AISIN KAKO KABUSHIKI KAISHA et al.

Patent Trials and Appeals Board

Nov 23, 2020

2020000031 (P.T.A.B. Nov. 23, 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.
14/641,516 03/09/2015 Satoshi MIHARA Q217978 9766
23373 7590 11/23/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI MIHARA and HIROYUKI SUGATA
Appeal 2020-000031
Application 14/641,516
Technology Center 1700
Before CATHERINE Q. TIMM, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.
TIMM, 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 1, 2, 6, and 9–12. See 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 Aisin Kako
Kabushiki Kaisha and Toyota Jidosha Kabushiki Kaisha. Appeal Br. 2.
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Application 14/641,516
2
CLAIMED SUBJECT MATTER
The claims are directed to a vinyl chloride plastisol composition. See,
e.g., claims 1 and 12. The composition of clam 1 contains: (a) a vinyl
chloride resin, (b) a plasticizer, (c) 2 to 12 parts thermally expandable
microcapsules per 100 parts vinyl chloride resin, and (d) 10 to 50 parts non-
expandable hollow filler per 100 parts vinyl chloride resin. Claim 12
narrows the range of non-expandable filler to 18 to 30 parts by weight.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A vinyl chloride plastisol composition comprising
a main ingredient composed of a vinyl chloride resin and
a plasticizer,
a thermally expandable microcapsule, and
a non-expandable hollow filler,
wherein the thermally expandable microcapsule is
blended in the vinyl chloride resin in an unexpanded state and is
to be expanded by heating during a heating/expanding process
of the vinyl chloride plastisol composition so as to enlarge a
volume to become a hollow microballoon,
wherein the non-expandable hollow filler has a
predetermined rigidity and strength so as not to be expanded by
heating and so as not to be easily compressed under an external
pressure so that the non-expandable hollow filler maintains its
original shape and original dimension during a
heating/expanding process of the vinyl chloride plastisol
composition,
wherein the thermally expandable microcapsule has a
median diameter of 5 μm to 50 μm and has an expansion rate
such that it expands 50 to 100 times larger than an initial
unexpanded state thereof,
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wherein the non-expandable hollow filler has a median
diameter in a range of 10 to 50 micrometers and an absolute
specific gravity in a range of 0.1 to 0.5,
wherein the thermally expandable microcapsule has a
mixing ratio of 2 to 12 parts by weight to 100 parts by weight
of the vinyl chloride resin, and
wherein the non-expandable hollow filler has a mixing
ratio in a range of 10 to 50 parts by weight to 100 parts by
weight of the vinyl chloride resin.
Appeal Br. 30.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gibbs US 4,485,192 Nov. 27, 1984
Nanri US 5,212,215 May 18, 1993
Lysell US 5,520,961 May 28, 1996

REJECTION
Claims 1, 2, 6, and 9–12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lysell in combination with Nanri or Gibbs. Ans. 3.

OPINION
In the Appeal Brief, Appellant specifically addresses the rejection of
claims 1 and 12. Appeal Br. 9. Thus, we select claims 1 and 12 as
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4
representative for resolving the issues on appeal in accordance with 37
C.R.F. § 41.37(c)(1)(iv)(2018).2
Appellant opens the arguments by stating that “[t]he Examiner has
never set forth a full and complete rejection of the claims based on a
combination of Lysell in view of Nanri and Gibbs.” Appeal Br. 11–12;
Reply Br. 4–5. This is true, but Appellant has not identified an appealable
error resting on this fact. We explain below.
The first full statement of the rejection appears in the Examiner’s
Answer. Before the Answer, the Examiner incorporated by reference the
reasoning of prior rejections into subsequent rejections. Specifically, in the
first Office action, the Examiner made a rejection over Lysell3 in
combination with Nanri. May 19, 2016 Non-Final Act. 6. In subsequent
Office actions, instead of reproducing the reasoning, the Examiner used the
phrase “as per the reasons of record,” added further explanation, and in the
Office Action of July 19, 2017, added Gibbs as an alternative to Nanri. July
19, 2017 Non-Final Act. 2. In the final action appealed from, the Examiner
omitted “or” between Nanri and Gibbs. Nov. 23, 2018 Final Act. 2. In the
Answer, the Examiner merged the reasoning from the various Office Actions
to provide a full statement of the rejection. Ans. 3–7.
Although we agree with Appellant that the Examiner’s method of
incorporating by reference reasoning from previous rejections and waiting

