13495339 (P.T.A.B. May. 30, 2017)

Ex Parte Steiner et al

Patent Trial and Appeal BoardMay 30, 2017

13495339 (P.T.A.B. May. 30, 2017)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/495,339 06/13/2012 Pascal Patrick Steiner DN2012-074 1919 27280 7590 06/01/2017 THE GOODYEAR TIRE & RUBBER COMPANY 200 Innovation Way AKRON, OH 44316-0001 EXAMINER EASHOO, MARK ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 06/01/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): kathleen.swisher@goodyear.com patents @ goodyear.com pair_goodyear @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PASCAL PATRICK STEINER, RALF MRUK, KLAUS SCHULMEISTER, CARLO KANZ, and JEROME JOEL DANIEL DELVILLE Appeal 2016-003787 Application 13/495,339 Technology Center 1700 Before JEFFREY T. SMITH, JAMES C. HOUSEL, and JANE E. INGLESE, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the Examiner’s decision rejecting claims 1, 5, and 7—19 under 35 U.S.C. 1 Our decision refers to the Specification (Spec.) filed Jun. 13, 2012, Appellants’ Appeal Brief (Br.) filed Aug. 17, 2015, the Examiner’s Answer (Ans.) dated Nov. 4, 2015. 2 According to Appellants, the real party in interest is The Goodyear Tire & Rubber Company. Br. 3 Appeal 2016-003787 Application 13/495,339 § 103(a) as unpatentable over Costantini3 in view of Valero4 and Pagliarini.5 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The invention relates to a pneumatic tire having a tread comprising a vulcanizable rubber composition made from a solution-polymerized styrene- butadiene rubber (SSBR), and “may be exclusive of other elastomers.” Spec. 2:3—6 and 3:14—15. Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. The limitation at issue is italicized. 1. A pneumatic tire having a tread comprising a vulcanizable rubber composition comprising, expressed as parts by weight per 100 parts by weight of elastomer (phr), (A) 100 phr of a solution-polymerized styrene-butadiene rubber with a bound styrene content of from 20 to 50 percent by weight, a vinyl 1,2 content of from 10 to 40 percent by weight based on the rubber weight, and a Tg of from about -40°C to about -10°C; (B) 5 to 60 phr of a process oil having a polycyclic aromatic content of less than 3 percent by weight as determined by the IP346 method; (C) 90 to 150 phr of silica having a CTAB specific surface area (Sctab) of between 40 and 525 m2/g, a BET specific surface area (Sbet) of between 200 and 260 m2/g; (D) 10 to 20 phr of sulfur containing organosilicon compound; 3 Costantini et al., US 2010/0144946 Al, published Jun. 10, 2010 (“Costantini”). 4 Valero, US 2005/0032965 Al, published Feb. 10, 2005. 5 Pagliarini et al., US 7,259,205 Bl, issued Aug. 21, 2007 (“Pagliarini”). 2 Appeal 2016-003787 Application 13/495,339 (E) 5 to 30 phr of a polyterpene resin, and (F) less than 10 phr of carbon black; wherein the rubber composition is exclusive of elastomers other than the solution-polymerized styrene- butadiene rubber. ANALYSIS The sole dispositive issue on appeal is whether the Examiner reversibly erred in finding that Costantini teaches a rubber composition that is exclusive of elastomers other than SSBR. We answer this question in the negative and, therefore, will sustain the Examiner’s rejection based on the findings of fact, conclusions of law, and rebuttals to argument well expressed by the Examiner in the Answer. The following comments are added for emphasis. Appellants contend that Costantini does not teach exclusion of elastomers other than SSBR on the basis that a reference must comply with the negative limitation in all embodiments disclosed by the reference, such that a single embodiment disclosing that which is excluded by the negative limitation defeats the entire reference. Br. 4—5, citing Ex parte Nelson, 2007 WL 4162768 (BPAI 2007) and Ex parte Sony Ericsson Mobile Communications AS, 2011 WL 3666736 (BPAI 2011).6 Appellants’ argument is not persuasive. Initially, we note that Appellants’ misinterpret the holdings in the two Board decisions above. In neither decision does the Board hold that a reference must comply with the negative limitation in all embodiments disclosed by the reference, such that a single embodiment disclosing that which is excluded by the negative 6 USPTO records reflect this decision as Ex parte Suh, Appeal No. 2010- 001773 (BPAI 2007). 3 Appeal 2016-003787 Application 13/495,339 limitation defeats the entire reference. In Nelson, the claim language at issue was “wherein the housing is configured such that when mounted on the vertical mounting surface, the [insect attractant light] source cannot be directly viewed.” Nelson, p. 4. Therein, though the Board held that negative limitations are absolute in their exclusion, consistent with the specification, the Board did not hold that every embodiment of a reference must meet the negative limitation. Id. at 4—5. As such, the Board interpreted the negative limitation, “the source cannot be directly viewed”, in the context in which the housing is mounted on the vertical mounting surface, as requiring that the source cannot be directly viewed by any observer from any angle. Id. at 5. Based on this interpretation, the Board determined that the applied reference failed to teach an embodiment that met the negative limitation, i.e., that prevented the source from being viewed by any observer from any angle. Id. at 6. In Sony Ericsson, the claim language at issue was “a first retaining sleeve . . . sized to . . . prohibit movement of the hinge cartridge within the opening.” Sony Ericsson, p. 6. The Board held that “prohibit” is a negative limitation that naturally excludes everything but recognized or stated exceptions. Id. at 8. In the facts before the Board, the negative limitation precluded all hinge cartridge movement under normal operating conditions. Id. at 9. Based on this interpretation, the Board determined that the applied prior art failed to teach or suggest a sleeve that prohibited movement of the hinge cartridge. Id. Similar to our predecessor Board panels, we determine that the claim language, “the rubber composition is exclusive of elastomers other than the solution-polymerized styrene-butadiene rubber,” is a negative limitation that 4 Appeal 2016-003787 Application 13/495,339 is absolute in its exclusion of other added elastomers. However, contrary to Appellants’ argument, such limitation does not require that any and all embodiments of a reference must exclude added elastomers. Instead, a teaching or suggestion not to include added elastomers in even a single embodiment is sufficient to meet this negative limitation.7 Here, the Examiner maintains that Costantini’s teaching that the rubber composition may “optionally” include at least one additional elastomer “effectively teaches an embodiment in which the composition does not comprise an additional elastomer.” Ans. 4. Appellants do not challenge this finding, which is supported on the record. Further, as the Examiner notes {id., citing MPEP § 2123(H)), disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. “[I]in a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.’” Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); accord, In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979) and In re Mills, 470 F.2d 649 (CCPA 1972). Accordingly, we will sustain the Examiner’s obviousness rejection. 7 Indeed, Appellants disclose this negative limitation as merely permissive or optional rather than mandatory for all compositions. See Spec. 3:14—15 (“the rubber composition may be exclusive of other elastomers.” (emphasis added)). In addition, Appellants’ original claim 1 did not exclude other elastomers, which was instead recited in original claim 2. See original claims filed June 13, 2012. 5 Appeal 2016-003787 Application 13/495,339 DECISION Upon consideration of the record, and for the reasons given above and in the Answer, the decision of the Examiner rejecting claims 1,5, and 7—19 under 35 U.S.C. § 103(a) as unpatentable over Costantini in view of Valero and Pagliarini 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)(1). AFFIRMED 6