Ex Parte Joseph

Patent Trial and Appeal Board

Jun 23, 2017

14343958 (P.T.A.B. Jun. 23, 2017)

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.
14/343,958 03/31/2014 Aurelie Joseph 338180-01052 3029
35161 7590 06/23/2017
DICKINSON WRIGHT PLLC
1825 Eye St., NW
Suite 900
WASHINGTON, DC 20006
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
06/23/2017 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 AURELIE JOSEPH
__________

Appeal 2016-007077
Application 14/343,958
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
DONNA M. PRAISS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2016-007077
Application 14/343,958

2
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1–3, 5–9, 11, 13, and 16–20. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
We REVERSE.
Appellant’s invention is directed to a tire tread composition and an
off-road tire made from the composition (Spec. ¶ 17).
Claim 1 is illustrative:
1. An off-road tire tread comprising a composition based on at
least one reinforcing filler comprising:
carbon black;
a non-reinforcing filler comprising non-bonded silica in an
amount of 2 to 3 5 parts by weight per hundred parts by weight
of elastomer (phr);
a crosslinking system;
from 50 to 80 phr of at least one isoprene elastomer; and
from 20 to 50 phr of at least one polybutadiene having a high
vinyl content;
wherein the total content of the at least one isoprene elastomer
and the at least one polybutadiene having a high vinyl content is
from 90 to 100 phr;
wherein the at least one polybutadiene having a high vinyl
content is a homopolymer of 1,3-butadiene having a high vinyl
content; and
wherein the off-road tire tread is suitable for an off-road tire.

Appellant appeals the following rejections:
Appeal 2016-007077
Application 14/343,958

3
1. Claims 1–3, 5–9, 11, and 16–20 are rejected 35 U.S.C. § 103(a)
as unpatentable over Lopitaux1 (US 2010/0099796 A1, published
Apr.22, 2010).
2. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lopitaux in view of Halasa (US 5,686,560, issued Nov. 11, 1997).

FINDINGS OF FACT & ANALYSIS
Appellant argues that Lopitaux fails to teach a non-reinforcing filler
comprising non-bonded silica in an amount of 2 to 35 parts by weight per
hundred parts by weight of elastomer (phr) as recited in claim 1, because
Lopitaux teaches a reinforcing filler that requires a coupling agent (Br. 5–6).
Appellant contends that the Examiner has not shown where Lopitaux teaches
that the coupling agent in Lopitaux’s reinforcing filler is optional, thereby
teaching a non-reinforcing filler as required by claim 1 (Br. 6).
The preponderance of the evidence favors Appellant’s argument of
nonobviousness. The Examiner’s rejection of claim 1, the only independent
claim, is based upon a finding that Lopitaux teaches a non-reinforcing filler
as recited in claim 1 because the coupling agent in the reinforcing filler is
optional (Non-Final Act. 15; Ans. 3). Therefore, the dispositive issue for
this appeal is whether Lopitaux teaches a non-reinforcing filler by teaching
that the coupling agent for its filler is optional. The Examiner cites to
paragraphs 72, 73, 76, 94, 95, and 151 of Lopitaux as teaching that the use
of a coupling agent with the reinforcing agent is optional (Ans. 3–12).
Paragraph 76 of Lopitaux defines “reinforcing inorganic filler” as “any

1 We note that Lopitaux and the present invention share the same real party
in interest, Michelin Recherche et Techniques, S.A. Br. 2.
Appeal 2016-007077
Application 14/343,958

4
inorganic or mineral filler . . . capable of reinforcing by itself alone, without
means other than an intermediate coupling agent, a rubber composition
intended for the manufacture of tyres . . . ; such a filler is generally
characterized, in a known way, by the presence of hydroxyl (–OH) groups at
its surface.” (emphasis added).
The Examiner finds that the phrase “without means other than an
intermediate coupling agent” (¶ 76) does not mean or imply that an
intermediate coupling agent is required (Ans. 5). The Examiner finds that
this portion of paragraph 76 discloses that the reinforcing inorganic filler is
reinforcing by its own without an intermediate, other than a coupling agent
(id.). The Examiner finds that Lopitaux excludes other intermediates other
than a coupling agent, but this does not mean that a coupling agent is
necessary. Id. Contrary to the Examiner, we agree with Appellant that
paragraph 76 defines reinforcing inorganic filler as material that requires a
coupling agent to affect reinforcement. In other words, Lopitaux’s
reinforcing agent requires a coupling agent.
Our understanding is supported by Lopitaux’s paragraph 95 that
teaches that an organic filler may be used, but the organic filler needs a silica
coating or else other coating that provides hydroxyl functionalities as the
filler surface to require coupling agents to form the connection between the
filler and the elastomer. The Examiner’s interpretation that “or else” in
paragraph 95 describes two embodiments: (1) an organic filler with silica
coating and (2) an organic filler with a hydroxyl functionality coating
requiring a coupling agent is not supported by the preponderance of the
evidence. Rather, Appellant has the better position that paragraph 95 should
be read as disclosing an organic filler coated either with silica or an hydroxyl
Appeal 2016-007077
Application 14/343,958

5
functionality coating each of which requires a coupling agent. The
Appellant’s interpretation is supported by the disclosure in paragraph 76 as
noted above.
Paragraph 151 of Lopitaux discloses that “by way of example, the
non-productive phase is carried out in a single thermomechanical stage
during which in a first step, all the necessary base constituents (diene
elastomer, reinforcing filler and coupling agent, if necessary, plasticizing
system) are introduced into the appropriate mixer. . . .” (emphasis added).
The Examiner reads this passage as stating that the coupling agent is
optional (Ans. 7). The grammar of that sentence seems to tie the “if
necessary” modifier to the combination of reinforcing filler and coupling
agent. In other words, the use of a reinforcing agent and coupling agent are
used together, if necessary.
On this record, we find that the preponderance of the evidence does
not support a finding that Lopitaux teaches a non-reinforcing agent as
required by claim 1. We reverse the § 103 rejections (1) and (2) noted
above.

DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED