Ex Parte Ebata et al

Patent Trial and Appeal BoardAug 20, 2014

12314154 (P.T.A.B. Aug. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/314,154 12/04/2008 Hiroki Ebata 055053-0174 8365 22428 7590 08/20/2014 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER KRYLOVA, IRINA ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 08/20/2014 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 HIROKI EBATA, KOTARO ICHINO, and MASAO KUNIZANE ____________ Appeal 2012-009007 Application 12/314,1541 Technology Center 1700 ____________ Before CHARLES F. WARREN, ROMULO H. DELMENDO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellants seek our review under 35 U.S.C. § 134(a) of a decision of the Primary Examiner finally rejecting claims 1 and 4-16. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 According to the Appellants, the real party in interest is Mitsui Chemicals, Inc. (Appeal Brief filed February 3, 2012, hereinafter “App. Br.,” 3). Appeal 2012-009007 Application 12/314,154 2 BACKGROUND The invention relates to “a copolymer rubber[,] which contains only small amounts of impurities and is excellent in kneading processability, extrusion processability[,] and retention of shape . . . .” (Specification, hereinafter “Spec.,” ¶ 8). Representative claim 1 is reproduced from page 20 of the Appeal Brief (Claims App’x) (disputed limitations shown in bolded italics), as follows: 1. A copolymer rubber comprising structural units derived from [A] ethylene, [B] an α-olefin of 3 to 20 carbon atoms, [C] a non-conjugated polyene having one double bond between adjacent carbon atoms in one molecule, said double bond being capable of polymerization by a metallocene catalyst, and [D] a non-conjugated polyene having two of the above double bonds in one molecule, said copolymer rubber satisfying the following requirements (1) to (5): (1) the molar ratio ([A]/[B]) of the structural units derived from ethylene [A] to the structural units derived from the α-olefin [B] is in the range of 50/50 to 85/15, (2) the total of molar quantities of the structural units derived from the non-conjugated polyene [C] and the structural units derived from the non-conjugated polyene [D] is in the range of 0.5 to 4.5% by mol in all the structural units, (3) the intrinsic viscosity [η] as measured in decalin at 135°C is in the range of 1.0 to 5.0 dl/g, (4) the molar ratio ([C]/[D]) of the structural units derived from the non-conjugated polyene [C] to the structural Appeal 2012-009007 Application 12/314,154 3 units derived from the non-conjugated polyene [D] is in the range of 90/10 to 99/1, and (5) the copolymer rubber satisfies the following formula (I): Log{η*(0.01)}/Log{η*(10)}>0.0753x {apparent (I) iodine value derived from the non-conjugated polyene [D]}+ 1.42 wherein η*(0.01) is a viscosity (Pa·sec) at 190ºC and 0.01 rad/sec, and η*(10) is a viscosity (Pa·sec) at 190°C and 10 rad/sec; and further wherein the non-conjugated polyene [C] is 5-ethylidene-2-norbornene (ENB), and the non-conjugated polyene [D] is 5-vinyl-2-norbornene (VNB). The Examiner rejected the claims as follows: I. Claims 1, 7, and 8 under the judicially-created doctrine of obviousness-type double patenting as unpatentable over claims 1, 4, and 10 of Kawasaki;2 II. Claims 1 and 7-16 under 35 U.S.C. § 103(a) as unpatentable over Kawasaki; and III. Claims 1 and 4-16 under 35 U.S.C. § 103(a) as unpatentable over Kawasaki and Mangold.3 (Examiner’s Answer entered March 21, 2012, hereinafter “Ans.,” 5-26; Final Office Action entered April 4, 2011, hereinafter “Final Act.,” 3-11; Office Action entered September 29, 2010, hereinafter “Non-Final Act.,” 2-14.) 2 United States Patent 5,698,651 issued December 16, 1997. 3 PCT International Application Publication WO 98/49212 published November 5, 1998. Appeal 2012-009007 Application 12/314,154 4 DISCUSSION Because we find no error in the Examiner’s factual findings, analyses, and conclusions of law in each of the rejections, we adopt them as our own. For emphasis, we add the following comments. In re Jung, 637 F.3d 1356, 1364-65 (Fed. Cir. 2011). I. With respect to Rejection I, the Appellants argue the rejected claims together (App. Br. 11-12). Therefore, we confine our discussion to claim 1, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Claims 7 and 8 stand or fall with claim 1. The Appellants’ principal argument against the double patenting rejection is that, in resolving the differences between the claimed subject matter and Kawasaki’s claims, “the Examiner incorrectly relied on the disclosure of the cited patent, rather than on a comparison of claims as the law requires . . . .” (App. Br. 11). That argument ignores the fundamental reason for the doctrine of obviousness-type double patenting, i.e., to prevent an unjustified timewise extension of the right to exclude granted by a patent, regardless of how the extension arose. In re Van Ornum, 686 F.2d 937, 943- 44 (CCPA 1982). In this case, we find that the Examiner’s reliance on the Appellants’ Specification (Ans. 7-8) was permissible because the Specification was used merely to show the preferred embodiments covered by the claims of the Kawasaki patent. In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371, 1378 (Fed. Cir. 2008) (“[T]he specification of the ’987 patent itself refers to ethylene, propylene, butene, and other olefins which indicates that those olefins were intended to fall within the meaning of the claims. Thus, the Appeal 2012-009007 Application 12/314,154 5 PTO had good basis for its conclusion that the claims of the ’987 patent rendered obvious the claims of the ’687 patent and that the latter claims are invalid for obviousness-type double patenting.”). Because the allowance of claim 1 would result in the unjustified timewise extension of the right to exclude others from making a copolymer rubber made of, inter alia, 5-ethylidene-2-norbornene (ENB) and 5-vinyl-2- norbornene (VNB) in overlapping molar ratios already conferred in claims 1, 4, and 10 of the Kawasaki patent (see Kawasaki col. 6, l. 47 to col. 7, l. 44), we affirm. II. With respect to Rejection II, the Appellants argue claims 1 and 7-16 together (App. Br. 13-16). Therefore, we confine our discussion to claim 1, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii). As acknowledged by the Appellants (App. Br. 14-15), Kawasaki describes a range of [c’]/[d’] molar ratios that overlaps with the range of [C]/[D] molar ratios recited in claim 1 (Kawasaki’s col. 8, ll. 43-46). That fact supports the Examiner’s prima facie case of obviousness and, at the same time, undercuts the Appellants’ “teaching away” argument (App. Br. 15). See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“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.”). Moreover, we find ourselves in complete agreement with the Examiner (Ans. 13) that the disclosure of a reference is not limited to its preferred embodiments or working examples. Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[I]n a section 103 inquiry, Appeal 2012-009007 Application 12/314,154 6 ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.’”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). The Appellants contend that the claimed copolymer rubber exhibits a greater number of long chain branches (App. Br. 15). The Appellants, however, fail to explain how claim 1 specifies any degree of long chain branching. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Relying on the description in the current Specification (¶¶ 54, 55; ¶¶ 73, 74 of the published application), the Appellants contend that satisfaction of formula (I), as specified in claim 1, provides unexpected and improved results (App. Br. 15). The Appellants, however, fail to direct us to persuasive experimental evidence demonstrating unexpected results over Kawasaki’s copolymer rubber. For these reasons and those set forth by the Examiner, we uphold the Examiner’s rejection. III. As in Rejections I and II, the Appellants argue the claims subject to Rejection III together. Therefore, we confine our discussion to claim 1, which we select as representative. The Appellants argue that “Mangold does not teach the specific embodiment of a copolymer rubber composition comprising VNB together with ENB, nor . . . any guidance on the amount or molar ratio of ENB to VNB . . . .” (App. Br. 16-17). Again, however, we find ourselves in agreement with the Examiner’s analysis (Ans. 23-24). Though Mangold teaches the use of metallocene catalysts, including the catalyst specified in Appeal 2012-009007 Application 12/314,154 7 claim 4, to be useful (page 10) in the polymerization of ethylene, a C3-20 α- olefin, and “a diene monomer” (page 2), a person of ordinary skill in the art would have reasonably expected that these catalysts would also be useful in the polymerization of ethylene, a C3-20 α-olefin, and a mixture of diene monomers, such as ENB and VNB as shown in Kawasaki. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Relying on Example 1 and Comparative Example 1 of the current Specification, the Appellants contend that the use of a specific catalyst does not always result in a fulfillment of requirement (5), as recited in claim 1 (App. Br. 17). We find this argument unpersuasive for the reasons given by the Examiner (Ans. 26). For these reasons and those set forth by the Examiner, we uphold Rejection III. ORDER Rejections I through III are 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 bar