Ex Parte Thielen et al

Patent Trial and Appeal Board

Dec 11, 2012

11930805 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/930,805 10/31/2007 Georges Marcel Victor Thielen DN2006221 1361
27280 7590 12/11/2012
THE GOODYEAR TIRE & RUBBER COMPANY
INTELLECTUAL PROPERTY DEPARTMENT 823
1144 EAST MARKET STREET
AKRON, OH 44316-0001
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
12/11/2012 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 GEORGES MARCEL VICTOR THIELEN,
UWE ERNST FRANK and FRANK SCHMITZ
____________

Appeal 2011-007076
Application 11/930,805
Technology Center 1700
____________

Before ANDREW H. METZ, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 through 9, which are all the claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

THE INVENTION
Appellants disclose rubber compositions useful for incorporation in a
variety of rubber components of a tire. The rubber components may be the
tire tread, sidewall, apex, chafer, sidewall insert, wirecoat or innerliner. The
tire may be a race tire, passenger tire, aircraft tire, agricultural tire,
earthmover, off-the-road, truck tire and the like. The tire may be a radial or
bias tire. Spec., page 15, lines 23 through 29. The rubber composition from
which a pneumatic tire may be prepared comprises 100 parts by weight of
elastomer and is prepared by mixing a silica filler and a diene based
elastomer to form a first nonproductive compound. Subsequently a second
nonproductive compound is prepared by mixing a rubber containing a nitrile
moiety and the first nonproductive compound to form a second
nonproductive compound. Thereafter, a third composition comprising
curatives and the second nonproductive compound are mixed to form a third
productive compound which is the rubber composition used to prepare the
pneumatic tire. Id. at page 1, line 29 through page 2, line 8. The method of
preparing the rubber compositions includes two nonproductive steps
followed by a third productive step. Each of the first two nonproductive
steps may include other optional additives exclusive of curatives. In the
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productive mix step curatives are mixed with the second nonproductive mix
to produce a productive compound useful for forming into the desired tire
component. Id. at page 2, lines 10 through 29. Both the first nonproductive
compound and the second nonproductive compound may contain various
commonly used additives. These other additives may be mixed in the first or
second nonproductive compound in any ratio and at different levels. They
may also be added to subsequent mixes, including the productive step. Id. at
page 13, line 32 through page 14, line 18.
Claim 1 is believed to be adequately representative of the appealed
subject matter and is reproduced below for a more facile understanding of
the claimed invention.
1. A process for the production of a pneumatic tire comprising a
component comprising a rubber composition, wherein the rubber
composition comprises 100 parts by weight of elastomer and is
produced by

(A) mixing a first composition comprising 30 to 110 parts by
weight, per 100 parts by weight of elastomer (phr) of a
silica filler and 20 to 90 phr of a diene based elastomer
selected from cis 1,4-polyisoprene rubber (natural or
synthetic), 3,4-polyisoprene rubber,
styrene/isoprene/butadiene rubber, emulsion and solution
polymerization derived styrene/butadiene rubbers, and cis
1,4-polybutadiene rubbers, to form a first nonproductive
compound;
(B) mixing a second composition comprising from 10 to 80 phr
of a rubber containing a nitrile moiety and the first
nonproductive1 compound to form a second nonproductive
compound; and

1 The claim reproduced in Appellants’ Claim Appendix incorrectly recites “the first productive compound.”
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(C) mixing a third composition comprising curatives and the
second nonproductive compound to form a productive
compound.

The references of record which are being relied on by the Examiner as
evidence of obviousness are:
Sandstrom US 5,462,979 Oct. 31, 1995
Smith et al. (Smith) US 5,696,197 Dec. 9, 1997
Obrecht et al. (Obrecht) US 6,127,488 Oct. 3, 2000

THE REJECTIONS
Claims 1, 2 and 6 through 9 stand rejected as being unpatentable
under 35 U.S.C. § 103(a) as the claimed subject matter would have been
obvious from the combined disclosure of Sandstrom and Smith.
Claims 3 through 5 stand rejected as being unpatentable under
35 U.S.C. § 103(a) as the claimed subject matter would have been obvious
from the disclosure of Sandstrom and Smith considered with Obrecht.
Claims 1, 2 and 7 through 9 stand rejected as being unpatentable
under 35 U.S.C. § 103(a) as the claimed subject matter would have been
obvious from the disclosure of Smith.
Claims 3 through 5 stand rejected as being unpatentable under
35 U.S.C. § 103(a) as the claimed subject matter would have been obvious
from the combined disclosure of Smith and Obrecht.
OPINION
Appellants have chosen to argue the claims on appeal without regard
to any specific claim or any specific claim limitation. Accordingly, we shall
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limit our decision to the subject matter of claim 1, the only independent
claim before us in this appeal.
Appellants argue that the rejection of claims 1, 2 and 6 through 9 as
being obvious from the disclosure of Sandstrom considered with Smith
should be reversed because (1) Sandstrom does not teach addition of silica in
a first non-productive mix step; (2) Sandstrom teaches epoxidized rubber as
a component in the first non-productive mixing step and Appellants’ claims
do not recite or require epoxidized natural rubber as a component in the first
non-productive mixing step and (3) Smith does not require that the
acrylonitrile/butadiene copolymer be added in the second, non-productive
stage. We find no merit in any of Appellants’ arguments.
Sandstrom discloses rubber compositions in Table III of column 9
wherein polybutadiene and polyisoprene are mixed with silica in a first non-
productive mixing step. Thus, Sandstrom not only teaches that silica may be
added in the first non-productive mixing step but also exemplifies the
addition of silica with polyisoprene in the first non-productive mixing step.
The silica disclosed as useful by Sandstrom has a BET surface area in the
range of from 40 to 600 square meters per gram, preferably 50 to 300 square
meters per gram. Sandstrom’s silica also has DBP absorption value of from
about 200 to about 400. Thus, not only does Sandstrom disclose adding
silica to the first non-productive mixing step but the silica used by
Sandstrom includes Appellants’ preferred silica. See page 8, lines 15 through
23 of Appellants’ Specification. As correctly observed by the Examiner,
because Appellants’ claims utilize the term “comprising” they do not
exclude epoxidized natural rubber or any other component. Additionally,
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Appellants specifically provide in their Specification for the inclusion of
other “various commonly used additive materials” which may be added in
any mixing step or even in subsequent mixing steps, including the
productive step. Spec., page 13, line 33.
Smith discloses that the rubbers used in the first and second non-
productive steps are different from each other and one of said first or second
rubbers can be cis-1,4-polyisoprene, 3,4-polyisoprene,
styrene/isoprene/butadiene, emulsion or solution polymerized
styrene/butadiene copolymers, cis1,4-polybutadiene and
acrylonitrile/butadiene copolymers. Smith also discloses that one of the two
different rubbers is always cis 1,4-polyisoprene and that the other may be
acrylonitrile/butadiene copolymer. The first or second may be the cis 1,4-
polyisoprene and, correspondingly, the first or second rubber is selected
from the above group. See Smith, column 2, lines 9 through 58. Thus, when
cis 1,4-polyisoprene is the first rubber Smith clearly discloses using a
“rubber containing a nitrile moiety” as one of the rubbers to be added to the
second mixing step as required by Appellants’ claim 1, step (B). We find
that disclosure to be sufficient to support the conclusion that the skilled
polymer chemist or tire engineer would have been motivated at the time
Appellants made their invention to have used a “rubber containing a nitrile
moiety” as the rubber in the second non-productive mixing step.
Accordingly, we find the Examiner has made out a prima facie case of
obviousness based on the disclosure of Sandstrom considered with Smith
and we affirm that rejection.
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As we stated above, Sandstrom discloses adding silica in the first of
two non-productive compound mixing steps so Appellants’ extensive
argument on that issue at page 8 of their Brief is entirely unpersuasive.
Appellants’ pronouncement on page 8 of their Brief that “Sandstrom does
