13701375 (P.T.A.B. Sep. 9, 2016)

Ex Parte Hinohara et al

Patent Trial and Appeal BoardSep 9, 2016

13701375 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131701,375 11130/2012 127226 7590 09/13/2016 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 FIRST NAMED INVENTOR Yuko Hinohara 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. 5051-0237PUS 1 4115 EXAMINER CHRISTENSEN, CHELSEA MULLANEY ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 09/13/2016 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUKO HINOHARA, KAZUYUKI NISHIOKA, and TAKAHIRO MABUCHI Appeal2015-001718 Application 13/701,375 Technology Center 1700 Before: BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1-10 and 12-14.2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The real party in interest is identified as SUMITOMO RUBBER INDUSTRIES, LTD. (Appeal Brief, filed August 8 2014 ("App. Br."), 1.) 2 No reply brief has been filed. Appeal2015-001718 Application 13/701,375 CLAIMED SUBJECT MATTER The claims are directed to a rubber composition and pneumatic tire said to have "achieve[ d] a well-balanced improvement in fuel economy, wet- grip performance, and abrasion resistance." (Spec. ,-i 5.) 3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A rubber composition, comprising a rubber component and silica, wherein the rubber component contains not less than 5% by mass of a conjugated diene polymer; based on 100% by mass of the rubber component, the conjugated diene polymer comprising a constituent unit derived from a conjugated diene and a constituent unit represented by the following formula (I): X1 sÂ·.Â·. Â·x3 -Â·r-... I ~2 x (I) wherein xi, X2, and X3 each independently represent a group represented by the formula (Ia) below, a hydroxyl group, a hydrocarbyl group, or a substituted hydrocarbyl group, and at least two of the xi, X2, and X3 are hydroxyl groups: (Ia) wherein Ri and R2 each independently represent a Ci-6 hydrocarbyl group, a Ci-6 substituted hydrocarbyl group, a silyl 3 Application 13/701,375, Rubber Composition and Pneumatic Tire, filed November 30 2012. We refer to the '"375 Specification," which we cite as "Spec." 2 Appeal2015-001718 Application 13/701,375 group, or a substituted silyl group, and the R1 and R2 may be bonded to each other to form a cyclic structure together with the nitrogen atom, at least one terminal of the conjugated diene polymer being modified by a compound containing a group represented by the following formula (II): 0 ----Â·~ -(T)p.--A (II) wherein p represents an integer of 0 or l; T represents a C1-20 hydrocarbylene group or a C1-20 substituted hydrocarbylene group; and A represents a functional group containing a nitrogen atom, and wherein the silica is contained in an amount of 5 to 150 parts by mass per 100 parts by mass of the rubber component. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: OSHil'v1A US 2010/0056712 Al l'v1ar. 4, 2010 REJECTIONS A. Claims 1-10 and 14 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Oshima. B. Claims 12 and 13 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Oshima. 4 OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. 4 Examiner's Answer mailed September 18 2014 ("Ans."), 2, 6. 3 Appeal2015-001718 Application 13/701,375 Claim 15 The prior art reference Oshima provides "a conjugated diene polymer that can give a polymer composition having excellent fuel economy, a polymer composition formed by combining the conjugated diene polymer and a filler such as silica, and a method for producing the conjugated diene polymer." (Oshima ii 5.) In particular, Oshima discloses a "first aspect of the invention" which "relates a conjugated diene polymer comprising a conjugated diene-based constituent unit and a constituent unit of formula (I), at least one terminus of the polymer being modified by a compound having a linkage of formula (II)." (Id. ii 6.) A comparison between the prior art "formula (I)" and the claimed conjugated diene polymer is shown in Table 1 below: Formula I Formula Ia Formula II Prior Art RJ 0 Oshima -CH2-ClI- I II xi l. x; Â·-N -c-cn -A \ ..... ... Â· lp .. . --~_r-/' I R2 x2 Claim 1 ~-CH2-CH-- R1 0 ------~N/ II "T~ X1-Si-X3 " 2 ----C-\ Â·-~A 12 R Table 1. A Comparison Between Oshima and Claim 1 5 Claims 2, 4-8, 10, 12, and 13 stand or fall with claim 1. 4 Appeal2015-001718 Application 13/701,375 The Examiner finds that the prior art conjugated diene polymer "is present in an amount greater than 10 parts by mass of the rubber component" and includes 10-150 parts by weight of silica which overlaps with the "5 to 150 parts by weight" of silica recited in claim 1. (Ans. 3 (citing Oshima iii! 126, 136).) The Examiner also finds that the prior art "formula (I)" includes "Xi, X 2, and X 3" and that it is "preferable that two or more of xi, X2, and X3 are hydroxyl group or a group of formula (Ia)." (Id. (citing Oshima iJ 28).) It is undisputed that Oshima discloses every limitation of claim 1 except "at least two of the xi' X2, and X3 are hydroxyl groups" as recited in claim 1. (App. Br. 8.) Appellants argue that because the prior art "formula (Ia)" may include "an acyclic amino group and a cyclic amino group," the prior art reference "lists many possible compounds, with working examples not directed to the instantly claimed invention, such that it does not produce immediate recognition by the person having ordinary skill in the art [] of the claimed conjugated diene polymer," it does not anticipate Oshima. (Id (citing Oshima iJ 21 ). ) As the Examiner points out, Oshima discloses two possibilities for the "two or more xi, X 2, and X 3." (Ans. 7.) The two or more xi, X 2, and X 3 may either be a "hydroxyl group" as one possibility or "formula (Ia)" as the other possibility. (Id; see also Oshima iJ 28.) While Oshima discloses that "at least two of the xi, X2, and X3" may include "an acyclic amino group and a cyclic amino group," Oshima also discloses that "at least two of the xi, X2, and X3" may, in the alternative, include two or more hydroxyl groups as recited in claim 1. (Oshima iJ 28.) 5 Appeal2015-001718 Application 13/701,375 Appellants cite Jn re Petering, 301F.2d676 (CCPA 1962) in support of their argument. (App. Br. 9.) The Petering court upheld the section 102(b) anticipation rejection of a claim that covered specific chemical compounds based on a class of prior art compounds of which those specific compounds were members. 301 F.2d at 682. The court found that because "specific preferences" for certain compounds were disclosed in the prior art, the narrowed generic formula includes a limited class of approximately twenty compounds thus anticipating the claim at issue. Id. In this case, based on the disclosure that it is "preferable that two or more of xi, X2, and X3 are hydroxyl group" (Oshima iJ 2 8), a skilled artisan would have "envisaged" a compound having "at least two of the xi' X2' and X3 [that] are hydroxyl groups" as recited in claim 1. See Petering, 301 F.2d at 681. Appellants' assertion that there are "84 possible combinations" of xi, X2, and X3 is based on the specific examples of the acyclic amino group and cyclic amino group which are not recited in claim 1. (App. Br. 10.) The argument therefore fails because it is "not based on limitations appearing in the claims." Cf In re Self, 671F.2d1344, 1348 (CCPA 1982). In any event, the number of possibilities does not confer patentability as the polymer recited in claim 1 is explicitly described in Oshima. Appellants also present a declaration by co-inventor Mr. Kazuyuki Nishioka in support of the patentability argument. 6 The declaration compares the claimed compound to an Oshima compound and concludes that "the groups described in paragraph [0029] of Oshima '712 which lack 6 Declaration dated November 18, 2013 by Kazuyuki Nishioka (cited as "Declaration"). 6 Appeal2015-001718 Application 13/701,375 the covalent bonding to silica" is inferior to the claimed compound. (Declaration iJ 6.) Appellants argue that the Declaration shows "substantial improvement ... such as wet-grip performance" in the claimed compound. (App. Br. 11.) "Evidence of secondary considerations, such as unexpected results, is irrelevant to a 35 U.S.C. Â§ 102 rejection and thus cannot overcome a rejection so based." In re Wiggins, 488 F.2d 538, 543 (CCPA 1973). We therefore do not find reversible error in the Examiner's findings on this basis.7 7 Even if unexpected results were to be considered here, we note that Appellants have not carried the burden to show such results. "Mere improvement in properties does not always suffice to show unexpected results." In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). Neither Appellants nor Mr. Nishioka has explained what the "expected" results might be and why the "enhancement of fuel economy, wet-grip performance, and abrasion resistance in a more balanced manner" said to be manifested by the claimed compound is considered "unexpected" over the prior art. (See Declaration, pg. 3--4; App. Br. 11 (stating that the testing shows "substantial improvement" without explaining why it suffices to show unexpected results)). We further note that Appellants have not shown that "the comparative testing [is] between the claimed invention and the closest prior art." See In re Fenn, 639 F.2d 762, 765 (CCPA 1981). 7 Appeal2015-001718 Application 13/701,375 Claims 3, 9, and 14 Claim 3 depends from claim 1 and additionally recites "wherein two of the xi, X2, and X3 in the formula (I) are hydroxyl group." Based on the express disclosure in Oshima that "it is more preferable two of the xi, X2, and X3 are a hydroxyl group," (Oshima ii 28), the Examiner finds that claim 3 is anticipated by Oshima. (FR. 3.) For the reasons with regard to claim 1, we are not persuaded by Appellants' argument here which also relates to the multiple possible prior art combinations based on the acyclic amino group and cyclic amino group. Claim 9 depends from claim 1 and additionally recites "comprising at least one of natural rubber and butadiene rubber." Claim 14 depends from claim 1 and additionally recites "comprising natural rubber and butadiene rubber." Appellants do not dispute that Oshima discloses "natural rubber" and "conventional styrene-butadiene copolymer rubber" (see Ans. 8 (citing Oshima ii 127); see also App. Br. 12) but again argue that claims 9 and 14 are patentable in light of the multiple prior art combinations based on the acyclic amino group and cyclic amino group. We are not persuaded by the argument for reasons discussed with regard to claim 1 supra. DECISION The Examiner's rejection of claims 1-10 and 12-14 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a). See 37 C.F.R. Â§ l.136(a)(l )(iv). AFFIRMED 8