THE YOKOHAMA RUBBER CO., LTD.

Patent Trials and Appeals Board

May 1, 2020

2019003390 (P.T.A.B. May. 1, 2020)

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.
14/908,285 01/28/2016 Shun Sato 085191-533604 4084
30678 7590 05/01/2020
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
EXAMINER
ROMANOWSKI, MICHAEL C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHUN SATO

Appeal 2019-003390
Application 14/908,285
Technology Center 1700
____________

Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
SHELDON M. MCGEE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–20.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, “The Yokohama Rubber Co., Ltd.” (Application
Data Sheet filed January 28, 2016 at 3), which is also identified as the real
party in interest (Appeal brief filed October 8, 2018 (“Appeal Br.”) at 2).
2 See Appeal Br. 5–12; Final Office Action entered April 9, 2018 (“Final
Act.”) at 3–10; Examiner’s Answer entered January 28, 2019 (“Ans.”) at 3–
17.
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I. BACKGROUND
The subject matter on appeal relates to a thermoplastic resin
composition, which may be formed into a film suitable for use in a tire or
hose (Specification filed January 28, 2016 (“Spec.”) ¶¶ 1, 23–24).
According to the Inventor, stretched films made from the claimed
composition suppress the decrease in gas barrier properties that occurs when
stretched films made from conventional composition are heat-treated (id.
¶ 5). Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A thermoplastic resin composition comprising a matrix
phase and a dispersed phase, wherein
the matrix phase comprises:
(A1) at least one polyamide resin having a
melting point of from 170 to 210°C,
(A2) at least one polyamide resin having a
melting point of from 210 to 265°C, and
(B) at least one ethylene-vinyl alcohol
copolymer,
the dispersed phase comprises (C) at least one
acid-modified elastomer, the amount of acid-
modified elastomer (C) is from 100 to 240 parts by
weight with respect to 100 parts by weight of the
total amount of polyamide resins (A1) and (A2) and
ethylene-vinyl alcohol copolymer (B),
the amount of polyamide resin (A2) is from
20 to 40 wt% based on the total weight of polyamide
resin (A1), polyamide resin (A2) and ethylene-vinyl
alcohol copolymer (B), and
the total amount of polyamide resin (A1) and
polyamide resin (A2) is from 35 to 70 wt% based
on the total weight of polyamide resins (A1),
polyamide resin (A2) and ethylene-vinyl alcohol
copolymer (B).
(Appeal Br. 14).
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II. REJECTION ON APPEAL
Claims 1–20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Morooka3 in view of Wilson et al.4 (“Wilson”), with Kuraray EVALTM
H171B Technical Data Sheet, updated December 5, 2016 (“Kuraray”) cited
as additional evidence against claim 2 (Ans. 3–17; Final Act. 3–10).
III. DISCUSSION
1. Grouping of Claims
Unless separately argued within the meaning of 37 C.F.R.
§ 41.37(c)(1)(iv), a claim subject to this rejection stands or falls with claim
1, which we select as representative. Merely pointing out what a claim
recites or arguing skeletally that a prior art reference does not disclose or
suggest a claim limitation is not an argument in support of separate
patentability.5 In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”).
2. The Examiner’s Position
The Examiner finds that Morooka describes a thermoplastic resin
composition, which may be used to manufacture tires and hoses, having
most of the limitations recited in claim 1, including a polyamide resin matrix

