Ex Parte Marechal et al

Patent Trial and Appeal Board

Nov 30, 2016

13500942 (P.T.A.B. Nov. 30, 2016)

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.
13/500,942 06/18/2012 Jean-Marc Marechal 338180-00523 7191
35161 7590 11/30/2016
DTrKTNSON WRIGHT PT T C EXAMINER
1825 Eye St., NW PENG, KUO LIANG
Suite 900
WASHINGTON, DC 20006 ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
11/30/2016 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 JEAN-MARC MARECHAL, STEPHANIE De LANDTSHEER,
and JEAN-MICHEL FAVROT
Appeal 2015-008152
Application 13/500,942
Technology Center 1700
Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MONTE T. SQUIRE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—14 and 16. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
Appeal 2015-008152
Application 13/500,942
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A diene elastomer, wherein:
- from 75% to 95% by weight of the diene elastomer is
monofimctional and carries, at just one chain end, a silanol functional
group or a polysiloxane block having a silanol end, the other end being
devoid of any functionalization, and
- from 5% to 25% by weight of the diene elastomer is coupled by
or star-branched by tin.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Takeichi US 6,228,908 B1 May 8, 2001
Nicolin WO 2009/077839 A1 June 28,2009
THE REJECTIONS
1. Claims 1—14 are rejected under 35 U.S.C. § 103(a) as obvious over
Nicolin.
2. Claim 16 under 35 U.S.C. § 103(a) as obvious over Nicolin in view of
Takeichi.
ANALYSIS
It is the Examiner’s position, inter alia, that Nicolin discloses the
presence of a non-functional anionic initiator for the reasons stated on pages
2
Appeal 2015-008152
Application 13/500,942
4—7 of the Answer. As such, the Examiner states that the living chain end of
the main chain can be partially star-branched with SnCl4 or SiCl4 to afford a
mixture of linear and radical chains. Ans. 4. Nicolin, p. 8,11. 3—9. The
Examiner states that the extent of star-branching is not disclosed in Nicolin,
but that such is a result effective variable and therefore obvious. Ans. 4.
Appellants dispute the aforementioned interpretation of Nicolin.
Appeal Br. 13. Reply Br. 2—3. Appellants state that the disclosure of
Nicolin at page 8, lines 6—9 does not include mixture with another elastomer
(contrary to the Examiner’s interpretation) when this disclosure is
considered within the context of the synthesis of a D3 functionalized
elastomer, which is the objective of Nicolin. Reply Br. 2—3. Appellants
explain:
[t]his objective, as explained by Nicolin at page 5, lines 6-13, is to
provide an S-SBR-type elastomer “functionalized at the extremity.”
The functionalization considered by Nicolin is not merely the silanol
functionality, but also include[s] the various functional groups
described on pages 7-8, including an amine group, such as those
structures given at page 7, line 13. Nicolin discloses that such
functionalization may occur at both extremities of a linear chain by
the additional use of a functionalized terminator at page 17, lines 17-
23. The introduction of an amine functional group can be made by
using a functional initiator, such as lithium amides, as is known in the
art. Nicolin explicitly considers only alky lithium initiators,
particularly at page 16 thereof, because Nicolin focuses on
functionalization with D3. The alkyl lithium initiators are those
normally employed in the art. However, this does not exclude the use
of functionalized initiators as mentioned at page 17. The resulting
active functionalized chains may then be further functionalized by any
functionalizing agent known to react with living polymers, including
coupling or starring agents, such as SiCl4 or SnCl4. The reaction
schemes are shown below:
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Appeal 2015-008152
Application 13/500,942
Random copolymerization:
BD/St + R2N-Li -► R2N-SBR-C'Li+
Termination:
R2N-SBR-CXR+MCI4 -> (R2N-SBR)4M
The (R2N-SBR)4M elastomer having radial polymeric chains is in
accordance with the objectives of Nicolin, because it is an SBR-type
elastomer that is functionalized at the extremity. This is the type of
elastomer to which Nicolin refers in the disclosure at page 8, lines 6-9.
Reply Br. 3^4.
Appellants explain that it is not possible to obtain this type of
structure when a silanol functionalization is used instead of an amine
functionalization. Reply Br. 4. Appellants submit that the quotation at page
8, lines 6—9 of Nicolin would therefore be understood by one skilled in the
art as referring to elastomers functionalized at the extremity with radial
polymeric chains, or even a mixture of linear and radial chains in order to
satisfy the objectives of Nicolin. Appellants state that Nicolin specifies that
this is to occur in “appropriate conditions,” which are that the end
functionalized elastomer is still reactive relative to further coupling agents.
As a result, Appellants submit that Nicolin cannot be fairly read as
disclosing a mixture of elastomers functionalized at the extremity and
elastomers not functionalized at the extremity. Appellants submit that to
assert otherwise requires the Office to interpose its own judgment as to what
one of ordinary skill in the art would understand while disregarding the
context provided by Nicolin with respect to the disclosed objectives thereof.
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Appeal 2015-008152
Application 13/500,942
We are persuaded by Appellants’ stated position in the record. See
Baltimore & Ohio R. Co. v. Aberdeen & Rockfish R. Co., 393 U.S. 87, 91—
92 (1968) (requiring administrative agencies to rely on “substantial evidence
and reasoned findings” rather than their own technical expertise).
In view of the above, we reverse Rejection 1. We also reverse
Rejection 2 because the Examiner does not rely upon the additional applied
reference of Rejection 2 to cure the stated deficiencies of Nicolin.
DECISION
Each rejection is reversed.
ORDER
REVERSED
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