Ex Parte Amino et alDownload PDFPatent Trial and Appeal BoardSep 22, 201511832933 (P.T.A.B. Sep. 22, 2015) Copy Citation 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. 11/832,933 08/02/2007 Naoya Amino 21713-00077-US1 6991 30678 7590 09/22/2015 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP (DC OFFICE) 1875 EYE STREET, N.W. SUITE 1100 WASHINGTON, DC 20006 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 09/22/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte NAOYA AMINO, YOSHIHIRO KAMEDA, KAZUTO YAMAKAWA, and AKITOMO SATO ____________________ Appeal 2014-000499 Application 11/832,933 Technology Center 1700 ____________________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek review of the Examiner’s decision to reject claims 1 and 2. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). We AFFIRM. The claims are directed to a pneumatic tire using, as a tread part, a rubber composition including a hydroxyl-group end-modified solution polymerized styrene-butadiene copolymer (SBR), a filler F comprising silica and carbon black, and a softening agent S, wherein a difference between the amount of filler F and the amount of softening agent S (F-S) is 60 to 87 parts by weight, and the Appeal 2014-000499 Application 11/832,933 2 composition has a durometer hardness, measured at 20ºC, of 65 to 76 (see, e.g., claim 1). Appellants disclose that the demand for improving the wet performance of tires remains high, and that silica-containing compounds have been used to improve wet performance of tires, but techniques to further improve physical properties of high-silica content rubber compositions for tires are sought. Spec. p. 1, ll. 10–21. Appellants disclose ranges for the F-S difference and durometer hardness to achieve good wet performance of a tire while maintaining mixability/processability of the rubber composition and to provide sufficient block rigidity and traction for the tire. Spec. p. 2, l. 28 to p. 3, l. 24. Claim 1 is illustrative, with the limitations at issue italicized: 1. A pneumatic tire using, as a tread part, a rubber comprising a high silica-content rubber composition having a difference F-S between an amount of filler F and an amount of a softening agent S of 60 to 87 parts by weight and having a durometer hardness, measured at 20°C, of 65 to 76, wherein (i) the rubber comprises 100 to 30 parts by weight, based upon 100 parts of the rubber of a hydroxyl group end-modified solution polymerized styrene-butadiene copolymer (SBR) having (a) an aromatic vinyl content of 15 to 50% by weight, (b) a 1,2-vinyl bond content of a conjugated diene of 10 to 80% by weight and (c) a glass transition temperature of -50°C to -10°C; (ii) wherein the amount of the softening agent S is 0.1 to 15 parts by weight, based upon 100 parts by weight of the rubber; (iii) the filler F comprises silica and carbon black; (iv) the silica has a nitrogen adsorption specific surface area (BET method) of 50 m2/g to 400 m2/g; (v) the carbon black has a nitrogen adsorption specific surface area (BET method) of 50 m2/g to 180 m2/g and a dibutyl phthalate (DBP) adsorption of 60 ml/100 g to 150 ml/100 g; (vi) the softening agent S is selected from the group consisting of a rubber process oil, a low molecular weight polymer having a weight average molecular weight of 1000 to 100000, terpene resin, Appeal 2014-000499 Application 11/832,933 3 rosin, modified rosin, coumarone-indene resin, blown asphalt, polystyrene resin, C5-based petroleum resin and C9-based petroleum resin. Claims Appendix of the Appeal Br.1 1 (emphasis added). The claims on appeal stand rejected as follows: (1) Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Sandstrom2 in view of Admitted Prior Art (APA)3 and Scholl;4 and (2) Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Scholl in view of Steiner5 and/or Segatta,6 APA, and Sandstrom. OPINION 1. Obviousness Rejection of Claims 1 and 2 over Sandstrom, APA, and Scholl The Examiner finds Sandstrom discloses a tire tread component comprising a solution polymerized SBR, a process oil that functions as a softening agent, carbon black, and silica, with the SBR including hydroxyl groups at terminal ends. Final Act. 2. The Appellants argue Sandstrom does not disclose or suggest the use of hydroxyl group end-modified solution SBR having an aromatic vinyl content of 15 to 50 wt%, a 1,2-vinyl bond content of 10 to 80 wt%, and a glass transition temperature of -50ºC to -10ºC as the rubber component of a high silica-content rubber composition for a tread part of a pneumatic tire. Appeal Br. 7. The 1 Appeal Brief dated July 9, 2013. 