Ex Parte Ikeda et al

Patent Trial and Appeal Board

Oct 30, 2018

14400060 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/400,060 11/10/2014
80711 7590 10/31/2018
BGL/ Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Akihiko Ikeda
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
14056-73 6699
EXAMINER
BOYLE, ROBERT C
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
10/31/2018 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 AKIHIKO IKEDA, MITSURU MAEDA, MASAHI KUDO,
HIDETO NAMEKI, and KUNIHIKO MORI 1
Appeal2018-001024
Application 14/400,060
Technology Center 1700
Before BEYERL YA. FRANKLIN, JEFFREY R. SNAY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision finally rejecting claims 1-16. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
1 Appellants identify the real parties in interest as Eagle Industry Co., Ltd.
and Unimatec Co., Ltd. See App. Br. 1.
Appeal2018-001024
Application 14/400,060
Claim 1: A quaternary copolymer, fluorine-containing
elastomer having a copolymerization composition comprising:
(A) 3.0 to 7 .0 mol %, of vinylidene fluoride,
(B) 60.0 to 70.0 mol% of tetrafluoroethylene,
(C) 35.0 to 25.0 mol% of a perfluoro(C1-s-alkyl vinyl
ether) or a perfluoro(C1-s-alkoxy C1-s-alkyl vinyl ether), and
(D) 0.2 to 3.0 mol% of a perfluoro nitrile compound.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Sonoi
Maeda
us 5,824,749
US 2010/0286341 Al
THE REJECTIONS
Oct. 20, 1998
Nov. 11, 2010
1. Claim 1 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Sonoi.
2. Claims 2-16 are rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Maeda in view of Sonoi.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claim on appeal, we will
address each separately consistent with 37 C.F.R. § 4I.37(c)(l)(iv).
Upon consideration of the evidence and each of the respective
positions set forth in the record (including Appellants' Appeal Brief and
Reply Brief), we find that the preponderance of evidence supports the
Examiner's findings and conclusion that the subject matter of Appellants'
claims is unpatentable over the applied art. Accordingly, we sustain each of
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Appeal2018-001024
Application 14/400,060
the Examiner's rejections on appeal as discussed below, and affirm each
rejection.
Appellants do not dispute that the Examiner presented a prima facie
case of obviousness based on Sonoi's teachings. 2 See generally Appeal and
Reply Briefs; Ans. 6. Instead, Appellants focus on their claimed range of
from 3.0 to 7.0 mol% ofvinylidene fluoride (VdF) as it relates to a showing
of unexpected results. According to Appellants, certain data of record
demonstrates a showing of unexpected results for the claimed V dF range of
mol%, thereby rebutting any prima facie case of obviousness established by
the Examiner. See Appeal Br. 4---6.
To establish unexpected results over a claimed range, an applicant
should compare a sufficient number of tests both inside and outside the
claimed range (for both the upper and lower limits) to show the criticality of
the claimed range. In re Hill 284 F.2d 955, 958-959 (CCPA 1960). A
reasonable showing that the unexpected results occur throughout the claimed
range and that the range is critical for obtaining the claimed unexpected
result is important because it establishes a nexus between the evidence and
the merits of the claimed invention. A nexus is a "fundamental requirement
that must be met before secondary considerations can carry the day." In re
Huai-HungKao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
2 "[W]here the prior art gives reason or motivation to make the claimed
[invention] ... the burden (and opportunity) then falls on an applicant to
rebut that prima facie case. Such rebuttal or argument can consist of ... any
other argument or presentation of evidence that is pertinent." In re Dillon,
919 F.2d 688, 692-93 (Fed. Cir. 1990) (internal citations omitted) (en bane).
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Appeal2018-001024
Application 14/400,060
Appellants argue that Sonoi allows for up to 20 mol% V dF by
teaching "not more than about 20 mol %" VdF and O mol%. Id. at 4.
Appellants submit that Sonoi's range of from Oto 20 mol% VdF does not
render Appellants' range of 3.0 to 7.0 mol% obvious because Sonoi's
range encompasses amounts of V dF which provide inferior results compared
to Appellants' claimed subject matter. Id.
In this regard, Appellants refer to Comparative Example 2 (see ,r,r
[0042]-[0044] and the Table in ,r [0050] of Appellants' Specification) and
submit that the disclosure therein demonstrates that 10 mol% VdF produced
inferior compression set characteristics and plasma resistance. Appeal Br. 4.
Appellants also refer to a test conducted (see Example 6 in the Ikeda 1.132
Declaration filed on October 31, 2016) using 6.9 mol% VdF that
demonstrated excellent compression set characteristics, plasma resistance
and other properties, in addition to low adhesion to metal at higher
temperatures (150°C). Appeal Br. 4.
Appellants further refer to a test (see Example 5 of the Ikeda 1.132
Declaration) using 3.2 mol% VdF that demonstrated excellent compression
set characteristics, plasma resistance and other properties, in addition to low
adhesion to metal at higher temperatures (150°C). Appeal Br. 5.
Appellants submit that they have demonstrated that the tested V dF
amounts of 3.2 mol %, 4.9 mol %, 5.1 mol % or 6.9 mol % result in at least
compression set characteristics, plasma resistance, and low adhesion to
metal properties that are superior when compared to the use of an amount of
VdF of 10.0 mol %. Appeal Br. 5. Appellants submit that this testing
demonstrates that, over a range of 3.2 mol % and 6.9 mol %, Appellants'
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Appeal2018-001024
Application 14/400,060
claimed subject matter provides excellent results and that Appellants' results
are not obtained at least above this range at 10.0 mol %. Id. Appellants
conclude that there can be no doubt that Sonoi's range ofup to 20 mol %,
which includes and is greater than 10.0 mol %, does not render Appellants'
claimed range of 3 .0 to 7 .0 mol % obvious. Id.
In the instant case, Appellants do not direct us to evidence in the
record pertaining to a sufficient number of tests outside the lower limit
claimed. The Examiner rightly points this out in the first paragraph on page
7 of the Answer.
In view of the above, we affirm Rejections 1 and 2.
DECISION
Each rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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