Ex parte WATANABE et al.

Board of Patent Appeals and Interferences

Oct 29, 1998

08076475 - (D) (B.P.A.I. Oct. 29, 1998)

Application for patent filed June 14, 1993. According1
to appellants, the application is a continuation of Applica-
tion 07/533,504, filed June 5, 1990, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SHOZO WATANABE
and
KEITARO KAMEYAMA
_____________
Appeal No. 95-1987
Application 08/076,4751
______________
HEARD: October 15, 1998
_______________
Appeal No. 95-1987
Application 08/076,475
2
Before KIMLIN, JOHN D. SMITH and PAK, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from
the examiner's final rejection of claims 1, 3-7 and 29-34.
Claims 1 and 4 are representative and are reproduced
below:
1. A method for vulcanizing and molding a rubber
compound comprising the steps of:
providing a mold formed of a single material, said
mold cooperating with a pair of electrode plates holding said
mold therebetween,
providing a rubber compound having a dielectric loss
factor regulated to a value of more than 0.20,
supplying said rubber compound into said mold,
pressurizing said mold and performing dielectric
heating under frequency in a range of 10 to 100 MHZ for vulca-
nizing said rubber compound concurrently with molding thereof
to a rubber article having a desired volume, wherein said
heating is directly applied to said mold via said electrode
plates.
4. The method for molding a rubber compound as set
forth in claim 1, wherein said rubber compound includes at
Appeal No. 95-1987
Application 08/076,475
3
least one component selected from the group consisting of
alkylene glycol, chlorinated rubber and mixtures thereof.
The references of record relied upon by the examiner
are:
Smythe et al. (Smythe) 2,966,469 Dec. 27, 1960
Itoh 4,481,159 Nov. 6, 1984
Natori et al. (Natori) 4,776,915 Oct. 11, 1988
A reference cited by the Board is:
McGraw-Hill Encyclopedia of Science and Technology, Vol. 4,
pages 130, 131, copyright 1971.
The appealed claims stand rejected under 35 U.S.C.
§ 103 over Itoh in view of Natori and Smythe.
We affirm the rejection as to claims 1, 3, 6, 7, 31,
and 32. We reverse the rejection as to claims 4, 5, 29, 30,
33, and 34. We also denominate our affirmance as involving a
new rejection under 37 CFR § 1.196(b).
The subject matter on appeal relates to a method for
vulcanizing a rubber composition concurrently with molding
Appeal No. 95-1987
Application 08/076,475
4
utilizing a "high frequency" dielectric heating technique. In
the "Description of the Prior Art" section of appellants'
specification, at page 3, appellants acknowledge that rubber
compounds have been vulcanized using UHF (ultra high fre-
quency) dielectric heating. However, in such processes,
appellants indicate that vulcanizing and molding must be
carried out separately. According to appellants, the rubber
compounds utilized in such prior art processes possess a
relatively low dielectric loss factor which necessitates the
use of ultra high frequency as predicted by the well-known
heating rate equation. Generally see the specification at
page 3 and the specification at page 1, line 32, through page
3, line 1.
Appellants' invention involves the preparation of a
rubber compound having a dielectric loss factor of more than
0.20 which enables appellants' process to accomplish "high
frequency dielectric heating at a frequency less than 100
MHZ." Thus, in an apparent reference to calculations made
using the well-known heating rate equation, appellants state
in their specification at page 9, lines 33-38, that:
Appeal No. 95-1987
Application 08/076,475
5
[t]heoretically, the dielectric con-
stant, the dielectric dissipation factor,
and the dielectric loss factor required to
accomplish high frequency dielectric heat-
ing at a frequency less than 100 MHZ are
preferably determined at ,' = 4.0, tan* =
0.05, and ,'tan* = 0.20, respectively.
Another feature of appellants' invention is the
purported discovery that rubber compositions including
alkylene glycol and/or chlorinated rubber exhibit the
theoretical preferred characteristics regarding the dielectric
loss factor. See the specification at page 9, lines 38-44.
Separate claims on appeal are directed to this subject matter.
As evidence of obviousness of the claimed invention,
the examiner principally relies on Itoh. This reference
discloses a process which employs "high frequency" dielectric
heating to effect rubber vulcanization within a mold to obtain
"burr-free" rubber moldings. See the reference at column 1,
lines 21-33. The Itoh process, like the claimed process,
therefore involves a procedure which vulcanizes rubber
Appeal No. 95-1987
Application 08/076,475
6
compositions concurrently with molding, as contrasted to the
prior art processes discussed in appellants' specification.
Itoh also discloses that rubber compounds such as
nitrile rubber and neoprene rubber have a high dielectric loss
factor and are said to be "self-heating." See the reference
at column 2, lines 6 and 7, and lines 62-64. Itoh
alternatively discloses that natural rubber, butyl rubber and
ethylene-propylene rubber, materials which have a relatively
low dielectric loss factor, may be made to be "self-heating"
type materials by the addition of polar radical materials such
as carbon black, stearic acid, sulfur and zinc oxide. See
column 2, lines 64-68 of the reference. At column 1, lines
54-58, Itoh clearly suggests a method for vulcanizing and
molding a rubber compound comprising a step of providing a
rubber compound having a "large dielectric loss factor" for
heating by "high frequency dielectric heating" when supplied
to and maintained within a mold. Although Itoh does not
expressly disclose a specific value
Appeal No. 95-1987
Application 08/076,475
7
of a "large dielectric loss factor" for any rubber composition
described in the reference, one of ordinary skill in the art
would have understood that "theoretically," the rubber
compound should preferably possess a dielectric loss factor of
at least 0.20 to permit the use of "high frequency dielectric
heating at frequencies less than 100 MHZ." Again, see
appellants' admissions in the specification at page 9, lines
34-38, wherein preferred values were apparently calculated
based on the well-known heating rate equation.
We recognize that Itoh does not expressly report a
value or define what is meant by the expression "high
frequency" dielectric heating. However, we believe this
disclosure would have been understood by a person of ordinary
skill in the art to be a reference to a frequency range of 2-
90 MHZ, the frequency range disclosed by McGraw-Hill as a
"high frequency" for conventional dielectric heating
techniques.
Although Itoh does not expressly describe the
relationship between the dielectric loss factor of the rubber
material being molded and the frequency range claimed by
Appeal No. 95-1987
Application 08/076,475
8
appellants, it is clear from the well-known heating rate
equation that the dielectric loss factor of the rubber
material being molded and the frequency are interrelated
result effective
variables. Thus, we conclude that one of ordinary skill in
this art would have found the claimed subject matter regarding
the dielectric loss factor values and the frequency range to
have been prima facie obvious. In coming to this conclusion,
we have not ignored the comparative data set forth in Table 2
in the specification at page 9 which indicates that rubber
compounds having conventional compositions could not be
adequately vulcanized at a frequency of 40 MHZ. However, the
specification provides no data regarding comparative examples
at frequencies at the high end of the claimed range, i.e., at
a value of approximately 100 MHZ.
We recognize that appellants' claims also require
the use of a mold "cooperating with a pair of electrode plates
holding said mold therebetween," while Itoh utilizes a mold
which is simply heated by a conventional dielectric heating
Appeal No. 95-1987
Application 08/076,475
9
furnace. See Itoh at column 3, line 7. Thus, Itoh's mold
does not require a cooperating pair of electrodes to carry out
the dielectric heating process. However, Natori's Figure 13
embodiment describes a mold/cooperating electrode plate
arrangement for dielectric heating as called for by the
appealed claims. See column 3, lines 43-54 of Natori which
suggests that this is also a conventional means for carrying
out high frequency dielectric
heating. In lieu of utilizing a conventional dielectric
heating furnace, as disclosed in Itoh, it would have been
prima facie obvious to have utilized a conventional
mold/cooperating electrode plate arrangement as disclosed by
Natori to effect "high frequency" dielectric heating.
Appellants also emphasize that their claimed method
requires "pressurizing" the mold during the process consistent
with the disclosure in the specification at page 6, lines 28-
35, which indicates that the rubber compound is press molded
while being vulcanized. This claimed feature, in our view, is
fairly suggested by Itoh's disclosure at column 3, lines 1-6,
Appeal No. 95-1987
Application 08/076,475
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which indicates, in an alternative embodiment, that a fixed
quantity of rubber may be placed in a mold cavity and "the
separate molds are neatly jointed so that the rubber material
may be filled up by compression."
With respect to those claims, separately argued,
that call for the use of molds formed of fluorine resins or
silicone resins, we note that Itoh contemplates the use of
fluororesin mold material (column 1, lines 63-67) while Natori
teaches a preference for the use of molds made from, inter
alia, fluoroplastics and silicone resins.
In light of the foregoing discussion, we affirm the
rejection as to appealed claims 1, 3, 6, 7, 31, and 32.
However, since our application of the prior art and rationale
arguably differs from that of the examiner, and, because we
have additionally relied on the McGraw-Hill publication, we
denominate our affirmance of the rejection of these claims as
involving a new rejection under 37 CFR § 1.196(b).
Appeal No. 95-1987
Application 08/076,475
11
We reverse the examiner's rejection as applied to
appealed claims 4, 5, 29, 30, 33, and 34. These claims
additionally require that the rubber compound utilized include
at least one component selected from the group consisting of
alkylene glycol, chlorinated rubber and mixtures thereof.
Suffice it to say that the examiner has provided no objective
evidence suggesting the use of these materials in Itoh's
rubber compositions. In short, the record is devoid of any
suggestion that these materials are "polar radical materials"
similar to the carbon black, stearic acid, sulfur and zinc
oxide utilized by Itoh.
As a final matter, we point out that we have not
relied on the Smythe reference utilized by the examiner in the
statement of his rejection, nor have we reviewed the
Encyclopedia of Polymer Science and Technology reference,
Persson, Izumi or Selfride, all referred to in the Examiner's
Answer.
In summary, the examiner's rejection of claims 1, 3,
6, 7, 31, and 32 is affirmed. However, we denominate our
affirmance as involving a new rejection pursuant to 37 CFR §
Appeal No. 95-1987
Application 08/076,475
12
1.196(b). The examiner's rejection of claims 4, 5, 29, 30,
33, and 34 is reversed. Hence, the decision of the examiner
is affirmed-in-part.
In addition to affirming the examiner’s rejection
of one or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b) (amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that
“[a] new ground of rejection shall not be considered final for
purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date
of the original decision. . . .
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
Appeal No. 95-1987
Application 08/076,475
13
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
Should the appellants elect to prosecute further
before the Primary Examiner pursuant to 37 CFR § 1.196(b)(1),
in order to preserve the right to seek review under 35 U.S.C.
§§ 141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellants elect prosecution before the
examiner and this does not result in allowance of the
application, abandonment or a second appeal, this case should
Appeal No. 95-1987
Application 08/076,475
14
be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any
timely request for rehearing thereof.
No time period for taking any subsequent action in
con-nection with this appeal may be extended under 37 CFR §
1.136(a). AFFIRMED-IN-PART 37 CFR 1.196(b)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JOHN D. SMITH ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
psb
Appeal No. 95-1987
Application 08/076,475
15
Barry L. Kelmachter
Bachman & LaPointe
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Suite 1201
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