Ex Parte Mizuno

Board of Patent Appeals and Interferences

Sep 24, 2004

09784041 (B.P.A.I. Sep. 24, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YOICHI MIZUNO
____________
Appeal No. 2004-1862
Application No. 09/784,041
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ON BRIEF
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Before OWENS, KRATZ and DELMENDO, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claim 2, which is the only claim pending in this
application.
BACKGROUND
Appellant's invention relates to a pneumatic tire having a
bead portion wherein a specific rubber composition is employed in
the bead portion of the tire. An understanding of the invention
can be derived from a reading of appealed claim 2, which is
reproduced below.
Appeal No. 2004-1862
Application No. 09/784,041
Page 2
2. A heavy duty pneumatic tire, wherein said heavy
duty pneumatic tire employs in its bead portion a
chafer rubber composition,
wherein in said chafer rubber composition 55-75
parts by weight of carbon black having a nitrogen
absorption specific surface area of 70-120 m2/g and
0.2-0.5 parts by weight of 1, 3-bis
(citraconimidomethyl) benzene are blended with respect
to 100 part by weight of a rubber component including
30-50 parts by weight of natural rubber and/or
polyisoprene rubber and 50-70 parts weight of
polybutadiene rubber which has a syndiotactic crystal
content of at least 5% by weight, wherein a ratio S/A
of a blended amount of sulfur S and a blended amount of
vulcanization accelerator A is in a range between 0.25
and 0.5.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Matsue et al. (Matsue) 5,420,193 May 30, 1995
Majumdar et al. (Majumdar) 5,503,940 Apr. 02, 1996
Carter 5,807,918 Sep. 15, 1998
Muraoka et al. (Muraoka) 5,859,142 Jan. 12, 1999
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Muraoka in view of Majumdar, Matsue and Carter.
We refer to the brief and reply brief and to the answer for
a complete exposition of the opposing viewpoints expressed by
appellant and the examiner concerning the issues before us on
this appeal.
Appeal No. 2004-1862
Application No. 09/784,041
Page 3
OPINION
Having carefully considered each of appellant’s arguments
set forth in the brief and reply brief, appellant has not
persuaded us of reversible error on the part of the examiner.
Accordingly, we will affirm the examiner’s rejection for
substantially the reasons set forth by the examiner in the final
rejection and answer. We add the following for emphasis.
The examiner has correctly determined that Muraoka expressly
discloses a tire prepared with a rubber containing tire bead
chafer that substantially corresponds with the claimed tire but
for a few requirements of the specific tire bead chafer rubber
called for in appealed claim 2. See page 4 of the answer. In
this regard, the examiner (answer, pages 4 and 5) further
provides:
[Muraoka] is silent with respect to (i) the inclusion
of 1, 3-bis(citracoimidiomethyl) benzene or BCl in an
amount between 0.2 and 0.5 phr and (ii) the BET surface
area of the carbon black. Regarding the inclusion of
BCl, Majumdar describes the use of bis-imide compounds,
specifically BCl [Trademark: Perkalink 900], in an
amount between 0.1 and 5 phr in tire rubber
compositions formed of natural rubber and synthetic
rubbers (used as an adhesive) in order to, among other
things, improve durability and reduce reversion
(analogous to aging resistance)(Column 2, lines 27-54
and Column 3, lines 13-21). As such, one of ordinary
skill in the art at the time of the invention would
have found it obvious to include BCl in the chafer
composition of Muraoka, there being a reasonable
Appeal No. 2004-1862
Application No. 09/784,041
Page 4
1 At page 5 of the answer, the examiner maintains that
appellant has not challenged the factual veracity of the
examiner’s determination. In the reply brief, appellant refers
to a further factual determination of the examiner. Rather than
dispute those determinations, appellant offers an argument as to
the procedural correctness of the examiner’s factual findings.
However, this record does not reflect that appellant submitted a
petition seeking redress from the matters complained of. On this
record, we agree with the examiner that the noticed facts have
not been refuted in a timely manner by appellant.
expectation of success to obtain improved durability
and aging resistance in the chafer of Muraoka.
In this regard, Muraoka (column 4, lines 52-56) discloses
that “other additives for rubbers generally used in the
production of tires . . .” can be used in the chafer rubber
composition disclosed therein. Furthermore, the examiner (final
rejection, page 3) has made the factual determination that “anti-
reversion agents in general are conventionally employed in tire
components, especially those containing natural rubber, in order
to eliminate the reduction in crosslink density and ultimately
increase the strength and durability of the respective tire
component.” That factual determination has not been directly
refuted by appellant.1 Given this record, we determine that the
examiner has set forth a reasonable case establishing, prima
facie, that one of ordinary skill in the art would have been led
Appeal No. 2004-1862
Application No. 09/784,041
Page 5
2 We note that appellant does not offer any specific and
persuasive arguments that refute the examiner’s obviousness
position concerning the carbon black limitation of claim 2 based
on the combined teachings of the applied references for the
reasons stated in the answer. Consequently, we do not further
address that limitation herein.
to add BCl in an amount within the claimed addition amounts to
the chafer rubber of Muraoka.
Moreover, it is our view that the examiner has reasonably
determined that it would have been prima facie obvious for one of
ordinary skill in the art at the time of the invention to employ
a carbon black possessing a nitrogen adsorption specific surface
area with the range claimed in the chafer rubber of Muraoka based
on the combined teachings of the applied references for reasons
as set forth in the final rejection and answer. As noted by the
examiner, Muraoka (column 4, lines 1 and 2) discloses the use of
N220 and N330 carbon blacks. Those carbon blacks reasonably
correspond to carbon blacks identified in Table 2 at page 7 of
appellant’s specification as having a nitrogen adsorption
specific surface within the claimed range.
Consequently, we agree with the examiner that the evidence
furnished is sufficient to establish the prima facie obviousness
of the here claimed subject matter.2
Appeal No. 2004-1862
Application No. 09/784,041
Page 6
Appellant maintains that the examiner’s proposed
modification of Muraoka is not supported by the evidence relied
upon by the examiner. In this regard, appellant argues that
there is a lack of a legally specific suggestion for the
examiner’s proposed modification. Appellant further asserts that
the examiner appears to have employed impermissible hindsight in
fashioning the rejection on what could be termed an obvious to
try rationale. Appellant returns several times to Muraoka in
asserting that Muraoka developed a chafer rubber composition
having the desired properties of high aging resistance, high
durability and high hardness without using BCl. Consequently, in
appellant’s view that fact militates against the examiner’s
proposed modification.
We disagree with appellant’s arguments because Muraoka, as
discussed above, expressly teaches that the chafer rubber
composition disclosed therein can include additional rubber
additives that are generally used in tire production. Here, the
examiner has made the unchallenged factual determination that
reversion agents are such a generally used additive. Given the
disclosure in Majumdar that BCl is an anti-reversion agent (anti-
aging agent), one of ordinary skill in the art would have
reasonably expected that the addition of such an agent to the
Appeal No. 2004-1862
Application No. 09/784,041
Page 7
chafer rubber of Muraoka would also enhance properties of the
rubber composition of Muraoka that have been identified as being
of interest for such a chafer rubber. While we are cognizant of
a difference between the chafer rubber of Muraoka and the
adhesive composition (used as a cushion layer or splice material
in a tire) of Majumdar, we are also aware of the many
commonalities as pointed out by the examiner as well as the
unrefuted factual findings of the examiner concerning the
conventional use of anti-reversion agents with natural rubbers,
such as employed in Muraoka’s rubber composition. Here,
appellant has not satisfactorily explained why the examiner’s
position is in error given those factual findings of the examiner
that have not been refuted on this record.
Concerning appellant’s allegation of unexpected results
based on the test results reported in appellant’s specification,
we note that the question as to whether unexpected advantages
have been demonstrated is a factual question. In re Johnson, 747
F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984). Thus, it
is incumbent upon appellant to supply the factual basis to rebut
the prima facie case of obviousness established by the examiner.
See, e.g., In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972). Appellant, however, do not provide an adequate
Appeal No. 2004-1862
Application No. 09/784,041
Page 8
explanation regarding any factual showing in the specification,
that is referred to in the brief, to support a conclusion of
unexpected advantages for the reasons set forth by the examiner
in the answer.
In particular, appellant has not established that the test
results presented represent unexpected results based on the
declaration/affidavit of a qualified expert but merely assert
such by way of attorney argument in the briefs. Moreover, the
specification test results are not reasonably commensurate in
scope with the here claimed invention. We note that the
specification examples and tables relate to products made using
specific synthetic rubbers, accelerators, carbons, and other
additives, as well as using specific manufacturing steps set
forth in the specification, whereas appealed claim 2 is not so
limited. Thus, it is apparent that appellant’s evidence is
considerably more narrow in scope than the appealed claim. See
In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA 1979).
Moreover, for reasons set forth by the examiner in the
answer, we are not satisfied that the evidence of record that is
offered demonstrates results that are truly unexpected. Nor has
appellant satisfied the burden of explaining how the results
reported for those limited examples presented can be extrapolated
Appeal No. 2004-1862
Application No. 09/784,041
Page 9
therefrom so as to be reasonably guaranteed as attainable through
practicing the invention as broadly claimed.
Having reconsidered all of the evidence of record proffered
by the examiner and appellant, we have determined that the
evidence of obviousness, on balance, outweighs the evidence of
nonobviousness. Hence, we conclude that the claimed subject
matter as a whole would have been obvious to one of ordinary
skill in the art. Accordingly, we affirm the examiner’s § 103(a)
rejection of claim 2.
CONCLUSION
The decision of the examiner to reject claim 2 under
35 U.S.C. § 103(a) as being unpatentable over Muraoka in view of
Majumdar, Matsue and Carter is affirmed.
Appeal No. 2004-1862
Application No. 09/784,041
Page 10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

AFFIRMED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
PFK/sld
Appeal No. 2004-1862
Application No. 09/784,041
Page 11
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