Takeshi Nishiyama et al.

Patent Trials and Appeals Board

Sep 26, 2019

14396788 - (D) (P.T.A.B. Sep. 26, 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.
14/396,788 10/24/2014 Takeshi Nishiyama MIT00650P10150US 7511
32116 7590 09/26/2019
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
EXAMINER
THOMPSON, CAMIE S
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
docketing@woodphillips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKESHI NISHIYAMA,
SUSUMU TAKABA, and HISATO ISHIGURO
____________

Appeal 2019-000340
Application 14/396,788
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1–7 of Application 14/396,788
under 35 U.S.C. § 103(a) as obvious. Final Act. 1, 2 (Mar. 1, 2017).
Appellant1 seeks reversal of the rejection pursuant to 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.

1 Mitsuboshi Belting Ltd., is identified as the applicant and the real party in
interest. Appeal Br. 1.
Appeal 2019-000340
Application 14/396,788
2
BACKGROUND
The ’788 Application describes a transmission belt, such as a V-belt, a
V-ribbed belt, or a flat belt. See Spec. ¶ 1; Figs. 1, 2.
Claim 1 is representative of the ’788 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief (emphasis
added):
1. A transmission belt comprising a core wire extending in a
lengthwise direction of the belt, an adhesive rubber layer in
contact with at least a part of the core wire, a back surface
rubber layer formed on one surface of the adhesive rubber
layer, and an inner surface rubber layer formed on the other
surface of the adhesive rubber layer and engaging or in contact
with a pulley,
wherein the adhesive rubber layer is formed by a
vulcanized rubber composition comprising a rubber component,
a fatty acid amide and a silica.
Appeal Br. 15 (Claims App.).
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1–7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sueto2 and Shibuya.3
Final Act. 2; Answer 3.

2 US 2008/0286529 A1, published Nov. 20, 2008.
3 JP 2012-041973 A, published Mar. 1, 2012. We rely upon a translation that
is of record in the ’788 Application.
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Application 14/396,788
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DISCUSSION
Appellant argues for the reversal of the obviousness rejection of
claims 1–7 on the basis of limitations present in independent claim 1 and
dependent claims 2–7. See generally Appeal Br. 3–14; Reply Br. 1–7. For
the reasons set forth below, we need only discuss claim 1.
The patent examiner bears the initial burden of establishing a prima
facie case that an application’s claims would have been obvious based upon
what was known in the prior art. In re Dillon, 919 F.2d 688, 701 (Fed. Cir.
1990). Here, the Examiner relied on Sueto, which discloses a power
transmission belt in the form of a V-belt to reject claim 1. Final Act. 2
(citing Sueto ¶¶ 20, 39, 41, 52, 53). The Examiner found Sueto teaches that
rubber adhesive layer 34 comprises a vulcanized rubber composition, which
further comprises silica and a fatty acid derivative processing aid. Id. at 2–3
(citing Sueto ¶¶ 23, 41, 44, 45). According to the Examiner, Sueto describes
each limitation of the claim, but does not teach or suggest that the fatty acid
derivative processing aid in rubber adhesive layer 34 is a fatty acid amide.
Id.
Appeal 2019-000340
Application 14/396,788
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The Examiner, however, relied on Figure 1 of Shibuya, which is
reproduced below.

Figure 1 depicts adhesion rubber layer 11, compression rubber layer
12, and cord 16. Shibuya ¶¶ 40, 42.
The Examiner found Shibuya teaches that the compression rubber
layer 12, which contacts a pulley, comprises “a fatty acid derivative such as
a fatty acid amide” blended with an ethylene-α-olefin elastomer. Final Act. 3
(citing Shibuya ¶ 28, Fig. 1). The Examiner further found Shibuya teaches
that the blended composition of compression rubber layer 12 “provides an
abnormal noise suppressing effect.” Id. at 3–4 (citing Shibuya ¶ 20). The
Examiner found Shibuya discloses that “adhesion rubber layer 11 and . . .
compression rubber layer 12 may be formed of the same rubber
composition.” Id. at 3 (citing Shibuya ¶ 40).
The Examiner determined that “one of ordinary skill in the art at the
time of the invention would [have] utilize[d] the rubber composition of
Shibuya[,] including a fatty acid amide in the adhesive layer of Sueto[,] for
the benefit of providing an enhanced abnormal noise suppressing effect.”
Final Act. 4.
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Appellant argues that the Examiner has failed to “provide a legally
supportable basis for modifying” Sueto’s rubber composition in the adhesive
layer to include a fatty acid therein. Appeal Br. 5. Appellant does not dispute
the Examiner’s finding that Shibuya’s compression layer 12, which includes
a fatty acid amide, provides enhanced suppression of abnormal noises
caused by contact of compression layer 12 with a pulley. Id. at 6. Appellant,
however, argues that “[t]he Examiner does not offer any evidence that
inclusion of the same composition in the adhesive layer—not situated to
contact a cooperating pulley like the compression section—would have any
noise suppressing effect whatsoever.” Id. at 7. Appellant, thus, concludes
that there would have been no reason or motivation for the ordinarily skilled
artisan to modify Sueto’s power transmission belt. Id.
In response, the Examiner argued that Shibuya’s disclosure would
have provided one of ordinary skill in the art the requisite motivation to
attain “a structural/performance advantage” afforded by the proposed
modification. Answer 7. In particular, the Examiner asserts “Shibuya
discloses that the inclusion of the fatty acid derivative to the rubber
composition for the adhesive layer in contact with the core wire provides an
abnormal noise suppressing effect.” Id. (citing Shibuya ¶ 20) (emphasis
added).
As Appellant persuasively argues, however, the Examiner relies upon
a passage that is silent with respect to any abnormal noise, which is caused
by Shibuya’s adhesive layer 11 contacting core wire 16. Reply Br. 2; see
Shibuya ¶ 20. We, furthermore, agree with Appellant that “Shibuya’s only
identified sound suppressing capability is attributable to the maintenance of
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Application 14/396,788
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a lubricating film on the surfaces of the [compression layer 12] belt that
engage[s] pulleys.” Id. at 3 (citing Shibuya ¶ 13).
On these facts, the Examiner reversibly erred in finding that Shibuya
blends a fatty acid derivative, such as a fatty acid amide, with the adhesive
layer’s rubber composition to provide an abnormal noise suppressing effect.
To the extent that the Examiner found that Shibuya’s adhesion rubber layer
11 and compression rubber layer 12 may be formed of the same rubber
composition, Final Act. 3, the Examiner has not provided a reasoned
explanation as to why the ordinarily skilled artisan would have been
motivated to modify Sueto’s rubber composition in the adhesive layer to
include a fatty acid derivative, such as a fatty acid amide, therein. See, e.g.,
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”).
In view of the foregoing, we reverse the Examiner’s rejection of
claims 1–7. 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
For the reasons set forth above, we reverse the § 103 rejection of
claims 1–7 of the ’788 Application.
REVERSED