Ex Parte Yoshimura et alDownload PDFPatent Trial and Appeal BoardMay 13, 201613001561 (P.T.A.B. May. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/001,561 12/27/2010 127226 7590 05/17/2016 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 FIRST NAMED INVENTOR Tsutomu Yoshimura 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. 5417-0141PUS1 2384 EXAMINER BOYLE, ROBERT C ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 05/1712016 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PA TENT TRIAL AND APPEAL BOARD Ex parte TSUTOMU YOSHIMURA, KIYONORI UMETSU, and SHINY A IKEDA1 Appeal2014-003767 Application 13/001,561 Technology Center 1700 Before SALLY GARDNER LANE, DEBORAH KATZ, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appellants timely appeals under 35 U.S.C. § 134(a) from a Rejection2 of claims 1, 2, and 8-11. (App. Br. 13-14.)3 We have jurisdiction. 35 U.S.C. § 6(b). We affirm. 1 The Real Party in Interest is identified as Zeon Corporation (Appeal Brief, filed 18 October 2013 ("App. Br."), 1.) 2 Final Office Action mailed 22 March 2013 ("Final Rejection"; cited as "FR."). 3 No reply brief has been filed. Appeal2014-003767 Application 13/001,561 OPINION A. Introduction4 The subject matter on appeal relates to a polymeric material said to be "superior in heat resistance, oil resistance, ozone resistance, etc." (Spec. ii 2.) The composition of this particular material, known as "a nitrile group- containing highly saturated copolymer rubber," is at issue in the '561 Specification. (Id. ii 9.) Representative Claim 1 reads: A nitrile group-containing highly saturated copolymer rubber having a,~-ethylenically unsaturated nitrile monomer units (a) and conjugated diene monomer units (b) and having at least part of said conjugated diene monomer units (b) hydrogenated, wherein a content of said a,~ethylenically unsaturated nitrile monomer units (a) is 38 to 42 wt%, a total of said a,~-ethylenically unsaturated nitrile monomer units (a) and said conjugated diene monomer units (b) is 93 wt% or more, an iodine value is 9 or less, and a half value width of a peak of a loss tangent (tan5) in the viscoelastic properties when made into a cross-linked product is 5 to 20°C in range. (Claims App., App. Br. 13 (emphases added).)5 The Examiner maintains the following ground of rejection: 6 A. Claims 1, 2, and 8-11 stand rejected under 35 U.S.C. § 103(a) in view of Oyama '919. 7 4 Application 13/001,561, Nitrile Group-Containing Highly Saturated Copolymer Rubber, filed 27 December 2010. We refer to the '"561 Specification," which we cite as "Spec." 5 Claims 2 and 8-11 stand or fall with claim 1. (App. Br. 4.) 6 Examiner's Answer mailed 06 December 2014 ("Ans."). 2 Appeal2014-003767 Application 13/001,561 B. Claims 1, 2, and 8-11 stand rejected under 35 U.S.C. § 103(a) in view of Oyama '753.8 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Weight Percentage of Nitrile Units Appellants do not dispute the Examiner's finding that Oyama '919 discloses a nitrile group-containing highly saturated polymer having a nitrile group-containing monomer unit content of 10 wt% to 60 wt% (or 20 wt% to 50 wt% in an alternative embodiment) and that a prima facie case of obviousness has been made based on the broader prior art range encompassing the claimed range of "3 8 to 42 wt%" of nitrile units. (App. Br. 5; see Ans. 3.) Appellants also do not dispute the Examiner's finding that Oyama '753 discloses a similar polymer having a nitrile group- containing monomer unit content of 5 wt% to 60 wt% in support of a prima facie case of obviousness in the alternative. (App. Br. 5-6; see Ans. 4.) Appellants, however, argue that a showing of unexpected results has been made to rebut each prima facie case. (App. Br. 6.) Appellants argue that unexpected results are shown relative to the prior art range disclosed in Oyama '919. (Id. at 5.) Appellants assert that because "the [h ]ydrogenated [ c ]opolymer II to IV and VII in Oyama '919" 7 Motofumi Oyama & Kazuyoshi Nakajima, Rubber Composition Comprising Nitrile Group-Containing Highly Saturated Copolymer Rubber and Ethylenically Saturated Copolymer Rubber, U.S. Patent 5,556,919, issued Sep. 17, 1996 ("Oyama '919"). 8 Motofumi Oyama & Tetsu Ohishi, Acrylonitrile Rubber with Quinoline Compound, Organic Peroxide, Crosslinking Agent, U.S. Patent 4,968,753, issued Nov. 6, 1990 ("Oyama '753"). 3 Appeal2014-003767 Application 13/001,561 each contains 44 wt% of acrylonitrile, they "correspond to Comparative Example A (former Example 1) of the present specification." (Id.) Appellants state, without citation to the record, that the heat resistance of "Comparative Example A" is -42 whereas the heat resistance of "Example 3" is -29. (Id.) Based on this comparison of two data points, Appellants conclude that "Comparative Example A is inferior to inventive Example 3 in terms of heat resistance," which shows that "[h]ydrogenated [c]opolymer II to IV and VII in Oyama '919 would also be inferior in terms of heat resistance." (Id. at 5, 8.) From the outset, the '561 Specification describes "Example l" through "Example 3" as well as "Comparative Example l" through "Comparative Example 4." (Spec. iii! 65, 71-76.) These examples are tabulated in Table 1 illustrated below: P..-;.::~~~~:t::iti-t~r; .::::..:J.ri:v~t'~k~~· n1tc .:'l:t r.i.rld:tb~' it: mi~d::'5. (~~) 6~!) 61 iU f!i tb ~ Fi<><•I p:.:~ly::~eriz~~t~·::~n •:"',•)nvernC<~r- r.;.,te ;:~::;. so $(l ao eo a.-o ~ il(i 65 $() ~ ......................................................................................................................................................................................................................... . ·'.~:: ···1 Cl ·t:J.1 +J 0 .-..-~5 +70 * ~ .fi +e & (\) --4<' ~- ! ·7 ~~~~:::: .~·f;Q ~<:~n .-60 ~~~m 2.2 I 2:.3 2·i 46 I 5.5 H 4 Appeal2014-003767 Application 13/001,561 Appellants do not provide citation support to the phrases used in the Appeal Brief including "Comparative Example A (former Example 1 )," "Comparative Example B (former Example 2)," and "inventive Example 3." Because we do not find these phrases in the '561 Specification, it is unclear which examples are being compared here. See 37 C.F.R. § 41.37(c)(iv) (requiring arguments in an appeal brief to include, among others, "citations ... to the Record replied on"). To the extent that Appellants assert that "Example l" in Table 1 containing 44 wt% acrylonitrile units is outside of the claimed range (having a heat resistance of -42), whereas "Example 3" containing 40 wt% acrylonitrile units is within the claimed range (having a heat resistance of - 29), we are not persuaded that evidence in the record supports unexpected results for the following reasons. First, with regard to the properties of the claimed polymers, Appellants argue that because the polymer in Example 3 having 40 wt% of nitrile content "falls in the middle of the claimed range" which is a "narrow" range, the properties of this particular polymer are indicative of those of the entire claimed range of polymers - both above and below 40 wt%. (App. Br. 9.) Appellants, however, provide no factual evidence, scientific reasoning, or case law in support of this hypothesis. Moreover, Appellants do not dispute the Examiner's finding that this hypothesis is inconsistent with Appellants' own statement that "a slight difference in the acrylonitrile content causes an unexpectedly significant improvement in the heat resistance" (App. Br. 8; see Ans. 7.) Therefore, the Examiner did not err in his findings with regard to the properties of the polymer of Example 3. 5 Appeal2014-003767 Application 13/001,561 Second, with regard to the prior art polymers, Appellants have provided no explanation as to how an isolated data point of 44 wt% nitrile may be applied to the entire prior art range. Absent a showing that the "claimed range achieves unexpected results relative to the prior art range," we are not persuaded that the Examiner erred in finding the evidence insufficient to rebut the prima facie case of obviousness. In re Woodruff, 919 F. 2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Third, contrary to Appellants' assertion that unexpected results are shown by comparing Example 1 to Example 3 in Table 1, the '561 Specification observes that all of "Examples 1 to 3" exhibit favorable properties. (Spec. iJ78 (stating that "the ordinary properties (tensile strength, 100% tensile stress) and heat resistance are good and a superior oil resistance can be realized" for each of "Examples 1 to 3 "). )9 Appellants' conclusion that a comparison between Example 1 and Example 3 shows unexpected results is therefore not supported by the '561 Specification. 9 The '561 Specification does not compare "Example l" with "Example 3" but instead compares "Examples 1 to 3" with "Comparative Example[ s ]" 1 through 4. (Spec. iJiJ78, 79.) The Appeal Brief does not provide citations or specific values for the parameters compared, and it is not apparent to us that "Comparative Example[ s ]" 1 through 4 are discussed in the Appeal Brief. The '561 Specification further provides that the inferior properties observed in Comparative Examples 3 and 4 are not attributed to "the ratio of the acrylonitrile units." (Id. at iJ79 (stating that the inferior heat resistance in Comparative Example 3 is attributed to the half value width of the peak of the loss tangent and that the inferior oil resistance in Comparative Example 4 is attributed to the ratio of the butylacrylate units and "the total of the acrylonitrile units and 1,3-butadiene units").) To the extent that some inferior properties are observed in these examples, they do not support unexpected results based on the claimed range of nitrile content at issue here. 6 Appeal2014-003767 Application 13/001,561 Fourth, Appellants argue that the Examiner erred in finding against unexpected results based on the heat resistance taught in Oyama '919. (App. Br. 