Ex Parte Tao et al

Board of Patent Appeals and Interferences

Jun 18, 2008

10373198 (B.P.A.I. Jun. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte Jian Tao and Carrie Webster
__________

Appeal 2007-2660
Application 10/373,198
Technology Center 1700
___________

Decided: June 18, 2008
___________

Before: RICHARD E. SCHAFER, SALLY G. LANE, and
JAMES T. MOORE, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal from the Final Rejection of Claims 1-10. 35 U.S.C.
§ 134(a). We have jurisdiction. 35 U.S.C. § 6 (b). We affirm.
STATEMENT OF THE CASE
An Examiner finally rejected Claims 1-10 on five grounds:
1. Claims 1, 2 and 5 under 35 U.S.C. § 102(e) as anticipated by
Osen1;
2. Claims 1 and 2 under 35 U.S.C. § 103(a) over Guo2;

1 U.S. Published Application 2003/0144400.
2 U.S. Published Application 2003/0171500.
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3. Claims 1-4 under 35 U.S.C. § 102(a) as anticipated by Yeh3;
4. Claim 5 under § 103(a) over the combined teachings of Yeh
and Mizuno4; and
5. Claims 6-10 under 35 U.S.C. § 103(a) over the combined
teachings of Yeh, Mizuno and Tao5.
FINDINGS OF FACT
Subject Matter of the Invention
F. 1. The claimed subject matter relates to methods and aqueous
formulations for producing crosslinked carboxylated polyacrylonitrile
butadiene rubber for use in gloves. Spec., p. 4, ¶ 0015.
F. 2. The invention relies on a peroxide crosslinking system “in
combination with zinc oxide (ZnO).” Spec. p. 4, ¶ 0013.
F. 3. In the “Detailed Description of Invention” Applicants emphasize that
the invention combines ZnO and peroxide to produce the rubber:
In this invention, a formula is described that combines
ZnO and peroxide to produce a thin wall nitrile glove that
possesses desired and balanced physical properties . . . .
Spec. p. 8, ¶ 0030.
F. 4. Applicants further state that ZnO “acts as [an] ionic cross linker
between carboxylated groups.” Spec., p. 2, ¶ 0006.
F. 5. The specification also says that ZnO “will react with carboxylated
groups at room temperatures to result in ionic crosslinking.” Spec., p.
7, ¶ 0026.

3 U.S. Patent 6,391,409.
4 U.S. Patent 5,408,007
5 U.S. Patent 6,451,893
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F. 6. Applicants disclose that the rubber is formed by curing at an elevated
temperature. Spec., p. 9, ¶ 0031.
Claims 1-9
F. 7. Claims 1-9 each require an aqueous dispersion including zinc oxide
(ZnO) crosslinked carboxylated polyacrylonitrile butadiene and an
effective amount of a peroxide. Spec., p. 4, ¶¶ 0013 - 0015.
F. 8. For example, Claim 1 provides:
1. A formulation for producing a nitrile glove comprising
an aqueous dispersion of a zinc oxide cross linked
carboxylated polyacrylonitrile butadiene and an
effective amount of peroxides as a cross-linking
component.
Supp. App. Br., p. 6, Claims Appendix (emphasis added).6
F. 9. Applicants state that the formulation of Claim 1 is described by their
Example 3:
Claim 1 recites a formulation for producing a
nitrile glove comprising an aqueous dispersion of a zinc
oxide cross linked carboxylated polyacrylonitrile
butadiene and an effective amount of peroxides as a
cross-linking component. The formulation is set forth in
Example 3 on page 8 of the specification.
Supp. App. Br., p. 2 (Emphasis added).
F. 10. Applicants’ Example 3 is said to be a “compounding formula”
including ZnO and Peroxide. Spec., p. 8, Example 3.

6 Throughout this decision, we refer to the Supplemental Appeal Brief filed
December 7, 2006. All references to the claims are to the copy appearing in
the Claims Appendix submitted with that Appeal Brief. App. Br., pp. 6 and
7 (Claims Appendix). The Examiner has certified the copy to be correct.
Ans., p. 2.
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F. 11. We understand “compounding formula” to mean the listing of “raw”
ingredients which are combined and subsequently cured to make the
rubber.
F. 12. Example 3 lists the following raw ingredients:
ZnO;
carboxylated polyacrylonitrile butadiene;
the peroxide 2,5-dimethyl-2,5-di(t-buty1peroxy)hexane;
a phenolic antioxidant;
titanium dioxide;
potassium hydroxide; and
water
Spec. p. 8, Example 3 (emphasis added).
F. 13. Example 3 does not recite ZnO crosslinked carboxylated
polyacrylonitrile butadiene as required by claims 1-9.
F. 14. The examiner rejected Claims 1-9 relying on three “primary”
references: 1) Osen; 2) Guo and 3) Yeh.
F. 15. Each of the references relates to aqueous formulations for making
rubber containing carboxylated acrylonitrile butadiene (CAB7). Osen,
p. 1, ¶ 0010; Guo, p. 4, ¶ 0033; Yeh, Col. 3, l. 62 – Col. 4, l. 18.
F. 16. Each of the references describes making rubber by curing an aqueous
formulation including ZnO, CAB and peroxide.
F. 17. Osen teaches aqueous rubber forming formulations (Osen, p. 1, ¶
0014) including ZnO (Osen, p. 1, ¶ 0013), CAB (Osen, p.1, ¶ 0010),

7 We understand Applicants’ carboxylated polyacrylonitrile butadiene to be
the same material as carboxylated acrylonitrile butadiene described by the
references. Applicants have not argued that the two names identify different
materials. We will refer to both Applicants’ carboxylated polyacrylonitrile
butadiene and the prior art carboxylated acrylonitrile butadiene as CAB.
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and an effective amount of peroxide as a cross-linking component
(Osen, p.1, ¶ 0012).
F. 18. Guo teaches a latex formulation for making rubber.
F. 19. We understand “latex” to be a colloidal suspension of polymer
particles stabilized by dispersing agents in an aqueous medium.8
F. 20. Guo’s latex may include ZnO, CAB, and an effective amount of
peroxide. Guo, p. 4, ¶¶ 0033, 0035; p. 6, ¶ 0061, Table 5, Run C. 9
F. 21. Yeh relates to latex formulations for making rubber gloves. Yeh,
col. 3, l. 62 - 63.
F. 22. Yeh’s latex may include a vulcanization activator, CAB (Yeh, col. 3,
l. 63, - col. 4, l. 18), and a crosslinker (Yeh, col. 4, l. 15-18).
F. 23. The vulcanization activator may be ZnO. Yeh, Col. 4, l. 23-25.
F. 24. The crosslinker may be an organic peroxide. Yeh, Col. 4, l. 19-20.
F. 25. Thus Yeh discloses an aqueous dispersion including ZnO, CAB and a
peroxide.
F. 26. Yeh’s formulations may also include a vulcanization accelerator.
Yeh, Col. 2, ll. 26-30.
F. 27. The vulcanization accelerator may be, inter alia, aldehyde-amine
reaction products or guanidines. Yeh, Col. 2, ll. 35-40.
F. 28. Each of the references teaches heating the aqueous formulation to cure
the rubber. Osen, p. 4, ¶ 0064; Guo, p. 7, Table 8, Compound C; Yeh,
col. 5, ll. 13-19.

