Ex Parte Takahashi et al

Patent Trial and Appeal Board

Jul 12, 2016

12935778 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/935,778 09/30/2010
23373 7590 07114/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Yuwa Takahashi
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.
Ql21111 6962
EXAMINER
KOKKINOS, NICHOLAS C
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
07/14/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUW A TAKAHASHI,
DAISUKE NO HARA, DAISUKE NAKAGAWA,
and KOUTA ISOYAMA
Appeal2015-002176
Application 12/935,778
Technology Center 1700
Before JAMES C. HOUSEL, GEORGE C. BEST, and A VEL YN M. ROSS,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claim 2 of Application 12/935,778
under 35 U.S.C. § 112, if 2 as indefinite and claims 1-24 under 35 U.S.C.
§ 103(a) as obvious. Final Act. (October 22, 2013). Appellants 1 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 AFFIRM.
1 Bridgestone Corporation is identified as the real party in interest. Appeal
Br. 2.
Appeal2015-002176
Application 12/935,778
BACKGROUND
The '778 Application describes a film the can be used on the inner
liner of a tire. Spec. i-f 1. The film is described as having favorable gas
barrier properties and bending resistance, allowing the tire's weight to be
reduced while improving the tire's ability to retain air pressure. Id.
Claim 1 is the '778 Application's only independent claim and is
reproduced below:
1. A film, comprising at least a layer composed of resin
composition (D) produced by dispersing viscoelastic substance
(C) in one resin containing modified ethylene-vinyl alcohol
copolymer (B) obtained by subjecting ethylene-vinyl alcohol
copolymer (A) to a reaction, wherein 100% modulus at -30°C
of the viscoelastic substance (C) is smaller than 6MPa.
Appeal Br. 14 (Claims App.).
REJECTION
On appeal, the Examiner maintains2 the following rejection:
1. Claims 1-24 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nohara, 3 as evidenced by the Instron Glossary. 4' 5 Final
Act. 4; Advisory Act. 3.
2 The Examiner has withdrawn the rejection of claim 2 under 35 U.S.C.
§ 112, i-f 2. Advisory Act. 2 (February 5, 2014); Answer 2.
3 WO 2008/013152 Al. We cite US 2009/0308517 Al, published December
17, 2009, as the English-language equivalent.
4 Modulus of Elasticity-Instron, Instron, (January 29, 2014),
http://www.instron.us/wa/glossary/fv1odulus-of-Elasticitv.aspx. A printout
of this website was entered into the record on February 5, 2014.
5 The Examiner cited the Instron Glossary for the first time in the February
5, 2014 Advisory Action. We have altered the Examiner's summary
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Appeal2015-002176
Application 12/935,778
DISCUSSION
Appellants argue that the rejection of claims 1-24 should be reversed
for any of the four reasons: (1) the Examiner erred by concluding that
Nohara's description of a viscoelastic substance having a Young's modulus
of less than 1500 MPa at -20° C describes or suggests the claim limitation
requiring that the "100% modulus at -30° C of the viscoelastic substance
(C) is smaller than 6MPa," Appeal Br. 5---6; (2) the Examiner erred in
finding that Nohara discloses or suggests viscoelastic substance (C) as
recited in the claims, id. at 6-1 O; (3) the Examiner failed to identify how a
person having ordinary skill in the art would have altered Nohara to arrive at
the claimed invention, id. at 10-12; and (4) Nohara's composition is not
structurally and compositionally identical to the claimed invention, id. at 12.
We affirm the rejection of claims 1-24 on the basis of the factual
determinations and reasoning presented in the Final Action, the Advisory
Actions, and the Examiner's Answer. We add the following.
Appellants argue that the Examiner erred by concluding that Nohara
describes or suggests the use of a viscoelastic substance having a 100%
modulus at -30°C that is less than 6MPa. Appeal Br. 5-8.
The Examiner found that N ohara describes some of resin composition
(R)'s properties. Final Act. 4--5. Nohara states: "The resin composition
(R) is preferable to have [sic, preferably has] a Young's modulus at -20° C.
of not more than 1500 MPa. When the Young's modulus at-20° C. is not
more than 1500 MP a, the durability when being used in cold region [sic,
regions] can be improved." Nohara i-f 104.
statement of the rejection to reflect the Examiner's reliance upon the Instron
Glossary as evidence in support of the rejection.
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Appeal2015-002176
Application 12/935,778
In response to Appellants' arguments, the Examiner further states that
The examiner completely agrees with [Appellants] that
the 100% modulus is different from the disclosed Young's
modulus, but notes that this was never the basis for the
rejection. Instead, the examiner considered the similar, but not
identical modulus described in the N ohara reference and the
purposes ofNohara, and made a finding of obviousness. See
again paragraphs 11 - 13 of the final office action. In short, the
grounds of rejection found that Nohara did not teach appellant's
claimed 100% modulus, but that N ohara instead suggested
improving the cold performance, thereby obviating[6J adjusting
the properties and arriving at appellant's claimed 100%
modulus at -30°C.
Answer4.
After reviewing the record, we agree with the Examiner and further
note that Nohara also describes the Young's modulus of soft resin (Q), albeit
at 23°C rather than -30°C:
The soft resin (Q) dispersed in the matrix made of the
modified ethylene-vinyl alcohol copolymer (P) is required to
have a Young's modulus at 23 ° C. lower than that of the
modified ethylene-vinyl alcohol copolymer (P), which is
preferably not more than 500 MPa. When the Young's
modulus at 23° C. of the soft resin (Q) is lower than that of the
modified ethylene-vinyl alcohol copolymer (P), the elastic
modulus of the resin composition (R) can be lowered, and
hence the flex resistance can be improved.
Nohara i-f 102. Thus, Nohara suggests that lowering Young's modulus of the
viscoelastic substance results in a resin composition that has a lower
Young's modulus.
6 The verb "obviate" means "to anticipate and prevent (as a situation) or
make unnecessary (as an action)." Webster's Ninth New Collegiate
Dictionary 816 (1985). In this case, however, we assume that the Examiner
is using the word "obviating" to mean "renders obvious."
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Appeal2015-002176
Application 12/935,778
In view of the foregoing, the Examiner correctly concluded that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to use a viscoelastic substance that has a 100% modulus at
-30°C that is less than 6 MPa. Id. at 5.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-24
of the '778 Application.
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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