Akio Miyamoto et al.Download PDFPatent Trials and Appeals BoardSep 5, 201913583234 - (D) (P.T.A.B. Sep. 5, 2019) Copy Citation 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. 13/583,234 09/07/2012 Akio Miyamoto 0079665-000006 6447 21839 7590 09/05/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER KOLLIAS, ALEXANDER C ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 09/05/2019 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AKIO MIYAMOTO and YASUHARU FUKUI ____________ Appeal 2018-004165 Application 13/583,234 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a Decision on Appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1 and 8–13. An oral hearing was held on August 23, 2019.1 We have jurisdiction under 35 U.S.C. § 6. We REVERSE. 1 A written transcript of the oral hearing will be entered into the record when the transcript is made available. Appeal 2018-004165 Application 13/583,234 2 The invention is directed to a polyamide resin composition that exhibits excellent acid resistance and is lightweight and which is particularly useful in forming parts of an exhaust gas recirculation (EGR) system, such as intake manifold, an EGR delivery pipe, or an EGR cooler part. Spec. ¶¶ 1, 6. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A polyamide resin composition comprising: component A, which is at least one resin selected from the group consisting of polyamide 6 and polyamide 6, 6 and component C, glass, wherein the component C consists of component C1, glass containing no boron oxide, the amount of the component A and the amount of the component C being, respectively, 40 to 95% by weight and 60 to 5% by weight, based on 100% by weight of the polyamide resin composition wherein said polyamide resin composition does not comprise either a styrene polymer or a modified polyphenylene ether. Appellants2 request review of the following rejections from the Examiner’s Final Action: I. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over BASF (BASF Corporation, An Advanced High Modulus Short Glass-Fiber Reinforced Nylon 6: Part II – Mechanical Performance (2003)(6 pages)(add footnote)), McDaniel (US 2002/0048676 A1, published April 25, 2002), and Merry (US 2005/0232827 A1, published October 20, 2005). 2 Appellants identify Ube Industries, Ltd. as the real party in interest. App. Br. 2. Appeal 2018-004165 Application 13/583,234 3 II. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over BASF and TenEyck (US 5,569,629, issued October 29, 1996). III. Claims 1 and 8–12 rejected under 35 U.S.C. § 103(a) as unpatentable over Takatori (US 5,166,247, issued November 24, 1992), McDaniel, and Merry. IV. Claims 1 and 8–13 rejected under 35 U.S.C. § 103(a) as unpatentable over Takatori and TenEyck. V. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over Oyamada (US 2001/0047050, published November 29, 2001), McDaniel, and Merry. VI. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over Oyamada and TenEyck. VII. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over Borade (US 2007/0244231 A1, published October 18, 2007), McDaniel, and Merry. VIII. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over Borade and TenEyck. IX. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over Borade, Stoppelmann (WO 2009/055948 A1, published May 7, 2009, and relying on US 2010/0249307 A1 to Stoppelmann, published September 30, 2010, as the English equivalent), and Merry. X. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over Hayashi (US 5,804,638, issued September 8, 1998) and TenEyck. XI. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over TenEyck and Hayashi. Appeal 2018-004165 Application 13/583,234 4 OPINION3 As a preliminary matter, and as recognized by Appellants, the Examiner relies on the primary references to BASF, Takatori, Oyamada, Borade, and Hayashi for the same proposition: that the cited art teaches known compositions comprising a polyamide and a glass component containing no boron oxide. App. Br. 9; see generally Non-Final Act. As also recognized by Appellants, the Examiner relies on McDaniel/Merry, TenEyck, and Stopplemann/Merry for the proposition that it was known to use glass containing no boron oxide as a component of a polyamide/glass composition. App. Br. 9; see generally Non-Final Act. We begin our initial discussion by first addressing Rejection III, based on Takatori, because it encompasses all claims on appeal except for claim 13. Rejection III4 After review of the respective positions the Appellants and the Examiner provide, we REVERSE the Examiner’s prior art rejection of claims 1 and 8–12 under 35 U.S.C. § 103(a) for the reasons presented by Appellants. We add the following for emphasis. 3 We refer to the Examiner’s Non-Final Office Action dated August 17, 2016 for the text of all rejections. 4 The Examiner relies on Merry only to establish that McDaniel’s S-glass is in fact a glass containing no boron oxide. Non-Final Act. 7. While Appellants present arguments addressing Merry (see generally App. Br.), these arguments do not dispute this finding by the Examiner. See generally App. Br. Therefore, we need not address Merry further for disposition of this rejection. Appeal 2018-004165 Application 13/583,234 5 The Examiner finds, and Appellants do not dispute, that Takatori is directed to molded automobile parts made from compositions comprising a polyamide (nylon 6) and a glass component that differs from the claimed invention in that Takatori does not disclose using a glass component containing no boron oxide. Non-Final Act. 6; App. Br. 20–21; Takatori Abst., col. 1, ll. 62–68, col. 2, ll. 4–12, col. 3, ll. 31–34, 45–51. The Examiner finds that, McDaniel teaches a glass containing no boron oxide (S- glass) and a glass containing boron oxide (E-glass)5 as typical glasses for fibers in a polyamide/glass composition. Non-Final Act. 7; Ans. 5; McDaniel ¶¶ 72, 73, 91; Merry ¶ 25. The Examiner further finds that McDaniel teaches that S-glass is used for