Cabot Corporation

Patent Trials and Appeals Board

Sep 29, 2021

2021003236 (P.T.A.B. Sep. 29, 2021)

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.
15/744,313 01/12/2018 Jincheng Xiong 2014909 (3600-628) 6605
95360 7590 09/29/2021
Cabot Corporation/ LAK
Cabot Corporation, Law Department
157 Concord Road
Billerica, MA 01821
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
09/29/2021 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):
iplaw@cabotcorp.com
lkilyk@kbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINCHENG XIONG, MARTIN C. GREEN, WILLIAM R.
WILLIAMS, DMITRY FOMITCHE, GERALD D. ADLER,
DUANE G. McDONALD, and RON GROSZ
Appeal 2021-003236
Application 15/744,313
Technology Center 1700

Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision (Final Act. II3) finally rejecting claims 1, 2, 4–10, 13, 18, 20, 21,

1 The following documents are of record: Specification filed Jan. 12, 2018
(“Spec.”); Final Office Action dated Feb. 24, 2020 (“Final Act. I”);
Declaration of Michael D. Morris entered July 24, 2020 (“Decl.”); Final
Office Action dated Aug. 11, 2020 (“Final Act. II”); Appeal Brief filed Jan.
12, 2021(“Appeal Br.”), citations to pages 24–26 being to the Claims
Appendix; Examiner’s Answer dated Mar. 10, 2021 (“Ans.”); and Reply
Brief filed Apr. 20, 2021 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Cabot Corporation. Appeal
Br. 3.
3 In discussing the Examiner’s rejection, we cite primarily to Final Act. I,
which Final Act. II incorporates by reference.
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24, 27, 28, and 60 under 35 U.S.C. § 103 as unpatentable over Jiang (US
2008/0194746 A1, pub. Aug. 14, 2008).4 A telephonic hearing was held on
September 21, 2021.
We affirm in part.
CLAIMED SUBJECT MATTER
The invention relates to silica reinforced elastomer composites. Spec.
¶ 1. The composites may be used, for example, in vehicle tires. Id. ¶ 2.
Independent claims 1, 18, and 27 are illustrative of the claimed subject
matter:
1. A vulcanizable elastomer composite comprising at least
40 phr of silica dispersed in natural rubber, wherein, when the
vulcanizable elastomer composite is vulcanized, the resulting
vulcanizate exhibits a ratio T300/T100 of at least -0.024s + b,
wherein s is the amount of silica in the vulcanizable elastomer
composite expressed as parts per hundred weight of rubber
(phr) and b is 6.3 to 6.8, and has properties
a. a tan delta 60 of at most 0.0022s − c, wherein c is
0.06; and
b. a tensile strength in MPa of at least -0.21s + d, wherein
d is 41 to 41.4; and
optionally
c. elongation at break(%) * tensile strength (MPa) of at
least -211s +e, where e = 27543.
18. A vulcanizable elastomer composite comprising at least
40 phr of silica dispersed in natural rubber, wherein when the
vulcanizable elastomer composite is vulcanized, it has a ratio
T300/T100 of at least -0.025s + 6.2, and having a swell index of
about 1.80 to about 2.20 wherein s is the amount of silica in the

4 We have jurisdiction under 35 U.S.C. § 6(b).
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vulcanizable elastomer composite expressed as parts per
hundred weight of rubber (phr).
27. A vulcanizable elastomer composite comprising silica
dispersed in natural rubber, wherein, when the vulcanizable
elastomer composite is vulcanized, the resulting vulcanizate
exhibits a ratio T300/T100 of at least 5.5 and a tan delta 60 of
at most 0.05 and having a swell index of about 1.80 to about
2.20.
Appeal Br. 24–26 (emphases added).

OPINION
The Appellant separately argues the patentability of independent
claims 1, 18, and 27, as well as dependent claim 5. See generally Appeal Br.
7–23. The Appellant’s arguments raise the following issue as to independent
claims 1 and 27: Does a preponderance of the evidence favor the Examiner’s
finding that the ordinary artisan would have sought to improve the rolling
resistance of Jiang’s composition by reducing the silica content to a level
satisfying the claim 1 and claim 27 tan delta 60 requirements while also
having a reasonable expectation of success in maintaining all other
composition properties recited in claim 1 and claim 27? See Final Act. I 2–4.
We answer this question in the negative for the reasons discussed below,
and, therefore, do not sustain the rejection of claims 1 and 27 and their
dependent claims.
The Examiner found that claim 1 reads on Jiang’s Example 4 rubber
composition except that the composition has a tan delta 60 of .078 which is
higher than the claim requirement of “at most 0.0022s ₋ c” where c is 0.06
and s is the amount of silica. Final Act. I 2 (determining that claim 1 requires
a tan delta 60 of at most 0.068 when silica content is 58 phr, as in Jiang’s
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Example 4 rubber composition). The Examiner found that “Jiang teaches
that a smaller tan delta 60 indicates better rolling resistance,” and reasoned
that the ordinary artisan seeking to improve rolling resistance would have
adjusted the Example 4 composition’s silica content to obtain a lower tan
delta 60 within the claim 1 range. Id. at 3 (citing Jiang ¶ 112). Based on the
same reasoning, the Examiner found that the ordinary artisan would have
adjusted the Jiang Example 4 composition’s silica content to obtain a tan
delta of “at most 0.05” as recited in claim 27. Id. at 4.
The Appellant argues that the ordinary artisan would not have
expected that the Jiang Example 4 composition’s tan delta 60 could be
predictably reduced by merely adjusting silica content and without
significantly affecting other composition properties. See Appeal Br. 13. The
Appellant references Jiang’s Examples and Comparative Examples as
evidence that Jiang “provides no insight on how changing the silica amount
would change the tan delta 60 or alter other properties of the rubber
composition.” Id. The Appellant points out that Jiang’s Comparative
Examples 2–4 and Examples 2–5 include substantially the same amounts of
silica (see Jiang Table 1), yet the tan delta 60 values vary from a low of
0.078 to a high of 0.182 (see Jiang Table 4). See Appeal Br. 13. The
Appellant also relies on the declaration testimony of Dr. Morris5 as evidence
that the ordinary artisan would not have reasonably expected that the tan
delta 60 of Jiang’s compositions could be predictably reduced by adjusting

