Ex Parte ABE et al

Patent Trial and Appeal BoardAug 29, 2017

12663310 (P.T.A.B. Aug. 29, 2017)

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. 12/663,310 12/07/2009 Katsumi ABE 14048-56 2968 80711 7590 08/29/2017 BGL/Ann Arbor 524 South Main Street Suite 200 Ann Arbor, MI 48104 EXAMINER ENGLISH, PATRICK NOLAND ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 08/29/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KATSUMI ABE and KIYOFUMI FUKASAWA ____________ Appeal 2015-007603 Application 12/663,310 Technology Center 1700 ____________ Before PETER F. KRATZ, AVELYN M. ROSS, and MICHAEL G. McMANUS, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 8, and 9. We have jurisdiction pursuant to 35 U.S.C. § 6. Appeal 2015-007603 Application 12/663,310 2 Appellants’ claimed invention is directed to an acrylate rubber-metal composite, which is disclosed as being useful in the preparation of parts, such as an oil seal, requiring oil resistance and may be further characterized by water resistance and/or heat resistance (Spec. ¶¶ 2, 7). Claim 1, the sole independent claim on appeal, is illustrative and reproduced below: 1. An acrylic rubber-metal composite, which comprises an iron phosphate treated iron-based metal, and an adhesive layer comprising 45-75 wt. % of a phenol resin and 10-30 wt. % of titanium oxide, a divalent metal oxide, or a mixture thereof, and 0-25 wt. % of a halogenated polymer, on the basis of total solids matters, and an acrylic rubber layer, successively provided on the iron-based metal surface wherein the phenol resin in the adhesive is a mixture of 50-90 wt., % of novolak type phenol resin and 50-10 wt. % of resol type phenol resin and the iron phosphate treated iron-based metal has a surface roughness Ra of up to 0.6μm inclusively. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Aoyama US 5,182,171 Jan. 26, 1993 Sugahara US 5,780,147 Jul. 14, 1998 Fukasawa US 2005/0215712 A1 Sep. 29, 2005 Green US 2006/0014867 A1 Jan. 19, 2006 Shingo JP 2001-277366 Oct. 09, 2001 Yokota JP 2005-226064 Aug. 25, 2005 The Examiner maintains the following grounds of rejection: Claims 1 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yokota in view of Shingo, Sugahara, Aoyama, and Fukasawa. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being Appeal 2015-007603 Application 12/663,310 3 unpatentable over Yokota in view of Shingo, Sugahara, Aoyama, Fukasawa, and Green. After review of the opposing positions articulated by Appellants and the Examiner and the evidence of obviousness marshalled by the Examiner, we determine that Appellants’ argument indicates that the Examiner has failed to establish a prima facie case of obviousness regarding the subject matter recited in claims 1 and 9 within the meaning of 35 U.S.C. § 103(a) based on the applied teachings of Yokota in view of Shingo, Sugahara, Aoyama, and Fukasawa. The Examiner maintains, inter alia, that one of ordinary skill in the art would have been motivated to employ an iron phosphate treated steel sheet having surface roughness values corresponding to those required by rejected claim 1 as a modification of the stainless steel plate employed by Yokota in the rubber coated stainless steel plate of Yokota to provide improved blocking resistance in Yokota based on the surface roughness values and corresponding blocking resistance property as taught by Aoyama for its conductive and corrosion resistant steel sheet (Final Act. 5–6, 12; Ans. 5–6, 16–18). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the Examiner has not carried the burden to articulate why an ordinary skilled artisan would have been incentivized to provide surface roughness values for an iron phosphate treated steel sheet corresponding to those required by Appellants’ claim 1 to provide an improved blocking Appeal 2015-007603 Application 12/663,310 4 resistance property for the stainless steel plate of Yokota, which plate is laminated with rubber for use as a gasket based on teachings of Aoyama with respect to Aoyama’s conductive and corrosion resistant steel sheet that is coated for use in applications requiring electrical conduction (Yokota ¶¶ 1, 2, 6–9, 52, abstract; Aoyama, col. 1, ll. 10–22, col. 2, ll. 1–64, col. 3, ll. 20–63, Figs. 1–3). In particular and as argued by Appellants at pages 19, 25–26 of the Appeal Brief and pages 2–5 of the Reply Brief, the Examiner has not demonstrated that the blocking resistance property sought by Aoyama, which is desired for a processing issue related to the type of steel sheets and their use taught by Aoyama, is applicable to the metal-rubber laminate of Yokota. Thus, the record indicates that the Examiner’s rejection1 lacks the requisite apparent reason for the proposed modification of Yokota based on the teachings of Aoyama so as to arrive at a composite, as required by Appellants’ claim 1 but rather the modifications proposed appear to be premised upon impermissible hindsight in view of the Appellants’ disclosure. See also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we reverse the Examiner’s § 103(a) rejections. 1 The additionally applied reference (Green), which is utilized by the Examiner in the Examiner’s separate rejection of dependent claim 8 (Ans. 8–9), does not cure the deficiency in the base rejection. Appeal 2015-007603 Application 12/663,310 5 DECISION In view of the foregoing, the decision of the Examiner to reject the appealed claims under 35 U.S.C. §103(a) is reversed. REVERSED