Akio Miyamoto et al.

Patent Trials and Appeals Board

Sep 5, 2019

13583234 - (D) (P.T.A.B. Sep. 5, 2019)

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