Nippon Sheet Glass Company, Limited

Patent Trials and Appeals Board

May 19, 2021

2020003889 (P.T.A.B. May. 19, 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.
15/103,081 06/09/2016 Masamori FURUSAWA 14434.0637USWO 7945
52835 7590 05/19/2021
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
Minneapolis, MN 55402-1683
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
05/19/2021 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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAMORI FURUSAWA
Appeal 2020-003889
Application 15/103,081
Technology Center 1700
Before DONNA M. PRAISS, JEFFREY R. SNAY, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5. We have jurisdiction.
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 Nippon Sheet
Glass Company, Limited. Appeal Br. 2.
Appeal 2020-003889
Application 15/103,081
2
CLAIMED SUBJECT MATTER
The claims are directed to a water-based treatment agent for forming a
rubber-reinforcing cord that may be used “in rubber products such as rubber
belts and tires which are repeatedly subjected to bending stress.” Claim 1;
Spec. ¶ 2. Sole independent claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A water-based treatment agent for forming a rubber-
reinforcing cord having a coating, the water-based treatment
agent comprising a rubber latex, a crosslinking agent, and a
filler, wherein
a content of the crosslinking agent is 110 parts by mass or
more and 125 parts by mass or less per 100 parts by mass of
solids contained in the rubber latex, and
a content of the filler is more than 50 parts by mass and 80
parts by mass or less per 100 parts by mass of the solids
contained in the rubber latex.
OPINION
The Examiner rejects claims 1–5 under 35 U.S.C. § 103 as
unpatentable over Akiyama.2 Final Act. 3–5. The dispositive issue raised
on appeal is whether the Examiner provided sufficient evidentiary support to
establish whether the claimed ratio of crosslinking agent to rubber latex is a
result-effective variable. See Final Act. 3–4. Because the Examiner failed
to provide such sufficient evidentiary support on this record, we reverse the
rejection.
The Examiner finds that Akiyama “teaches that the total content of the
rubber and the crosslinker in the coating layer is 50 wt% or more,” and “that
the amount of the rubber and the crosslinker contained in the treatment agent
is adjusted” in order to form a coating layer. Final Act. 3–4 (citing Akiyama

2 US 2008/0032130 A1, published February 7, 2008.
Appeal 2020-003889
Application 15/103,081
3
¶¶ 22, 34). Based on these disclosures, the Examiner determines that it
would have been obvious to one of ordinary skill “to select a particular
content of crosslinker to rubber as required by the proper formation of the
coating film,” and finds that the amount of crosslinker to rubber is a result-
effective variable. Id. at 4.
The relied upon portions of Akiyama do not teach that the ratio of
crosslinker to rubber within the claimed “water-based treatment agent”
composition is a parameter that would affect any particular result. Rather,
Akiyama generally teaches that use of crosslinkers can be beneficial (¶ 20),
and when combined with rubber, that combination amounts to more than 50
wt% or more of the coating layer (¶ 22). We agree with Appellant (Appeal
Br. 6–7) that Akiyama treats the rubber and crosslinker combination as one
material and fails to evince that the amount of crosslinker vis-à-vis the
amount of rubber latex achieves any particular result. Akiyama ¶¶ 17, 21.
In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (explaining that “the
discovery of an optimum value of a variable in a known process is normally
obvious,” but not when “the parameter optimized was not recognized to be a
result-effective variable.”).
CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s) / Basis Affirmed Reversed
1–5 103 Akiyama 1–5
REVERSED