11222362 (B.P.A.I. Feb. 22, 2011)

Ex Parte Kanz et al

Board of Patent Appeals and InterferencesFeb 22, 2011

11222362 (B.P.A.I. Feb. 22, 2011)

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. 11/222,362 09/08/2005 Carlo Kanz DN2005082 6406 27280 7590 02/22/2011 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 1762 MAIL DATE DELIVERY MODE 02/22/2011 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 CARLO KANZ and UWE ERNST FRANK ________________ Appeal 2010-002578 Application 11/222,362 Technology Center 1700 ________________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and LINDA M. GAUDETTE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-18, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). 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 2010-002578 Application 11/222,362 The Invention The Appellants claim a pneumatic tire made using a specified rubber composition. Claim 1 is illustrative: 1. A pneumatic tire having at least one component comprising a sulfur vulcanizable rubber composition, the rubber composition comprising: at least one diene based rubber selected from the group consisting of natural rubber, synthetic polyisoprene, polybutadiene, and styrene-butadiene rubber; carbon black, and zinc porphyrin; wherein the total zinc content of the rubber composition is less than 1.5 phr as zinc metal. The References Kawahara 5,371,122 Dec. 6, 1994 Achenbach 5,847,034 Dec. 8, 1998 Yatsuyanagi 6,337,361 B1 Jan. 8, 2002 Zanzig 2002/0144761 A1 Oct. 10, 2002 The Rejections Claims 1-18 stand rejected under 35 U.S.C. § 103 over Zanzig in view of Kawahara, Achenbach and Yatsuyanagi. 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, the inclusion of carbon black in Zanzig’s non-black colored sidewall portion integral with a plurality of non- black colored tread grooves? Findings of Fact and Analysis Zanzig discloses a black-colored rubber tire having a non-black colored sidewall portion integral with a plurality of non-black colored tread grooves (¶ 0001). The non-black portion is made of a non-black colored 2 Appeal 2010-002578 Application 11/222,362 rubber composition which is “exclusive of carbon black” (¶¶ 0001, 0024, 0076). Kawahara discloses porphyrin derivatives as colorants for resins such as polycarbonate, polystyrene, polymethyl methacrylate, polyester, polyamide and the like (col. 1, ll. 8-10; col. 2, ll. 61-63; col. 5, ll. 1-6, 39- 65). Kawahara indicates that the colored resins provide even coloring, good colorant availability and, for electrophotographic receptors, heat mode memories and the like, good resolving power and resolution (col. 1, ll. 29- 36). The Examiner argues that it would have been obvious to one of ordinary skill in the art to use Kawahara’s porphyrin derivative as the colorant in Zanzig’s non-black portion to provide more even coloring (Ans. 5). The Appellants argue that Zanzig’s non-black portion is exclusive of carbon black, whereas their claims require carbon black (Br. 5-6). The Examiner responds that “carbon black can be added in various amounts along with other colorant to obtain different variation[s] of black” (Ans. 7-8). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner has not established that in view of Zanzig’s disclosure that the non-black portion is exclusive of carbon black, the applied prior art would have provided one of ordinary skill in the art with an apparent reason to include in the non-black rubber composition even the smallest amount of carbon black. 3 Appeal 2010-002578 Application 11/222,362 The Examiner argues that in Zanzig’s Tables 1 and 3 both the samples and control samples include carbon black (Ans. 6-7). That is incorrect. In those tables only control sample A contains carbon black. The amount of carbon black in samples B-D is “0”. The Examiner argues that “[t]he less preferable teachings such as the control samples can also be used for teachings” (Ans. 7). That argument is not well taken because Zanzig’s control sample is not a less preferable non-black rubber composition but, rather, is a black rubber composition that is compared to suitable non-black rubber compositions (¶ 0083). Achenbach discloses porphyrins as heat stabilizers for crosslinkable silicone rubber compositions (col. 1, ll. 5-8; col. 4, ll. 61-64). “The thermally stabilized crosslinkable silicone rubber compositions are suitable for producing high-temperature resistant silicone rubber articles such as seals, sealing materials, electrical insulation materials for the electrical industry and for automobile construction, heat-stressed conveyor belts, coverings on rollers, hoses and films” (col. 9, ll. 1-6). The Appellants argue that the rubbers recited in the Appellants’ independent claims (1 and 4) “are structural[ly] and chemically dissimilar to silicone rubber, and there is simply no reason one skilled in the art would expect [a] similar effect of porphyrin on the heat stability of natural rubber, synthetic polyisoprene, polybutadiene, or styrene-butadiene rubber compositions” (Br. 7). The Examiner argues that Yatsuyanagi indicates that polysiloxane rubbers and Zanzig’s styrene/butadiene, polybutadiene, polyisoprene rubbers (Tables 1, 3) are functional equivalents (Ans. 6, 8). 4 Appeal 2010-002578 Application 11/222,362 Yatsuyanagi coats silica with a polysiloxane having alkoxysilyl groups and/or acyloxysilyl groups so that those groups react with polar silanol groups on the silica’s surface to make the silica more compatible with nonpolar rubber and to prevent those silanol groups from cohering and thereby increasing a rubber composition’s viscosity, and from adsorbing a rubber vulcanization accelerator and thereby delaying vulcanization (col. 4, ll. 8-16, 33-43). Yatsuyanagi lists rubbers including those of Zanzig as the main ingredient of a rubber composition (col. 7, ll. 38-47). Yatsuyanagi does not teach that those rubbers and the polysiloxane are functional equivalents. 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, the inclusion of carbon black in Zanzig’s non-black colored sidewall portion integral with a plurality of non- black colored tread grooves. DECISION/ORDER The rejection of claims 1-18 under 35 U.S.C. § 103 over Zanzig in view of Kawahara, Achenbach and Yatsuyanagi is reversed. It is ordered that the Examiner’s decision is reversed. REVERSED ssl THE GOODYEAR TIRE & RUBBER COMPANY INTELLECTUAL PROPERTY DEPARTMENT 823 1144 EAST MARKET STREET AKRON, OH 44316-0001 5