3 US 2010/0112257 A1, published May 6, 2010.
4 US 2005/0011571 A1, published January 20, 2005.
5 See, e.g., the skeletal argument in support of claims 4, 12, and 13 (Appeal
Br. 11).
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that is based on a combination of various polyamide resins (Ans. 3–4; Final
Act. 3–4). The Examiner acknowledges that “Morooka is silent regarding
the thermoplastic elastomer composition explicitly containing two
polyamide resins with different melting temperature ranges, as well as the
amounts of the two polyamide resins” (Ans. 4; Final Act. 4). The Examiner
finds, however, that Wilson discloses an elastomeric refrigerant hose
comprising a core layer exhibiting flexibility and ultra-low permeability
formed from a blend of two polyamides (i.e., nylon 6 and nylon 6/66
copolymer, wherein the weight ratio of nylon 6 to nylon 6/66 is from about 1
to about 3) (Ans. 4; Final Act. 4). Based on these findings, the Examiner
concludes:
It would have been obvious to one of ordinary skill in the
art before the effective filing date of the invention to have
modified the thermoplastic elastomer composition of Morooka
by using a polyamide blend of nylon 6 and nylon 6/66 at a weight
ratio of 1:1, as disclosed by Wilson, as the matrix phase
polyamide components (corresponds to polyamide (A1) and
(A2)), in order to benefit from increased flexibility and ultra-low
fluid permeation.
(Ans. 5; Final Act. 5).
3. The Appellant’s Contentions
The Appellant asserts that Wilson, in contrast to Morooka, teaches
overcoming the disadvantage (i.e., high gas permeability) of rubber
materials by using a core layer comprising a blend of two different non-
plasticized polyamides (Appeal Br. 7). According to the Appellant, a person
having ordinary skill in the art would have understood that the addition of an
ethylene-vinyl alcohol (EVOH) copolymer disclosed by Morooka to
Wilson’s core layer, which comprises a blend of two different non-
plasticized polyamides, may lead to an increase in plasticity of the core layer
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(id.). The Appellant argues that, therefore, Wilson teaches away from
adding an EVOH copolymer as disclosed in Morooka to Wilson’s core layer
(id.). The Appellant argues further that Morooka, in contrast to Wilson,
discloses a thermoplastic resin composition that comprises a rubber
component (i.e., modified rubber (B)) (id.). In addition, the Appellant
contends that Wilson’s blend of the two polyamides has not been shown to
provide a lower permeation rate compared to each polyamide individually
but, rather, only decreased tensile strength (id. at 8). According to the
Appellant, the claimed invention, by contrast, “has excellent heat resistance,
and the effects thereof are demonstrated in the stress-strain curves in Figure
1” (id.). Furthermore, the Appellant urges that Comparative Examples 1–4
and Examples 1–8 in the current Specification, as reported in Tables 1–3,
establish unexpected results (id. at 8–9).
4. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Consistent with the Examiner’s findings (Ans. 3–4; Final Act. 3–4),
Morooka describes a thermoplastic resin composition, which is suitable for
manufacturing tires and hoses, comprising (A) a modified polyamide resin
obtained by melt-blending a polyamide resin (A1) and a compound (A2)
capable of binding to a terminal amino group of the polyamide resin, (B) a
modified rubber compound having an acid anhydride group, an epoxy group,
or a carboxyl group, or a derivative thereof, and (C) an ethylene-vinyl
alcohol (EVOH) copolymer (Morooka Abstract; ¶¶ 17–18). Morooka
further teaches that “[t]he polyamide resin (A1) includes, but is not limited
to, nylon 11, nylon 12, nylon 6, nylon 66, nylon 666, nylon 612, nylon 610,
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nylon 46, nylon 66612, aromatic nylons, and combinations thereof” (id.
¶ 27 (emphasis added)). Thus, as the Examiner finds (Ans. 4; Final Act. 4),
one of ordinary skill in the art would have understood that Morooka
contemplates blends of polyamide resins—i.e., blends formulated from
polyamide resins that correspond to either polyamide (A1) or polyamide
(A2), as recited in claim 1 (compare Morooka ¶ 27 with dependent claims 4
and 5 (Appeal Br. 14–15)). According to Morooka, the thermoplastic resin
composition comprises 50 to 150 parts by weight of the modified rubber (B)
based on 100 parts by weight of a total of the modified polyamide resin (A)
and the ethylene-vinyl alcohol copolymer (C), which amounts overlap those
recited in claim 1 (Morooka ¶ 18; Appeal Br. 14). Furthermore, Morooka
teaches that the weight ratio of the modified polyamide resin (A), which may
be in the form of a blend of polyamide resins, to the ethylene-vinyl alcohol
copolymer (C) is 90/10 to 10/90 (Morooka ¶ 18), which overlaps the “35 to
70 wt%” recited in claim 1.
In contrast to claim 1, Morooka does not disclose any relative
amounts for the individual polyamide resins selected when a combination of