its strength. Non-Final Act. 7; McDaniel ¶ 91. The Examiner determines that it would have been obvious to one of ordinary skill in the art to use McDaniel’s S-glass in place of Takatori’s E-glass in Takatori’s compositions because such substitution would increase the strength of the disclosed composition with a reasonable expectation of success. Non-Final Act. 7. We have considered Appellants’ arguments with respect to this rejection (App. Br. 20–21), but conclude that these arguments do not persuade us of reversible error in the Examiner’s determination of obviousness for the reasons the Examiner presents. Non-Final Act. 6–7; Ans. 17–18. However, Appellants present arguments that the claimed invention having the recited content of 5–60 % by weight of glass containing 5 The Examiner does not dispute Appellants’ assertion that E-glass contains boron oxide or that Takatori uses E-glass. See generally Non-Final Act. and Ans.; App. Br. 21. Appeal 2018-004165 Application 13/583,234 6 no boron oxide results in unexpected advantages of acid resistance. App. Br. 13. When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). The burden of establishing unexpected results rests on Appellants. Appellants may meet this burden by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). “In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.†See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d at 1330). In such a case, the burden is on Appellants to rebut prima facie obviousness by showing evidence of unexpected properties at the claimed range relative to the prior art range. See In re Geisler, 116 F.3d 1465, 1469, 1470 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appeal 2018-004165 Application 13/583,234 7 Appellants’ most telling showing is presented in the Declaration under 37 C.F.R. § 1.132 by co-inventor Akio Miyamoto dated October 7, 2015 (hereinafter, Declaration 2 or Decl. 2).6 In Declaration 2, Declarant presents a series of inventive Examples that vary the content of glass fiber. See Experiment Report (attached to Declaration 2 (hereinafter, Report)) 3. The Report’s Table shows that the acid resistance of the composition does not deteriorate when the glass fiber containing no boron oxide is present in the claimed amounts after immersions in a 0.5 N aqueous solution of sulfuric acid at 23°C for 240 hours and subsequent tensile test for 240 hours. See Report 1–2, 3 (Table). On the other hand, Comparative Example 3, which contains 30% E-glass (glass fibers containing boron oxide), shows a deterioration in acid resistance after undergoing the same treatments, a deterioration not experienced when 30% glass fibers containing no boron oxide is used (inventive Example 2). Report 3 (Table). The Examiner contends that this showing is insufficient to overcome a prima facie case of obviousness because “the only proper side-by-side comparison is Comparative Example 3 to Inventive Example 2. Thus, the properly comparable data is drawn to a single point of comparison, i.e. 70 wt. % polyamide and 30 wt. % glass fiber and not the entire claimed range.†Ans. 12. The Examiner’s contention is not well taken because the Examiner has not considered the evidence as a whole. We first note that the Examiner appears to concede that Declaration 2 shows evidence of unexpected results against the closest prior art at the single point of comparison. Ans. 12. 6 Declaration 2 was entered into the record by the Examiner in the Office Action of November 6, 2014. Appeal 2018-004165 Application 13/583,234 8 However, the Examiner’s position is that the Declaration does not provide sufficient examples representative of the prior art at different contents of E- glass. Id. Of note, Appellants refer to Mergen7 to establish that it is known and accepted in the art that acids destroy E-glass. See Decl. 1 3–4 (discussing Mergen 9101–9102). Thus, Appellants have provided credible evidence that would lead one skilled in the art to reasonably expect that E- glass, used in any amount, is susceptible to be destroyed when in the presence of acids. When one considers both declarations together, one skilled in the art would understand that Appellants’ inventive Examples show sufficient evidence of unexpected properties at the claimed range relative to the prior art. The record shows that the Examiner has not considered the submitted declarations properly in determining the sufficiency of the showing of unexpected results the Appellants present. Ans. 12. Therefore, after weighing the totality of Appellants’ evidence in support of patentability, we agree that Appellants have established sufficiently that the difference between the claimed invention and the closest prior art is an unexpected difference and that a preponderance of the evidence weighs in favor of patentability. Accordingly, we reverse the Examiner’s prior art rejection of claims 1 and 8–12 under 35 U.S.C. § 103(a) for the reasons Appellants present and the reasons we give above. 7 A. Mergen & T.T. Aydin, Use of Colemanite in Textile Glass-Fiber, American Ceramic Society Bulletin. Vol. 86, No. 10, pp. 9101–9104. Appeal 2018-004165 Application 13/583,234 9 Rejections 1, II, and IV–XI We have considered the respective positions the Appellants and the Examiner provide for each of Rejections I, II, and IV–XI and we REVERSE these rejections as well for the reasons we present above. As with Rejection III, Appellants’ showing of unexpected results is sufficient to establish sufficiently that the difference between the claimed invention and the closest prior art is an unexpected difference and that a preponderance of the evidence weighs in favor of patentability. Accordingly, we reverse the Examiner’s prior art rejections of claims 1 and 8–13 under 35 U.S.C. § 103(a) for the reasons Appellants present and the reasons we give above. DECISION The Examiner’s prior art rejections of claims 1 and 8–13 under 35 U.S.C. § 103(a) are reversed. REVERSED Copy with citationCopy as parenthetical citation