Akira Tsukada et al.

Patent Trials and Appeals BoardAug 13, 2019

14241551 - (D) (P.T.A.B. Aug. 13, 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. 14/241,551 02/27/2014 Akira Tsukada 158573 2759 25944 7590 08/13/2019 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER PATTERSON, MARC A ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 08/13/2019 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AKIRA TSUKADA and YOSHIHISA TAKEYAMA ____________ Appeal 2018-001324 Application 14/241,551 Technology Center 1700 ___________ Before KAREN M. HASTINGS, MONTE T. SQUIRE, and JANE E. INGLESE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1–13 under 35 U.S.C. § 103(a) as being unpatentable over the combined prior art of Kurita (JP 02-158639, published June 19, 1990; as translated) and Kazuhiro (JP 2011/016479, A1, published February 10, 2011; as translated). An oral hearing was conducted July 30, 2019. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1Appellant is the applicant, Zeon Corporation, which is also stated to be the real party in interest (Appeal Br. 1). Appeal 2018-001324 Application 14/241,551 2 Claim 1 is illustrative of the subject matter on appeal (emphasis added to highlight key limitation in dispute): 1. A nitrile copolymer rubber composition containing a nitrile copolymer rubber (A) which contains a,β-ethylenically unsaturated nitrile monomer units (al) 35 to 85 wt%, conjugated diene monomer units which may be at least partially hydrogenated (a2) 15 to 65 wt%, cationic monomer units (a3) 0 to 30 wt%, and aromatic vinyl monomer units (a4) 0 to 50 wt%, the total content of said a,β-ethylenically unsaturated nitrile monomer units (al) and said aromatic vinyl monomer units (a4) being 35 to 85 wt%, a vinyl chloride resin (B), and a plasticizer (C) which is expressed by the following general formula (1). (in the formula, R1 is an alkylene group which has 4 carbon atoms, "a" and "b" are each 4, "c" and "d" are each 0, and R2 and R3 are respectively alkylene groups which have 2 carbon atoms.). ANALYSIS Appellant presents arguments directed to only independent claim 1 (Appeal Br. 7–11; Reply Br.1–4). We, therefore, select this claim as representative and decide the rejection of claims 1–13 on the basis of claim 1 alone. 37 C.F.R. § 41.37 (c)(1)(iv). We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments, and evidence produced to support those arguments. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI Appeal 2018-001324 Application 14/241,551 3 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). We sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. We determine that, after consideration of all of the evidence in this appeal, including the Tsukada Declaration,2 that the evidence tending to establish the obviousness of the claimed subject matter outweighs any evidence of record that may tend to indicate the non-obviousness thereof. It has been established that “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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that 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. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992). It is well established that when claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). It is also well established that a reference is not limited to its examples or preferred embodiments. 2 The Declaration by co-inventor Tsukada is not in the Evidence Appendix section of the Appeal Brief, but is referred to in the Appeal Brief at page 9. Appeal 2018-001324 Application 14/241,551 4 In reviewing the relevant facts of this case, the Examiner’s determination that Kurita/Kazuhiro suggests a nitrile rubber composition as recited with overlapping ranges for the plasticizer’s constituent groups is reasonable (see, e.g., Ans. 6). Appellant’s argument that the plasticizer genus taught in Kurita is too large to suggest the recited specific plasticizer is unavailing for reasons set out by the Examiner (Ans. 3, 5–6 (pointing out that one of ordinary skill would have appreciated that all possibilities encompassed by Kurita’s plasticizer formula are indeed taught)). Notably, Appellant admits the examples of Kurita would have suggested a group of 180 possible compounds (Appeal Br 6). See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art's disclosure of over 1200 possible combinations rendered all possible formulations obvious). Thus, a preponderance of the evidence supports the Examiner’s position that it would have been prima facie obvious to use the recited plasticizer in combination with the known nitrile rubber and vinyl chloride resin as claimed. One of ordinary skill in the art, using no more than ordinary creativity, would have selected the recited number(s) of the plasticizer’s constituent groups (see, e.g., Ans. 5, 6). The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that the Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See e.g., In re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellant to establish (1) that the alleged Appeal 2018-001324 Application 14/241,551 5 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 points to examples presented in the Specification as well as the Declaration filed by co-inventor Tsukada, as providing evidence of the criticality of using the appropriate plasticizer as recited in combination with vinyl chloride resin and the specified nitrile rubber so as to result in the alleged unexpected properties of mandrel crack resistance and ozone resistance (Appeal Br. 8, 9; Spec. Table 1; generally Reply Br.). However, a preponderance of the evidence supports the Examiner’s position that this evidence has not been shown to be “unexpected,” and is not compared to the closest prior art (see, e.g., Ans. 5). Cf. In re Johnson, 747 F.2d 1456, 1461 (Fed. Cir. 1984) (explaining that the “closest prior art” may include more than one prior art reference, and to establish unexpected results, an applicant is required to compare the claimed subject matter with the relevant subject matter of each of the closest prior art references, unless “the teachings of the closest prior art references are sufficiently similar so that the testing of one compound showing unexpected results would provide the same information as to the relevant teachings of the other equally close references.”). Furthermore, balancing the effects of known components in a rubber composition would have been readily appreciated by one of ordinary skill. “The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the Appeal 2018-001324 Application 14/241,551 6 benefits, both lost and gained, should be weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000). The evidence has also not been shown to be commensurate in scope with the claimed composition. For example, claim 1 uses the open-ended term “containing” and thus may include other components not recited. Claim 1 requires no specific amounts of any of its three listed component A, B and C. We, therefore, discern no error in the Examiner’s determination that the applied prior art would have rendered obvious the rubber composition of claim 1. Thus, Appellant has not persuasively argued that the facts and reasons relied on by the Examiner are insufficient to establish a prima facie case of obviousness. In light of these circumstances, the preponderance of the evidence supports the Examiner’s rejection. Accordingly, we sustain the rejection of the claims on appeal. DECISION The decision of the Examiner is affirmed. 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). AFFIRMED