Ex Parte Yamanaka et al

Patent Trial and Appeal Board

May 10, 2018

14439988 (P.T.A.B. May. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/439,988 04/30/2015
80711 7590
BGL/ Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
05/10/2018
FIRST NAMED INVENTOR
Takuya Yamanaka
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.
14051-7 1078
EXAMINER
CUMAR, NATHAN
ART UNIT PAPER NUMBER
3675
MAIL DATE DELIVERY MODE
05/10/2018 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 TAKUY A YAMANAKA, SUGURU YOSHIDA,
MASAFUMI KATO, and HIDEYUKI MURAKAMI
Appeal2017-007657
Application 14/439,988
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Takuya Yamanaka et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 1 and 3-11 under 35 U.S.C. § 103(a) over Yano
(US 2004/0066004 Al, published Apr. 8, 2004), Ono (US 2001/0000788
Al, published May 3, 2001), Siegrist (US 2003/0178786 Al, published
Sept. 25, 2003), Hakuta (US 2003/0013818 Al, published Jan. 16, 2003),
Appeal2017-007657
Application 14/439,988
and Takita (US 2002/0061953 Al, published May 23, 2002). 1 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 1 is independent. Claim 1, reproduced below, is representative
of the claimed subject matter:
1. A lip seal for water pump made of a rubber-like
elastic material, fixed to a housing as a fixed side and in sliding
contact with a shaft rotating relative to the housing;
the lip seal having sliding surface with a surface roughness
Ra (according to JIS B0601 corresponding to ISO 4287) of 1 to
30 µm, being obtained by vulcanization-molding of a rubber
composition comprising 100 parts by weight of hydrogenated
nitrile rubber or EPDM, 1 to 150 parts by weight of a reinforcing
filler, 5 to 90 parts by weight of a non-reinforcing filler having
an average particle diameter of 1 µm or more, 0.1 to 5 parts by
weight of a coupling agent, 1 to 15 parts by weight of a co-
crosslinking agent, and 0.5 to 10 parts by weight of an organic
peroxide.
DISCUSSION
The Examiner determines that the combined teachings of Y ano, Ono,
Siegrist, Hakuta, and Takit disclose or suggest all of the limitations of claim
I. See Final Act. 3-7. Particularly, the Examiner finds that Ono discloses
"a seal system with fluoro thermoplastic elastomer for carbon dioxide
permeation," and that Ono "compares the performance of the fluoro
thermoplastic elastomer with hydrogenated NBR for carbon dioxide
1 The rejection of claims 1 and 3-11 under 35 U.S.C. § 112(b) was
withdrawn by the Examiner. Ans. 3.
2
Appeal2017-007657
Application 14/439,988
permeation," with the hydrogenated NBR composition used for comparison
being obtained by vulcanization-molding of a rubber composition, and
having the properties set forth in claim 1. Id. at 4--5. The Examiner
acknowledges that Ono's invention is directed towards a fluoro
thermoplastic elastomer composition for a carbon dioxide environment. Id.
at 5. The Examiner takes the position that
Ono shows [that] it is well known in the art to have the
hydrogenated NBR compositions with (a) vulcanization-
molding of a rubber composition comprising 100 parts by weight
of hydrogenated nitrile rubber o[ r] EPDM; (b) 1 to 150 parts by
weight of a reinforcing filler; ( c) 5 to 90 parts by weight of a non-
reinforcing filler having an average particle diameter of 1 µm or
more; and (d) 0.5 to 10 parts by weight of an organic peroxide.
Id. Based on these facts, the Examiner determines that it would have been
obvious to modify Yank to use Ono's composition. See id. In support of
this conclusion, the Examiner reasons that such a modification provide
would provide the expected benefit "of providing an improved sealing and
retention by the hydrogenated nitrile rubber." Id. at 5---6.
The Examiner directs our attention to Ono paragraphs 21-23. See
Ans. 4. However, these paragraphs are directed to the composition and
properties of Ono's fluro thermoplastic elastomers, and not to any NBR
composition. See Ono ,r,r 21-23. The Examiner does not establish that NBR
compositions that might be used for lip seals would have the same makeup.
Thus, there is no underlying support for the Examiner's finding that Ono
discloses that NBR compositions meeting the claim limitations were known
in the art at the time of Appellants' invention.
Final Act. 5. Accordingly, the Examiner fails to set forth a prima facie case
of obviousness.
3
Appeal2017-007657
Application 14/439,988
For this reason, we do not sustain the Examiner's decision rejecting
claim 1, and claims 3-11 which depend therefrom.
DECISION
The Examiner's rejection of claims 1 and 3-11 is REVERSED.
REVERSED
4