Ex Parte Sato

Patent Trial and Appeal Board

Apr 4, 2018

13116440 (P.T.A.B. Apr. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/116,440 05/26/2011
74384 7590
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
04/04/2018
FIRST NAMED INVENTOR
Masaki Sato
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.
FPS-0001 5472
EXAMINER
RIETH, STEPHEN EDWARD
ART UNIT PAPER NUMBER
1764
MAILDATE DELIVERY MODE
04/04/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAKI SATO
Appeal2016-005345
Application 13/116,440
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
1, 3-8, 10-14, 16, and 17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Yokohama Rubber Company, Limited of Tokyo, Japan is identified as
the real party in interest. (Appeal Brief, filed September 29, 2015 ("App.
Br."), 2.)
2 Final Rejection mailed May 7, 2015 ("Final Act."). In this decision, we
also refer to the Examiner's Answer mailed February 19, 2016 ("Ans."), and
the Reply Brief filed April 19, 2016 ("Reply Br.").
Appeal2016-005345
Application 13/116,440
CLAIMED SUBJECT MATTER
The claims are directed to a tire tread rubber composition and
pneumatic tire. Spec. 1. 3 Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A tire tread rubber composition, comprising:
100 parts by mass of diene rubber;
70 to 80 parts by mass of specific silica; and
a mixture of a fatty acid potassium salt and a fatty acid
ester in which a mass ratio relative to the specific silica is 2 to 8
mass%, wherein
the diene rubber contains not less than 40 parts by mass
of solution-polymerized styrene-butadiene copolymer rubber,
the solution-polymerized styrene-butadiene copolymer
rubber includes a weight-average molecular weight of 900,000
to 1,500,000 and a styrene content of 35 to 45%, and
the specific silica satisfies the following conditions of (1)
to (4):
(1) a nitrogen adsorption specific surface area (N2SA)
evaluated in accordance with JIS K6217-2 is 194 to 225 m2/g;
(2) a CT AB specific surface area evaluated in accordance
with JIS K621 7-3 is 170 to 210 m2/g;
(3) a ratio between the nitrogen adsorption specific
surface area (N2SA) and the CTAB specific surface area (the
nitrogen adsorption specific surface area (N2SA)/the CTAB
specific surface area) is 0.9 to 1.4; and
(4) a DBP absorption evaluated in accordance with oil
absorption method A of JIS K6217-4 is not less than
190 ml/I OOg;
wherein the vinyl content arising from the butadiene in
the SBR is not more than 45%.
(App. Br. 22, Claims Appendix).
3 U.S. Patent Application No. 13/116,440 ("Spec."), Tire Tread Rubber
Composition and Pneumatic Tire Using the Same.
2
Appeal2016-005345
Application 13/116,440
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Morita
Valero
Masumoto
Hayashi
US 6,472,464 Bl
US 2005/0032965 Al
US 2007/0037915 Al
JP 2005-206673A
Oct. 29, 2002
Feb. 10,2005
Feb. 15,2007
Apr. 8, 2005
Thomson Reuters, Rubber composition for tread of tire,
contains silica, carbon black, polyether copolymer and rubber
component containing solution-polymerized styrene-butadiene
copolymer rubber and other diene rubber ("Dewert-Acc-No.
2006-589927"), Aug. 17, 2006.
REJECTIONS
1. Claims 1, 3-8, 10-14, 16, and 17 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Hayashi in view of
Valero and Masumoto as evidenced by Derwent-Ace-No.
2006-589927. Final Act. 3.
2. Claims 1, 3-8, 10-14, 16, and 17 are additionally rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hayashi in
view of Valero and Morita. Final Act. 3.
OPINION
The issue on appeal for the first ground of rejection is whether the
Examiner has shown that a tire rubber composition comprising "70 to 80
parts by mass of specific silica," "wherein the vinyl content arising from the
3
Appeal2016-005345
Application 13/116,440
butadiene in the SBR is not more than 45%" as recited in claim 1 4 would
have been obvious in view of the combined teaching of Hayashi, Valero,
Masumoto, and Dewert-Acc-No. 2006-589927.
The issue on appeal for the second ground of rejection is whether the
composition comprising "a mixture of a fatty acid potassium salt and a fatty
acid ester in which a mass ratio relative to the specific silica is 2 to 8
mass%" as recited in claim 1 would have been obvious in view of the
combined teaching of Hayashi, Valero, and Morita.
We have reviewed each of Appellant's arguments for patentability.
Appellant has not persuasively presented facts or reasons to convince us that
the Examiner failed to establish a prima facie case as to all the claims on
appeal in each rejection. Thus, we sustain the Examiner's§ 103 rejections,
and we add the following primarily for emphasis.
The 103 Rejection based on Hayashi, Valero, Masumoto, and Dewert-
Acc-No. 2006-589927
Appellant acknowledges that "Example 1 of Masumoto employs a
ratio of silica to diene rubber within the damed range" of 70 to 80 parts by
mass and that other examples in Masumoto use higher ratios of silica. App.
Br. 8-9; see Reply Br. 1-3. In arguing that the Examiner reversibly erred in
assessing the teaching of Masumoto, Appellant has not adequately explained
why a skilled artisan would ignore or be discouraged by Masumoto 's
Example 1 while Masumoto 's additional examples use ratios of silica
4 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013),
claims 3-8, 10-14, 16, and 17 stand or fall with claim 1, as Appellants make
no distinct arguments beyond the arguments regarding claim 1. See, e.g.,
App. Br. 7-16.
4
Appeal2016-005345
Application 13/116,440
outside the recited range. 5 We are therefore not persuaded by Appellant's
argument that Masumoto fails to teach the recited range or teaches away
from the claimed invention - that is, Appellant has not adequately explained
why a skilled artisan "would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994).
Appellant next argues that the Examiner reversibly erred in assessing
the purported unexpected results for the composition recited in claim 1 as
compared with the closest prior art. App. Br. 9; Reply Br. 3. Based on a
comparison of the specific silica content of some but not all of the examples
in Table 1 of the Specification, Appellant argues that unexpected results
based on the recited "70 to 80 parts by mass of specific silica" have been
shown. App. Br. 9-10.
The burden of showing unexpected results rests squarely on
Appellant, who asserts them, and Appellant must establish that the
difference between the claimed invention and the closest prior art was
unexpected. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In this
case, Appellant has not established that the examples are the closest prior
art. See App. Br. 9.
5 For the first time in the Reply Brief, Appellant raises the argument that
Hayashi does not teach or suggest a "specific silica" as recited in claim 1.
Reply Br. 3. In the absence of showing of good cause explaining why these
arguments could not have been presented in the principle brief, these
arguments are waived. See 37 C.F.R. § 41.41(b)(2) (2013); In re Hyatt, 211
F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in
the brief to the Board is waived on appeal); see also App. Br. 7-16.
5
Appeal2016-005345
Application 13/116,440
Further, it is well established that the showing of unexpected results
must be commensurate in scope with the claims. See In re Peterson, 315
F.3d 1325, 1330-331 (Fed. Cir. 2003). Appellant does not dispute the
Examiner's finding that the examples supporting the purported unexpected
results are based on a single rubber composition but argues that a skilled
artisan could nonetheless discern a trend for extrapolation which would then
be commensurate in scope with claim 1. Compare App. Br. 9, with Final
Act. 4--5; compare Ans. 25-26, with Reply 3--4. Appellant cites as support
"the experimental data contained in the present specification and the
previously submitted [Rule 132] declarations" but does not provide any
citation to the evidentiary record. App. Br. 10. "Attorney's argument in a
brief cannot take the place of evidence." In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974). We have reviewed the Specification and the Rule 132
declarations submitted by Mr. Masaki Sato and dated October 9, 2013,
August 5, 2014, and February 14, 2015, respectively and are not persuaded
that the Examiner erred in considering this evidence. The relevant portions
of the Specification and the Rule 132 declarations only describe
experimental data for how various examples are prepared without explaining
why any of the examples are representative of the closest prior art or
commensurate in scope with the composition recited in claim 1 in support of
the unexpected results based on the recited specific silica. Thus, no
reversible error has been identified by Appellant.
Appellant also argues that the Examiner reversibly erred in assessing
the unexpected results based on "the vinyl content arising from the butadiene
in the SBR is not more than 45%," as recited in claim 1. App. Br. 11.
Appellant does not disagree with the Examiner's finding that the
6
Appeal2016-005345
Application 13/116,440
vulcanization rate comparison of certain examples shows a 4% difference,
compare Ans. 22, with Reply Br. 4, but argues that the Examiner reversibly
erred because "it is unknown what basis the Examiner has for asserting that
a 4% improvement in vulcanization rate is 'small' or insignificant." Reply
Br. 4. Appellant's argument does not explain why such an improvement (if
any) is unexpected because "any superior property must be unexpected to be
considered as evidence of non-obviousness." See Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1371 (Fed. Cir. 2007); see also In re Klosak, 455 F.2d 1077,
1080 (CCP A 1972) ("[I]t is not enough to show that results are obtained
which differ from those obtained in the prior art: that difference must be
shown to be an unexpected difference."). Here, Appellant fails to carry the
burden of showing unexpected results because Appellant provides no
explanation supported by factual evidence as to why the results would have
been unexpected. See App. Br. 11-13; see Reply Br. 4; see also In re
Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) ("Once a prima facie case of
obviousness has been established, the burden shifts to the applicant to come
forward with evidence of nonobviousness to overcome the prima facie
case.").
