Ex Parte Fuchs

Board of Patent Appeals and Interferences

Jul 14, 2005

10053166 (B.P.A.I. Jul. 14, 2005)

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written for publication and is not binding precedent of the Board.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 ERICH FUCHS
_____________
Appeal No. 2005-0960
Application No. 10/053,166
______________
ON BRIEF
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Before WILLIAM F. SMITH, GARRIS and JEFFREY T. SMITH,
Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1-8
and 11.
The subject matter on appeal relates to a rubber mixture
comprising carboxylated nitrile rubbers, metal salts of an
acrylate, liquid acrylates and silanes. This appealed subject
matter is adequately illustrated by independent claim 1 which
reads as follows:
Appeal No. 2005-0960
Application No. 10/053,166
1On page 2 of the brief, the appellant states that “[n]one
of Claims 1-8 or 11 will be argued separately . . . ” and that
“[t]herefore, Claims 1-8 and 11 stand or fall together.” In
light of these statements, we will focus on representative claim
1, the broadest claim on appeal, in assessing the merits of the
above noted rejection.
2
1. A rubber mixture comprising
a) one or more carboxylated nitrile rubbers
b) one or more metal salts of an acrylate
c) one or more liquid acrylates optionally applied
onto a support,
d) from 0.01 to 8 phr of one or more silanes, and
e) optionally further additives and/or fillers.
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Hert et al. (Hert) 5,985,392 Nov. 16, 1999
Fujii et al. (Fujii) EP 0 933 381 A1 Aug. 4, 1999
(published European Patent Office Patent Application)
Claims 1-8 and 11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hert in view of Fujii.1 On page 4 of the
answer, the examiner describes his position as follows:
Since peroxides are used to cure the carboxylated
nitrile rubber compositions in Hert . . . , one of ordinary
skill in the art, having read both references, would have
found it obvious to use polyfunctional crosslinking co-
agents in the composition of Hert . . . , and the skilled
artisan would have expected such an embodiment to work. One
would be motivated to modify the art because Fujii . . .
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Application No. 10/053,166
3
teaches and suggests that said polyfunctional crosslinking
agents, rather than ZnO, are to be used with peroxide
crosslinking agents. The combination is obvious because
both inventions relate to carboxylated nitrile rubber
compositions.

We refer to the brief and to the answer respectively for a
thorough exposition of the opposing viewpoints expressed by the
appellant and by the examiner concerning this rejection.
OPINION
We will sustain the rejection before us for the reasons
expressed in the answer and below.
According to the appellant, “there is no motivation to
combine Hert . . . and Fujii . . . and arrive at the instant
invention” (brief, page 3). A number of arguments have been
advanced in support of this position.
First, the appellant contends that Tables 2 and 4 of the
subject specification evince that “the rubber of the claimed
invention is much harder than the rubber disclosed in Fujii . . .
or Hert . . . ” (brief, page 4). This contention is without
persuasive merit.
Nothing in representative claim 1 requires that the rubber
mixture thereof yield an ultimate product having any particular
hardness value much less the specific hardness values of the
specific rubber mixtures disclosed in Tables 2 and 4. It is here
Appeal No. 2005-0960
Application No. 10/053,166
4
appropriate to emphasize that the rubber mixture defined by claim
1 is considerably broader in scope than the specific mixtures of
these tables. Therefore, no factual basis exists for the
contention urged by the appellant. On the other hand, a
determination that the rubbers of claim 1 and the applied
references possess overlapping hardness values is well supported
by the fact that common uses for these rubbers (e.g., for making
belts or seals) are expressly taught by the appellant (see lines
19-27 on specification page 8), Hert (see lines 25-53 in column
6) and Fujii (see lines 27-35 on page 10).
Additionally, the following argument is presented on page
5 of the brief:
According to the Final Office Action, Fujii . . .
teaches the use of liquid acrylates when peroxides are used
as crosslinking agents and Zn oxide is reserved for
compositions cured with sulfur. Therefore, according to the
Final Office Action, one skilled in the art would glean that
Hert[’s] teachings of peroxide with Zn oxide is not
effective in view of Fujii . . . .
This proposition of taking one teaching as effective
and another teaching as in-effective in order to provide
motivation and arrive at the instant invention is
counterintuitive and would not teach likelihood of success
of the present invention, nor would one be motivated to use
this backwards teaching to combine these references.
This argument is not convincing because it is based upon an
incorrect premise. Contrary to the appellant’s belief, there is
Appeal No. 2005-0960
Application No. 10/053,166
5
nothing in the examiner’s rejection or in the disclosure of Fujii
which indicates that the combination of peroxide and Zn oxide (as
taught by Hert) is not effective.
Rather, the express teaching of Fujii relates to a
preference for the combination of peroxide and crosslinking aids
which include liquid acrylates of the type here claimed (e.g.,
trimethylolpropane trimethacrylate and ethylene glycol
dimethacrylate; see lines 28-32 on specification page 3). More
specifically, Fujii teaches that, “[w]hen an organic peroxide
type crosslinking agent is used as a crosslinking agent, it is
preferred to use in combination a crosslinking aid such as . . .
trimethylolpropane trimethacrylate [and] ethylene glycol
dimethacrylate” (sentence bridging pages 9-10; emphasis added).
For the reasons fully articulated by the examiner, this explicit
teaching of a preference by Fujii would have motivated an artisan
to replace the peroxide and zinc oxide combination of Hert’s
example 4 with the preferred combination of peroxide and, for
example, trimethylolpropane trimethacrylate preferred by Fujii.
In light of the foregoing, it is our ultimate determination
that the examiner has established a prima facie case of
obviousness which the appellant has failed to successfully rebut
Appeal No. 2005-0960
Application No. 10/053,166
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with argument or evidence of nonobviousness. We hereby sustain,
therefore, the examiner’s Section 103 rejection of all appealed
claims as being unpatentable over Hert in view of Fujii. See In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d, 1443, 1444 (Fed. Cir.
1992).
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY T. SMITH )
Administrative Patent Judge )
BRG:hh
Appeal No. 2005-0960
Application No. 10/053,166
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