Ex Parte Tomita et alDownload PDFPatent Trial and Appeal BoardJun 24, 201613459551 (P.T.A.B. Jun. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/459,551 04/30/2012 126323 7590 06/28/2016 Honigman Miller Schwartz and Cohn LLP/Nike 350 West Michigan Avenue, Suite 330 Kalamazoo, MI 49007 FIRST NAMED INVENTOR Seisuke Tomita 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. 11-2064 US/201882-362323 CONFIRMATION NO. 5071 EXAMINER REUTHER, ARRIE L ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 06/28/2016 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): Patents@honigman.com abudde@honigman.com HV andenBrink@honigman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEISUKE TOMIA and THOMAS J. KENNEDY, III Appeal2015-003285 Application 13/459,551 Technology Center 1700 Before PETER F. KRATZ, ROMULO H. DELMENDO, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 17-20, 27-29, 31, 35, 42, 43, and 45. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 We cite to the Specification ("Spec.") filed Apr. 30, 2012; Final Office Action ("Final Act.") mailed Apr. 7, 2014; Examiner's Answer ("Ans."); and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br."). 2 Appellants identify Nike, Inc. as the real party in interest. App. Br. 1. Appeal2015-003285 Application 13/459,551 BACKGROUND The subject matter involved in this appeal relates to a process for making a rubber composition. Spec. i-f 1; Claim 17. According to Appellants, pulverulent metal acrylate salt used as a cross-linking co-agent tends to fly off, causing loss of material and sticking to metal equipment parts ("plating out"). Spec. i-f 30. Appellants reduce fly off by dispersing metal acrylate salt in oil prior to introduction to a rubber material. Id. at i-f 30. Sole independent claim 17 illustrates the subject matter on appeal and is reproduced from the Claims Appendix of the Appeal Brief as follows: 17. A method of making a rubber composition comprising: (a) forming a dispersion consisting of: (i) at least one metal salt selected from the group consisting of metal salts of unsaturated carboxylic acids having from 3 to 8 carbon atoms and (ii) an oil selected from the group consisting of vegetable oils and combinations thereof; wherein the oil (a)(ii) is present in the dispersion in an amount of about 10% to about 30% by weight based on the weight of the at least one metal salt (a )(i); (b) adding the dispersion of step (a) to base rubber material; ( c) mixing the dispersion of step (a), a base rubber material, and, optionally, other ingredients to form a uniform rubber composition. REJECTIONS The Examiner maintained the following grounds of rejection: I. Claims 17-20, 27-29, 31, 42, 43, and 45 stand rejected under 35 U.S.C. § 103(a) as unpatentable over von Hellens3 and Nagel. 4 3 US 6,380,291 Bl, issued Apr. 30, 2002 ("von Hellens"). 4 US 6,194,504 Bl, issued Feb. 27, 2001 ("Nagel"). 2 Appeal2015-003285 Application 13/459,551 II. Claim 35 stands rejected under 35 U.S.C. § 103(a) as unpatentable over von Hellens, Nagel, and Gajic. 5 DISCUSSION I Appellants argue that the Examiner failed to articulate a reason why one of ordinary skill would have modified von Hellens' process to include a metal salt and oil dispersion as claimed. App. Br. 4. Based on the evidence before us, we agree. The Examiner found that von Hellens discloses adding zinc diacrylate and epoxidized soybean oil to a rubber composition. Ans. 2 (citing von Hellens Example 2). Von Hellens teaches using epoxidized soybean oil as a plasticizer. Id. at col. 6, 11. 21-22. Acknowledging that von Hellens fails to teach forming the zinc diacrylate and soybean oil as a dispersion prior to adding the dispersion to the rubber, Ans. 2, the Examiner found that Nagei teaches treating zinc diacrylate with polymer or mineral oil, before adding the so-treated diacrylate to a rubber composition, to reduce fly off and plating out. Ans. 3 (citing Nagel col. 4, 1. 15). Particularly, Nagel teaches combining acrylate and treating polymer/oil in a solvent, followed by drying, to produce a dry powder of polymer/oil-encapsulated acrylate particles. Nagel col. 3, 11. 38--42; Example 1. Based on the foregoing findings, the Examiner determined that it would have been obvious to one skilled in the art to "treat the metal acrylate with the [soybean] oil" in von Hellens, "as disclosed by Nagel." Ans. 3; see 5 US 2004/0092636 Al, published May 13, 2004 ("Gajic"). 3 Appeal2015-003285 Application 13/459,551 also id. at 5 ("Nagel offers the motivation of why one of ordinary skill in the art would 'treat' (disperse) the zinc diacrylate with epoxidized soy bean oil prior to adding it to the rubber material."). However, as Appellants' correctly contend, App. Br. 7-8, Nagel's acrylate treatment process produces the acrylate as an encapsulated dry powder, not a dispersion. The Examiner presents no reasoning as to why Nagel' s dry powder encapsulation technique would lead one skilled in the art to use an acrylate-oil dispersion in von Hellens. Neither does the Examiner articulate any other reason to combine von Hell ens' acrylate and soybean oil ingredients as a dispersion. On this record, absent a sufficient articulated reason to modify von Hellens' process in the manner set forth in the ground of rejection, we are unable to sustain the Examiner's obviousness determination. Accordingly, we do not sustain Rejection I. II Because Rejection II is principaiiy based on the same findings and determinations underlying Rejection I, we do not sustain Rejection II for the reasons set forth above in connection with Rejection I. DECISION The Examiner's decision rejecting claims 17-20, 27-29, 31, 35, 42, 43, and 45 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation