Ex Parte MorookaDownload PDFPatent Trial and Appeal BoardMay 14, 201813660597 (P.T.A.B. May. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/660,597 10/25/2012 30678 7590 POLSINELLI PC (DC OFFICE) 1000 Louisiana Street Fifty-Third Floor HOUSTON, TX 77002 05/16/2018 FIRST NAMED INVENTOR Naoyuki Morooka 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 085191-533572 6810 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 05/16/2018 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): DC-IPDocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NAOYUKI MOROOKA Appeal2016-005246 Application 13/660,597 Technology Center 1700 Before ADRIENE LEPIANE HANLON, A VEL YN M. ROSS, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. The claims are directed to a method for migrating a sulfonamide- based plasticizer in a low-permeability laminate for an inner liner of a 1 In our Opinion, we refer to the Specification filed October 25, 2012 ("Spec."); the Final Office Action mailed April 28, 2015 ("Final Act."); the Advisory Action mailed August 4, 2015 ("Adv. Act."); the Appeal Br. filed November 2, 2015 ("Br."); and the Examiner's Answer mailed February 10, 2016 ("Ans."). Appellant did not file a Reply Brief. 2 Appellant is the Applicant, The Yokohama Rubber Co., Ltd., which is identified as the real party in interest. Br. 2. Appeal2016-005246 Application 13/660,597 pneumatic tire, and a pneumatic tire utilizing the same. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for migrating a sulfonamide-based plasticizer in a low permeability laminate for an inner liner of a pneumatic tire, which is produced by laminating a low permeability laminate (A) a thermoplastic resin composition layer containing (i) 50 to 90% by weight of an ethylene vinyl alcohol copolymer having an ethylene content of 20 to 50 mol% and a saponification degree of 90% or more, (ii) 50 to 10% by weight of an aliphatic polyamide resin having 90 mol% or more of an E-caprolactam- derived ingredients and (iii) 3 to 50 parts by weight of the sulfonamide-based plasticizer, based upon 100 parts by weight of the total amount of the components (i) and (ii), laminated with (B) at least one rubber composition layer, so as to provide a ratio of a thickness EB of layer (B)/a thickness EA of layer (A) (EB/EA) is 10 or more; and heat treating the resultant laminate at 150°C to 200°C, whereby the sulfonamide-based plasticizer is migrated from the thermoplastic resin composition layer (A) to the rubber composition layer (B). Br. 13 (Claims App'x). REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Odorzynski et al. ("Odorzynski") Lin et al. ("Lin") Dias et al. ("Dias") Deguchi et al. ("Deguchi") us 4,347,332 us 5,040,583 US 7,491,764 B2 EP 0 358 415 Al 2 Aug.31, 1982 Aug. 20, 1991 Feb. 17,2009 Mar. 14, 1990 Appeal2016-005246 Application 13/660,597 REJECTIONS The Examiner maintains and Appellant seeks review of the following rejections under 35 U.S.C. § 103(a): (1) claims 1-3, 5-8, 10, and 11 over Lin in view of Odorzynski and optionally in view of Dias; and (2) claims 4, 9, and 12 over Lin, Odorzynski, and Dias, and further in view ofDeguchi. Final Act. 2, 4; Br. 4. OPINION Appellant argues the claims as a group. 3 We select claim 1 as representative of the group. The remaining claims will stand or fall with claim 1. 37 C.F.R. § 42.37(c)(l)(iv). The Examiner finds that Lin in combination with Odorzynski, and optionally, Dias, teaches the limitations of claim 1. Final Act. 2--4. Specifically, the Examiner finds that Lin teaches a laminate comprising a thin layer of non-elastomeric barrier material bound to a rubber composition, wherein the thin layer may be an ethylene-vinyl alcohol (EVOH) copolymer containing less than 50 mole % ethylene and which is more than 90% saponified. Id. The Examiner also finds that Lin teaches use of nylon 6---an aliphatic polyamide derived from polymerization of E-caprolactam--as an appropriate thin film barrier material. Id. The Examiner finds that Lin discloses laminating a 1 mil thick thin film barrier material to a 12 mil thick rubber layer, and heating the laminate to 360QF (182QC) for 12 minutes. Id. 3 Appellant identifies the separate rejection of claims 4, 9, and 12, but merely argues that the additional reference (Deguchi) does not overcome the deficiencies of Lin, Odorzynski, and Dias. Br. 10. 3 Appeal2016-005246 Application 13/660,597 The Examiner acknowledges that Lin does not disclose a blend of EVOH and a polyamide, or a sulfonamide plasticizer. Id. at 3. However, the Examiner finds that Odorzynski teaches EVOH thin films with oxygen barrier properties. Final Act. 3. The Examiner finds that Odorzynski teaches maintaining barrier properties and improving mechanical properties of the thin films by forming a blend of polyamide resin, EVOH, and plasticizer. Id. The Examiner finds that Odorzynski discloses that the polyamide may be nylon 6 (as disclosed in Lin), EVOH copolymers are substantially those disclosed in Lin, and the plasticizer includes p- toluenesulfonamide (which is a sulfonamide-based plasticizer according to claim 2 of the instant application). Id. Migration of sulfonamide-based plasticizer from thermoplastic resin composition layer (A) to rubber layer (B) is inherent in the combination of Lin and Odorzynski, according to the Examiner. Adv. Act. 2. The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention to have blended the polyamide and plasticizer taught by Odorzynski into the EVOH barrier films of Lin in order to take advantage of the improved mechanical properties taught by Odorzynski. Final Act. 3. A skilled artisan would have had a reasonable expectation of success in using Odorzynski's composition as an air impermeable layer in Lin, given that Lin teaches the suitability of nylon 6 and EVOH for a tire innerliner. Ans. 3. Appellant disputes that the cited references render the claimed invention obvious. Br. 5. Appellant argues that Lin and Odorzynski each fail to teach the use of a polymer blend of EVOH and polyamide in combination with a sulfonamide-based plasticizer and heat treatment after 4 Appeal2016-005246 Application 13/660,597 lamination. Id. at 7. Appellant also argues that Lin fails to teach the problems of an undesirable reaction between EVOH and the polyamide during mixing and lamination without the presence of plasticizer, or the undesirable