8 E.g., Kirk-Othmer Encyclopedia of Chemical Technology, 5th Ed., “Latex
Technology,” John Wiley & Sons, 2001.
9 The brand name KRYNAC X7.40 ™ in Table 5, Run C is a terpolymer of
methacrylic acid-acrylonitrile-butadiene. Guo, p. 4, ¶ 0045. That
terpolymer is a carboxylated acrylonitrile butatidiene.
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F. 29. None of the references expressly describe that the formulations
include ZnO crosslinked CAB as required by each of Claims 1-9.
F. 30. However, Applicants and each of the references disclose using
essentially the same starting materials (an aqueous dispersion
including ZnO, CAB and a peroxide) and the same method to cure the
rubber.
F. 31. The formation of ZnO crosslinked CAB is inherent in Osen’s, Guo’s
and Yeh’s disclosures.
F. 32. The subject matter of Claim 1 is anticipated by Osen.
F. 33. The subject matter of Claim 1 is anticipated by Yeh.
Claim 10
F. 34. The subject matter of Claim 10 pertains to thin wall sulfur free nitrile
gloves. Spec., p. 8, ¶ 0030
F. 35. Claim 10 does not require ZnO crosslinked CAB
F. 36. Claim 10 requires an aqueous solution including ZnO and CAB.
F. 37. Claim 10 provides:
10. A thin wall sulfur free nitrile glove made from a
solution consisting essentially of:
a) carboxylated polyacrylonitrile butadiene,
b) zinc oxide,
c) 2,5-dimethyl-2,5-di(t-butylperoxy)hexane,
d) a phenolic antioxidant,
e) titanium dioxide,
f) potassium hydroxide, and
g) water.
App. Br., p. 7, Claims Appendix (emphasis added).
F. 38. The Examiner rejected Claim 10 as well as Claims 6-9 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of Yeh,
Mizuno and Tao. Ex. Ans., pp. 4-5.
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F. 39. Yeh teaches all the ingredients of Claim 10 except the specific
peroxide 2,5-dimethyl-2,5-di(t-butylperoxy)hexane and potassium
hydroxide.
F. 40. Mizuno and Tao were relied upon for teaching the specific peroxide
(2,5-dimethyl-2,5-di(t-butylperoxy)hexane) and potassium hydroxide,
respectively.
ISSUES
The Examiner contends that the aqueous mixtures including ZnO,
CAB and peroxide taught by Osen, Guo and Yeh, will inherently form ZnO
crosslinked CAB. With respect to Claims 1-9, Applicants contend that the
references relied upon do not expressly describe the formation of ZnO
crosslinked CAB. For Claim 10 Applicants contend that the phrase
“consisting essentially of” excludes the presence of vulcanization
accelerators from the composition.
As to Claims 1-9, the dispositive issue is whether Applicants have
shown error in the Examiner’s finding that ZnO crosslinked CAB would
inherently form. For Claim 10 the issue is whether Applicants have
demonstrated that the transitional phrase “consisting essentially of” excludes
the presence of vulcanization accelerators.
ANALYSIS
Claims 1-9
The Examiner rejected various subsets of the Claims on 5 different
grounds. However, all the rejections of Claims 1-9 are based upon the
inherent formation of ZnO crosslinked CAB in the compositions described
by Osen, Guo and Yeh, respectively. Applicants only challenge the
inherency of forming ZnO crosslinked CAB. Accordingly, we treat all the
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rejections relating to Claims 1-9 as standing or falling with the resolution of
the inherency issue.
Inherency of ZnO crosslinked CAB
The subject matter of Applicants’ Claims 1-9 and the Osen, Guo and
Yeh references relates to compositions for making CAB containing rubber.
Supp. App. Br., p. 6, Claim 1; Osen, p. 1, ¶ 0010; Guo, p. 4, ¶ 0033; Yeh,
Col. 3, l. 62 – Col. 4, l. 18. In making the rubber, both Applicants and the
prior art begin with aqueous dispersions including ZnO, CAB and an
effective amount of peroxide. Thus, Applicants state that the formulation of
their Claim 1 –which expressly requires an aqueous dispersion of ZnO
crosslinked CAB and a peroxide-- is taught by Example 3 in their written
description. Supp. App. Br. p. 2. Applicants’ Example 3 describes a
“compounding formulation” including ZnO, CAB, a peroxide and water.
Spec., p. 8. Osen, Guo and Yeh similarly begin with an aqueous mixture
including ZnO, CAB and an effective amount of peroxide. Osen, ¶¶, 0010,
0012, and 0013; Guo, p. 4, ¶¶ 0035, p. 6, ¶ 0061 and Table 5, Run C; Yeh,
Col. 3, l. 63 – Col. 4, l. 25. Applicants have not challenged the Examiner’s
finding that each reference describes an aqueous formulation including ZnO,
CAB and a peroxide. Both Applicants and the prior art teach heating the
formulation to cure the rubber. Spec., p. 9, ¶ 0031; Osen, p. 4, ¶ 0064; Guo,
p. 7, Table 8, Compound C; Yeh, col. 5, ll. 13-19.
Since both Applicants and each of the references use essentially the
same starting ingredients in essentially the same process to form a CAB
containing rubber, it is reasonable to infer that ZnO crosslinked CAB would
inherently form during the formation of rubber as taught by Osen, Guo and
Yeh. Cf. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]e think that
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it was reasonable for the PTO to infer that the polymerization . . . of
identical monomers, employing the same or similar polymerization
techniques, would produce polymers having the identical composition.”).
Applicants criticize the Examiner’s reference to ¶ 0006 of their
written description. Paragraph 0006 is part of Applicants’ description of the
“Background of the Invention.” Spec., p. 2, ¶ 6. Applicants there say that
with respect to CAB containing formulations, ZnO acts as both a primary
activator for sulfur vulcanization and a CAB crosslinking agent. 10
According to Applicants, reference to their written description was
inappropriate because anticipation must be based only on “the disclosure of
the references.” Supp. App. Br., p. 3. The Examiner responds that he
referred to the specification not as prior art, but in response to the
Applicants’ argument that the zinc oxide taught by Osen would not function
as a crosslinking agent. Ans., p. 6.
Our review of the record indicates that the Examiner did not
inappropriately rely on Applicants’ disclosure. The Examiner relied upon
Osen’s, Guo’s and Yeh’s teachings of the use of ZnO in rubber formulations
and found that those formulations would inherently form ZnO crosslinked
CAB. The Examiner referenced Applicants’ disclosure to point out that his
finding that ZnO would inherently crosslink CAB was not inconsistent with

