Ex Parte Hennebert et alDownload PDFPatent Trial and Appeal BoardOct 31, 201713582837 (P.T.A.B. Oct. 31, 2017) 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. 13/582,837 10/19/2012 Guillaume Hennebert 338180-00561 2533 35161 7590 10/31/2017 DTrKTNSON WRIGHT PT T C EXAMINER 1825 Eye St., NW CHANG, JOSEPHINE L Suite 900 WASHINGTON, DC 20006 ART UNIT PAPER NUMBER 1768 MAIL DATE DELIVERY MODE 10/31/2017 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 GUILLAUME HENNEBERT and ARNAUD LAPRA Appeal 2017-002854 Application 13/582,837 Technology Center 1700 Before TERRY J. OWENS, JEFFREY R. SNAY and DEBRA L. DENNETT, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—23. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a tire sidewall rubber composition and a process for preparing it. Claim 1 is illustrative: 1. A tire sidewall, comprising at least one portion having a rubber composition based on at least: a diene elastomer, a crosslinking system, and a reinforcing filler, wherein the content of reinforcing filler in the rubber composition varies from 20 to 40 parts by weight per hundred parts of elastomer, phr, Appeal 2017-002854 Application 13/582,837 wherein a volume fraction of reinforcing filler in the rubber composition ranges from 8.0% to 13.0%, and wherein this reinforcing filler comprises predominantly a carbon black or a mixture of carbon blacks, the BET specific surface area of which ranges from 50 m2/g to 69 m2/g. The References Pyle US 2002/0139461 A1 Oct. 3,2002 Arnold US 2008/0110552 A1 May 15,2008 Kono (as translated) JP 2004-99804 A Apr. 2, 2004 Richard J. Lewis, Sr., Hawley’s Condensed Chemical Dictionary 52, 1095 (John Wiley & Sons, 15th ed. 2007) (hereinafter Lewis). The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1— 9, 12, 15, and 20 over Arnold, claims 10, 11, 13, 14, and 21 over Arnold in view of Pyle, and claims 16—19, 22, and 23 over Arnold in view of Pyle, Kono and Lewis. OPINION We reverse the rejections. We need address only the independent claims (1 and 16). Those claims require a rubber composition having a volume fraction of reinforcing filler ranging from 8.0% to 13.0%. To meet that claim requirement the Examiner relies upon Arnold (Ans. 3). Arnold discloses a rubber composition which can be a tire sidewall composition comprising a diene elastomer, a curing agent and about 10 to about 200 phr (parts by weight per 100 parts by weight of elastomer) of a carbon black reinforcing filler having a 50-69 m2/g BET surface area (H 21, 32, 36—38). The carbon black can be SR401 or SPHERON 1416 (Table 2) which are the Appellants’ exemplified carbon blacks (Spec. 15). 2 Appeal 2017-002854 Application 13/582,837 The Examiner finds (Ans. 8): Arnold employs the same carbon black as appellant and so a person of ordinary skill in the art would reasonably expect the carbon black to possess an identical density. Arnold also discloses an amount of carbon black of about 10 to about 200 phr or 30 to 70 phr, which overlaps with the presently claimed range of 20 to 40 phr. Accordingly, the volume fraction as presently claimed would be readily determined simply by dividing the mass [sic, volume] of 30 to 70 phr carbon black to base composition volume. The Examiner has the initial burden of establishing a prima facie case of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). An obviousness rejection “clearly must rest on a factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Arnold’s “base composition volume”, i.e., the rubber composition’s volume, depends not only on the masses and densities of the carbon black and elastomer but also on the masses and densities of the composition’s other components. The Examiner does not determine Arnold’s rubber composition’s volume and establish, based on that volume, that Arnold would have suggested to one of ordinary skill in the art a volume fraction of carbon black reinforcing filler in the rubber composition ranging from 8.0% to 13.0%. The Examiner, therefore, has not established a prima facie case of obviousness of the Appellants’ claimed invention. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1—9, 12, 15, and 20 over Arnold, claims 10, 11, 13, 14, and 21 over Arnold in view of Pyle, and 3 Appeal 2017-002854 Application 13/582,837 claims 16—19, 22, and 23 over Arnold in view of Pyle, Kono and Lewis are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation