Ex Parte Hara et alDownload PDFPatent Trials and Appeals BoardMay 28, 201914409012 - (D) (P.T.A.B. May. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/409,012 03/11/2015 30678 7590 POLSINELLI PC (DC OFFICE) 1000 Louisiana Street Suite 6400 HOUSTON, TX 77002 05/30/2019 FIRST NAMED INVENTOR Yuichi Hara 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 085191-533590 4132 EXAMINER USELDING, JOHN E ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 05/30/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUICHI HARA, SHUN SATO, EDWARD J. BLOK, MARIA D. ELLUL, ANTHONY J. DIAS, and RANDAL HOW ARD KERSTETTER III Appeal2018-008383 Application 14/409,012 Technology Center 1700 Before JEFFREY B. ROBERTSON, DEBRA L. DENNETT, and JANEE. INGLESE, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-3, 5-9, and 21-29. (Br. 2.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed December 18, 2014 ("Spec."); Final Office Action mailed Mar. 21, 2017 ("Final Act."); Appeal Brief filed Aug. 17, 2017 ("Br."); and Examiner's Answer mailed June 14, 2018 ("Ans."). 2 Appellants identify Yokohama Rubber Co., Ltd. and ExxonMobil Chemical Patents, Inc., as the real parties in interest. (Br. 2.) Appeal2018-008383 Application 14/409,012 THE INVENTION Appellants state that the invention relates to dynamically vulcanized alloys (DV As) having improved processability and stability. (Spec. ,r 1.) Claim 1 is representative and reproduced below from the Claims Appendix to the Appeal Brief: 1. A process to produce a thermoplastic elastomer composition, compnsmg: dynamically vulcanizing an isobutylene elastomeric component dispersed as a domain in a continuous phase comprising at least one thermoplastic resin to produce a post-vulcanized dynamically vulcanized alloy; and mixing of the post-vulcanized dynamically vulcanized alloy with a single stabilizer consisting of 1.5 phr or greater of a low molecular weight aromatic amine stabilizer to produce the thermoplastic elastomer composition wherein the melt viscosity of the post-vulcanized dynamically vulcanized alloy is reduced and the aged tensile strength of the post-vulcanized dynamically vulcanized alloy is increased by the mixing with the stabilizer. (Br. 22, Claims Appendix.) REJECTIONS 1. The Examiner rejected claims 1-3, 5-9, and 21-29 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. (Final Act. 2-3.) 2. The Examiner rejected claims 21 and 28 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. (Ans. 3; Final Act. 3.) 3. The Examiner rejected claims 1-3, 5-9, and 21 under 35 U.S.C. § 103 as obvious over Stevenson et al. (US 2009/0312458 Al; published December 17, 2009, hereinafter "Stevenson"), Kim et al. (US 2 Appeal2018-008383 Application 14/409,012 5,849,820, issued December 15, 1998, hereinafter "Kim"), and van Issum et al. (US 6,825,277 B2, issued November 30, 2004, hereinafter "van Issum"). (Final Act. 4--8.) 4. The Examiner rejected claims 22-28 under 35 U.S.C. § 103 as obvious over Stevenson, Kim, and van Issum. (Final Act. 8-11.) 5. The Examiner rejected claim 29 under 35 U.S.C. § 103 as obvious over Stevenson, Kim, and van Issum. (Final Act. 12-14.) 6. The Examiner rejected claims 1-3, 5-9, and 21 under 35 U.S.C. § 103 as obvious over Stevenson, Hara et al. (US 2010/0234500 Al; published September 16, 2010, hereinafter "Hara"), and van Issum. (Final Act. 14--18.) 7. The Examiner rejected claims 22-28 under 35 U.S.C. § 103 as obvious over Stevenson, Hara, and van Issum. (Final Act. 18-21.) 8. The Examiner rejected claim 29 under 35 U.S.C. § 103 as obvious over Stevenson, Hara, and van Issum. (Final Act. 21-23.) Appellants present arguments for a number of the claims on appeal. (See Br. 7-19.) We select claims 1 and 21 as representative for disposition of this appeal. 37 C.F.R. § 4I.37(c)(l)(iv). Rejection 1 ISSUE The Examiner found that the Specification does not provide written description support for the limitation "wherein ... the aged tensile strength of the post-vulcanized dynamically vulcanized alloy is increased by the mixing with the stabilizer" as recited in claim 1. (Final Act. 2.) In particular, the Examiner found that the Specification does not teach that the stabilizer increases the tensile strength under all possible aging conditions; 3 Appeal2018-008383 Application 14/409,012 rather, the Specification discloses improved UV stabilization such that under the disclosed specific aging conditions, there is improved tensile strength retention. (Final Act. 2-3.) Appellants argue that the Specification provides support for the limitation that the amine stabilizer improves aged tensile strength. (Br. 7-8, citing Spec. ,r,r 54, 55.) Accordingly, the dispositive issue is: Have Appellants identified a reversible error in the Examiner's position that the Specification does not provide written description support for the recitation in claim 1 that the "aged tensile strength of the post- vulcanized dynamically vulcanized alloy is increased by the mixing with the stabilizer"? DISCUSSION We are persuaded by Appellants' arguments that the Specification provides sufficient written description for the limitation "wherein ... the aged tensile strength of the post-vulcanized dynamically vulcanized alloy is increased by the mixing with the stabilizer." To satisfy the written description requirement, a patent applicant must "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) ( emphasis omitted). The Specification expressly points out that "the amine stabilizer also improved (increased) the tensile strength and elongation at break, and also generally resulted in less decrease or a greater increase in the aged tensile strength." (Spec. ,r 55.) As pointed out by the Examiner, the Specification 4 Appeal2018-008383 Application 14/409,012 states "[a]s used in the present specification and claims, 'aging' refers to aging the composition according to SAE JI 960 or an equivalent thereof at 1875 kJ/m2 at 340 nm." (Spec ,r 47; Ans. 4.) In this regard, the Examiner states "the original specification provides a definition for 'aging' [0047], but the word 'aging' is not used in the claims." (Ans. 4.) We understand the Examiner's position to be that because claim 1 uses the term "aged" and not "aging," the definition provided in the Specification does not control. We cannot subscribe to this position. We are of the view that one of ordinary skill in the art would have understood that the term "aged" in claim 1 refers to the term "aging" as expressly defined in the Specification. As a result, we agree with Appellants that the Examiner's position that the Specification does not teach that the stabilizer increases the tensile strength under all possible aging conditions does not provide a sufficient basis to support the rejection set forth by the Examiner. Therefore, we reverse the Examiner's decision to reject claims 1-3, 5- 9, and 21-29 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Rejection 2 ISSUE Claim 21, which is representative, depends from claim 1, and recites "wherein carbon black is added during [the] mixing of the post-vulcanized dynamically [ vulcanized] alloy with the stabilizer." Claims 22 and 28 contain similar language. 5 Appeal2018-008383 Application 14/409,012 The Examiner determined that based on Appellants' interpretation of claims 1 and 22, claims 21 and 28 are indefinite, because if as Appellants argue, the recitation of a "single stabilizer" excludes other compounds that reduce melt viscosity and increase tensile strength, then carbon black, as recited in claims 21 and 28, which increases aged tensile strength, is not excluded from claim 1. (Ans. 3, 5-6, citing Spec., Table 5.) Appellants argue that the term "single stabilizer" is to be read in context with the Specification and as expressly recited in the claim to produce a thermoplastic elastomer composition where the melt viscosity of the post-vulcanized dynamically vulcanized alloy is reduced and the aged tensile strength is increased, which is achieved by the mixing with a single stabilizer in the form of a low molecular weight aromatic amine stabilizer. (Br. 9-10.) Accordingly, the dispositive issue with respect to this rejection is: Did the Examiner err in determining that carbon black as recited in claim 21 is excluded from claim 1, such that claim 21 is indefinite? DISCUSSION In order to resolve the dispute in this rejection, we must construe the scope of claim 1, from which claim 21 depends. Claim 1 recites "[a] process ... comprising" dynamically vulcanizing an isobutylene elastomeric component dispersed as a domain in a continuous phase "comprising" at least one thermoplastic resin. Thus, claim 1 contains open transitional phrase language that allows for additional process steps as well as components. 6 Appeal2018-008383 Application 14/409,012 However, claim 1 also recites "mixing of the post-vulcanized dynamically vulcanized alloy with a single stabilizer consisting of 1.5 phr or greater of a low molecular weight aromatic amine stabilizer." (Emphasis added.) Claim 1 recites additionally that "the melt viscosity of the post- vulcanized dynamically vulcanized alloy is reduced and the aged tensile strength of the post-vulcanized dynamically vulcanized alloy is increased by the mixing with the stabilizer." Thus, claim 1 expressly requires mixing the post-vulcanized alloy with only a single low molecular weight aromatic amine stabilizer that reduces the melt viscosity and increases the aged tensile strength, and as such, claim 1 is closed to any additional stabilizers added during the "mixing" step that reduce the melt viscosity or increase the aged tensile strength. Thus, any compound or "stabilizer" that is added to the post-vulcanized dynamically vulcanized alloy during the "mixing" step must not reduce the melt viscosity or increase the aged tensile strength. In view of this claim interpretation, we agree with the Examiner that claim 21 is indefinite, because the claim recites the addition of carbon black during mixing of the post vulcanized dynamically vulcanized alloy with the stabilizer. As noted by the Examiner, carbon black increases the aged tensile strength of the post vulcanized dynamically vulcanized alloy. (Ans. 6; citing Table 5; see Table 5, e.g., Composition 9 showing a decrease in melt viscosity (721 Pa-s) and an increase in aged tensile strength (-2.14% change) of a composition containing carbon black compared to the melt viscosity (742 Pa-s) and aged tensile strength (-69.5 % change) of a composition (Composition 7) not containing carbon black.) Accordingly, the addition of carbon black, which is expressly recited in claim 21 as added during the "mixing" step in the process of claim 1, is 7 Appeal2018-008383 Application 14/409,012 excluded by claim 1, because it decreases melt viscosity and increases aged tensile strength of the dynamically vulcanized alloy. As a result, we affirm the Examiner's rejection of claims 21 and 28 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. Rejection 3 ISSUE The Examiner found that Stevenson discloses a process for preparing dynamically vulcanized alloys including an isobutylene elastomer as a dispersed phase in a thermoplastic resin continuous phase. (Final Act. 4.) The Examiner found that Stevenson fails to specifically teach mixing of the post-vulcanized dynamically vulcanized alloy with a low molecular weight aromatic amine stabilizer. (Id.) The Examiner found that Kim discloses a thermally stabilized resin composition where a low molecular weight aromatic amine in combination with other reagents can function as a thermal stabilizer for thermoplastic elastomers. (Id. at 4--5.) The Examiner found that van Issum discloses a dynamically vulcanized alloy where an additive, such as a low molecular weight amine antioxidant, may be added post- vulcanization in order to ensure that the additive is retained in the thermoplastic phase. (Id. at 5.) The Examiner determined that it would have been obvious to add the low molecular weight aromatic amine of Kim in the process of Stevenson after the vulcanization of the dynamically vulcanized alloy to obtain a stabilized DV A from the process, and that it would have been obvious to have optimized the amount added for the desired stability. (Id. at 6.) 8 Appeal2018-008383 Application 14/409,012 Appellants argue that van Issum only contemplates certain additives, i.e., solid particulates, to be added after dynamic vulcanization, and that the antioxidants additives disclosed in van Issum are not necessarily the "certain additives" referred to in van Issum. (Br. 12.) Appellants contend that van Issum discloses adding antioxidant to the rubber composition (A) and adding a UV stabilizer such that it is present during crosslinking. (Id. at 12-13.) Appellants argue that the chemical structure of Stevenson as modified is not the same as the structure recited in the claims, because Kim discloses the presence of cyclic iminoether or cyclic iminoester in addition to the amine compound as a necessary combination in order to provide thermal stability, and the instant claims are not open to the inclusion of other stabilizers. (Id. at 11-13.) Appellants contend that the Examiner has improperly relied on the concept of inherency for the hypothetical process arrived at by combining the references in order to reach the recited reduction in melt viscosity and increase in tensile strength due to the addition of stabilizer. (Id. at 14--16; Final Act. 6.) Appellants argue that van Issum discloses that the amines are used for non-polar olefins, such that one of ordinary skill in the art would not look to van Issum in looking to improve the DV A of Stevenson, which contains polar resins. (Id. at 16.) Appellants argue that the Examiner's position is based on improper hindsight and the cited art fails to provide the needed degree of predictability of success in order to support the rejection. (Id. at 19-20.) The dispositive issue with respect to this rejection is: Did the Examiner err in determining that it would have been obvious to have mixed a post-vulcanized dynamically vulcanized alloy with a single low molecular 9 Appeal2018-008383 Application 14/409,012 weight aromatic amine stabilizer in a process of producing a thermoplastic elastomer composition in view of Stevenson, Kim, and van Issum? DISCUSSION We are not persuaded by Appellants' argument that van Issum does not contemplate the addition of antioxidants after dynamic vulcanization. As the Examiner points out, van Issum discloses "the DVA product may be produced without fillers or additives. The fillers and/or additives may then be added in a later second compounding operation." (van Issum, col. 9, 11. 40-43, see also col. 12, 11. 58---65; Ans. 7-8.) As the Examiner further points out, Appellants' discussion of the UV stabilizer in van Is sum is not relevant because the UV stabilizer in van Issum is not used for the rejection. (Ans. 8.) We are not persuaded by Appellants' argument that Kim requires additional stabilizers that are excluded by the claim language. That is, as interpreted above, the claim language excludes only additional stabilizers added to the post-vulcanized dynamically vulcanized alloy that reduce the melt viscosity and increase the aged tensile strength of the alloy. Kim discloses that the cyclic iminoether or cyclic iminoester improve the thermal stability of the composition, and as such we have not been directed to sufficient evidence that the presence of the cyclic iminoether or iminoester in Kim would be excluded from the scope of claim 1 as reducing the melt viscosity or increasing the aged tensile strength. (Kim, col. 2, 11. 