Ex Parte Ono

Board of Patent Appeals and Interferences

Nov 14, 2011

11729830 (B.P.A.I. Nov. 14, 2011)

 

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NAOYUKI ONO
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Appeal 2011-001638
Application 11/729,830
Technology Center 1700
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-3 and 5-12. We
have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A method for preparing a master batch of a phenol resin cross-
linking agent, comprising mixing:

(a) 100 parts by weight of at least one compound selected from the
group consisting of phenol resins and brominated phenol resins,

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Application 11/729,830

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(b) 20 to 500 parts by weight of a crystalline olefin resin, provided
that copolymers of ethylene with unsaturated carboxylic acid ester or vinyl
acetate are precluded, wherein the crystalline olefin resin is at least one
selected from the group consisting of ethylene homopolymers, propylene
homopolymers, ethylene-α-olefin copolymers and propylene-α-olefin
copolymers, and

(c) 0 to 300 parts by weight of a non-aromatic softening agent
for rubber.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 3):
Fischer 3,862,106 Jan. 21, 1975
Abdou-Sabet 4,311,628 Jan. 19, 1982

Appellant’s claimed invention is directed to a method for preparing a
master batch and a rubber composition comprising the master batch. The
master batch comprises phenol resins and a crystalline olefin resin.
Appealed claims 1-3 and 5-11 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Abdou-Sabet. Claim 12 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Abdou-Sabet in view of Fischer.
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner in reaching our decision.
We consider first the § 102 rejection of claims 1-3, 5 and 6. Abdou-
Sabet discloses a master batch comprising EPDM rubber, a polymerized
olefin such as polypropylene, an extender oil, carbon black, zinc oxide,
stearic acid and an antidegradant. Hence, the composition described by
Abdou-Sabet as a master batch does not contain the claimed phenol resin.
Abdou-Sabet adds the phenol resin as a curative after the master batch is
heated to obtain a uniform blend. The phenolic curative, upon addition to
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the blend, reacts with and cures the EPDM rubber. Consequently, Abdou-
Sabet does not describe within the meaning of § 102 a cross-linking
composition that comprises unreacted phenol resin for any measurable
period of time. While appealed claims 1-3, 5 and 6 do not expressly exclude
the presence of EPDM rubber in the master batch, the claims do require the
presence of a phenol resin in unreacted form. We agree with Appellant that
Abdou-Sabet simply does not describe preparing such a composition, as
required by these appealed method claims.
The § 102 rejection of claims 7-11 is another matter. Unlike claim 1,
claims 7-11 define a rubber composition, not a method of preparing a master
batch, and the claimed rubber composition comprises rubber in addition to
the components of the master batch. Accordingly, we perceive no patentable
distinction between the composition of Abdou-Sabet after the phenolic
curative is added and compositions within the scope of claims 7-11.
Manifestly, compositions within the scope of claims 7-11, comprising a
phenolic curative in combination with rubber, will experience the same
cross-linking described in Abdou-Sabet. The composition claims do not
define any level of cross-linking uniformity that serves to distinguish them
over the compositions fairly taught by Abdou-Sabet.
Regarding the § 103 rejection of claim 12 which requires the
composition to further comprise an organic peroxide, Abdou-Sabet
evidences that it was known in the art to cure rubber with peroxides,
although a phenolic curative yields improved properties for the rubber
composition. Hence, we concur with the Examiner that it would have been
obvious for one of ordinary skill in the art to use a peroxide curative in
combination with a phenolic curative, particularly in the minor concentration
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claimed, namely, 0.01 part by weight. Fischer provides further evidence that
it was known in the art to use a peroxide to cure a thermoplastic blend of a
mono-olefin rubber and polyolefin plastic. Appellant has advanced no
argument why it would have been non-obvious for one of ordinary skill in
the art to use a peroxide to cure a composition comprising rubber, a
crystalline olefin resin, and a phenol resin. Also, Appellant has not
presented any objective evidence of unexpected results associated with using
a peroxide curative.
In conclusion, based on the foregoing, the Examiner’s § 102 rejection
of claims 1-3, 5 and 6 is reversed, and the Examiner’s § 102 rejection of
claims 7-11 and § 103 rejection of claim 12 are affirmed. Accordingly, the
Examiner’s decision rejecting the appealed claims is affirmed-in-part.

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)(v).
AFFIRMED-IN-PART

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