Ex Parte SandstromDownload PDFBoard of Patent Appeals and InterferencesJul 26, 201111046479 (B.P.A.I. Jul. 26, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PAUL HARRY SANDSTROM ____________ Appeal 2010-000440 Application 11/046,479 Technology Center 1700 ____________ Before MARK NAGUMO, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claim 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is reproduced below and is the sole claim on appeal: 1. A tire having at least one internal component, exclusive of an outer surface of the tire, comprised of a composite comprised of a brass-coated steel cord reinforced natural rubber-rich rubber Appeal 2010-000440 Application 11/046,479 2 composition, where said composite is comprised of: (A) a rubber composition consisting of a sulfur cured rubber composition comprised of, based upon parts by weight per 100 parts by weight rubber (phr), about 30 to about 50 phr of reinforcing filler comprised of: (1) about 25 to about 40 phr of precipitated silica, (2) about 4 to about 15 phr of rubber reinforcing carbon black; wherein the weight ratio of said precipitated silica and said rubber reinforcing carbon black is in a range of from about 3/1 to about 8/1, and (3) a coupling agent for said silica having a moiety reactive with hydroxyl groups on said precipitated silica and another different moiety interactive with said conjugated diene based rubber(s), (4) a resinous reaction product of a methylene donor compound comprised of hexamethoxymethylmelamine and of a methylene acceptor compound, wherein said methylene acceptor compound is comprised of at least one of resorcinol, resorcinolic derivative, cashew nut oil modified phenol novolak resin, tall oil modified phenol novolak resin and alkyl modified phenol novolak resin; wherein the amount of said methylene donor compound is in a range of from about 0.5 to about 4 phr, the amount of said methylene acceptor is in a range of from about 0.5 to about 5 phr and the weight ratio of said methylene acceptor compound to said methylene donor compound is in a range of from about 5/1 to about 1/5; (5) about 0.2 to about 5 phr of a cobalt salt comprised of at least one of cobaltnaphthenate and cobalt neodecanoate, and (6) metaphenylene bismaleimide in an amount of up to about 2 phr, wherein said sulfur cured rubber composition has a hot rebound property (100°C) in a range of from about 65 to about 85; wherein said sulfur cured rubber composition has a dynamic loss modulus (G') at a low strain (10 percent) and 100°C in a range of from about 1400 to about 2000 kPa; wherein said sulfur cured rubber composition has a Shore A hardness (100°C) in a range of from about 60 to about 70; (B) at least one cord encapsulated by said sulfur cured rubber composition, wherein said cord(s) are individually comprised of at least one filament, Appeal 2010-000440 Application 11/046,479 3 wherein said filament(s) of said cord are comprised of brass coated steel. The Examiner maintains the following rejections under 35 U.S.C. § 103(a): 1) Claim 1 as unpatentable over the combined prior art of Kubota1, Nomura2, Miyake3, Sinclair4, Bellamy5, and Benko; 2) Claim 1 as unpatentable over the combined prior art of Esnault6, Nomura, Miyake, Sinclair, Bellamy, and Benko. As noted by the Examiner (Ans. 3, 4), Appellant presented no arguments with respect to the second ground of rejection. No responsive brief has been filed by Appellant. Thus, we summarily affirm this rejection. MAIN ISSUE ON APPEAL Did the Examiner err in determining that the claimed tire would have been obvious over the applied prior art, because, as alleged by Appellant, the Examiner did not give proper weight to the Sandstrom Declaration filed October 31, 2007 (Br. 7-8) and the secondary references do not correct the deficiencies of Kubota such that the tire composition as recited in claim 1 is not prima facie obvious (Br. 9-16)? We answer these questions in the negative. 1 JP 59073944 (1984) (as translated) 2 U.S. Patent 5,312,869 (1994) 3 JP 409194635A (1997) (as translated) 4 U.S. Patent 6,866,711 B2 (2005) 5 U.S. Patent 3,897,583 (1975) 6 U.S. Patent 7,380,579 B2 (2008) Appeal 2010-000440 Application 11/046,479 4 PRINCIPLES OF LAW In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. “On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted). ANALYSIS We have thoroughly reviewed each of Appellant’s arguments for patentability.7 However, we are in agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, including the Examiner’s cogent Response to Argument section, and we add the following primarily for emphasis. Appellant’s contention that the Examiner did not consider the Sandstrom Declaration is unavailing. To the contrary, the Examiner did thoroughly address this Declaration, and Appellant has not responded in 7 We decline to raise and consider arguments that Appellants chose not to make: such arguments are deemed to have been waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008). Appeal 2010-000440 Application 11/046,479 5 their Brief to any of the deficiencies previously noted by the Examiner (Office Action mailed Nov. 15, 2007; see also Ans. 8). Appellant’s other arguments in the Brief are unpersuasive, since they do not adequately address the Examiner’s stated case for obviousness; rather the arguments presented by the Appellant merely attack the references individually, or conclude that there is no motivation to modify Kuboto (App. Br. 8-16). In attacking the references individually, Appellant fails to address the Examiner's actual rejection. Moreover, Appellant presents no persuasive evidence that the Examiner has erred in his findings of fact or legal conclusion of obviousness. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”) Furthermore, the Examiner’s position that one of ordinary skill in the art would have been led to utilize the various well known rubber tire additives exemplified by the collective teachings of the references is well- supported by the applied prior art (e.g., Ans. 4-7). Appellant failed to provide any credible technical reasoning or evidence that one of ordinary skill in the art would not have, using no more than ordinary creativity, successfully used the known MPBM cross-linking agent as exemplified in Nomura and Miyake, as well as the known coupling agent for silica exemplified by Sinclair, and the known hexamethoxymethylmelamine additive as exemplified in Benko, in the tire composition of Kobuto, as required by claim 1 (see generally Br.). In this context, the use of these known conventional additives in result effective appropriate amounts would have been nothing more than using a known prior art additive in accordance Appeal 2010-000440 Application 11/046,479 6 with its known function for its predictable result. See KSR, 550 U.S. at 415- 16 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”); see also KSR, 550 U.S. at 421(“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Accordingly, the evidence as a whole supports the Examiner’s conclusion of obviousness, and on the record before us, we sustain the § 103 rejections of the claims as maintained by the Examiner. DECISION We affirm the Examiner’s § 103 rejections. 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). 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