35--41; Ans. 8.) We are also not persuaded that the Examiner has improperly relied on the concept of inherency. As the Examiner points out in the Answer, the 10 Appeal2018-008383 Application 14/409,012 Examiner has identified sufficient reasons with reference to prior art references of record as to how the process of claim 1 would have been obvious, including the addition of a specific low molecular weight aromatic amine to a post-vulcanized dynamically vulcanized alloy. (Ans. 11-12.) That Appellants have recognized an additional property of such an amine does not render the process nonobvious even though the Examiner may have had a different reason for combining the prior art than the reason identified by Appellants. It is well settled that "[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Regarding Appellants' argument that one of ordinary skill in the art would not have looked to van Issum and its disclosure regarding non-polar resins to improve DVA containing polar resins disclosed in Stevenson (Br. 16), such amounts to no more than mere attorney argument. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants have not provided sufficient explanation with evidence to support this position. As to Appellants' argument that van Issum does not provide sufficient details as to which antioxidants may be useful for particular resins and polymers, we are not persuaded for the reasons identified by the Examiner, namely, that van Issum was relied upon for the post-vulcanized addition of aromatic amines whereas Kim was relied on for addition of the particular low molecular weight amine. (Ans. 12.) Accordingly, Appellants' argument fails to address the rejection as a whole. 11 Appeal2018-008383 Application 14/409,012 Therefore, we affirm the Examiner's rejection of claims 1-3, 5-9, and 21 under 35 U.S.C. § 103 as obvious over Stevenson, Kim, and van Issum. Rejections 4 and 5 Appellants rely on similar arguments for Rejections 4 and 5, which rely on the same combination of prior art as set forth for Rejection 3. (See Br. 16-17; Final Act. 8-14.) Accordingly, we affirm the Examiner for similar reasons as discussed above for Rejection 3. Rejection 6 ISSUE The Examiner makes similar findings with respect to Stevenson and van Issum as discussed above with respect to Rejection 3. (Final Act. 14-- 16.) The Examiner found that Hara teaches adding 1. 5 phr of an aromatic amine as an antioxidant in a composition that includes the same resins as Stevenson. (Final Act. 16.) The Examiner determined that it would have been obvious to add the low molecular weight aromatic amine of Hara in the process of Stevenson after the vulcanization of the dynamically vulcanized alloy to obtain a stabilized DV A from the process through the addition of antioxidant, and that it would have been obvious to have optimized the amount added for the desired stability against oxidation. (Id.) Appellants rely on similar arguments with respect to Stevenson and van Issum as discussed above. (Br. 18.) Appellants additionally argue that Hara discloses that the aromatic amine also functions as a crosslinking agent such that adding the aromatic amine to the post-vulcanized dynamically 12 Appeal2018-008383 Application 14/409,012 vulcanized alloy would be contrary to the disclosure of Hara and would be counterintuitive. (Id.) The dispositive issue with respect to this rejection is: Did the Examiner err in determining that it would have been obvious to have mixed a post-vulcanized dynamically vulcanized alloy with a single low molecular weight aromatic amine stabilizer in a process of producing a thermoplastic elastomer composition in view of Stevenson, Hara, and van Issum? DISCUSSION We are not persuaded by Appellants' arguments regarding Stevenson and van Issum for the reasons expressed above for Rejection 3. We are also not persuaded by Appellants' argument that in view of Hara, one of ordinary skill in the art would not have added the aromatic amine post-vulcanization. As the Examiner points out, Hara is relied upon for the use of the aromatic amine as an antioxidant. (Ans. 14.) Hara itself teaches that the compound can have multiple uses including as a cross- linking agent and as an antioxidant. (Hara, ,r,r 37, 65.) Thus, we agree with the Examiner that one of ordinary skill in the art would have recognized that consistent with the disclosure of van Issum, antioxidants may be added after the dynamic vulcanization step ( col. 12, 11. 59-62), and adding the aromatic amine antioxidant of Hara post-vulcanization would have been obvious to one of ordinary skill in the art in view of the combination of prior art, which is not inconsistent with Hara's disclosure that the aromatic amine may be used in multiple ways. Therefore, we affirm the Examiner's rejection of claims 1-3, 5-9, and 21 under 35 U.S.C. § 103 as obvious over Stevenson, Hara, and van Issum. 13 Appeal2018-008383 Application 14/409,012 Rejections 7 and 8 Appellants rely on similar arguments for Rejections 4 and 5, which rely on the same combination of prior art as set forth for Rejection 3. (See Br. 18-19; Final Act. 18-23.) Accordingly, we affirm the Examiner for similar reasons as discussed above for Rejection 6. DECISION We reverse the Examiner's decision to reject claims 1-3, 5-9, and 21- 29 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. We affirm the Examiner's decision to reject claims 1-3, 5-9, and 21- 29 under all other grounds of rejection on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation