Ex Parte Takehara et al

Patent Trial and Appeal Board

Oct 24, 2018

14392152 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/392,152 12/23/2015
115727 7590 10/26/2018
Banner & Witcoff, LTD.
& attorneys for client no 007936
1100 13th Street NW
Suite 1200
Washington, DC 20005
FIRST NAMED INVENTOR
Tsuyoshi Takehara
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.
036777.00162 8158
EXAMINER
REESE, ROBERT T
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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):
PT0-115727@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUYOSHI TAKEHARA, MANABU MITSUTOMI,
YOSHIHITO NOBORIKA WA, and YUSUKE SUZUMEGANO
Appeal2018-000778
Application 14/392, 152
Technology Center 3600
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and LISA M. GUIJT,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over Mori
(US 2010/0167860 Al, pub. July 1, 2010) and Hayashi (US 2001/0029216
Al, pub. Oct. 11, 2001). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Mitsuboshi Belting, Ltd. is the Applicant and real party in interest. Appeal
Br. 2.
Appeal 2018-000778
Application 14/392, 152
THE INVENTION
Appellants' invention relates to power transmission belts. Spec. ,r 1.
Claim 1, reproduced below with paragraph indentation added, is illustrative
of the subject matter on appeal.
1. A power transmission belt comprising
a frictional power transmission part and
a fiber member that covers a surface of the frictional power
transmission part,
wherein the fiber member includes a main body formed of
a fiber (A) comprising a water-absorbent fiber (Al) and
a surfactant attached to the main body.
OPINION
Appellants argue independent claims 1 and 16 together and do not
raise arguments for the separate patentability of dependent claims 2-15, 17,
and 18. Appeal Br. 3-10. We select claim 1 as representative. See 37
C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Mori discloses the invention substantially as
claimed except for the surfactant, for which the Examiner relies on Hayashi.
Final Action 3. The Examiner concludes that it would have been obvious to
a person of ordinary skill in the art at the time the invention was made to
modify the power transmission belt of Mori with a surfactant as taught by
Hayashi. Id. According to the Examiner, a person of ordinary skill in the art
would have done this to reduce the noise level of the transmission belt while
it is in operation. Id.
Appellants, under subheading "A," argue that a person of ordinary
skill in the art would not have combined the teachings of Mori and Hayashi
as proposed in the Final Action because the two references present opposing
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Application 14/392, 152
principles of operation. Appeal Br. 4. Specifically, Appellants argue that
Mori discloses stabilization of the coefficient of friction of the rib surface
whereas Hayashi describes destabilization of the coefficient of friction.
Appeal Br. 6.
Next, under subheading "B," Appellants argue that a person of
ordinary skill in the art reading both Mori and Hayashi would understand to
use a surface-active layer instead of a fabric layer. Id. at 7. Appellants
contend that the references teach away from using both a fabric layer and a
surfactant. Id.
Next, under subheading "C," Appellants argue that the proposed
combination would not result in coating the fabric layer of Mori with a
surfactant. Appeal Br. 8. Appellants argue that Hayashi teaches using a
surfactant on rib rubber layer, but does not teach or suggest using a
surfactant on a fabric layer. Id. at 8-9. "Persons of ordinary skill would not
have expected, however, that a fiber member would exhibit the same surface
properties as that of a rubber layer." Id. at 9.
Finally, under subheading "D," Appellants argue that the proposed
combination would render Hayashi unsuitable for its intended purpose. Id.
at 9. "Since the stated purpose of the surfactant in Hayashi is to suppress
tackiness of the anticorrosion paint on the pulley, the proposed modification
would render the surfactant unsuitable for its intended purpose." Id.
In response to Appellants' subheading "A" arguments, the Examiner
disagrees with Appellants' underlying premise that Mori and Hayashi
relying on opposing principles of operation. Ans. 3. The Examiner notes
that Appellants' argument is unsupported by evidence. Id.
Thus, counter to the Appellant's contention ... the
Appellant has not demonstrated that the Mori and Hayashi
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Application 14/392, 152
references rely on opposing principles of operation with regard
to noise suppression. Appellant has not established the link
between the coefficient of friction stability and noise, and has
not shown that the two references have opposite technical
principles of operation.
Id. The Examiner states that Mori's teaching regarding coefficient of
friction is mainly a factor to be considered in choosing a durable material.
Id.
With respect to the subheading "B" or "teaching away" argument, the
Examiner states that Mori teaches a belt with a fiber member cover and that
Hayashi teaches the use of a surfactant on the exterior of the belt. Id. at 4.
The Examiner states Hayashi never teaches away from using a surfactant on
a fabric cover. Id.
Regarding subheading "C," the Examiner states that, contrary to
Appellants' argument, the rejection is based on applying Hayashi's
surfactant layer to the exterior of Mori's belt. Id. According to the
Examiner, this would result in the surfactant being placed on the fiber
member, which meets the claimed limitations.
With respect to Appellants' subheading "D" or "unsuitable for its
intended use" argument, the Examiner states that Appellants' argument
mischaracterizes the Examiner's proposed combination, which entails
applying the surfactant to the exterior of Mori's belt. Id. at 5.
In reply, Appellants direct our attention to paragraph 5 of Hayashi and
argue that the "material" referenced therein would be understood as referring
to a cover fabric. Reply Br. 2. Appellants then argue that the "conventional
measure" referenced in paragraph 5 of Hayashi reduces the coefficient of
friction and "thus suppresses generation of an abnormal sound." Id.
Appellants argue that Mori acknowledges that, in prior art belts, the
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Application 14/392, 152
coefficient of friction tends to increase with use and thus increases the
production of noise. Id. Appellants argue that:
By improving durability of the woven or knitted fabric, Mori
seeks to stabilize-rather than reduce-the coefficient of friction to
prevent noise generation. See Mori, ,r [0044]. Given these
divergent technical approaches, it would be illogical for the
skilled person to combine Mori and Hayashi as proposed.
Id. Finally, Appellants reiterate their Appeal Brief "teaching away"
argument based on their interpretation that Hayashi paragraph 5 refers to a
belt with a cover fabric. Id. at 3.
Mori is directed a V-ribbed belt that includes a ribbed surface covered
with a fabric. Mori, Abstract. Mori discloses that, with conventional belts,
the rib surface is vulnerable to wear. Id. ,r 4. Mori notes that, with
conventional belts, the coefficient of friction tends to increase with use
which in tum leads to an increase in noise production. Id. Mori is directed
to improving the durability of the rib surface of the belt to prolong the
"desired condition" of the rib surface. Id. ,r 5. Mori's improvement to
conventional belts is covering the rib surface with a fabric. Id. ,r 6. Mori
reports reduced noise levels in test results, including test conditions where
water is applied to the belt. Mori ,r,r 64--70.
Hayashi is directed to a frictional transmission belt. Hayashi,
Abstract. A surface-active layer is formed on the belt ribs. Id. Hayashi
discloses that generation of abnormal sound due to stick slip is suppressed
without impairing the belt transmission capability. Id. Hayashi recognizes
that, when "conventional" material is used to reduce the coefficient of
friction in order to reduce noise, such can result in an undesirable
deterioration in transmission capability of the belt. Id. ,r,r 5-6.
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Appellants' subheading "A" argument is not persuasive. Hayashi uses
a surfactant to reduce the coefficient of static friction between the belt and
anticorrosion paint coating on the pulleys. Hayashi ,r 8. Hayashi notes,
however, that the coefficient of kinetic friction is substantially maintained.
Id. Mori notes that, with respect to conventional belts: "the coefficient of
friction tends to increase with use and this may increase the production of
noise." Mori ,r 4. Thus, Mori prevents noise levels from increasing by using
a durable material that postpones an increase in the coefficient of friction.
Thus, both Mori and Hayashi acknowledge a corresponding
relationship between the coefficient of friction and noise such that increasing
the coefficient of friction increases the noise level. Contrary to Appellants'
argument, we view the teachings of Mori and Hayashi to be consonant,
rather than dissonant, on this point.
With respect to the subheading "B" argument, we do not agree with
Appellants that Hayashi teaches away from the use of fabric covered belts.
In the first instance, it is not at all clear that the "material effective in
reducing the coefficient of friction" is the fabric material taught by Mori. In
the second instance, Hayashi teaches that its surfactant maintains the
coefficient of kinetic friction. Hayashi ,r 8. A person of ordinary skill in the
art familiar with Mori would realize that fabric covered belts yield
acceptable transmission delivery performance, even if somewhat inferior to
other belts. See In re Mouttet, 686 F.3d 1322, 1334 (Fed.Cir.2012) (just
because better alternatives" may exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes). Furthermore,
Where the prior art contains "apparently conflicting" teachings
(i.e., where some references teach the combination and others
teach away from it) each reference must be considered "for its
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Application 14/392, 152
power to suggest solutions to an artisan of ordinary skill
consider[ ing] the degree to which one reference might
accurately discredit another."
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006),
quoting In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). As Mori
affirmatively teaches that fabric covered belts yield acceptable transmission
delivery performance and Hayashi teaches that its surfactant maintains the
coefficient of kinetic friction, we see no reason why a person of ordinary
skill in the art would be discouraged from using a surfactant with Mori.
Appellants' subheading "C" argument is not persuasive. Hayashi' s
surfactant is interposed at the point of contact between the belt and the
pulley. Hayashi, Fig. 1. The Examiner's proposed combination merely
changes the nature of the material on the exterior of the belt to which the
surfactant is applied.
Appellants' subheading "D" argument is not persuasive. Although it
may be true that Hayashi's surfactant is primarily used to combat the
"tackiness" of anticorrosion, which tackiness is produced by increasing heat
with the running of the belt (Hayashi ,r,r 4, 7, 8, 10), it is also well known
that surfactants generally reduce the surface tension of a liquid in which it is
dissolved. "Common sense teaches ... that familiar items may have
obvious uses beyond their primary purposes." KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007). Thus, "[a] reference may be read for all that it
teaches, including uses beyond its primary purpose." In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012), citingKSR, at418--42I. Here, itis
enough that the prior art teaches that use of a surfactant can reduce the noise
generated by a power transmission belt. This is sufficient to suggest that
making the modification proposed by the Examiner would have been
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Application 14/392, 152
accompanied by a reasonable expectation of success. "For obviousness
under§ 103, all that is required is a reasonable expectation of success." In
re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988); see also Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) ("the expectation of
success need only be reasonable, not absolute").
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of
claims 1-18.
DECISION
The decision of the Examiner to reject claims 1-18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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