Ex Parte Lesage et alDownload PDFPatent Trial and Appeal BoardJan 22, 201812668598 (P.T.A.B. Jan. 22, 2018) 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. 12/668,598 06/26/2010 Pierre Lesage 5460-242PUS 7298 27799 7590 Cozen O'Connor 277 Park Avenue, 20th floor NEW YORK, NY 10172 EXAMINER MAKI, STEVEN D ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 01/24/2018 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): patentsecretary @ cozen. com patentdocket@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PIERRE LESAGE and EMMANUEL CUSTODERO Appeal 2017-005190 Application 12/668,5981 Technology Center 1700 Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and JAMES C. HOUSEL, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1—7, 14, 17—21, and 24.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real parties in interest as COMPAGNIE GENERALE DES ETABLISSEMENTS MICHELIN and Michelin Recherche et Technique S.A. (Appeal Br. 2). 2 Claims 22 and 23 have been withdrawn from consideration. Appeal 2017-005190 Application 12/668,598 Independent claim 1 is illustrative of the subject matter on appeal (emphases added): 1. An inflatable article equipped with a layer impermeable to inflation gases, wherein said layer comprises an elastomer composition comprising at least, as the sole elastomer or as the predominant elastomer by weight, a thermoplastic styrene elastomer ("TPS") and a platy fdler having a volume content of no less than 9% (%> by volume of the elastomer composition), the platy filler being selected from the group consisting of graphites, micas, and combinations thereof, wherein the elastomer composition also comprises between 20 and 80 phr (parts by weight per hundred parts of total elastomer in the elastomer composition) polyisobutylene oil and is free of a paraffinic oil. The Examiner maintains the following rejections3: (a) claims 1—7, 14, and 17—21 under 35 U.S.C. § 103(a) as being unpatentable over Yaguchi et al., (JP 2001-279051 A, published Oct. 10, 2001) (“Yaguchi”) in view of Waddell et al., (WO 2005/017013 Al, published Feb. 24, 2005) (“Waddell ’013”), Wada et al., (US 2002/0151636 Al, published Oct. 17, 2002) (“Wada”), Igawa et al., (JP 2005-263856 A, published Sept. 29, 2005) (“Igawa”), and Waddell et al., (WO 2007/070053 Al, published June 21, 2007) (“Waddell ’053”); and (b) claim 24 under 35 U.S.C. § 103(a) as being unpatentable over Tawara et al., (JP 06-107896 A, published Apr. 19, 1994) (“Tawara”) in view of Waddell ’013, Wada, Igawa, and Waddell ’053. 3 We refer to the Specification, filed Jan. 11, 2010 (“Spec.”); Final Office Action, mailed Aug. 14, 2015 (“Final Act.”); Appeal Brief, filed May 10, 2016 (“Appeal Br.”); Examiner’s Answer, mailed Nov. 28, 2016 (“Ans.”); and, the Reply Brief, filed Jan. 26, 2017 (“Reply Br.”). 2 Appeal 2017-005190 Application 12/668,598 ANALYSIS The § 103(a) rejection over Yaguchi, Waddell ‘013, Wada, Igawa, and Waddell ‘053 Appellants’ principal argument for claim 1 is that it would not have been obvious to one of ordinary skill in the art to have modified the polymer of Yaguchi in view of the teachings of Waddell ’013, Wada, Igawa, or Waddell ’053 (Appeal Br. 5—13; Reply Br. 2—7). Specifically, Appellants assert that a) the polymers of Waddell, Wada, and Igawa differ from that of Yaguchi, which is a triblock copolymer of styrene/isobutylene/styrene and a rubber composition, b) the Examiner is impermissibly picking and choosing non-preferred limitations from the applied references, and, c) the applied references do not disclose a composition including a thermoplastic styrene elastomer, a platy filler having a volume content of no less than 9%, and 20— 80 phr of polyisobutylene oil that is free of paraffinic oil, as recited in claim 1 (Appeal Br. 5—6, 9-11). Appellants’ arguments are not persuasive. The Examiner finds Yaguchi discloses a composition including a styrene/isobutylene/styrene triblock copolymer and a rubber composition that may include a filler, such as mica or flake graphite, and a low molecular weight liquid polymer, such as liquefied polybutene (Ans. 2—3). Yaguchi discloses an example in which the composition includes a styrene/isobutylene/styrene copolymer and discloses that the material can include mica or flake graphite as a bulking agent and include a low molecular weight liquid polymer, such as liquefied polybutene (Yaguchi || 27, 