TOYOBO CO., LTD.

Patent Trials and Appeals Board

May 5, 2020

2020002862 (P.T.A.B. May. 5, 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.
14/770,696 08/26/2015 Teruyuki Taninaka P25250US00 5412
38834 7590 05/05/2020
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
WEYDEMEYER, ETHAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
05/05/2020 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERUYUKI TANINAKA, SHINICHI KOBUCHI, and
HIROYUKI WAKUI

____________
Appeal 2020-002862
Application 14/770,696
Technology Center 1700
____________

BEFORE KAREN M. HASTINGS, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
rejection under 35 U.S.C. § 103(a) of claims 1–4, 6, and 7 as unpatentable
over Isoda et al., (US 5,639,543, issued June 17, 1997) (hereinafter “Isoda”).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Toyobo CO., LTD. (Appeal Br. 2).

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Claim 1 is representative and reproduced below (key disputed
limitations in italics):
1. A network structure comprising a three-dimensional random
loop bonded structure obtained by forming random loops with
curling treatment of a continuous linear structure including a
polyester-based thermoplastic elastomer and having a fineness of
not less than 100 dtex and not more than 60000 dtex, and by
making each loop mutually contact in a molten state, wherein the
network structure has an apparent density of 0.005 g/cm3 to 0.20
g/cm3, a 50%-constant displacement repeated compression
residual strain of not more than 15%, a 50%-compression
hardness retention of not less than 88% after 50%-constant
displacement repeated compression, and a hysteresis loss of not
more than 28%.

OPINION
Upon consideration of the relied-upon evidence and each of
Appellant’s contentions as set forth in the Appeal Brief filed Sept. 3, 2019,
and the Reply Brief filed March 5, 2020, we determine that Appellant has
not demonstrated reversible error in the Examiner’s rejections (e.g., Ans. 3–
17 (mailed Jan. 7, 2020)). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir.
2011) (explaining the Board’s long-held practice of requiring Appellant to
identify the alleged error in the Examiner’s rejection). We sustain the
rejections for essentially the reasons expressed by the Examiner in the Final
Office Action and the Answer. We add the following for emphasis.
Appellant argues that Isoda does not explicitly disclose the properties
recited in claim 1, and further fails to teach any of the three alternative
process steps that Appellant contends is needed to produce a network
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structure having the recited properties (Appeal Br. 4, 5). Appellant also
relies upon a Declaration submitted May 18, 2018 (Declaration)2 in support
of the argument that the process of Isoda would not have produced the
claimed product (Appeal Br. 6). Appellant contends that the Examiner has
misinterpreted the teachings of Isoda and that Isoda does not teach or
suggest that larger hole diameters would lead to lower hysteresis loss
(Appeal Br. 6–10). Appellant also argues that Isoda’s process is not
substantially identical to that used to produce the claimed invention (Appeal
Br 11, 12). These arguments are reiterated in the Reply Brief and are not
persuasive of reversible error in the Examiner’s obviousness determination.
The Examiner aptly details the similarities in the materials used and
the process used in Isoda and the current Specification (e.g., Ans. 4) and
concludes that the recited properties would have been obtained by one of
ordinary skill in the art optimizing the process parameters detailed in Isoda
(Ans. 6). Indeed, Appellant admits that the present invention was made
using the process of Isoda (Appeal Br. 10; Spec. ¶ 32 (“[t]he network
structure is obtained in accordance with a publicly known method described
in [Isoda]”). Thus it seems clear that Appellant at best fine-tuned Isoda’s
process to obtain the current product.
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). There is sufficient
evidence to support the Examiner’s position that orifice diameter (and

2 The Declaration is by one of the inventors, Shinichi Kobuchi.
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concommitantly flow rate) may affect loop diameter which affects hysteresis
loss (Ans. 7; see also Ans. 5 (the Examiner states “orifice diameter and
spacing has an effect on fineness and loop diameter ([Isoda] col. 7, lines 42-
60 and col. 8, lines 40-46), which consequently have an effect on various
properties of the net structure”); Ans. 6 (relying on Isoda col. 9, ll. 13–34
which discusses the resin to be used, fineness, loop diameter and bulk
density may all be selected depending on the final use for the product,
including “medium density, great fineness and somewhat great loop
diameter are preferable . . . [to] improve shape retention with . . . adequate
hardness and linear change in hysteresis under compression and keep
durability”). Furthermore it is clear that selection of the material used
affects the final properties. Notably, claim 1 is generically directed to a vast
genus of “polyester-based thermoplastic elastomer.”
Turning to Appellant’s argument (and Declaration in support thereof)
that Isoda’s process would not have obtained the current product, the
Examiner aptly points out that Appellant merely states that their process
“may include” one of the three alternative steps they discuss (Appeal Br. 4;
Ans. 7). The Examiner also states that one these alternative steps of cooling
water of “preferably not less than 80°C” cooling water (Appeal Br. 4; Spec.
¶ 36) basically encompasses Isoda’s process which includes cooling water
of 70°C (Ans. 7, 8). We also note that, in contradiction to Appellant’s
position that Isoda only teaches locating the cooling water 50 mm below the
nozzle (and the Declaration uses this 50 cm spacing), Example 11 of Isoda
exemplifies spacing the cooling water only 10 mm below the nozzle surface
(Isoda, col. 16, ll. 12–13). Appellant admits that location of the cooling
water closer to the nozzle is an important parameter to achieve the claimed
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properties (Reply Br. 4, 5 explaining that the longer distance of 50 cm in
Isoda cannot be used to achieve the product and is different than Appellant’s
use of 28 cm). This is yet another reason Appellant’s Declaration evidence
falls short of showing that Isoda’s process would not have been able to
produce the claimed product.
Furthermore, the Examiner is not relying upon a theory that Isoda’s
product inherently has the claimed properties, rather, the Examiner is relying
upon adjusting process parameters to achieve improved hysteresis loss (and
durability) as indicated in Isoda (Ans. 8).
Although Appellant points out that the disputed hardness property
recited in claim 1 is present after 80,000 compressions and Isoda only
discusses 20,000 compressions (Appeal Br. 6; Reply Br. 6), the recited
property is not qualified by any such number. Cf. In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“Many of appellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”).
Although Appellant states that changing the throughput “would not
affect significantly the strength of contact points” (Reply Br. 7), Appellant
presents Isoda’s data that consistently shows that higher throughput results
in larger loop diameter (which can impact hysteresis loss and durability)
(Appeal Br. 14). Thus, they have not sufficiently refuted the Examiner’s
position that orifice size will impact loop diameter, because a larger orifice
size will enable a larger throughput. As the Examiner pointed out, Appellant
admitted the apparatus used for the Declaration evidence “was not capable
of the flowrate achieved by Isoda” (Ans. 8).
In summary, a preponderance of the evidence supports the Examiner’s
position that Isoda and Appellant use similar materials and a similar process
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to make the same material useful for the same purpose of a cushioning
material. Appellant’s arguments fail to take into account the breadth of the
claim language as well as the inferences and ordinary creativity that one of
ordinary skill in the art would have used to optimize Isoda’s process
parameters. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.”); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir.
1992) (a reference stands for all of the specific teachings thereof as well as
the inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom). Cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir.
1990) (en banc) (“In particular, the statement [in In re Wright] that a prima
facie obviousness rejection is not supported if no reference shows or
suggests the newly-discovered properties and results of a claimed structure
is not the law.”) (overruling-in-part In re Wright, 848 F.2d 1216 (Fed. Cir.
1988)); also Dillon, 919 F.2d at 692 (explaining that where the prior art
gives reason or motivation to make the claimed invention, the burden and
opportunity to produce evidence such as unexpected results then falls on an
applicant to rebut that prima facie case).
Appellant, for the first time in the Reply Brief, urges that the
invention has unexpected results (Reply Br. 5, 6). An attorney’s arguments
in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399,
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1405 (CCPA 1974).3 Furthermore, Appellant has not shown good cause
why these arguments could not have been presented in the Appeal Brief.
Newly raised arguments in the Reply Brief need not be considered absent
good cause. 37 C.F.R. § 41.41(b)(2).
In any event, in the appeal before us, it is questionable whether any of
the results shown by the Specification and/or in contrast to the Declaration
data are properly characterized as unexpected. Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be
unexpected to be considered as evidence of non-obviousness” (citation
omitted)). We emphasize that nowhere in the Specification do the Inventors
characterize the compounds described therein as achieving results that are
unexpected. It is only a conclusory heading/statement in the Reply Brief
that describes these results without explanatory embellishment as
“unexpected” (Reply Br. 5).
Under these circumstances, we view the Specification data as merely
representing the optimization of the compounds described in Isoda which
would have been within the skill of and, thus, obvious to the artisan. See
Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1371 (“At most, then, Pfizer engaged
in routine, verification testing to optimize selection of one of several known
and clearly suggested pharmaceutically-acceptable salts to ease its

3 The burden rests with Appellant to establish (1) that the alleged unexpected
results presented as being associated with the claimed invention are, in fact,
unexpected, (2) that the comparisons are to the disclosure of closest prior art,
and (3) that the supplied evidentiary showing is commensurate in scope with
the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Appellant has not met this burden.

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commercial manufacturing and marketing of the tablet form of the
therapeutic amlodipine.”).
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v.
Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009)
(“[E]vidence of unexpected results and other secondary considerations will
not necessarily overcome a strong prima facie showing of obviousness”);
Pfizer, Inc., 480 F.3d at 1372 (“[T]his secondary consideration does not
overcome the strong showing of obviousness in this case. Although
secondary considerations must be taken into account, they do not necessarily
control the obviousness conclusion.” (Citation omitted.)).
Here, the case of obviousness established by the Examiner is strong
such that when the teachings of the reference are weighed against
Appellant’s alleged unexpected results, the preponderance of the evidence of
record still weighs in favor of a conclusion of obviousness.
For all the reasons set out by the Examiner and above, a
preponderance of the evidence supports the Examiner’s obviousness
determination of the claimed subject matter.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7 103 Isoda 1–4, 6, 7
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED