Kobayashi, Tomoyuki

Patent Trials and Appeals Board

Nov 13, 2019

13639031 - (D) (P.T.A.B. Nov. 13, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/639,031 10/02/2012 Tomoyuki Kobayashi Q141259 9275
23373 7590 11/13/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
JACYNA, J CASIMER
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
11/13/2019 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOYUKI KOBAYASHI
Appeal 2018-003591
Application 13/639,031
Technology Center 3700
Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 25, 26, and 28–35.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Sekisui Chemical
Co., Ltd. Appeal Br. 2.
2 Claims 1–12 and 27 are cancelled, and claims 13–24 are withdrawn.
Appeal Br. 14–16 (Claims App.); see also Final Act. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a lining material for rehabilitating
deteriorated host pipe, in particular, underground pipe. Spec. ¶ 1. Under the
heading “TECHNICAL PROBLEM,” the Specification states “it is an object
of the present invention to provide the lining material for rehabilitating a
host pipe composed of a thermosetting resin to substitute a petroleum-based
synthetic resin.” Id. ¶ 11.
Claim 25, reproduced below, is the sole independent claim on appeal:
25. A lining material for rehabilitating a host pipe, which
comprises:
(i) a resin absorbing base material impregnated with (iii)
an uncured furan resin composition; and
(ii) a liquid-tight film coating formed on one surface of
said base material (i), wherein said uncured furan resin
composition comprises a furan-based resin and a curing agent
and has a viscosity of 830 to 3000 mPa·s and a moisture content
of 10 % by weight or lower when impregnated into said resin
absorbing base material, and wherein the furan-based resin is at
least one selected from the group consisting of an unmodified
furan resin, an epoxy-modified furan resin, a phenol-modified
furan resin, an aldehyde-modified furan resin, an urea-modified
furan resin and a melamine-modified furan resin.
Appeal Br. 14 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Armbruster US 4,495,316 Jan. 22, 1985
Friedrich US 5,799,705 Sept. 1, 1998
McCrary US 2010/0065271 A1 Mar. 18, 2010
Yoshida US 2013/0008625 A1 Jan. 10, 2013
Aarsleff EP 2 141 404 A1 Jan. 6, 2010

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REJECTIONS3
I. Claims 25 and 28–34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aarsleff and McCrary.
II. Claims 26 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aarsleff, McCrary, and Friedrich.
III. Claims 25 and 28–34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aarsleff, McCrary, and Yoshida.
IV. Claims 26 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aarsleff, McCrary, Yoshida, and Friedrich.
V. Claims 25, 28–32, and 34 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Aarsleff and Armbruster.
VI. Claims 26 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aarsleff, Armbruster, and Friedrich.

OPINION
Rejection I; Aarsleff and McCrary
The Examiner finds that Aarsleff discloses many of the elements
recited in claim 25, but does not disclose “the physical properties or type or
species of the uncured furan resin.” Final Act. 3. To remedy this
deficiency, the Examiner turns to McCrary, which, the Examiner finds,
discloses another uncured furan resin which is produced as a coating
material for liquid containers. Id. (citing McCrary ¶¶ 2–4). The Examiner

3 A rejection of claim 27 under 35 U.S.C. § 112, 4th paragraph, as being in
improper dependent form is rendered moot as a result of the cancelation of
this claim. See Final Act. 2; Advisory Act. 1.
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finds McCrary discloses that its resin has a viscosity range of within the
claimed range. Id. (citing McCrary ¶ 107). The Examiner also finds that
McCrary teaches that the moisture content of the resin affects the resin’s
viscosity, and that the resin can be chosen from the groups recited in claim
25. Id. (citing McCrary ¶¶ 88, 98). The Examiner reasons it would have
been obvious to a person of ordinary skill in the art to provide the lining
material disclosed by Aarsleff “with an uncured furan resin of the claimed
type and viscosity range as, for example, taught by McCrary in order to
provide a specific recipe for making a suitable furan resin.” Id.
Appellant argues that the Examiner erred in relying on McCrary
because this reference is non-analogous art under either prong of the
analogous art test. Appeal Br. 7–10. To be analogous art and qualify as
prior art in an obviousness rejection, a reference “must satisfy one of the
following conditions: (1) the reference must be from the same field of
endeavor; or (2) the reference must be reasonably pertinent to the particular
problem with which the inventor is involved.” K-TEC, Inc. v. Vita-Mix
Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (citation omitted).
McCrary—Not in Relevant Field of Endeavor
Appellant contends that McCrary is not in Appellant’s field of
endeavor because this reference relates to proppants—small particles
designed to keep an induced hydraulic fracture open in an oil well. Appeal
Br. 9. Appellant asserts that the field of endeavor of proppants is not the
same as Appellant’s field of endeavor, namely, the field of rehabilitating a
host pipe. Id. at 8.
In response, the Examiner states “McCrary is analogous first because
it is in the field of using furan resins, like the base reference to Aarsleff, and
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merely provides an example of adjusting the physical properties of furan to
yield a workable resin.” Ans. 9–10.
Appellant has the better position on this point. We do not agree with
the Examiner that the relative field of endeavor is “using furan resins.”
Paragraph 1 of the Specification, under the heading “TECHNICAL FIELD,”
states that the “invention relates to a lining material for rehabilitating a host
pipe.” Although claim 25 requires a furan resin, claim 25 also includes
various other limitations and descriptive language relating to components
other than a furan resin. The Examiner’s characterization of the relevant
field of endeavor only in terms of using furan resin omits other relevant
considerations, such as the technical field described in the Specification, the
requirement for “a liquid-tight film,” and the phrase “[a] lining material for
rehabilitating a host pipe” in the preamble of claim 25. Based on
Appellant’s Specification, the preamble of claim 25, and other limitations
recited in this sole independent claim, we understand the relevant field of
endeavor to be the rehabilitation of pipe.
McCrary—Not Reasonably Pertinent to the Problem Solved
Appellant contends “[t]here is simply no disclosure in McCrary that
would indicate that a problem with which the present inventors were
concerned could be solved by McCrary’s fracking materials.” Appeal Br. 9.
In response, the Examiner states that McCrary uses furan resins “to
coat underground storage formations to prevent leakage which is similar to
coating a deteriorated underground pipleline for rehabilitation as disclosed in
[Appellant’s] Technical Field, paragraph 1 . . . and [F]igures 5 and 6.” Ans.
10. Thus, according to the Examiner, the claimed invention addresses the
problem of unwanted leakage, and McCrary addresses the same problem.
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Even assuming, for the sake of argument, that the problem addressed
by the inventor is unwanted leakage, the Examiner’s finding that McCrary
discloses providing a coating that prevents leakage is not supported by a
preponderance of the evidence. As correctly noted by Appellant, McCrary
provides proppants within well holes in order to prevent the walls of the
wells from closing. See Appeal Br. 9 (citing McCrary ¶¶ 2–3). The
Examiner does not identify any disclosure in McCrary, and we find none, in
which McCrary’s proppants or any other furan-coated structure is used to
seal an opening or prevent leakage.
Accordingly, as McCrary meets neither prong of the test set forth in
K-TEC, we agree with Appellant that McCrary is non-analogous art.
Consequently, we do not sustain the rejection of independent claim 25 and
claims 28–34 depending therefrom, as unpatentable over Aarsleff and
McCrary.
Rejections II–IV; Aarsleff, McCrary, Yoshida, and Friedrich
The Examiner relies on the same findings of fact with respect to
McCrary in Rejections II–IV as discussed above. See Final Act. 4–6.
Because McCrary is non-analogous art, we do not sustain Rejections II–IV.
Rejections V and VI; Aarsleff, Armbruster, and Friedrich
The Examiner finds that Armbruster discloses certain recited
limitations of the furan resin required by independent claim 25. See Final
Act. 7. Appellant contends that Armbruster is non-analogous art. Appeal
Br. 10–12.
Armbruster—Not in Relevant Field of Endeavor
Appellant contends “Armbruster relates to ‘acid-curable resin binder
compositions useful in a no-bake foundry process.’” Appeal Br. 11. In
response, the Examiner states, “Armbruster is analogous because it is in the
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field of using furan resins, like the base reference to Aarsleff, and merely
provides an example of adjusting the physical properties of the furan to yield
a workable resin.” Ans. 10 (emphasis added). Thus, the Examiner again
determines the relevant field of endeavor to be “using furan resins.” As
discussed above, we do not agree that this is the inventor’s field of endeavor.
Rather, the inventor’s field of endeavor is the rehabilitation of pipe (a field
unrelated to Armbruster). Accordingly, Armbruster does not qualify as
analogous art under the first prong of the test set forth in K-TEC.
Armbruster—Not Reasonably Pertinent to the Problem Solved
Appellant argues “Armbruster is silent regarding the use of its acid-
curable resin binder system to rehabilitate a host pipe, and is not reasonably
pertinent to any of the problems with which the present inventors were
involved with respect to the presently claimed invention.” Appeal Br. 11.
In response, the Examiner finds “[t]he furan resin in Armbruster is
used to coat or rehabilitate a surface, such as a foundry mold, to enable the
mold to better hold liquids.” Ans. 10. The Examiner explains, “one of
ordinary skill in the art would be led to consider the type and properties of
the furan coatings in Armbruster as pertinent to the furan coatings used in
Aarsleff.”4 Id.
Appellant has the better position because the Examiner’s finding that
Armbruster uses furan resin to better hold liquids is not supported by a
preponderance of the evidence. Rather, Armbruster teaches coating particles

4 Although the “reasonably pertinent” prong of the analogous art test
requires the prior art to be reasonably pertinent to the particular problem
with which the inventor is involved (see K-TEC, F.3d at 1375), the Examiner
appears to base the conclusion that Armbruster is analogous art on finding
that the disclosure of Armbruster is pertinent to the disclosure in Aarsleff.
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that are used in mold-making in order to bind the particles together without
baking. See Armbruster 2:9–15, 53–56, 4:58–62. Accordingly, even
assuming that the problem addressed by the inventor is prevention of
unwanted leakage, the Examiner has not shown that Armbruster is
reasonably pertinent to the particular problem with which the inventor is
involved.
For the reasons discussed above, Armbruster meets neither prong of
the test set forth in K-TEC, and we agree with Appellant that Armbruster is
non-analogous art. Accordingly, we do not sustain the rejection of
independent claim 25 and claims 28–32, and 34 depending therefrom, as
unpatentable over Aarsleff and Armbruster (Rejection V) or the rejection of
dependent claims 26 and 35 as unpatentable over Aarsleff, Armbruster, and
Friedrich (Rejection VI).

CONCLUSION
The Examiner’s rejections are reversed.
More specifically,
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
25, 28–34 103(a) Aarsleff, McCrary  25, 28–34
26, 35 103(a) Aarsleff, McCrary,
Friedrich 
26, 35
25, 28–34 103(a) Aarsleff, McCrary,
Yoshida
25, 28–34
26, 35 103(a) Aarsleff, McCrary,
Yoshida, Friedrich
26, 35
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Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
25, 28–32,
34
103(a) Aarsleff, Armbruster 25, 28–32,
34
26, 35 103(a) Aarsleff, Armbruster,
Friedrich
26, 35

Overall
Outcome
25, 26, 28–
35

REVERSED