2 Sandstrom et al., US 7,122,586 B2, issued Oct. 17, 2006. 3 At page 3 of the Final Action (Final Act.) dated Nov. 27, 2012 the Examiner identifies p. 3, ll. 25+ of the Appellants’ Specification as the Admitted Prior Art. 4 Scholl et al., US 6,252,008 B1, issued June 26, 2001. 5 Steiner et al., US 7,001,946 B2, issued Feb. 21, 2006. 6 Segatta et al., US 7,000,661 B2, issued Feb. 21, 2006. Appeal 2014-000499 Application 11/832,933 4 Appellants further argue that Sandstrom is silent with regard to an F-S difference of 60 to 87 parts by weight. Appeal Br. 5, 7. We are not persuaded by the Appellants’ argument because a preponderance of the evidence supports the finding of the Examiner. First, Appellants have not convinced us of a reversible error in the Examiner’s finding that Sandstrom teaches or suggests using a solution polymerized SBR including hydroxyl groups at terminal ends in a tire tread component. In column 5, lines 25–57, Sandstrom discloses that styrene/butadiene copolymers are examples of elastomers useful for a tire tread, which can be prepared by emulsion or organic solution polymerization, and that such elastomers may comprise functional groups “selected from at least one of terminal and/or pendant hydroxyl and carboxyl groups.” Therefore, Sandstrom provides a clear disclosure to one of ordinary skill in the art that hydroxyl group end-modified SBR can be used as an elastomer for a tire tread. With regard to the aromatic vinyl and 1,2-vinyl bond contents and glass transition temperature recited in claim 1, the Examiner finds these to be characteristics of SBR “consistent with conventional SBR rubbers used in tire treads, as shown for example by Scholl.” Final Act. 3. Scholl discloses an SBR having a styrene content of 1 to 60 wt%, a content of 1,2-butadiene between 5 and 60 wt%, and a glass transition temperature of -50ºC to +20ºC. Scholl, col. 2, ll. 24–27, col. 4, ll. 10–14 and 39–41. We further note that the SBR in Table 1 of Sandstrom is described as an SBR containing about 26 percent styrene and having a glass transition temperature of -22ºC. Sandstrom, col. 11, ll. 30–35, 52–55. The prior art discloses rubbers having aromatic vinyl and 1,2-vinyl bond contents within or overlapping the claimed ranges, and with glass transition Appeal 2014-000499 Application 11/832,933 5 temperatures within or overlapping the claimed range as well. Therefore, the Examiner has demonstrated that the aromatic vinyl content, 1,2-vinyl bond content, and glass transition temperature recited in claim 1 are consistent with SBR rubbers used in tire treads, including the SBR disclosed by Sandstrom. Appellants’ arguments do not demonstrate a reversible error in the Examiner’s findings with regard to the SBR components and properties. To address the F-S difference range recited in claim 1, the Examiner finds Sandstrom discloses a combined filler content between 20 and 120 phr and an oil loading (softening agent amount) between 1 and 50 phr. Final Act. 2. The Examiner finds that a F-S difference range provided by these contents, when using the extreme values for filler loading and oil loading, falls below 120 phr, and fully encompasses the F-S difference range of claim 1, i.e., 60-87 pbw. Ans. 4.7 Ordinarily, where the claimed range falls within a prior art range, there is a presumption of obviousness. In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003). Sandstrom discloses values for filler F and a softening agent S that provide a numerical range encompassing and overlapping the F-S difference range of claim 1. Sandstrom, col. 3, ll. 58–59, col. 9, ll. 35–38. A preponderance of the evidence supports the Examiner’s obviousness determination. The argument by the Appellants that Sandstrom is silent with regard to the F-S difference range of claim 1 does not address the Examiner’s findings and conclusion and therefore does not demonstrate the Examiner reversibly erred. The Appellants further argue that Sandstrom is directed to a different problem than the problems addressed by Appellants’ claimed invention. Appeal 7 Examiner Answer dated July 23, 2013. Appeal 2014-000499 Application 11/832,933 6 Br. 7. The problem faced by an applicant is a relevant factor to take into consideration in an obviousness determination. However, an invention may be obvious for reasons the inventor did not contemplate. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc). Further, “the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). As discussed above, Sandstrom discloses a rubber composition including the various components recited in claim 1 and discloses filler and softening agent concentrations that would result in an F-S difference range overlapping the F-S difference range of claim 1, which supports a conclusion that the F-S difference recited in claim 1 would have been obvious. The Appellants assert that APA and Scholl do not disclose or suggest the hydroxyl group end-modified SBR of claim 1 and therefore do not cure the deficiencies of Sandstrom. Appeal Br. 8–9. As discussed above, the Examiner has not relied upon APA or Scholl as disclosing hydroxyl group end-modified SBR because Sandstrom discloses such an SBR for a tire tread. Further, the Appellants argue that the stearic acid disclosed by Scholl is not a softening agent. Appeal Br. 8. As stated by the Examiner, however, the Examiner has not relied upon the stearic acid of Scholl as a softening agent. Ans. 6. In addition, Appellants contend Table I of their Specification shows that when the F-S difference is 60 to 87 parts by weight, “the desired results can be obtained” (citing Examples 1, 3, and 4) whereas if the F-S is outside of this range, “the desired results cannot be obtained” (citing to Comparative Examples 1 and 3). Appeal Br. 9. Table I reports hardness and brake performance data, which we assume are “the desired results” Appellants refer to in their Appeal Brief. Appellants’ Appeal 2014-000499 Application 11/832,933 7 Specification states that “[a]ccording to Table I, it is learned that the wet performance is improved in a pneumatic tire using a rubber composition satisfying the requirements according to the present invention.” Spec. 11:23–26. Examples 1, 3, and 4 all have an F-S of 74. Comparative Examples 1 and 3 have an F-S of 56 and 91, respectively. Comparative Examples 1 and 3 do not contain the claimed hydroxyl group end-modified SBR. First, it is not clear in what capacity Appellants rely upon the data. Assuming that Appellants seek to show unexpected results, Appellants fail to state that the results are unexpected; they only state that “the desired results can be obtained.” “[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). Second, the Appellants’ statements amount essentially to mere pleading. A mere pleading unsupported by proof or showing of facts is inadequate. In re Borkowski, 505 F.2d 713, 718 (CCPA 1974). We will not attempt to independently determine the comparisons on which the Appellants rely upon or the significance thereof. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.”) (Emphasis added). Third, we agree with the Examiner that the comparative examples of Table I the Appellants rely upon (comparative examples 1 and 3) have F-S values outside the claimed range but do not include the hydroxyl group end-modified SBR required by claim 1. Ans. 5. Therefore, it is not clear if the results obtained are a function of the F-S value or are due to other variations between the examples and comparative examples. To support a showing of unexpected results, the examples Appeal 2014-000499 Application 11/832,933 8 to be compared must be truly comparative. In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (holding Dunn’s comparison inadequate because the cause and effect sought to be proven was lost in a welter of unfixed variables.). Accordingly, for the reasons provided in the Examiner’s Answer and the reasons above, we sustain the Examiner’s § 103 rejection of claim 1 over Sandstrom, APA, and Scholl. Claim 2 has not been argued separately and therefore falls with claim 1. 37 C.F.R. § 41.37(c)(iv) (2012). 2. Obviousness Rejection of Claims 1 and 2 over Scholl, Steiner and/or Segatta, APA, and Sandstrom The § 103 rejection of claims 1 and 2 over Scholl, Steiner and/or Segatta, APA, and Sandstrom rely upon Scholl, APA, and Sandstrom, as in the § 103 rejection discussed above. As we are sustaining the § 103 rejection of claims 1 and 2 over Sandstrom, APA, and Scholl, there is no need to reach the § 103 rejection of claims 1 and 2 over Scholl, Steiner and/or Segatta, APA, and Sandstrom. CONCLUSION We sustain the Examiner’s § 103 rejection of claims 1 and 2 over Sandstrom, APA, and Scholl. We do not reach the § 103 rejection of claims 1 and 2 over Scholl, Steiner and/or Segatta, APA, and Sandstrom. DECISION The decision of the Examiner to reject claims 1 and 2 is affirmed. TIME PERIOD FOR RESPONSE Appeal 2014-000499 Application 11/832,933 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED cdc Copy with citationCopy as parenthetical citation