10 Paragraph 0006 provides as follows:
To speed up the process and improve quality consistency, hundreds of
chemicals were used. ZnO is the most important one, which is called
the primary activator. This is essentially true for most rubbery
materials, except for [CAB], in which the function of ZnO is two fold.
In addition to primary activator for sulfur cross linking, it also acts as
ionic cross linker between carboxylated groups.
Spec., p. 2, ¶ 0006.
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Applicants’ own teachings. It is not improper for the Office to compare the
product and process of the prior art with Applicants’ disclosure in
determining whether the prior art product and an applicant’s product are the
same. See In re Thorpe, 777 F.2d 695, 697-698 (Fed. Cir. 1985)(deciding
that it was appropriate for the Office to rely on the applicant’s statement of a
chemical fact in comparing the similarities of reactants, reaction conditions
and properties to determine if the applicant’s and the prior art products were
the same).
We note that Applicants argue that it cannot be assumed that ZnO will
function as a crosslinking agent for CAB. E.g., Supp. App. Br., p. 4. On the
record before us we disagree.
Applicants’ statements about the function of ZnO do not distinguish
Applicants’ formulations from the formulations of the prior art. In this
regard we note that Applicants’ do not argue that they employ special steps
or techniques to cause ZnO to function as a cross linking agent. Nor do they
argue that there are special steps or techniques present in the prior art that
would cause ZnO not to act as a cross linking agent. Indeed, it appears that
the mere presence of ZnO and CAB will result in crosslinking: “ZnO will
react with carboxylated groups at room temperatures to result in ionic
crosslinking.” Spec. p. 7, ¶ 0026. On the record before us we do not see
why the same would not be true for the ZnO and CAB containing rubber
formulations of the prior art. Thus, it is reasonable to find, as did the
Examiner, that the “presence of ZnO would result in the formation of
crosslinked carboxylated acrylonitrile-butadiene rubber.” Ex. Ans. p. 3.
Where an applicant’s and the prior art’s compositions reasonably
appear to be the same, the applicant must “prove that the prior art products
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do not necessarily or inherently possess the characteristics of [the] claimed
product.” In re Thorpe, 777 F.2d at 698 (quoting In re Fitzgerald, 619 F.2d
67, 70 (CCPA 1980)). See also In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”).
Applicants have not provided test data or results demonstrating that
ZnO crosslinked CAB does not form when making rubber according to
Osen’s, Guo’s or Yeh’s teachings. Rather, Applicants rely on three patents
in an attempt to refute that ZnO inherently acts as a cross linker with CAB.
App. Br., pp. 3, 4. However, those patents are consistent with a finding of
inherency. Each patent teaches that ZnO acts as a crosslinking agent in
polymer compositions. Powell, col. 1, ll. 42-58; Suddaby, col. 4, ll. 45-51;
and Lipinsky, col. 1, ll. 37-43. Moreover, Lipinski specifically teaches that
zinc oxide acts as a crosslinking agent for CAB in aqueous dispersions.
Lipinski, col. 1, ll. 30-35 and 43-48.
We recognize that Osen, Guo and Yeh, do not characterize ZnO as a
crosslinking agent. For example, Osen describes ZnO as an acid scavenger.
Osen, p. 1, ¶ 0013. However, Applicants have neither provided an
explanation nor directed us to evidence showing that the ZnO would not also
act as a crosslinker for the ZnO and CAB containing formulations described
by Osen, Guo and Yeh.
Applicants point to certain information in the Evidence Appendix
asserting that that it shows that when “zinc oxide but no sulphur is used, the
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result is a gummy substance because sulphur is the crosslinker, not zinc
oxide.” App. Brief, p. 4. This “evidence” was apparently submitted for the
first time with Applicants’ appeal brief.
We decline to consider this information. Applicants have not
identified where this information was previously before the Examiner. See
37 CFR § 41.37(c)(1)(ix) (requiring the appendix to identify where in the
record the evidence was entered by the examiner). Nor are any of the
circumstances permitting filing of new evidence after appeal present here.
See 37 CFR § 41.33(d)(2) (precluding additional evidence after appeal
except where the applicant requests reopening prosecution or in response to
a decision by the board entering a new ground of rejection). Additionally,
this new “evidence” was not submitted in the form of an affidavit or
declaration as required by 37 CFR § 1.132. Thus Applicants’ “gummy
substance” argument is without admissible evidentiary support and is not
entitled to any weight. “[A]rguments of counsel cannot take the place of
evidence lacking in the record.” Estee Lauder Inc. v. L’Oreal, S.A., 129 F3d
588, 595 (Fed. Cir. 1997) quoting Knorr v. Pearson, 671 F.2d 1368, 1373
(CCPA 1982). See also, In re Lindner, 457 F.2d 506, 508 (CCPA 1972)
(“mere lawyers’ arguments unsupported by factual evidence are
insufficient”).
The record before us establishes, by a preponderance of the evidence,
that ZnO crosslinked CAB would inherently form in the aqueous rubber
compositions taught by Osen, Guo and Yeh.
As Applicants have not challenged any of the Examiner’s other
findings and conclusions with respect to Claims 1-9 we affirm the rejections
of those claims.
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Claim 10
The subject matter of Claim 10 does not require ZnO crosslinked
CAB. Rather, it requires a solution including ZnO, CAB, a specific
peroxide and certain other ingredients. The Examiner rejected Claim 10 on
the same grounds as Claims 6-9 relying on the combined teachings of Yeh,
Mizuno and Tao. Yeh teaches an aqueous solution including ZnO, CAB and
a peroxide. Yeh’s rubber forming solutions also may include a
vulcanization accelerator. Yeh, Col. 2, ll. 26-30. The only ground of error
alleged by Applicants is that the transitional phrase “consisting essentially
of” “excludes the use of a vulcanization accelerator . . . .” App. Br., p. 5.
Applicants argue that since Yeh teaches the use of a vulcanization
accelerator, the subject matter of “the claim is not obvious in view of the
prior art teachings.” App. Br., p. 5.
As used in patent claiming, the phrase “consisting essentially of” is a
term of art. The phrase leaves the claim open to additional unnamed
components that do not materially affect the basic and novel properties of
the invention. PPG Industries v. Guardian Industries Corp., 156 F.3d 1351,
1354 (Fed. Cir. 1998). Thus, Applicants implicitly argue that the inclusion
of a vulcanization accelerator would materially affect the basic and novel
properties of the rubber composition of Claim 10.
Applicants, however, have provided neither an explanation nor
directed us to evidence showing that the inclusion of a vulcanization
accelerator would have a material affect. All we are provided is Applicants’
bare contention that “consisting essentially of” excludes the use of
vulcanization accelerators. While the requirement in Claim 10 that the
solution be “sulfur free” would exclude certain of Yeh’s expressly described
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accelerators, e.g., those including a sulfur moiety, Yeh also teaches the use
of aldehyde-amine reaction products11 or guanidines12 as accelerators. Yeh,
col. 4, ll. 26-32. These compounds do not require sulfur. 13 Additionally,
our review of the written description indicates that while sulfur is to be
avoided, the written description does not reveal that Applicants clearly
disavowed the use of all vulcanization accelerators, including non-sulfur
containing accelerators.
Applicants have failed to establish that “consisting essentially of” as
used in Claim 10 would exclude the presence of vulcanization accelerators.
As Applicants have not challenged any of the Examiner’s other
findings and conclusions relating to Claim 10, we affirm the rejection of that
Claim.
CONCLUSIONS
On the record before us, the Applicants have not sustained their
burden of establishing that the Examiner erred in holding that the claimed
subject matter would have been anticipated within the meaning of 35 U.S.C.
§§ 102(a) and (e) or would have been obvious within the meaning of 35
U.S.C. § 103(a).
DECISION
We affirm the following rejections:
1. Claims 1, 2 and 5 under 35 U.S.C. § 102(e) as anticipated by
Osen;

11 Aldehydes may be represented by the general formula RCH=O. Amines
may be represented by the general formula R3N, where R must be at least
one alkyl or aryl moiety
12 Guanidine may be represented by the general formula (H2N)2C=NH.
13 See footnotes 11 and 12.
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2. Claims 1 and 2 under 35 U.S.C. § 103(a) over Guo;
3. Claims 1-4 under 35 U.S.C. § 102(a) as anticipated by Yeh;
4. Claim 5 under § 103(a) over the combined teachings of Yeh
and Mizuno; and
5. Claims 6-10 under 35 U.S.C. § 103(a) over the combined
teachings of Yeh, Mizuno and Tao.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

qsg

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