11110025 (B.P.A.I. Sep. 23, 2010)

Ex Parte Halasa et al

Board of Patent Appeals and InterferencesSep 23, 2010

11110025 (B.P.A.I. Sep. 23, 2010)

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. 11/110,025 04/20/2005 Adel Farhan Halasa DN2005046 9648 27280 7590 09/24/2010 THE GOODYEAR TIRE & RUBBER COMPANY INTELLECTUAL PROPERTY DEPARTMENT 823 1144 EAST MARKET STREET AKRON, OH 44316-0001 EXAMINER CHEUNG, WILLIAM K ART UNIT PAPER NUMBER 1796 MAIL DATE DELIVERY MODE 09/24/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte ADEL FARHAN HALASA, WEN-LIANG HSU, KENNETH ALLEN BATES, DAVID ANDREW BENKO, SHINGO FUTAMURA, and KUO-CHIH HUA ________________ Appeal 2009-014833 Application 11/110,025 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-014833 Application 11/110,025 2 The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 3, 5-7 and 14-21, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim an in-chain functionalized conjugated diene elastomer and a rubber composition and tire containing the elastomer. Claim 1 is illustrative: 1. An end coupled in-chain functionalized conjugated diene elastomer which is comprised of a conjugated diene-based elastomer comprised of: (A) a polymer of at least one of isoprene or 1,3-butadiene or their mixtures, or (B) polymer of styrene or alpha methyl styrene with at least one of isoprene or 1,3-butadiene or their mixtures, wherein said conjugated diene elastomer is in-claim functionalized by containing a plurality of functionalized styrene units distributed in the elastomer chain comprised of: (C) p- and/or m- (2-pyrrolidinoethyl) styrene or their mixture, or (D m-(2-pyrrolidino-1-methylethyl) alpha-methylstyrene; wherein said in-chain functionalized conjugated diene-based elastomer is end coupled with an alkoxysilane agent comprised of a capped organoalkoxymercaptosilane in the sense of having its mercapto moiety capped with a moiety which uncaps the said mercapto moiety upon heating to an elevated temperature in the presence of an amine rubber sulfur cure activator; wherein said end coupled in-chain functionalized conjugated diene- based elastomer is of a bimodal molecular weight configuration with from 20 to 60 percent of said in-chain functionalized conjugated diene-based elastomer being end coupled. Appeal 2009-014833 Application 11/110,025 3 The References Cruse 6,127,468 Oct. 3, 2000 Halasa 6,825,306 B2 Nov. 30, 2004 The Rejections Claims 1, 3, 5-7 and 14-21 stand rejected under 35 U.S.C. § 103 over Halasa in view of Cruse. OPINION We reverse the rejection. Issue Have the Appellants indicated reversible error in the Examiner’s determination that the applied prior art would have rendered prima facie obvious, to one of ordinary skill in the art, an in-chain functionalized conjugated diene elastomer that is end coupled with a capped organoalkoxymercaptosilane? Findings of Fact The Appellants acknowledge that Halasa discloses their starting in-chain functionalized conjugated diene elastomer (Spec. 8:3-7, 13:30 – 14:1; Br. 6). The in-chain functionalization improves the compatibility of the elastomer with the types of fillers, e.g., carbon black and silica, typically used in rubber compounds such as tire component stock compounds (col. 4, ll. 16-26; col. 18, ll. 47-50). Cruse discloses mercaptosilane derivatives in which the mercapto group is blocked (“blocked mercaptosilanes”), i.e., the mercapto hydrogen atom is replaced by another group (hereafter referred to as “blocking group”). Specifically, the silanes of the present invention are blocked mercaptosilanes in which the blocking Appeal 2009-014833 Application 11/110,025 4 group contains an unsaturated heteroatom or carbon chemically bound directly to sulfur via a single bond. [col. 2, ll. 19-26] . . . The blocked mercaptosilanes described herein are useful as coupling agents for organic polymers (i.e., rubbers) and inorganic fillers. [col. 5, ll. 28-30] . . . The blocking group substantially prevents the silane from coupling to the organic polymer during the compounding of the rubber. Generally, only the reaction of the silane –SiX3 group with the filler can occur at this stage of the compounding process. Thus, substantial coupling of the filler to the polymer is precluded during mixing, thereby minimizing the undesirable premature curing (scorch) and the associated undesirable increase in viscosity. [col. 5, ll. 37-45] . . . In use, one or more of the blocked mercaptosilanes are mixed with the organic polymer before, during or after the compounding of the filler into the organic polymer. [col. 5, ll. 48-50] . . . When reaction of the mixture to couple the filler to the polymer is desired, a deblocking agent is added to the mixture to deblock the blocked mercaptosilane. [col. 5, ll. 59-61] . . . The first reaction is a relatively fast reaction and is considered herein to take place between the filler and the SiX3 group of the blocked mercaptosilane. Such reaction may occur at a relatively low temperature such as, for example, at about 120° C. The second and third reactions are considered herein to be the deblocking of the mercaptosilane and the reaction which takes place between the sulfuric part of the organosilane (after deblocking), and the sulfur vulcanizable rubber at a higher temperature; for example, above about 140° C. [col. 7, ll. 20- 29] Analysis The Appellants argue that the applied references would not have led one of ordinary skill in the art to modify Halasa’s in-chain functionalized elastomer with a blocked alkoxymercaptosilane (Br. 7). Appeal 2009-014833 Application 11/110,025 5 The Examiner argues that it would have been obvious to one of ordinary skill in the art to incorporate Cruse’s organoalkoxymercaptosilane into Halasa’s rubber composition to improve the compatibility between the organic polymers and the filler (Ans. 6-7). The Examiner’s argument is deficient in that the Examiner has not explained how the applied references would have led one of ordinary skill in the art to end couple Halasa’s in-chain functionalized conjugated diene elastomer with a capped organoalkoxymercaptosilane as required by the Appellants’ claims. Cruse teaches that the SiX3 group of the blocked mercaptosilane reacts with the filler, and that it is only after the mercaptosilane is unblocked (i.e., uncapped) that it reacts with the organic polymer (col. 5, ll. 37-39, 59-61; col. 7, ll. 20-29).2 Conclusion of Law The Appellants have indicated reversible error in the Examiner’s determination that the applied prior art would have rendered prima facie obvious, to one of ordinary skill in the art, an in-chain functionalized conjugated diene elastomer that is end coupled with a capped organoalkoxymercaptosilane. DECISION/ORDER The rejection of claims 1, 3, 5-7, and 14-21 under 35 U.S.C. § 103 over Halasa in view of Cruse is reversed. 2 The Appellants typically end couple their in-chain functionalized elastomer with the capped organoalkoxymercaptosilane near the conclusion of the elastomer’s formative polymerization process (Spec. 8:22-32, 14:3-8). Appeal 2009-014833 Application 11/110,025 6 It is ordered that the Examiner’s decision is reversed. REVERSED cam THE GOODYEAR TIRE & RUBBER CO. INTELLECTUAL PROPERTY DEPT. 823 1144 EAST MARKET STREET AKRON OH 44316-0001