Ex Parte Suzuki et al

Patent Trial and Appeal BoardAug 18, 2014

12071653 (P.T.A.B. Aug. 18, 2014)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/071,653 02/25/2008 13155 7590 08/20/2014 Edwards Neils PLLC 12020 Sunrise Valley Drive, Suite 200 Reston, VA 20191 FIRST NAMED INVENTOR Hiroaki Suzuki UNITED STA TES 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. 71450.0136 2845 EXAMINER ZEMEL, IRINA SOPJIA ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 08/20/2014 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): ipgeneral@edwardsneils.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROAKI SUZUKI, NOBUYUKI TAKAHASHI, and TAKEHIROUI Appeal 2012-011411 Application 12/071,653 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's final rejection of claims 1-7, 9 and 10 under 35 U.S.C. Â§ 103(a) as unpatentable over Kijima1 alone, or in combination with the combined prior art of Mitsui2, Furakawa3, Hitachi4, and Chemicalland.5 We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). 1 US 2006/0142405 Al, pub. Jun. 29, 2006. 2 JP 55-123630, pub. Sep. 24, 1980 (English abstract). 3 JP 50-076177 A, pub. Nov. 10, 1973 (English abstract). 4 JP 54-126273 A, pub. Oct. 1, 1979 (English abstract). 5 http://chemicalland2l.com/specialtychemlperchemlp- QUINONE%20DIOXIME.htm Appeal 2012-011411 Application 12/071,653 Upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of evidence on this record supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art6. We determine that, after consideration of all of the evidence of record, including the evidence in the Specification regarding unexpected results, that the evidence of record tending to establish the obviousness of the claimed subject matter outweighs any evidence of record that may tend to indicate the non- obviousness thereof (Br.; Ans. generally; no Reply Brief has been filed). Accordingly, we sustain the above rejections based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Answer. We add the following for emphasis. It is well established that a reference is not limited to its examples or preferred embodiments; 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). 6 Appellants arguments mainly focus on claim 1 (Br. 8-21 ). To the extent the feature of dependent claim 7 has been pointed out (Br. 21 ), this is considered to be nothing more than a general allegation of patentability and is not considered a separate patentability argument. See 37 C.F.R. Â§ 41.37(c)(l)(vii) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). 2 Appeal 2012-011411 Application 12/071,653 As pointed out by the Examiner, Kijima expressly lists both of the claimed cross-linking agents for use in making an ethylene-propylene-diene rubber foamed material, and states that these agents may be used in combinations of two or more (Ans. 5; Kijima para [0038]). Appellants have not provided any persuasive technical reasoning or evidence that an artisan would not have, using no more than ordinary creativity, used these two known cross-linking agents together to yield predictable results (see, e.g., Ans. 5-7). See KSR, 550 U.S. at 415-16 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F .2d 1077, 1080 (CCP A 1972). "[A ]ny superior property must be unexpected to be considered as evidence of non=obviousness." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (2007). For the reasons pointed out by the Examiner, a preponderance of the evidence supports that the alleged unexpected properties would have been expected (see, e.g., Ans. 13, 14). We further note that the Specification does not describe the results as "unexpected". Further, it is well established that the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-331 (Fed. Cir. 2003). As explained by the Examiner, the Specification examples/evidence relied upon does not exemplify rubber compositions that are commensurate in scope with the claims (see, e.g., Ans. 14). 3 Appeal 2012-011411 Application 12/071,653 Thus, the Examiner's position that the Specification examples fail to evince unexpected results from the recited combination of components is supported by a preponderance of the evidence. The facts and law support the position of the Examiner. In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) ("[e]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness"). Here, the case of obviousness is so strong that Appellants' alleged unexpected results are ultimately insufficient (see also, e.g., Ans. 15). 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. Â§ l.136(a). AFFIRMED tc 4