28, 35). Thus, the disclosure of Yaguchi supports the Examiner’s findings. Yaguchi also discloses, and the Examiner 3 Appeal 2017-005190 Application 12/668,598 finds, that the material is useful for a seal and for a pneumatic tire (Ans. 3; Yaguchi 11). The Examiner finds Yaguchi does not disclose that its material is used as an inner liner for a pneumatic tire or the volume content of platy filler recited in claim 1 (Ans. 3—4). However, the disclosures of the secondary references demonstrate these limitations were known in the art. For example, the Examiner finds Wada discloses a rubber composition for an inner liner of a tire that includes 10—200 parts by weight of mica {id. 4—6). Wada discloses a rubber composition for an inner liner of a pneumatic tire that can include a layered or plate-like mineral, such as mica, in an amount of 10-200 parts by weight (Wada 1,21, 24). Thus, the disclosure of Wada supports the Examiner’s findings. The Examiner finds the amount of filler disclosed by Wada overlaps with the range recited in claim 14 and also concludes it would have been obvious to determine the optimal amount of filler via routine experimentation (Ans. 5—6). Appellants argue Wada’s teachings of filler amount are only limited to the specific composition including butyl rubber disclosed by Wada and therefore one of ordinary skill in the art would have lacked a reason or reasonable expectation of success for modifying Yaguchi in view of Wada (Appeal Br. 6—9). This argument is unpersuasive. Although Wada discloses an embodiment including butyl rubber (Wada 110), Wada also discloses an embodiment in which the rubber component “preferably comprises 60 to 100% by weight of a diene rubber” {id. 112). Wada discloses the diene 4 The Examiner finds the filler amount of 10—200 parts by weight mica disclosed by Wada overlaps the range of platy filler recited in claim 1, citing the conversions between parts by weight and volume % in Appellants’ Specification. Appellants do not dispute these findings. 4 Appeal 2017-005190 Application 12/668,598 rubber can be styrene-butadiene rubber (id. 118). Thus, the disclosure of Wada is not limited to butyl rubbers, as asserted by Appellants, but includes copolymers similar to that of Yaguchi. Furthermore, the Examiner finds Wada discloses its plate-like filler (e.g., mica) functions to prevent air from traveling along a straight path through a polymer composition, which lowers its air permeability, and this effect is independent of the type of elastomer used for a tire inner liner (Ans. 14). Appellants do not dispute the Examiner’s finding. In addition, the case law cited by Appellants (Appeal Br. 10-11) do not support their picking and choosing argument. The cited portions of Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc. and Sanofi- Synthelabo v. Apotex, Inc. regard anticipation, not obviousness (471 F.3d 1369, 1376-77 (Fed. Cir. 2006); 470 F.3d 1368, 1377-78 (Fed. Cir. 2006) and the Federal Circuit did not address obviousness in Pfizer, Inc. v. Ranbaxy Laboratories, Ltd. (457 F.3d 1284, 1291—92 (Fed. Cir. 2006) (finding invalidity under § 112,14)). Conversely, case law supports a conclusion of obviousness based upon the combination of disclosures from amongst various disclosures of the prior art. For instance, in a determination of obviousness, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art (see, e.g., Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art”)). Further, although a “reference must clearly and unequivocally disclose the 5 Appeal 2017-005190 Application 12/668,598 claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures” in the context of a rejection under 35 U.S.C. § 102, “[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objecti ve evidence any inference of obviousness wh ich may arise from the similarity of the subject matter” {In reArkley, 455 F.2d 586, 587—88 (CCPA 1972)). Here, the Examiner finds the compositions of Yaguchi of Wada are similar and in the same field of endeavor (Ans. 5, 15). These findings are supported by the disclosures of Yaguchi and Wada (Yaguchi H 1, 25, 35; Wada H1, 12, 18). Thus, Appellants’ arguments do not identify a reversible error in the Examiner’s rejection. With regard to the amount of polyisobutylene oil recited in claim 1, the Examiner finds Waddell ’013 and Waddell ’053 disclose this limitation (Ans. 7). Waddell ’053, for example, discloses processing aids for the production of elastomeric compositions, such as styrene-butadiene compositions (Waddell ’053 H 1,31). Waddell ’053 discloses that processing oils used in the past, such as paraffinic oils, could cause the permeability of an inner liner to increase {id. 17). In view of this, Waddell ’053 discloses the use of processing oils, such as polysiobutylene; that the processing oil can be free of paraffinic oils; and that processing oil can be used in an amount of 1—60 phr, which overlaps the range recited in claim 1 {id. 112, 142, 151). Thus, at least the disclosure of Waddell ’053 supports the Examiner’s findings regarding the range of polyisobutylene oil recited in claim 1. Furthermore, the disclosure of Waddell ’053 provides a 6 Appeal 2017-005190 Application 12/668,598 rationale for using its oil (i.e., to avoid paraffinic oils that can reduce permeability). Appellants assert that test results in Appellants’ Specification demonstrate unexpected results for the article of claim 1 (Appeal Br. 11—13). However, the Examiner finds the asserted results would have been expected because the Yaguchi discloses the same elastomer in claim 1 and the secondary references, such as Wada, disclose the beneficial effects of a platy filler upon air permeability and a polyisobutylene oil that is free of a paraffinic oil, as discussed with regard to Waddell ’053 above (Ans. 20). Appellants do not adequately dispute these findings. Moreover, the asserted results are not commensurate in scope with the claimed invention. “Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” {In re Greenfield, 571 F.2d at 1189, 197 USPQ at 230 (quoting In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971))). Here, Tables 1 and 2 of Appellants’ Specification (Spec. 14—15) each use a single amount of oil (67 phr and 55 phr, respectively) but claim 1 encompasses polyisobutylene oil in an amount of 20—80 phr. Claim 1 also does not recite an upper limit for the amount of platy filler, besides what is permitted by the inclusion of elastomer(s) and the recited amount of polyisobutylene oil, but Tables 1 and 2 include amounts only up to 15 and 25 volume %, respectively. Moreover, the tests in Tables 1 and 2 use a single elastomer but claim 1 encompasses compositions that include other elastomers (i.e., compositions in which a thermoplastic styrene elastomer is 7 Appeal 2017-005190 Application 12/668,598 “the predominant elastomer”). Appellants assert that “a person of ordinary skill in the art would have no difficulty to understand that the beneficial results shown in the specification concerning the combination of platy filler, polyisobutylene oil, and TPS . . . can be reasonably extended to the entire scope of claim 1” (Appeal Br. 13), but there is no evidence in the record to support this assertion. Based on the foregoing, the Appellants’ evidence of unexpected results is entitled to little weight. A preponderance of the evidence supports the Examiner’s rejection of claim 1 under § 103. Appellants do not argue claims 2—7, 14, and 17—21 separately from claim 1 (Appeal Br. 13). For the reasons discussed above and those set forth in the Examiner’s Answer, we sustain the Examiner’s § 103(a) rejection of claims 1—7, 14, and 17—21 over Yaguchi in view of Waddell ’013, Wada, Igawa, and Waddell ‘053. The § 103(a) rejection over Tawara, Waddell ’013, Wada, Igawa, and Waddell ‘053 For claim 24, Appellants merely reiterate the arguments set forth in support of the patentability of claim 1 and cite the unexpected results discussed above (Appeal Br. 13—14). As discussed above with regard to claim 1, these arguments are unpersuasive and the asserted unexpected results are entitled to little weight in view of the Examiner’s findings that they are expected and because they are not commensurate in scope with claim 24 (for at least the reasons discussed above regarding the claimed ranges of platy filler and polyisobutylene, which also apply to claim 24). 8 Appeal 2017-005190 Application 12/668,598 For these reasons and those set forth in the Examiner’s Answer, we sustain the Examiner’s § 103(a) rejection of claim 24 over Tawara, Waddell ’013, Wada, Igawa, and Waddell ’053. DECISION The Examiner’s rejection of claims 1—7, 14, 17—21, and 24 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 9 Copy with citationCopy as parenthetical citation