Naoyuki Ohtani et al.

Patent Trials and Appeals BoardSep 3, 2019

15110481 - (D) (P.T.A.B. Sep. 3, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/110,481 07/08/2016 Naoyuki Ohtani P160530US00 1089 38834 7590 09/03/2019 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 Leesburg Pike SUITE 7500 Tysons, VA 22182 EXAMINER BOYLE, KARA BRADY ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NAOYUKI OHTANI, DAIKI MITA, and MUNETO NISHIMURA1 ____________ Appeal 2018-004318 Application 15/110,481 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies Taiki Corp., LTD as the applicant and the real party in interest. App. Br. 2. Appeal 2018-004318 Application 15/110,481 2 Appellant requests our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1–10. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on August 23, 2019. We reverse. STATEMENT OF THE CASE Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A rubber latex elastic foamed body, in which a rubber latex and sodium silicofluoride are used as raw materials, wherein the rubber latex elastic foamed body has an average radius of cellular foam of 10 to 100 μm, a bulk density of 0.10 to 0.20 g/cm3 and a stress of 0.1 to 1 N/cm2 at 50% compression. The Examiner relies on the following prior art references as evidence of unpatentability: Kaoru2 JP 09-084630 A Mar. 31, 1997 Nakamura3 JP 2004-250640 Sep. 9, 2004 THE REJECTION 1. Claims 1–10 are rejected under 35 U.S.C. § 103 as being unpatentable over Nakamura in view Kaoru. ANALYSIS We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte 2 We use the partial English translation of Kaoru made of record. 3 We use the machine-translated English equivalent of Nakamura made of record. Appeal 2018-004318 Application 15/110,481 3 Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal (including the Examiner’s Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellant identifies reversible error for the reasons stated in the record by Appellant. Thus, we reverse the Examiner’s rejection and add the following for emphasis. We agree with Appellant, for the reasons presented on pages 4–5 of the Appeal Brief and on pages 2–10 of the Reply Brief, that the Rule 132 Declaration submitted by Mr. Nishimura sufficiently rebuts the prima facie case of obviousness. A prima facie case of obviousness is rebuttable by proof that the claimed invention possesses unexpectedly advantageous or superior properties. In re Papesch, 315 F. 2d 381, 386–87 (CCPA 1963). Rebuttal evidence can be in the form of direct or indirect comparative testing between the claimed invention and the closet prior art. In re Merchant, 575 F.2d 865, 869 (CCPA 1978); In re Blondel, 499 F.2d 1311, 1317 (CCPA 1974); In re Swentzel, 219 F.2d 216, 220 (CCPA 1955). The testing conducted must be sufficient to permit a conclusion respecting the relative effectiveness of Appellant’s claimed invention and the invention of the closest prior art. In re Payne, 606 F.2d 303, 316 (CCPA 1979); In re Holiday, 585 F.2d 384, 386 (CCPA 1978); In re Merchant, 575 F.2d at 869 (CCPA 1976). Furthermore, to establish unexpected results for a claimed invention, objective evidence of non- obviousness must be commensurate in scope with the claims, which the evidence is offered to support. In re Clemens, 622 F. 2d 1029, 1035 (CCPA 1980); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Linder, 457 F.2d 506, 508 (CCPA 1972); In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). While the Examiner contends that the methodology used to collect the data demonstrating unexpected results is unclear and possibly biased, the Examiner has Appeal 2018-004318 Application 15/110,481 4 not directed us to any objective evidence in support of this contention. Further, Appellant asserts that professional panelists are used in evaluation of these products and such evaluations have been widely accepted in this industry and the USPTO. Reply Br. 9–10. Accordingly, we reverse the Examiner’s prior art rejection for the reasons the Appellant presents and the reasons we give above. DECISION The rejection is reversed. ORDER REVERSED