2 Appellant newly argues the rejections of claims 9–11 in the Reply Brief
(Reply Br. 17–19), but Appellant provides no showing of good cause for the
new arguments. Thus, we do not consider these new arguments. 37 C.F.R.
§ 41.41 (2018).
3 The rejection misspells “Lysell,” but the error was harmless given
Appellant understood the rejection to be over Lysell. See, e.g., Appeal Br. 12
(referring to “Lycell (sic)”).
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until the Examiner’s Answer to provide a full statement of the rejection was
not ideal, especially in light of the typographical errors that occurred along
the way, Appellant has not identified an appealable error. Appellant had the
opportunity to request clarification of the rejection during prosecution
through examiner interviews and petitions. Granted, best practice is for an
examiner to reproduce a full and complete analysis in each rejection, but it is
not within our jurisdiction to consider the form of the rejection. The manner
in which an examiner sets forth a rejection is a matter of discretion that is
not appealable. See In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)
(holding that matters of a discretionary, procedural or nonsubstantive nature
not directly connected to the merits of issues involving rejections of claims
are not appealable). As long as the Examiner has satisfied the notice
requirement of 35 U.S.C. § 132 by stating the reasons for the rejection
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution, it does not matter how those
reasons are conveyed. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Because the issue is not appealable, we do not reach the issue of
whether the Examiner erred in the form of the rejection.
Claim 1
Turning to Appellant’s substantive arguments, we first consider the
arguments directed to the rejection of claim 1. Appeal Br. 12–27; Reply Br.
5–17. With respect to claim 1, we fashion to the main issue as: Has
Appellant identified a reversible error in the Examiner’s finding of a
suggestion within the prior art for formulating a vinyl chloride plastisol
composition containing both the thermally expandable microspheres taught
by Lysell and the non-expandable inorganic hollow filler of Nanri? Compare
Ans. 3–16, with Appeal Br. 12–27, and Reply Br. 5–17.
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After weighing the evidence, we determine that Appellant has not
identified a reversible error in the Examiner’s finding that the prior art
provides a reason to combine. Our reasons follow.
Lysell and Nanri are both directed to vinyl chloride plastisol coating
compositions suitable as undercoatings for vehicles. Lysell col. 1, ll. 4–13;
Nanri col. 1, ll. 11–15. Both seek to provide protection against rust and
chipping from stone impacts while adding as little weight to the vehicle as
possible. Lysell col. 1, ll. 1, ll. 14–22; Nanri col. 1, ll. 17–42. Both
references also provide evidence that it was known in the art to use hollow
microspheres as filler to reduce weight. Lysell col. 1, ll. 18–22 (disclosing it
was known to use thermoplastic microspheres as filler to reduce weight);
Nanri col. 1, ll. 53–61 (disclosing the use of hollow filler to replace a small
portion of the prior art non-hollow filler (e.g., talc, calcium carbonate, etc.)
to reduce weight and spray coater wear while preserving anti-chipping
properties). As pointed out by Appellant, Lysell and Nanri each add hollow
particles for the same reason. Appeal Br. 13.
Hong, which Appellant relies on to support their arguments against
obviousness (Appeal Br. 16), further supports the finding that expandable
polymeric microspheres were known alternatives to non-expandable glass
microspheres to form syntactic foam, i.e., gas-filled polymeric materials in
which hollow or foamed microspheres, named as fillers, are embedded in a
polymer matrix designated as binder. Hong xxv, 1. Hong discloses that
hollow glass microspheres were most commonly used because they have
high strength and significant differences in elasticity compared to the
polymer matrix in which they are mixed. Hong 6. Hollow glass
microspheres are also cheaper than hollow polymeric microspheres. Id.
There are trade-offs, however. Hong 6–8. Hollow glass microspheres are
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stiff and brittle and not as processable as polymeric fillers. Id. They are also
less effective in reducing weight. Id.
Because both thermally expandable microcapsules and non-
expandable hollow fillers were known in the art for decreasing the weight of
vinyl chloride plastisol vehicle undercoatings, with known differences in
performance, the prior art supports the Examiner’s finding of a suggestion to
use them together in that same type of coating to obtain a balance of
properties from both types of fillers. See, e.g., In re Castner, 518 F.2d 1234,
1238–39 (CCPA 1975)(one of ordinary skill in the art would have been led
to combine known additives for their art recognized functions); see also In
re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)(it is prima facie obvious to
combine two different materials useful for the same purpose to form a third
material which is to be used for the very same purpose).
Although the evidence indicates there were trade-offs between using
organic and inorganic hollow fillers, those known trade-offs do not negate
the obviousness of using the two fillers together to achieve predictable
results. “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Because those of
ordinary skill in the art would have understood the known properties each of
the hollow fillers, the ordinary artisan would have understood the mixture
would achieve a particular set of predictable properties in the resulting
composition.
Appellant contends that Lysell teaches away from the combination of
the two types of hollow fillers. Appeal Br. 14. We do not agree. Instead,
Nanri and Lysell provide evidence that it was known to use organic and
inorganic hollow fillers together in vinyl chloride plastisol compositions.
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Nanri teaches such mixtures. Nanri’s advance over the prior art was
the replacement of some of the non-hollow filler with hollow filler. Nanri
teaches using either organic (polymer-based) hollow filler, inorganic hollow
filler (e.g., glass balloons), or a mixture of the two. Nanri col. 2, l. 33–col. 3,
l. 5. The concentration of the hollow filler is selected so that enough is used
to reduce the coating weight, but not so much as to cause wear of the coating
apparatus or to compromise the required anti-chipping performance of the
coating. Id. Nanri specifically suggests using combinations of organic
(polymeric) hollow filler and inorganic (non-expandable) filler.
Lysell’s advance is to the polymeric type of hollow filler, e.g., Nanri’s
organic hollow filler. Specifically, Lysell improves on a type of expandable
polymeric microsphere that had been used to improve pressure resistance
during the airless spraying process, a process Nanri discloses using. Lysell
col. 1, ll. 27–51; Nanri col. 3, ll. 6–13. Lysell discloses that the prior art
expandable microspheres collapse during the high temperatures required for
gelatinization resulting in large pores and blisters in the coating surface and
increasing coating density. Lysell col. 1, ll. 27–51. Lysell solves this
problem by using a particular type of polymeric microsphere composition
containing nitrile-containing monomers, halogen-free monomer, and
crosslinking agent. Lysell col. 1, l. 62–col. 2, l. 48.
The Examiner finds a suggestion within Lysell and Nanri to use
thermally expandable microcapsules and non-expandable hollow filler
together “to achieve plastisols with balanced properties consistent with
addition of both types of expandable and non-expandable filler.” Ans. 7. The
prior art of Lysell and Nanri as well as the teachings of Hong support the
Examiner’s finding. Thus, we are not persuaded that Lysell teaches away
from the combination relied on by the Examiner.
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Appellant contends the mixture of expandable and non-expandable
hollow fillers provides unexpected results. Appeal Br. 18–19. According to
Appellant, there is “a blending amount reduction effect.” Appeal Br. 18.
More specifically, adding non-expandable hollow filler results in “a
blending amount reduction effect of the thermally expandable microcapsule
by the non-expandable hollow filler, thereby indirectly preventing
deterioration of chipping resistance (that will occur by blending the
thermally expandable microcapsule in a large amount) and assuring a
desired chipping resistance.” Id. Appellant cites paragraph 47 and the results
of the experiments reported in the Specification, but does not explain how
the specific data supports a showing of unexpected results. Id.
The Examiner determines that the experimental data reported in the
Specification, i.e., in Tables 1 and 2, shows predictable cumulative results
rather than unexpected results such as a synergistic improvement in
properties. Ans. 14–15.
In response, Appellant notes the Examiner’s determination, but does
not explain how the data of Tables 1 and 2 support a showing of unexpected
results. Reply Br. 11–13. Tables 1 and 2 only report whether a particular
threshold value is met and other variables such as the amount of other fillers
vary. Nor does the Specification state that the results shown in the tables
were unexpected. Thus, it cannot be ascertained from the Tables or other
parts of the Specification whether the data reflects results that would have
been unexpected to the ordinary artisan.
While it is true that all evidence of nonobviousness, including data in
the specification, must be considered when assessing patentability, In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (citing In re Margolis, 785 F.2d
1029, 1031 (Fed. Cir. 1986)), the burden of analyzing and explaining data to
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support nonobviousness rests with the Appellant, In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972). Additionally, “any superior property must be
unexpected to be considered as evidence of non-obviousness,” Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007), it can only be proven
unexpected through evidence. In re Mayne, 104 F.3d 1339, 1343–44 (Fed.
Cir. 1997). Appellant’s arguments cannot take the place of evidence. In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978).
Thus, we determine that Appellant has not identified a reversible error
in the Examiner’s analysis of the unexpected results data. Further, we
determine that a totality of the evidence supports the Examiner’s conclusion
of obviousness. Given that the combination of Lysell and Nanri supports the
rejection, we need not discuss the teachings of Gibbs.
Claim 12
Claim 12 is somewhat narrower than claim 1. Claim 12 limits the
concentration of the non-expandable filler to 18 to 30 parts by weight per
100 parts by weight of the vinyl chloride resin.
Appellant contends that the data in the Specification supports
patentability because Working Examples 1 and 2, reported in Table 1 of the
Specification, show a combination of superior specific gravity, sound
insulation property, chipping-resistant property, and storage stability in
comparison to the Comparative Examples. Appeal Br. 27–28. But, again,
Appellant offers no evidence, either in the Specification or in a Declaration,
that Appellant found the results to be unexpected rather than the predictable
result of mixing the two hollow fillers.
Appellant has not identified a reversible error in the Examiner’s
analysis of the unexpected results showing. A totality of the evidence
supports the Examiner’s conclusion of obviousness regarding claim 12.
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CONCLUSION
The Examiner’s decision to reject claims 1, 2, 6, and 9–12 is
AFFIRMED.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6, 9–12 103 Lysell, Nanri,
Gibbs
1, 2, 6, 9–12
Overall
Outcome
1, 2, 6, 9–12

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).
AFFIRMED