Ex Parte Cai et al

Patent Trial and Appeal Board

Sep 2, 2016

12653463 (P.T.A.B. Sep. 2, 2016)

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.
12/653,463 12/15/2009 Kevin G. Cai TEK-EE 9415
28862 7590 09/02/2016
HUDAK, SHUNK & FARINE, CO., L.P.A.
2020 FRONT STREET
SUITE 307
CUYAHOGA FALLS, OH 44221
EXAMINER
SHAH, SAMIR
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
09/02/2016 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 KEVIN G. CAI, DARNELL C. WORLEY II, and
GREGORY J. ANDERSON
____________________

Appeal 2015-002670
Application 12/653,463
Technology Center 1700
____________________

Before TERRY J. OWENS, MARK NAGUMO, and BRIAN D. RANGE,
Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL

SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3, 7–9, 12–19, 21, and 22. We have jurisdiction.
35 U.S.C. § 6(b).
We REVERSE.

1 According to the Appellants, the real party in interest is TEKNOR APEX
COMPANY. Appeal Br. 1.
Appeal 2015-002670
Application 12/653,463

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STATEMENT OF THE CASE
Appellants describe the present invention as a thermoplastic elastomer
composition having a desirable grip during wet, soapy, or humid conditions.
Appeal Br. 4.2 Claims 1, 12, and 17 are the independent claims on appeal.
Claim 1, reproduced below with emphases added to certain claim limitations
addressed herein, is illustrative of the claimed subject matter:
1. An elastomeric composition having desirable wet grip
properties, comprising:
a styrenic block copolymer comprising at least one hard
block (A) derived from at least two aromatic vinyl compound
units and at least one soft polymer block (B), wherein the soft
polymer block (B) is derived from one or more of olefin
monomers and diene monomers;
a polar functional group terminated polyalkenyl,
wherein the polar functional group terminated polyalkenyl is
present in an amount from about 1 to about 20 parts per 100 parts
by weight of the composition; wherein the polar functional
group terminated polyalkenyl comprises polyisobutylene
succinic anhydride and
a zeolite present in an amount from about 5 to about 35
parts based on 100 total parts by weight of the composition.
Appeal Br. 17 (Claims Appendix).

2 In this decision, we refer to the Final Office Action mailed April 1, 2014
(“Final Act.”), the Appeal Brief filed September 30, 2014 (“Appeal Br.”),
the Examiner’s Answer mailed September 30, 2014 (“Ans.”), and the Reply
Brief filed December 9, 2014 (“Reply Br.”).
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Application 12/653,463

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Similar to claim 1, claims 12 and 17 also recite a “polar functional
group terminated polyalkenyl [which] comprises polyisobutylene3 succinic
anhydride” and recite a “zeolite.” Id. at 18–19.
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Nakamura et al.
(hereinafter “Nakamura”)
Weng et al.
(hereinafter “Weng”)
Carcich
Toyohara et al.
US 2004/0132907 A1

US 2007/0129477 A1

US 2009/0018250 A1
WO 2008/013316 A1
July 8, 2004

June 7, 2007

Jan. 15, 2009
Jan. 31, 20084

REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1–3, 7, 8, 12–19, 21, and 22 under 35 U.S.C.
§ 103 as unpatentable over Nakamura in view of Carcich and Weng. Final
Act. 2.
Rejection 2. Claim 9 under 35 U.S.C. § 103 as unpatentable over
Nakamura in view of Carcich and Weng and further in view of Toyohara.
Id. at 7.
Rejection 3. Claims 12 and 13 under 35 U.S.C. § 103 as unpatentable
over Weng in view of Carcich. Id. at 8.

3 Appellants’ reproduction of claim 12 includes an inconsequential typo. It
recites poyisobutylene rather than polyisobutylene.
4 Any discussion of the Toyohara reference herein refers to the English
translation relied upon the Examiner available at U.S. 2001/0160364 A1,
published June 30, 2011 (hereinafter, “Toyohara”).
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Application 12/653,463

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ANALYSIS
Rejection 1. The Examiner rejects claims 1–3, 7, 8, 12–19, 21, and 22
as obvious over Nakamura in view of Carcich and Weng. Final Act. 2. The
Examiner admits that the combination of Nakamura and Carcich does not
teach a “polar functional group terminated polyalkyenyl.” Final Act. 7;
Appeal Br. 7. The Examiner thus relies upon Weng as teaching the “polar
functional group terminated polyalkenyl” which comprises “polyisobutylene
succinic anhydride” in independent claims 1, 12, and 17.
Appellants argue that a person of skill in the art would not have
combined the cited references absent impermissible hindsight. Appeal Br. 5.
In particular, Appellants argue that the Wang reference lacks scope and
content which would lead one of ordinary skill in the art to combine it with
Nakamura and Carcich. Appeal Br. 7, 10–11, 13–14; Reply Br. 2. Based on
the record before us, we agree.
With respect to Nakamura and Carcich, Nakamura teaches a
thermoplastic elastomer composition that could be used for a variety of
purposes including “assist grips” and “sporting goods.” Nakamura ¶ 116.
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to use zeolite of Carcich
in the thermoplastic elastomer composition of Nakamura to obtain good
coefficients of friction for gripping surfaces and [to] absorb moisture.” Final
Act. 2; see also Ans. 3–4; Carcich ¶¶ 21, 23.
With respect to the Weng reference, the Examiner concludes that “[i]t
would have been obvious … to use the polar polymer of Weng in the
thermoplastic elastomer composition of Nakamura to increase the interaction
between the polymer and the clay [filler of Nakamura].” Final Act. 3; see
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also Nakamura ¶ 86 (explaining that “where necessary” the elastomer
composition may comprise an inorganic filler and listing clay as one of
many possible inorganic fillers). The Weng reference, however, is primarily
concerned with creating a “low air permeability” elastomer that could be
used as an “air barrier” in tires. Weng ¶ 2; see also Ans. 7. Weng teaches
that its polar polymer provides “improved barrier properties.” Weng ¶ 71.
Weng is generally directed to a different purpose (low air permeability
tire barrier layer) than the proposed Nakamura/Carcich combination (a
polymer requiring gripping surfaces and desiring to absorb moisture).
Moreover, Weng’s inclusion of a polar polymer for providing “improved
barrier properties” appears to run contrary to the Nakamura/Carcich
combination’s goal of absorbing moisture. Thus, on the present record, a
preponderance of the evidence does not support that a person of skill would
have relied upon Wang’s teachings regarding use of a polar polymer in order
to modify Nakamura/Carcich. We therefore do not sustain the Examiner’s
first rejection.
Rejection 2. The Examiner rejects claim 9 as obvious over Nakamura
in view of Carcich and Weng and further in view of Toyohara. Final Act. 7.
Claim 9 depends from claim 8 which, in turn, depends from claim 1.
The Examiner relies upon Toyohara as teaching an organic filler
comprising thermoplastic starch. Id. The Examiner does not assert that
Toyohara further teaches a polar polymer or further supports combining
Weng with Nakamura/Carcich. Id. We therefore do not sustain this
rejection for the reasons explained above.
Rejection 3. The Examiner rejects claims 12 and 13 as unpatentable
over Weng in view of Carcich. Final Act. 8. The Examiner concludes that
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“it would have been obvious … to use zeolite and its amount of Carcich in
the elastomer composition of Weng to obtain good coefficients of friction
for gripping surfaces and absorb moisture.” Id. As explained above, Weng,
however, is primarily directed at a “low air permeability” elastomer for use
as a barrier layer in tires. Weng ¶ 2, Ans. 7, 11. The Examiner does not
adequately explain why a person of skill would have been inclined to modify
Weng for a good coefficient of friction for gripping surfaces or to absorb
moisture. Ans, 7, 11. Accordingly, we do not sustain this rejection.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1–3, 7–9, 12–19, 21, and 22.

REVERSED