Ex Parte Clarke et al

Patent Trial and Appeal BoardApr 30, 2013

11982613 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ARTHUR JACK CLARKE, RICHARD BELL, JOSEPH R. DUKE, JR., and WILLIAM W. L. WU ____________ Appeal 2011-010652 Application 11/982,613 Technology Center 1700 ____________ Before RICHARD TORCZON, BEVERLY A. FRANKLIN, and GEORGE C. BEST, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. TORCZON, Administrative Patent Judge, dissenting-in-part. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6. Appeal 2011-010652 Application 11/982,613 2 STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: 1. A coupling device comprising a coupling sleeve and two substantially coaxial end pieces each having an outer periphery; the coupling sleeve comprising a generally annular body having an inner periphery and an outer periphery and two opposing sleeve end portions defining respective coupling receiving portions; said coupling receiving portions each comprising a plurality of circumferentially spaced axially extending teeth which are arranged along at least a portion of said inner periphery and which substantially mesh with an equal plurality of complementary grooves arranged in the outer periphery of a respective said end piece; and characterized in that at least one of said central cylindrical portion and said coupling receiving portions comprises a polyurethane/urea elastomer composition. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wu WO 9602584 A1 Feb. 1, 1996 Clarke US 6,283,868 B1 Sep. 4, 2001 THE REJECTION1 Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Clarke in view of Wu. 1 On page 12 of the Brief, Appellants list as a rejection, the Examiner’s objection to the drawings. This, however, is not an appealable issue, but a petitionable one. See MPEP 706.01. Appeal 2011-010652 Application 11/982,613 3 ANALYSIS As an initial matter, Appellants have not presented separate arguments for each of the rejected claims. Any claim not separately argued will stand or fall with the argued claims from which it depends. Argued claims are enumerated hereafter. See 37 C.F.R. § 41.37(c)(1) (vii). We adopt the Examiner’s findings pertinent to the issues raised by Appellants. We therefore incorporate the Examiner’s position as set forth in the Answer. We add the following for emphasis only. Claim 1 Beginning on page 13 of the Brief, Appellants argue that Clarke offers no suggestion to choose polyurethane elastomers over any of the many rubber elastomers disclosed therein. However, we agree with the Examiner that Clarke teaches that the flexible coupling elements “may be formed of any suitable flexible material” (Clarke, col. 4, ll. 61-63). Ans. 8. The Examiner explains that Clarke teaches preferred materials, including polyester based urethane (polyurethane) elastomers. The Examiner then relies upon Wu’s description of polyurethane/urea elastomers that are functionally equivalent to polyurethane, and therefore substitution Clarke’s polyurethane with Wu’s polyurethane/urea elastomers would have been prima facie obvious. Ans. 4-5. Appellants argue that one skilled in the art would not look to the belt art (Wu) in searching for suitable materials for the coupling art (Clarke). Br. 14-17. However, we agree with the Examiner’s position on pages 4-5 of the Answer, and with the Examiner’s response on pages 8-9 of the Answer. We add that for an examiner to properly rely on a reference as a basis for Appeal 2011-010652 Application 11/982,613 4 rejection, the reference must be “either in the field of the applicant's endeavor or reasonably pertinent to the problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); see also In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992) (A reference in a different field from that of the inventor’s endeavor is still reasonably pertinent if the matter with which it deals “logically would have commended itself to an inventor’s attention in considering his problem.”). In the instant case, as pointed out by the Examiner on page 5 of the Answer, “load carrying tooth members” is such a matter. In other words, load carrying capability (Wu, p.3. ll. 9-14) is a matter that “logically would have commended itself to an inventor’s attention in considering his problem.” The inventor’s problem includes prevention of premature tooth failure (Specification, p. 2. l. 10). Also, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Having agreed with the Examiner’s prima facie case, we turn now to Appellants’ rebuttal evidence. Beginning at the bottom of page 17 of the Brief, Appellants refer to pages 18-19 of their Specification regarding Sleeve III (having no fibrous or textile reinforcement) that lasted more than 10 million cycles at a peak torque of 160 Nm. On page 8 of the Brief, Appellants compare this sleeve with Sample C of Clarke, and submit that their Sleeve III has superior performance, and also that Clarke teaches away from use of no fiber, and that Wu requires tensile members. Appellants also Appeal 2011-010652 Application 11/982,613 5 refer to the Declaration of Arthur Clarke that describes the importance of tensile members to belts, which we have also carefully reviewed. In reply, the Examiner states that “to demonstrate unexpected exceptional results, the results must be compared with controlled experiments with contrasting distinct features.” In other words, as discussed by the court in In re Dunn, 349 F.2d 433, 439 (CCPA 1965), “[t]he cause and effect sought to be proven is lost here in the welter of unfixed variables.” The Examiner’s point is that the comparison between Appellants’ Sleeve III and Clarke’s Sample C is inconclusive because it is unknown, for example, if the testing of Clarke’s Sample C was conducted under the conditions described on page 18, ll. 26-30 of Appellants’ Specification. As another example, it is unknown if Sleeve III and Sample C both have the same tooth profile. Thus, it can be seen that these potential differences in the experiments used as the basis for the comparison made between Sleeve III and Sample C render it inconclusive, and thus insufficiently supportive of the conclusion desired to be drawn by Appellants. See Dunn, 349 F.2d at 439. With regard to Appellants’ rebuttal arguments that tensile members are used in Clarke and Wu and are important in making belts as discussed by Clarke in his Declaration (Br. 17-18), the Examiner rightly points out that the Clarke reference describes such reinforcement as optional. Ans. 4, 9; Clarke, col. 5, ll. 33-35 and ll. 50-51. The reference therefore suggests the claimed subject matter. In view of the above, we are not convinced by Appellants’ rebuttal evidence, and affirm the rejection of claim 1 and all other claims not separately argued. Our determinations made herein regarding Appellants’ Appeal 2011-010652 Application 11/982,613 6 rebuttal evidence likewise applies to the other argued claims, discussed below, and are not repeated hereafter. Claims 2, 7, 13, 17, and 19 Claims 2 and 19 are each similarly directed to a coupling device whereby the composition provides for the primary or sole amount of the coupling sleeve’s resistance. Claim 7 recites that the composition provides at least a substantial amount of the resistance and has an M100 value of at least about 800 psi. Claims 13 and 17 similarly recite that the sleeve is constructed in the absence of a tensile cord, fabric jacket, and a fiber loading of said composition. On pages 18-19, and 22 of the Brief, Appellants argue the teachings of Wu individually, which is unconvincing. The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art; one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Merck & Co., 800 F.2d 1091, 1097-98 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Then, with regard to Clarke, Appellants submit that Clarke emphasizes the use of high modulus tensile cords, which is incorrect, as stated supra (Clarke, col. 5, ll. 33-36, 50-51). Hence, we are unconvinced of error in the Examiner’s determination of obviousness with regard to these claims. Appeal 2011-010652 Application 11/982,613 7 Claims 7 and 14 Claim 7 depends from claim 1 and further specifies that the coupling device has M100 of at least about 800 psi. Claim 14 is similar to claim 1 (thus, our determinations made above regarding claim 1 apply here to any similarities), but also recites that the polyurethane elastomer of the composition exhibits a certain thermal stability and that the coupling sleeve possesses an M100 of at least 1000 psi. It is the Examiner’s position that Wu teaches the same composition as claimed, and that the general structure and composition is provided by the combination of applied references, and so such properties would be obtained by routine experimentation because the same materials are used by the combination of Clarke and Wu as claimed. Ans. 5-7. The Examiner finds that Wu teaches the same composition as claimed, and that the general structure and composition is provided by the combination of applied references. Ans. 5-7. Hence, implicit in the Examiner’s position is that because the combination of Clarke and Wu results in the use of similar materials and structure in making the coupling sleeve, Appellants’ claimed properties would have flowed naturally from following the suggestion of the applied art. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious.”). Appellants’ “optimization” position (Br. 20) does not convincingly address the Examiner’s findings in this regard. In view of the above, we affirm the rejection of claims 7 and 14. Appeal 2011-010652 Application 11/982,613 8 Claims 10, 15, and 20 These claims are directed to a polyurethane/urea elastomer composition that comprises the reaction product of certain claimed components. On page 6 and 7 of the Answer, the Examiner explains how Wu meets the aspect of these claims. Appellants do not dispute these findings. Rather, on page 21 of the Brief, Appellants argue that Wu does not teach the use of the composition in making a coupling device, which is an unconvincing argument for the reasons discussed, supra. Young, 927 F.2d at 591; Merck, 800 F.2d at 1097-98; Keller, 642 F.2d at 425. Appellants additionally argue that the claimed limitation of claim 20 regarding an isocyanate group content of the polyisocyanate prepolymer is from about 2% to about 6%, is not suggested by Wu. Br. 21. It is the Examiner’s position that the amount is a workable range that a person of ordinary skill in the art would determine through routine optimization. Ans. 7. In reply, Appellants argue that the chemical arts are unpredictable and thus this aspect of the claim is unexpected and not obvious. Br. 21. Without supporting objective evidence as to how this claimed amount of isocyanate group content is an unobvious difference from that taught by Wu, we are not convinced of error. We therefore agree with the Examiner’s obviousness conclusion regarding these claims. Claims 3, 11, 12, 16, 18 Each of these claims concerns the structure of the coupling device. Appellants’ arguments that Wu does not relate to a coupling device are unconvincing for the reasons discussed, supra. Br. 21-22. Young, 927 F.2d at 591; Merck, 800 F.2d at 1097-98; Keller, 642 F.2d at 425. Appeal 2011-010652 Application 11/982,613 9 CONCLUSIONS OF LAW AND DECISION The Examiner’s decision 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). AFFIRMED sld Appeal 2011-010652 Application 11/982,613 1 TORCZON, Administrative Patent Judge, dissenting-in-part. I join in the majority's opinion except with regard to claims 7-9 and 14-20. Claims 8 and 9 depend from claim 7; claims 15-20, from claim 14. Claims 7 and 14 require that the "coupling sleeve possesses an M100 of at least about 1000 psi." The examiner contends that one skilled in the art would have known to attain this value through routine optimization. The appellants contend that the examiner has not explained why a person having ordinary skill in the art would have wanted to attain an M100 of at least 1000 psi. Just as the declaration evidence does not account for the treatment of critical variables, the examiner's rationale does not account for the optimization of this.2 Routine optimization ordinarily requires identification in the art that a variable is worth optimizing (i.e., is "result effective").3 Wu identifies M100 as such a variable, but the value that is optimized is percentage retained modulus after heat-aging.4 If there is a connection between percent retained modulus after heat-aging and optimizing for an M100 at 1000 psi, it is not apparent from the record or from the rejection.5 2 It is possible that this property is inherent for the elastomer composition, but the examiner did not advance this rational and so it has not been developed in this record. 3 In re Applied Mat'ls, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). 4 Wu at 15 (Table 1). 5 If the appellants knew otherwise, or knew of a basis for the optimization in the prior art, they would of course have been obligated not to make the argument. Precision Instr. Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 818 (1945) (holding applicants to a high standard of conduct in an ex parte context). Appeal 2011-010652 Application 11/982,613 2 Accordingly, I respectfully dissent from the affirmance of the rejection of claims 7-9 and 14-20.