NICHIAS CORPORATION

Patent Trials and Appeals Board

Apr 13, 2021

2020003242 (P.T.A.B. Apr. 13, 2021)

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.
14/400,133 11/10/2014 Tomokazu Watanabe 163730 8244
25944 7590 04/13/2021
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
JONES JR., ROBERT STOCKTON
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
04/13/2021 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOKAZU WATANABE, NAHOKO KITAJIMA, and
TOMOYA SHIMIZU
Appeal 2020-003242
Application 14/400,133
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
PER CURIAM
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 2, 8–13, and 15–22. See Non-Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Nichias Corporation.
Appeal Br. 1.
Appeal 2020-003242
Application 14/400,133

2
CLAIMED SUBJECT MATTER
The claims are directed to a method for producing a rubber molded
article. Claim 2, reproduced below, is illustrative of the claimed subject
matter (emphasis added to highlight key disputed limitation):

2. A method of producing a rubber molded article, comprising a
crosslinking step of crosslinking a rubber compound at a
temperature of 100°C or less without applying an external
energy to the rubber compound other than energy provided by
the crosslinking temperature, the rubber compound being a
nitrile rubber consisting essentially of an acrylonitrile structure
represented by the following formula (I) and a butadiene
structure represented by the following formula (II), in a rubber
composition containing the rubber compound and a thiol
compound having at least two thiol groups in a molecule
thereof:

wherein the thiol compound has a molecular weight of
200 or more and comprises a compound selected from the
group consisting of trimethylolpropane tris(3-
mercaptopropionate), pentaerythritol tetrakis(3-
mercaptopropionate), 1,4-butanediol bis(3-
mercaptopropionate), pentaerythritol tetrakis(mercaptoacetate),
1,4-butanediol bis(mercaptoacetate), pentaerythritol tetrakis(3-
mercaptobutyrate), a compound represented by the following
formula (A-8), and combinations thereof:
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Application 14/400,133

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provided that X1 in the formula (A-8) represents a divalent
organic group, and X2 represents a hydrogen atom or a
monovalent organic group, and
the thiol compound is incorporated into the crosslinked
structure of the crosslinked rubber compound.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Skillicorn US 4,255,538 Mar. 10, 1981
Siebert US 5,198,510 Mar. 30, 1993
Nitrile rubber, Wikipedia, pp. 1–3 (2012), retrieved from
https://web.archive.org/web/20120325212516/https://en.wikipedia.org/wiki/
Nitrile_rubber (last viewed June 16, 2019) (hereinafter “Nitrile Rubber
(Wikipedia)”).
REJECTIONS
Claims 2, 9–13, and 15–22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Skillicorn as evidenced by Nitrile Rubber (Wikipedia).
Non-Final Act. 3.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Skillicorn, Nitrile Rubber (Wikipedia), and Siebert. Non-Final Act. 5.

Appeal 2020-003242
Application 14/400,133

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OPINION
Upon consideration of the evidence and each of Appellant’s
contentions as set forth in the Appeal Brief filed December 12, 2019, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., Ans. 3–6 (mailed Jan. 30, 2020)). We sustain the
rejections for the reasons expressed by the Examiner in the Non-Final Office
Action and the Answer. We add the following for emphasis.
Claim 2 recites, in relevant part, the “rubber compound being a nitrile
rubber consisting essentially of an acrylonitrile structure represented by the
following formula (I) and a butadiene structure represented by the following
formula (II).” The transitional phrase “consisting essentially of” indicates
that “the invention necessarily includes the listed ingredients,” but also that
the claim is “open to unlisted ingredients that do not materially affect the
basic and novel properties of the invention.” PPG Indus. v. Guardian Indus.
Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998). See also In re Janakirama-
Rao, 317 F.2d 951, 954 (CCPA 1963). Appellant has the burden of
establishing the basic and novel characteristics of the claimed invention. In
re De Lajarte, 337 F.2d 870, 874 (CCPA 1964).
In the present case, Appellant has not shown error in the Examiner’s
determination that claim 2’s use of “consisting essentially of” transitional
language does not exclude Skillicorn’s vinylidene terminal groups on the
nitrile rubber. Appellant does not dispute the basic and novel characteristics
of the instant invention as set forth by the Examiner (Ans. 8–9; no Reply
Brief was filed). Given that Skillicorn teaches the vinylidene terminated
nitrile rubber is able to be crosslinked at a temperature of less than 100°C
while using a thiol compound as claimed (Skillicorn col. 7, ll. 14–30), we
Appeal 2020-003242
Application 14/400,133

5
agree with the Examiner that the vinylidene terminal groups do not affect the
basic and novel characteristics of the claimed invention (Ans. 10).
Appellant relies on the same arguments for dependent claim 8 (Appeal
Br. 9), and does not separately argue any of the other dependent claims
(generally Appeal Br.).
Accordingly, Appellant has not shown reversible error in any of the
rejections and we sustain the § 103(a) rejection of all of the claims on
appeal.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 9–13,
15–22
103(a) Skillicorn,
Nitrile Rubber
(Wikipedia)
2, 9–13,
15–22

8 103(a) Skillicorn,
Nitrile Rubber
(Wikipedia),
Siebert
8
Overall
Outcome
2, 8–13,
15–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

Appeal 2020-003242
Application 14/400,133

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AFFIRMED