9.) Appellants argue that the heat resistance in Oyama '919 is measured differently and thus not comparable to the heat resistance of the claimed polymer. (Id.) Whether the Examiner erred in considering the heat resistance in Oyama '919, however, does not show "objective evidence of non-obviousness ... commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). Absent such evidence, unexpected results for the claimed polymer have not been shown. Fifth, Appellants assert, without providing specific values, that "the oil resistance and heat resistance" of the polymers in Oyama '919 "are generally level" which should be distinguished from those of the claimed polymer because "the heat resistance and oil resistance of Example 3" in Table 1 "are unexpectedly superior to the heat resistance and oil resistance of Comparative Examples 1to3." (App. Br. 7 (emphasis in original).) Table 1 shows Example 3 as having 40 wt% of acrylonitrile units whereas Comparative Examples 1, 2, and 3 as having 50 wt%, 25 wt%, and 40 wt% acrylonitrile units, respectively. (Id.) Appellants do not explain why "Example 3" which has the same weight percentage of acrylonitrile units as "Comparative Example 3" would have unexpectedly superior heat or oil resistance. The '561 Specification further provides that the inferior properties observed in Comparative Example 3 are not attributed to "the ratio of the acrylonitrile units." (Spec. ,-i 79 (stating that the inferior heat resistance in Comparative Example 3 is attributed to the half value width of the peak of the loss tangent).) For these reasons, we are not persuaded that 7 Appeal2014-003767 Application 13/001,561 evidence in the record supports Appellants' assertion of unexpected results relative to the prior art range in Oyama '919. Appellants' argument with respect to the prior art range disclosed in Oyama '753 is similarly flawed. Appellants assert that the hydrogenated rubber B with 37 wt% acrylonitrile disclosed in Oyama '753 is a corresponding compound to "Comparative Example B (former Example 2) of the present invention." (App. Br. 6.) Without providing specific values of oil resistance (or other parameter) compared (if any), Appellants conclude that "[ c ]omparative Example B is inferior to inventive Example 3 in terms of oil resistance. Thus, the hydrogenated acrylonitrile butadiene copolymer rubber B of Oyama '753 would also be inferior in terms of oil resistance." (Id.) As discussed supra, while it is unclear which examples are being compared here, to the extent that "Example 2" in Table 1 containing 37 wt% acrylonitrile units is one data point outside of the claimed range, Appellants have not shown why an isolated weight percentage may be applied to both upper and the lower ends of the weight range in Oyama '753. As with the asserted unexpected results relative to the ranges in Oyama '919, Appellants have not shown evidence in the record in support of unexpected results relative to the ranges in Oyama '753. In summary, Appellants in this case have provided attorneys' arguments only and have not shown factual evidence in support of unexpected results. Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) ("Attorneys' argument is no substitute for evidence."). Appellants have not pointed to errors in the Examiner's finding that a skilled artisan would not have found a single weight percentage based on Example 3 of 8 Appeal2014-003767 Application 13/001,561 Table 1 representative of unexpected results over the entire claimed range of weight percentages relative to the prior art range in either Oyama '919 or Oyama '753. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)) (holding that it is well settled that unexpected results must be established by factual evidence and that ' [ m ]ere argument or conclusory statements in the specification does not suffice"'). Although not clearly presented, to the extent that Appellants argue that the particular properties of the claimed polymer are distinguishable from those disclosed in the prior art, claim 1 does not recite any properties such as heat resistance or oil resistance. Patentability accordingly cannot be premised on limitations that are not recited in the claims. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (holding that "appellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims"). Furthermore, the mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Iodine Value Appellants next argue that Oyama '753 fails to disclose the claimed iodine value of "9 or less." (App. Br. 8.) The Examiner, on other hand, finds that Oyama '753 discloses an "iodine value ... in the range of 0 to 60" for a nitrile-group containing polymer. (FR. 5 citing Oyama '753, 1, 11. 46- 48, 57-58.) Appellants do not provide an analysis, supported by evidence in the record, as to why the Examiner erred in finding that the prior art teaching of an iodine value between 0 and 60 encompasses the claimed iodine value 9 Appeal2014-003767 Application 13/001,561 range. We are accordingly not persuaded that error has been shown with regard to the Examiner's findings here. 10 Half Value Width The Examiner acknowledges that neither Oyama '919 nor Oyama '753 discloses a half value width of a peak of a loss tangent of the polymer. (Ans. 3, 5; FR. 4, 6.) The Examiner, however, finds that because the prior art polymers and the claimed polymers are "made from the same monomeric units ( acrylonitrile and butadiene) in the same amounts ( 41 % acrylonitrile and 59% butadiene) and having the same degree of hydrogenation as determined by the iodine value ( 1 ), " both materials would have the same properties including the same half value width of a peak of a loss tangent. (FR. 6; see also Ans. 3 (finding that an alternative embodiment of the prior art polymer and the claimed polymer are "made from the same monomeric units ( acrylonitrile and butadiene) in the same amounts ( 44 % acrylonitrile and 56% butadiene) and having the same degree of hydrogenation as determined by the iodine value (5)".) The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See Skoner, 517 F.2d at 950. Where, as here, the Examiner establishes a reasonable belief that the property or characteristic recited in the claims would have been inherent to the product or process, the burden of proof shifts to Appellants to show that this 10 The Examiner also finds that Oyama '919 discloses a polymer having an iodine value of no larger than 40. (Ans. 2 (citing Oyama '919 at 3, 11. 1-19).) Appellants do not argue that the Examiner erred in considering this teaching in Oyama '919. 10 Appeal2014-003767 Application 13/001,561 characteristic or property is not possessed by the prior art. See Jn re Best, 562 F.2d 1252, 1255 (CCPA 1977). We do not find persuasive Appellants' argument that Oyama '753 cannot achieve the claimed half value width because it "does not disclose or suggest the step of adding the monomer in the middle of the polymerization as the present invention." (App. Br. 8.) 11 Claim 1 is a product claim without recitation of method steps. We accordingly are not persuaded that error has been shown in this aspect of the obviousness analysis. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("Products of identical chemical composition cannot have mutually exclusive properties."). Problem Solved Appellants also argue that the polymer claimed is patentably distinguishable from that of Oyama '919 or Oyama '753 because the prior art references and the claim at issue provide solutions to different problems. Appellants argue that because Oyama '919 discloses a polymer of which "the weather resistance, oil resistance, and heat resistance are generally level" whereas the claim at issue is directed to "a cross-linked product having unexpectedly superior heat resistance and oil resistance," claim 1 should be distinguished over Oyama '919 for solving a different problem. (App. Br. 6, 7 (emphases in original).) Appellants also assert that because Oyama '753 seeks "to improve ozone resistance," claim 1 should be distinguished from Oyama '753. (Id. at 8.) 11 Appellants do not explain why the Examiner erred in considering the half value width based on Oyama '919. (App. Br. 8.) We accordingly are not persuaded that the Examiner committed harmful error here. 11 Appeal2014-003767 Application 13/001,561 We are not persuaded that the Examiner erred in considering the problems solved in the '561 Specification and the prior art references. Similar to the '561 Specification which seeks to produce a polymer with improved properties such as heat resistance and oil resistance, Oyama '919 seeks "to provide a rubber composition ... [that] has good weather resistance, oil resistance and heat resistance" and Oyama '753 similarly seeks to improve properties including "heat resistance and oil resistance" in "a nitrile-group containing highly saturated hydrocarbon rubber." (Oyama '919, 2, 11. 21-26; Oyama '753, 4, 11. 9-11.) The Examiner also finds that the '561 Specification, Oyama '919, and Oyama '753 are directed to the same field of endeavor related to a nitrile group-containing highly saturated polymer rubber. (Ans. 8-9 (citing to relevant portions of the '561 Specification, Oyama '919, and Oyama '753).) No error has been shown in the Examiner's findings in this aspect of the obviousness analysis. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007) ("[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed."). In summary, Appellants do not dispute that a prima facie case has been established based on Oyama '919 and alternatively based on Oyama '753. We are not persuaded that Appellants have shown errors in the Examiner's consideration of the rebuttal evidence proffered. C. Order It is ORDERED that the rejection of claims 1-2, and 8-11 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). 12 Appeal2014-003767 Application 13/001,561 AFFIRMED 13 Copy with citationCopy as parenthetical citation