Ex Parte Yoshimura et al

Patent Trials and Appeals Board

May 13, 2016

13001561 - (D) (P.T.A.B. May. 13, 2016)

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.").
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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").
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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
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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.
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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.
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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
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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
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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
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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.
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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.
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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).
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AFFIRMED
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