not teach addition of silica in a first non-productive mix stage” is erroneous.
We have also carefully considered Appellants’ argument that the
rejection of the claims (claims 1, 2 and 7 through 9) over Smith is based on
impermissible hindsight and find that argument to be unpersuasive. Smith
clearly discloses that different rubbers are used in the first and second non-
productive mixing steps. In Table 1 there is disclosed a method comprising a
first non-productive mix including cis 1,4-polyisoprene (NR). According to
the disclosure of Smith, the rubber in the second step must be one selected
from the group disclosed as useful but which is not cis 1,4-polyisoprene.
One of the members of the group of rubbers useful in Smith’s process is
acrylonitrile/butadiene copolymers so its selection and use in Smith’s
process is clear, unequivocal and suggested. Thus, when the
acrylonitrile/butadiene copolymer is not used in the first non-productive
step, its use as the rubber in the second step is specifically suggested as are
the other rubbers listed by Smith as useful for that purpose. We also observe
that Smith claims the acrylonitrile/butadiene rubber component in their
claims. Thus, Smith discloses and claims a finite number of useful rubbers
for inclusion in the second non-productive mixing step.
Appellants also urge that because “nowhere does Smith teach or
suggest an advantage to using acrylonitrile/butadiene rubber over all the
other rubber disclosed,” the hypothetical person of ordinary skill in the art
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would have “no reason to expect a successful result of doing so as shown in
the present specification.” (Brief at page 13). In the first instance, while
Appellants’ argument suggests that Appellants have demonstrated some
advantage in using a “rubber containing a nitrile moiety” in the second non-
productive mixing step of their process for making a rubber compound for
use in preparing pneumatic tires, there is no evidence in the record which
supports their argument. The data in Table 1 of Appellants’ Specification
merely shows the effect of adding a “rubber containing a nitrile moiety”
during a first non-productive step compared to adding it in a second non-
productive step on the “tan delta” of the final rubber compound obtained
after the productive step. Because Smith specifically suggests adding a
“rubber containing a nitrile moiety” to their second non-productive step, the
basis for Appellants’ conclusion that the data exhibit an “advantage” is not
apparent on this record. Suffice it to say that Appellants bear the burden of
explaining why the results they obtained were truly representative of the
prior art and also that the results obtained were truly “unexpected.” This
Appellants have not done.
Nevertheless, it is not necessary for purposes of determining
obviousness for a reference to show an advantage to using a particular
rubber. By disclosing acrylonitrile/butadiene rubber as a component for use
in the second non-productive mixing step of their process of preparing
carbon black-filled rubber compositions useful for preparing pneumatic tires,
Smith informed persons of ordinary skill in the art that said rubber would
function for that purpose. We find that disclosure to be sufficient to support
the Examiner’s conclusion of obviousness. Accordingly, we affirm the
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Examiner’s rejection of Claims 1, 2 and 6 through 9 from the disclosure of
Smith under 35 U.S.C. § 103(a).
Claims 3 through 5 further limit the process of claim 1 to include a
particulate rubber gel filler. The Examiner recognized that neither
Sandstrom nor Smith disclosed the use of such a filler although both
references provided for the inclusion of fillers among other additional
conventional additives. The Examiner cited Obrecht as evidence that
particulate rubber gel fillers were well-known additives for rubber
compositions useful for preparing tires and which were known to impart
beneficial properties to the final rubber composition to which they were
added. Accordingly, the Examiner rejected the claims over the same
combination of references on which he relied to reject claims 1, 2 and 6
through 9 in further view of Obrecht. Appellants’ complete response to these
rejections may be found on pages 9 and 14 of their Brief. Therein, without
discussing the relevance of Obrecht as set forth in the Examiner’s rejections,
Appellants urge that their arguments with respect to the rejection of the
claims based on Sandstrom considered with Smith or over Smith alone
“apply equally to claims 3 through 5 as these claims are dependent on claim
1.” (Brief at page 9). Because we have affirmed each of the Examiner’s
aforementioned rejections, we summarily affirm the rejections of claims 3
through 5 on each separate ground of rejection.
The decision of the Examiner 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)(iv).
AFFIRMED
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