drop in the EVOH gas barrier property due to the presence of sulfonamide-based plasticizer in the thermoplastic resin composition after lamination. Br. 7, 8. However, Appellant's arguments are unpersuasive because one cannot show non-obviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, the problems referenced by Appellant are not limitations in claim 1. The Examiner adequately demonstrates that each element of claim 1 is present in the combined references. Appellant argues that the Examiner's reliance on inherency for migration of the plasticizer from layer (A) to layer (B) after lamination is improper. Id. at 8. We disagree. The Examiner made the necessary underlying factual findings to support an obviousness determination. Specifically, the Examiner found that the method of Lin in view of Odorzynski is substantially the same as that of the claimed invention, and one would expect migration realized in the claimed invention to be similarly present in the method disclosed by the combination of Lin and Odorzynski. Ans. 4. That is, the migration of the plasticizer in Lin's modified method is the "natural result" of the combination of the teachings of Lin and Odorzynski. See PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (the concept of inherency, when applied to obviousness, is present when the limitation at issue is the "natural result" of the combination of prior art elements). 5 Appeal2016-005246 Application 13/660,597 Appellant contends that the claimed invention requires that 3-50 weight parts of sulfonamide-based plasticizer4 must be present in the mixture of EVOH and polyamide in order to prevent difficult moldability and maintain the gas barrier property of EVOH. Br. 6. According to Appellant, the presence of sulfonamide-based plasticizer in layer (A) of the laminate after formation of a pneumatic tire in which layer (A) becomes an inner liner prevents an acceptable EVOH gas barrier property. Id. Appellant argues, therefore, that a heat treating step at 150QC to 200QC after lamination of layer (A) to layer (B) is required in order to allow the sulfonamide-based plasticizer to migrate from the thermoplastic composition layer (A) to the rubber layer (B) and achieve an acceptable EVOH gas barrier property. Id. A prima facie case of obviousness may be shown where, as here, structural similarities exist between the claimed and prior art compositions and reason or motivation exists to make the claimed composition. In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en bane) ("the structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness"); In re Best, 562 F.2d 1252, 1255-56 (Fed. Cir. 1977); In re Wilder, 429 F.2d 447, 450 (CCPA 1970). Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the 4 The Examiner finds Odorzynski discloses 2 to 25% weight plasticizer, a range that overlaps the claimed range. Final Act. 3. 6 Appeal2016-005246 Application 13/660,597 characteristics of his claimed product. Best, 562 F.2d at 1256. A prima facie obviousness rejection does not fail because no reference shows or suggests the newly-discovered properties and results of a claimed structure. Dillon, 919 F.2d at 693. Appellant may rebut the prima facie case of obviousness by showing the prior art combination is deficient, no motivation exists to modify the prior art as suggested by the Examiner, the presence of unexpected results achieved by the claimed subject matter relative to the prior art, or other objective evidence of non-obviousness. In re Mayne, 104 F.3d 1339, 1342 (Fed. Cir. 1997); In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997); Dillon, 919 F .2d at 692-93. As discussed above, Appellant does not show that Lin in view of Odorzynski fails to disclose the claim elements or that the references should not be combined. Appellant's attempt to demonstrate unexpected results is likewise unsuccessful. Appellant suggests that the claimed invention achieves the unexpected results of (1) long run moldability, and (2) improvement in the gas barrier property of EVOH. Br. 6. As to the first, Appellant points to Comparative Examples 1, 2, and 7 of the Specification as evidence that long run moldability becomes difficult if 3-50 weight parts of sulfonamide-based plasticizer is not present in the mixture of the EVOH and polyamide of layer (A). Id. Comparative Examples 1 and 7 contain no plasticizer; Comparative Example 2 contains two parts of plasticizer. Spec. Table III. Example 1 contains 5 parts of plasticizer; all other Examples contain 10 to 50 parts of plasticizer. Id. Unexpected results must be "commensurate in scope with the degree of protection sought by the ... [claims on appeal]." In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Appellant's results do not support the 7 Appeal2016-005246 Application 13/660,597 scope of claim 1 at least because Appellant provides no evidence for compositions containing plasticizers in an amount greater than two parts and less than five parts. Appellant also contends that the gas barrier property of EVOH is improved in the claimed invention. Br. 6. However, Appellant does not show that the results in Comparative Examples 1, 2, and 7 are unexpected compared to Odorzynski or Lin. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art"). Appellant's argument is not persuasive of reversible error. Appellant also contends that Lin teaches away from the claimed invention because Lin was aware of polyamides, as evidenced by its Table I, but sought not to use a blend of polyamides with EVOH. Br. 7. Teaching away requires that a reference "criticize, discredit, or otherwise discourage the solution claimed" by Appellant. In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). On the record before us, we cannot say that Lin teaches away from the claimed invention. On balance, the weight of the evidence of record supports the Examiner's conclusion of obviousness. Therefore, we sustain the Examiner's rejection of claim 1 over Lin in view of Odorzynski, and optionally Dias. Because Appellant relies on the same substantive arguments for patentability of the remaining claims, we also sustain the rejections as to those claims. 8 Appeal2016-005246 Application 13/660,597 DECISION The rejections of claims 1-12 are 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)(l)(iv) (2015). AFFIRMED 9 Copy with citationCopy as parenthetical citation