such resins is used. To bridge this gap, the Examiner relies on Wilson.
Specifically, Wilson teaches a hose comprising multiple layers,
wherein the core layer comprises “a blend of two different non-plasticized
polyamides with flexibility and ultra low permeation” (Wilson ¶ 5). In one
embodiment, the inner core of the hose comprises a blend of nylon 6 and a
copolymer of nylon 6 and nylon 66, wherein the weight ratio of nylon 6 to
the copolymer of nylon 6 and nylon 66 is from about 1 to about 3 (id. ¶ 9).
In view of the collective teachings found in Morooka and Wilson, we
discern no reversible error in the Examiner’s conclusion (Ans. 5; Final Act.
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5) that a person having ordinary skill in the art would have been prompted to
modify Morooka by using Wilson’s blend of nylon 6 and a copolymer of
nylon 6 and nylon 66 as Morooka’s combination of polyamide resins (A1),
with a reasonable expectation of imparting flexibility and ultra-low
permeation, as suggested by Wilson. Contrary to the Appellant’s belief
(Appeal Br. 7), the Examiner’s rejection is not predicated on the addition of
Morooka’s ethylene-vinyl alcohol copolymer into Wilson’s core layer
composition, but, rather the modification Morooka’s combination of
polyamide resins (A1) in view of Wilson’s teachings (Final Act. 5; Ans. 5).
Therefore, even if the Appellant is correct that “Wilson teaches away from
adding the EVOH copolymer disclosed by Morooka to the core layer
disclosed by Wilson” (Appeal Br. 7), it fails to establish any reversible error
in the Examiner’s articulated reasoning for combining the references in the
manner claimed by the Inventors, which is based on the expectation that the
specific polyamide blend disclosed in Wilson would be expected to provide
flexibility and ultra-low permeation when used as the combination of
polyamide resins in Morooka.
The Appellant argues that Wilson fails to demonstrate that a blend of
two polyamide resins (i.e., polyamide 1 (nylon 6) and polyamide 2
(copolymer of nylon 6 and nylon 66)) exhibits a permeation rate that is
lower than each resin individually but that, instead, shows that the blend
exhibits decreased tensile strength (Appeal Br. 8 (citing Wilson ¶ 16, Table
1)). This argument is not persuasive. First, although Wilson does not report
the permeation rate for polyamide 1 or polyamide 2 individually, the
absence of such data does not negate Wilson’s explicit teaching that the
blend of nylon 6 and a copolymer of nylon 6 and nylon 66 at a weight ratio
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of from about 1 to about 3 provides flexibility and ultra-low permeation
(Wilson ¶¶ 5, 9). Second, although Wilson’s Table 1 shows that the blend
exhibited decreased tensile strength (28 MPa versus 38 MPa for polyamide 1
or 70 MPa for polyamide 2), Wilson does not say that 28 MPa would be an
unacceptably low tensile strength. Medichem S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”).
Finally, we concur with the Examiner that the proffered showing of
unexpected results (as shown in the Specification (Spec. ¶¶ 25–34) and
Drawings (Fig. 1)) is insufficient. As the Examiner explains (Ans. 14–15),
claim 1 is significantly broader in scope than the experiments reported in the
Specification (Spec. ¶ 27, Table 1) in terms of specific polyamides, EVOH
resin, acid-modified elastomer, crosslinking agent, and their relative
amounts. See, e.g., In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983)
(“With respect to appellants’ broad claims to a catalyst with ‘an alkali
metal,’ the experiments detailed in Friedrich III, being limited to sodium
only, are not commensurate in scope, and are, therefore, insufficient to rebut
the prima facie case.”). Alternatively, claim 1 should have been narrowed to
be commensurate in scope with the proffered showing. In re Harris, 409
F.3d 1339, 1344 (Fed. Cir. 2005).
Moreover, the Appellant does not offer a sufficient explanation as to
how and why the comparative results reported in the Specification establish
unexpected results over Morooka, the closest prior art reference (Appeal Br.
8–9). In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Where the offered
secondary consideration actually results from something other than what is
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both claimed and novel in the claim, there is no nexus to the merits of the
claimed invention.”); In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (“While
we do not intend to slight the alleged improvements, we do not feel it an
unreasonable burden on appellants to require comparative examples relied
on for non-obviousness to be truly comparative. The cause and effect sought
to be proven is lost here in the welter of unfixed variables.”).
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejection.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103 Morooka, Wilson,
Kuraray
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED