. at 2. This is a lower transmittance than
the Examples in the Specification that are described as practicing the claims.
Spec. 14. Appellant concludes that the foregoing data evidences the
criticality of the similarity of the refractive indices of the ionic liquid and the
silicone rubber mixture. Appeal Br. 7.
Rebuttal evidence may include evidence of “secondary
considerations,” such as “commercial success, long felt but unsolved needs,
[and] failure of others.” Graham v. John Deere Co., 383 U.S. 1, 694 (1966).
Rebuttal evidence may also include evidence that the claimed invention
yields unexpectedly improved properties not present in the prior art. In re
Fenn, 639 F.2d 762, 765 (CCPA 1981) (“Although it is well settled that
comparative test data showing an unexpected result will rebut a prima facie
case of obviousness, the comparative testing must be between the claimed
invention and the closest prior art.”).
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Application 14/438,447
Where the prior art gives reason or motivation to make the claimed
invention, the burden to produce evidence such as unexpected results falls
on an applicant to rebut that prima facie case. In re Dillon, 919 F.2d 688,
692 (Fed. Cir. 1990) (en banc). Appellant may show that the claimed
invention has an unexpected property over the prior art “with evidence that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would find surprising or
unexpected.” In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). An
examination for unexpected results is a factual, evidentiary inquiry. Id.
Here, Appellant does not compare the claimed composition to the
closest prior art, Iijima. Rather, the claimed composition is compared to a
composition that has some silica (like Iijima) and some polymethyl-
vinylsiloxane resin (like the present claims). Nor does the data that is
supplied indicate a marked improvement throughout the full range of the
claims. The composition of Examples 12 and 14 (practicing claim 1) have
transmittance and haze values the same as, or only slightly improved over,
Comparative Example 2. See Spec. 14—15. Appellant’s assertion that the
transmittance and haze of the compositions of the comparative examples
were “clearly inferior” (Reply 4) is not supported in all cases. Moreover, it
appears that the Specification includes test data for a single silicone resin
(Element B), a single cross-linking agent (Element C), and a single catalyst
(Element D). Spec. 11. Claim limitations B, C, and D each may encompass
a number of compounds. Thus, Appellant has not shown test results
commensurate in scope with the claims. Finally, Appellant does not proffer
evidence that a person of ordinary skill in the relevant art would find the
testing results to be surprising or unexpected.
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Application 14/438,447
Accordingly, Appellant has not rebutted the prima facie case of
obviousness.
CONCLUSION
The rejection of claims 1—10 as obvious over Iijima in view of Lai,
Hardman, and Mogi 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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