As the Examiner explains in detail, to the extent that some examples
exhibit a difference in certain parameters, any such difference has not been
shown to be unexpected. Ans. 23-25. For example, the Examiner finds that
"Masumoto expressly teaches the enhanced dispensability of silica improves
wet grip performance" - a finding undisputed by Appellant. Compare Ans.
23, with Reply Br. 4--5. Appellant's argument is unpersuasive in that it not
only fails to address the rejection as articulated by the Examiner, but is also
an individual attack on the references. See In re Merck & Co., Inc., 800 F .2d
7
Appeal2016-005345
Application 13/116,440
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981) (one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references)).
With respected to the Examiner's assessment on the unexpected
results, Appellant additionally argues that Masumoto is not the closest prior
art and that the Rule 132 declarations use "examples that are closer to the
present invention than Hayashi." App. Br. 13; see also Reply Br. 4---6.
Appellant unsupported assertion does not establish that these examples are
representative of the closet prior art. The Rule 132 declarations submitted
by Mr. Masaki Sato only describe experimental data for how various
examples are prepared without explaining why any of the examples are
representative of the closest prior art or commensurate in scope with the
composition recited in claim 1 in support of unexpected results based on the
recited vinyl content. For example, the Rule 132 declaration dated October
9, 2013, merely states that comparative examples 8 and 9 are prepared "in
the manner described in paragraph [0071] of the present Patent Application"
using a silica compound having "a nitrogen specific surface area and a
CT AB that are beyond the ranges defined in claim 1 of the present
invention, but are within the ranges disclosed to be acceptable by
Masumoto" without an analysis of the scope of claim 1. Rule 132
declaration dated October 9, 2013, 3. The remaining Rule 132 declarations
are similarly lacking in this regard.
Accordingly, after weighing all the evidence in this appeal, a
preponderance of the evidence supports the Examiner's obviousness
conclusion.
8
Appeal2016-005345
Application 13/116,440
The 103 Rejection based on Hayashi, Valero, and Morita
Appellant argues that the combined prior art does not teach or suggest
a composition having "a mixture of a fatty acid potassium salt and a fatty
acid ester in which a mass ratio relative to the specific silica is 2 to 8
mass%" as recited in claim 1. App. Br. 14. Appellant does not dispute the
Examiner's finding that Valero describes the specific silica meeting the
conditions recited in claim 1. Compare App. Br. 14--15, with Final Act.
dated May 9, 2014, 9--10. 6 Appellant does not dispute the Examiner's
finding that Hayashi describes two salts one of which is fatty acid potassium.
Compare App. Br. 16, with Final Act. dated May 9, 2014, 8. Appellant
argues that the Examiner engaged in impermissible hindsight to combine
Valero with Hayashi because Hayashi does not teach the specific silica as
recited and "there is no reason to think the benefits of the mass ratio of
[Hayashi] would exist if Valero's silica was substituted." App. Br. 15; see
also Reply Br. 8. This argument is unpersuasive because it fails to address
the rejection as articulated by the Examiner, and is an individual attack on
the references. See In re Merck, 800 F.2d at 1097 (citing Keller, 642 F.2d at
425 (one cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references)). Because
Appellant does not specifically dispute the Examiner's determination that a
skilled artisan would combine the references to "provide for enhancements
in mechanical and dynamic features without impairing rheological properties
when used as reinforcing filler in elastomeric composition as taught by
Valero" (compare App. Br. 14--15, with Final Act. dated May 9, 2014, 11;
6 The Final Rejection dated May 7, 2015, refers to the obviousness analysis
provided in the Final Rejection dated May 9, 2014.
9
Appeal2016-005345
Application 13/116,440
compare Ans. 27-28, with Reply Br. 7-8), no impermissible hindsight has
been identified in the Examiner's reason to combine Hayashi and Valero.
DECISION
The Examiner's rejection of claims 1, 3-8, 10-14, 16, and 17 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hayashi in view of
Valero and Masumoto as evidenced by Derwent-Ace-No. 2006-589927 is
affirmed.
The Examiner's rejection of claims 1, 3-8, 10-14, 16, and 17 under
pre-AIA 35 § U.S.C. 103(a) as being unpatentable over Hayashi in view of
Valero and Morita is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
10