Ex Parte Sandstrom

Board of Patent Appeals and Interferences

Jul 26, 2011

11046479 (B.P.A.I. Jul. 26, 2011)

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
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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,
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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)
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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).
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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
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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).

AFFIRMED

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