Ex Parte Ajbani et al

Board of Patent Appeals and Interferences

Mar 31, 2006

10285801 (B.P.A.I. Mar. 31, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MANOJ AJBANI, CHRISTOPHER KIEHL,
BRUCE RAYMOND HAHN and KEVIN JAMES PYLE
____________

Appeal No. 2006-0494
Application No. 10/285,801
____________

ON BRIEF
____________

Before KRATZ, JEFFREY T. SMITH and FRANKLIN, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-14.
BACKGROUND
Appellants' invention relates to a tread supporting ring
comprising a sulfur cured rubber composition. An understanding
of the invention can be derived from a reading of exemplary claim
1, which is reproduced below.

Appeal No. 2006-0494
Application No. 10/285,801

Παγε 2
1. A tread supporting ring for use with a rim for a tire
having two beads comprising a sulfur cured rubber composition
composed of:

(A) 65 to 95 parts by weight per 100 parts by weight of
rubber (phr) of a first rubber containing olefinic unsaturation;

(B) 5 to 35 phr of a rubber having nylon side chains grafted
thereto, and

(C) 1 to 40 phr of at least one nylon.

In addition to alleged admitted prior art, the prior art
references of record relied upon by the examiner in rejecting the
appealed claims are:
Pyke et al. (Pyke) 4,996,263 Feb. 26, 1991
Burlett et al. (Burlet) 5,268,134 Dec. 07, 1993
Masson et al. (Masson) 6,667,361 Dec. 23, 2003
(filed Jan. 12, 2001)

Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Masson in view of Pyke and Burlett. Claims 1-
14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 3

over the admitted prior art at page 1, lines 10-17 of appellants’
specification in view of Pyke and Burlett.1

1 Appellants maintain that the sentence beginning on line 17 of specification page
1 and continuing on through line 19 thereof is not acknowledged as prior art (brief,
pages 7 and 8) and the examiner has seemingly accepted that limitation on what may
be regarded as admitted prior art at page 1 of the specification. See page 12 of the
examiner’s answer. Thus, the examiner’s reference to lines 10-19 of appellants’
specification as representing admitted prior at page 8 of the answer is considered to
include an incorrect citation in that the record reflects that the prior art acknowledgment
of appellants does not extend to the end of line 19 but rather ends at the end of the
sentence concluding on line 17 of that specification page. We have corrected that
obvious error in our reporting of the examiner’s second stated obviousness rejection
herein.
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 4
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we determine that the
examiner’s obviousness rejections are well founded and that
appellants’ arguments are not persuasive in rebuttal. It follows
that, on this record, we will sustain the examiner’s rejections.
Our reasoning follows.
At the outset, we note that appellants argue the claims as a
group with respect to both rejections before us. Thus, we select
claim 1 as the representative claim on which we shall decide this
appeal.
Rejection over Masson, Pyke and Burlett
Appellants do not dispute that Masson discloses a sulfur
cured rubber tread support corresponding to the claimed tread
support ring but for the claim 1 requirements for the use of a
rubber having nylon side chains grafted thereon, and at least one
nylon as part of the sulfur cured rubber used in forming the
tread support. In this regard, Masson (column 1, lines 55-65)
discloses that the rubber composition used in forming the support
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 5
can include greater than or equal than 60 phr of a natural rubber
or synthetic polyisoprene and filler materials. One or more
rubbers are disclosed as being useful in the rubber composition
of Masson, such as a blend of polybutadiene and natural rubber.
See column 2, line 53 through column 3, line 19 of Mason. Masson
also makes it abundantly clear that stiffness and reduced mass
are desired properties of the support element and rubber
composition from which it is made. See, e.g., column 10, lines
25-42 and column 6, lines 54-57 of Masson.
Concerning the representative claim 1 requirements for nylon
and a rubber having nylon side chains grafted thereto as being
component parts of the rubber composition used in a tread
support, the examiner acknowledges that Masson does not disclose
grafting nylon onto the diene elastomer component thereof. Thus,
the examiner turns to Pyke. In this regard, Pyke discloses that
the grafting of nylon chains to rubber results in formulating
rubbers wherein increased stiffness (and modulus) properties are
obtained, which may be useful in applications where such
properties are desirable. Pike (column 1, lines 5-43) suggests
that the use of that grafting technique can reduce the need for
large amounts of fillers, which are employed to increase
stiffness.
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 6
Given the above teachings of Masson and Pike, the examiner
has reasonably determined that it would have been obvious to one
of ordinary skill in the art at the time of the invention to
employ nylon grafting, as taught by Pyke, in forming one of the
component rubbers used in the rubber composition of Masson.
Concerning the additional claim requirement for the inclusion of
nylon in the rubber composition, the examiner notes that some of
the nylon used in grafting, as taught by Pyke, will remain
unreacted given viscosity differences in those materials, a
phenomena discussed in Burlett with regard to grafting
thermoplastics (including nylon) side chains onto rubber (column
3, lines 30-45).
Further concerning the relative amounts of ungrafted and
grafted rubber as broadly called for in representative claim 1,
the examiner explains (answer, page 5) that one of ordinary skill
in the art following the teachings of Masson in combination with
Pyke would have readily arrived at amounts within the claimed
range. We agree. See In re Aller, 220 F.2d 454, 456, 105 USPQ
233, 235 (CCPA 1955)(“[W]here the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover
the optimum or workable ranges by routine experimentation.”).
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 7
In light of the above, we are not persuaded by appellants’
contentions suggesting that the examiner employed impermissible
hindsight in combining Masson and Pyke. In particular,
appellants (brief, page 6) contend that the examiner’s stated
combination of Masson and Pyke “is utterly devoid of support by
the applied references and therefore is conjectural at best.”
Moreover, appellants assert that “Pyke does not teach or suggest
to one skilled in the art that such a composition may be used
specifically in a support ring” (brief, pages 6 and 7). However,
as stated above and in the answer, Masson clearly teaches the use
of a composition including a natural rubber and a synthetic
elastomer, such as a polybutadiene, together with filler material
for making tread supporting ring, as claimed. Moreover, Masson
teaches that stiffness and reduced mass are desired properties.
Pyke suggests that nylon grafted dienes, such as polybutadiene,
have increased stiffness properties without sacrificing other
desirable characteristics of the rubber while reducing the need
for large amounts of fillers. See, e.g., column 1, line 5
through column 2, line 19 of Pyke. Thus, there is ample support
in Pyke and Masson to suggest the proposed combination of the
examiner with a reasonable expectation of success in so doing.
In addition, appellants comments concerning Pyke, as if applied
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 8

alone, miss the mark in failing to address why the collective
teachings of Masson, which appellants acknowledge as teaching a
rubber composition in forming a support ring (paragraph bridging
pages 2 and 3 of the brief), together with Pyke’s teachings
concerning nylon grafted rubbers having properties that Masson
also desires for a support ring, would not have led one of
ordinary skill in the art to the claimed subject matter for the
reasons stated above and in the answer.2

2 We note that appellants do not contest the examiner’s obviousness
determination as to the nylon component and the teachings of Burlett relative thereto.
Nor do appellants contend that the examiner erred in determining that the claimed
amounts of the rubbers and nylon would have been within the skill of the art from the
applied references teachings. Rather, appellants base their opposition to the
examiner’s obviousness determination on an alleged lack of suggestion to combine
Masson and Pyke.
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 9
As a final point, we note that appellants base no arguments
on unexpected results for the claimed subject matter.
Accordingly, we shall affirm the examiner’s obviousness rejection
over Masson, Pyke and Burlett, on this record.

Rejection over admitted prior art, Pyke and Burlett
As acknowledged at page 8 of the brief, appellants base
there arguments against the examiner’s second stated obviousness
rejection over the admitted prior at, Pyke and Burlett on the
same basis as they argued against the combination of Masson, Pyke
and Burlett, as discussed above. In this regard, we note that
Appellants acknowledge that the relied upon admitted prior art
discloses vulcanized rubber support rings and the disadvantages
of higher filler loadings. Given the teachings of Pyke and
Burlett as discussed above, appellants presentation of the same
arguments here are also found unpersuasive of error in the
examiner’s second obviousness rejection. Thus, we shall also
affirm the examiner’s obviousness rejection over the admitted
prior art, Pyke and Burlett, the latter rejection having been
argued on the same unpersuasive basis as the first stated
rejection.
CONCLUSION
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 10
The decision of the examiner to reject claims 1-14 under
35 U.S.C. § 103(a) as being unpatentable over Masson in view of
Pyke and Burlett; and to reject claims 1-14 under 35 U.S.C.
§ 103(a) as being unpatentable over the admitted prior art at
page 1, lines 10-17 of appellants’ specification in view of Pyke
and Burlett is affirmed.
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 11
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1).
AFFIRMED

PETER F. KRATZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY T. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )

PFK/rwk
Appeal No. 2006-0494
Application No. 10/285,801

Παγε 12
THE GOODYEAR TIRE & RUBBER COMPANY
INTELLECTUAL PROPERTY DEPARTMENT 823
1144 EAST MARKET STR ET E
AKRON, OH 44316-0001
Comment [jvn1]: Type address