Ex parte Nozik

Board of Patent Appeals and Interferences

Apr 30, 2001

08644622 (B.P.A.I. Apr. 30, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 29

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ZINA NOZIK
_____________
Appeal No. 1998-1862
Application 08/644,622
______________
ON BRIEF
_______________
Before KIMLIN, WALTZ and DELMENDO, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1,
4-7, 9-13 and 16-19, all the claims remaining in the present
application. Claim 1 is illustrative:
1 . A resilient elastomeric mount comprising
natural rubber produced by an efficient
vulcanization system having a curing system
comprising an accelerator component at a level of
about 1.2 phr to about 1.8 phr and a sulfur donor
component at a level of about 0.1 phr to about 0.4
phr, wherein the natural rubber further comprises
antidegradants including an
Appeal No. 1998-1862
Application No. 08/644,622
2
antioxidant comprising a blend of p-phenylene
diamine in combination with zinc salt derivatives of
mercapto-benzimidazole, wherein said natural rubber
has a majority of monosulfidic crosslinks and
wherein the mount has stable dynamic properties
after exposure to a temperature of 250/F for 70
hours, when tested using the MTS 830 elastomer test
system.
The examiner relies upon the following references as
evidence of obviousness:
Cox 4,021,404 May 03,
1977
Aoshima et al. (Aoshima) 4,983,685 Jan.
08,
1991
Cornell et al. (Cornell) 5,120,779 Jun.
09,
1992
Wolff et al. (Wolff) 5,159,009 Oct. 27,
1992
Appellant’s claimed invention is directed to a natural
rubber that is useful for engine mounts and has stable dynamic
properties upon exposure to a temperature of 250/F for 70
hours. The natural rubber, which is produced by a known
efficient vulcanization system, has a curing system comprising
an accelerator component and a sulfur donor component, and
Appeal No. 1998-1862
Application No. 08/644,622
3
also comprises an antioxidant which is a blend of p-phenylene
diamine and zinc salt dirivatives of mercaptobenzimidazole.
Appellant submits at pages 6 and 7 of the principal brief
that the appealed claims should be considered separately and
patentably distinct. However, the Arugment section of
appellant’s brief fails to set forth an argument that is
reasonably specific to any particular claim on appeal. For
instance, the arguments appearing on pages 11 and 12 of the
principal brief regarding dependent claims 4-7, 9-12 and 13
are tantamount to a mere re-recitation of the features of the
claim, in addition to including the statement that “a claim in
dependent form shall be construed to incorporate all the
limitations of the claim to which it refers”. Accordingly,
all the appealed claims stand or fall together with claim 1.
In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed.
Cir. 1987); Ex parte Ohsumi, 21 USPQ2d 1020, 1023 (Bd. Pat. App.
& Int. 1991). See also 37 CFR 1.192 (c)(7) and (c)(8).
Appealed claims 1, 4-7, 9-13 and 16-19 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Wolff in view
Appeal No. 1998-1862
Application No. 08/644,622
4
of Cornell, Aoshima and Cox.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner’s
rejection.
Wolff, like appellant, discloses a natural rubber
composition that finds utility as engine mounts. Wolff
discloses
that the composition comprises conventional vulcanization
accelerators, such as sulfenamides, 2-mecaptobenzothiazol, and
thiurames (column 3, lines 51-56). Hence, Wolff renders
obvious appellant’s claimed accelerator component and sulfur
donor component. Also, while Wolff discloses the inclusion of
antioxidant agents, such as appellant’s p-phenylene diamine,
Wolff does not disclose the presently claimed blend of
p-phenylene diamine with zinc salt derivatives of mercap-
tobenzimidazole. However, since Cornell discloses
mercaptobenz-imidazole and zinc 2-mercaptobenzothiazole as
sulfur cure accelerators for rubber compositions (column 6,
lines 39 and 40), we find that it would have been prima facie
Appeal No. 1998-1862
Application No. 08/644,622
5
obvious for one of ordinary skill in the art to incorporate
the mercaptobenzimi-dazole of Cornell in the form of a zinc
salt in the natural rubber formulations of Wolff. Also, as
pointed out by the examiner, Aoshiuma discloses the addition
of a zinc salt of
2-mercaptobenzimidazole in a rubber composition to prevent
tackiness. Hence, it would have also been obvious to include
zinc salt derivatives of mercaptobenzimidazole in the natural
rubber formulation of Wolff for the benefit disclosed by
Aoshima.
While appellant maintains at page 10 of the principal brief
that Aoshima teaches the use of zinc salts of
mercaptobenzimidazole as anti-tacking agents, not
accelerators, appellant does not claim the zinc salt
derivative as an accelerator. In any event, both Cornell and
Aoshima, as discussed above, provide motivation for one of
ordinary skill in the art to add the zinc salt derivatives to
the rubber composition of Wolff.
Appellant invites attention to Examples 1 and 2 in the
present specification as evidence that “a combination of
Appeal No. 1998-1862
Application No. 08/644,622
6
p-phenylene diamine with the zinc derivatives of
mercaptobenzi-midazole produce excellent improvement in heat
resistance and flex fatigue life as compared to that of
conventional natural rubber compounds” (page 10 of principal
brief). In response, the examiner notes “that ‘conventional
natural rubber compounds’ are not identified and, therefore,
no meaningful comparison can be made to that which is taught
by the prior art of record” (page 5 of answer, last sentence).
Appellant takes issue with this finding of the examiner in the
reply brief and submits that “the conventional natural rubber
compounds are clearly identified on
page 4, Table 1 of the specification” (page 3 of reply brief,
second full paragraph). Appellant adds that “Table 1
discloses,
in substantial detail, the general formula for conventional
natural rubber as compared to the general formula of EV
rubber.” Our review of the specification finds us in
agreement with appellant that the general formula for
conventional natural rubber is disclosed in Table 1. Since
Appeal No. 1998-1862
Application No. 08/644,622
7
the examiner has presented no other reasons for refuting
appellant’s evidence of nonbvious-ness, we are constrained to
reverse the examiner’s rejection.
This application is remanded to the examiner to evaluate
the specification data relied upon by appellant. Since it
would appear from the present specification that the efficient
vulcanization (EV) rubber was known in the art at the time of
filing the instant application, the examiner should consider
whether the specification data provides a comparison with the
closest prior art. We again direct the examiner’s attention
to
the statement made at page 3 of the reply brief that “Table 1
discloses in substantial detail, the general formula for
conventional rubber as compared to the general formula of EV
rubber.” Also, the examiner should determine whether the
closest prior art is represented by the Wolff reference, and
whether the
conventional natural rubber offered for comparison fairly
represents the teachings of Wolff. The examiner should also
determine whether the specification data establishes that the
Appeal No. 1998-1862
Application No. 08/644,622
8
specification results would have been truly unexpected by one
of ordinary skill in the art in light of the teachings of the
prior art.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
The application is remanded to the examiner for
considera-tion of the issues outlined above.
This application, by virtue of its “special” status,
requires an immediate action. MPEP § 708.01(D)(Rev. 1, Feb.
2000).
REVERSED AND REMANDED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
vsh
Appeal No. 1998-1862
Application No. 08/644,622
9
ROBERT M. SIMINSKI
HARNESS, DICKEY & PIERCE
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303