5 The Examiner has not questioned Dr. Morris’s qualifications. Based on the
testimony in Declaration paragraphs 1–3, we find that Dr. Morris is an
expert in the field of particulate reinforcement of rubber and qualified to
testify as to the level of ordinary skill in the art at the time of the invention.
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silica content and without significantly impacting other composition
properties. See Appeal Br. 13–16.
In response, the Examiner uses the Appellant’s claim 1 equation to
calculate a tan delta 60 of 0.079 for a composition containing 63 phr silica.
Ans. 6. The Examiner finds that the 5 phr difference between 63 phr and the
58 phr silica used in Jiang’s Example 4 composition is a minor amount, and
it would have been within the ordinary artisan’s skill level to make such
adjustment to the Example 4 composition with only minor effects on other
properties. See Ans. 6–7. The Examiner finds that, because only a minor
adjustment to the Example 4 composition would have been required to
achieve a tan delta 60 as claimed, Dr. Morris’s testimony is not persuasive
even though “the declaration illustrates that different rubber formulations
and different silicas provide different targeted tan delta and therefore [are]
not generally predictable.” Ans. 7; see also Final Act. II 7.
We agree with the Appellant that a preponderance of the evidence
does not support the Examiner’s finding that only a minor adjustment to the
Jiang’s Example 4 composition’s silica content would have been required to
achieve a tan delta 60 as recited in claims 1 and 27. As explained by the
Appellant, the Examiner’s finding that the addition of 5 phr silica to Jiang’s
composition would achieve a tan delta 60 value within the claimed ranges is
based on the Appellant’s claim 1 formula, which “does not control what the
tan delta 60 will be in [Jiang’s] examples when there is a phr change . . . . As
Table 4 of Jiang et al. shows, even when the phr is the same in multiple
examples, the tan delta 60 can be very different from sample to sample.”
Reply Br. 5. The Examiner’s determination that Dr. Morris’s testimony is
unpersuasive is likewise based on an unsupported finding that only a minor
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adjustment to Jiang’s Example 4 composition would have been required to
achieve a tan delta 60 as claimed. Having reviewed the Declaration, we
agree with the Appellant that Dr. Morris’s testimony and references cited
therein are persuasive evidence that adjusting the Jiang Example 4
composition’s silica content would not have led to a predictable tan delta 60
value. See Appeal Br. 14–16 (discussing the Morris Declaration).
In sum, we determine that a preponderance of the evidence does not
support the Examiner’s finding that the ordinary artisan would have sought
to improve the rolling resistance of Jiang’s composition by reducing the
silica content to a level satisfying the claim 1 and claim 27 tan delta 60
requirements, and had a reasonable expectation of success in maintaining all
other composition properties recited in claim 1 and claim 27. Accordingly,
we reverse the rejection of independent claims 1 and 27 and their respective
dependent claims 2, 4–10, 13, 28, and 60.
As to the remaining appealed claims—claims 18, 20, 21, and 24—we
consider the following issue: Has the Appellant identified reversible error in
the Examiner’s finding that modifying Jiang’s Example 4 composition to
achieve the claim 18 “swell index of about 1.80 to about 2.20” would have
been a matter of routine optimization? See Final Act. I 3. We answer this
question in the negative for the reasons discussed below.
The Examiner determined that achieving the claimed swell index
would have been a matter of routine optimization based on Specification
paragraph 97, which indicates that at the time of the invention, the ordinary
artisan was aware that swell index is representative of the crosslinking
amount from the vulcanization process. Ans. 9. The Examiner further found
that the ordinary artisan would have possessed the requisite skills to control
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the amount of crosslinking/vulcanization. Id.; see Spec. ¶ 97 (“One of skill
in the art will recognize that the swell index may be adjusted by the choice
of accelerator, the amount of accelerator and sulfur, the vulcanization time,
and the ratio of accelerator and sulfur.”). The Appellant has not provided
persuasive argument or evidence to refute this finding. See Appeal Br. 16
(“[T]he Examiner states that in order to overcome the ‘prior art’ rejection, it
is suggested to show criticality for the claimed combination of properties by
providing data showing that reducing silica negatively and significantly
affects the other properties of T300/T100, tensile strength, elongation at
break, and swell ratio. The [A]ppellant submits that the Morris Declaration
already provides data showing that reducing the amount of silica can
negatively and significantly affect tensile strength.” (emphasis added)); id. at
19 (“The Examiner has not provided any evidence that would address how
to control swell index in general and what to do precisely to achieve the
recited swell index of 1.80 to 2.20.”); Reply Br. 7 (The Examiner “cites In re
Boesch for support arguing an optimum value of a result effective variable in
a known process is within the skill of the art. However, all of the claims on
appeal are product claims and not process claims. Thus, the reasoning for
maintaining the rejection of claim 10 and similar claims is incorrect.”
(emphasis omitted)).
In sum, because the Appellant has not identified error in the
Examiner’s obviousness determination as to claim 18, we sustain the
rejection of independent claim 18 and its dependent claims 20, 21, and 24.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 2, 4–10,
13, 18, 20,
21, 24, 27,
28, 60
103 Jiang 18, 20, 21,
24
1, 2, 4–10,
13, 27, 28,
60
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART