Ex Parte Tomoi

Patent Trial and Appeal Board

Sep 30, 2016

13259062 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/259,062
30678 7590
POLSINELLI PC
(DC OFFICE)
09/22/2011
1000 Louisiana Street
Fifty-Third Floor
HOUSTON, TX 77002
10/04/2016
FIRST NAMED INVENTOR
Shusaku Tomoi
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.
21713-00142-US 5722
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
dcdocketing@novakdruce.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUSAKU TOMOI
Appeal2015-003780
Application 13/259,062
Technology Center 1700
Before BEYERL YA. FRANKLIN, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
.6. .... ,1 .... ,....,-TTr'1.r-"\ l\-1,....Al/'\.r'" , .. T"""1 • -, Appeuant' appeals unaer j) u.~.L. s U4~aJ rrom me bxammer s
January 29, 2014 decision finally rejecting claims 12-16 and 18-32 ("Final
Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the Real Party in Interest as The Yokohama Rubber
Co., Ltd. (Appeal Br. 2).
Appeal2015-003780
Application 13/259,062
CLAIMED SUBJECT MATTER
Appellant's invention is directed to an adhesive composition which is
said to provide excellent adhesion between a thermoplastic resin or a
thermoplastic elastomer and a tire (Abstract). The adhesive composition
comprises a base polymer and alkylphenol-formaldehyde resin cross-linking
agent (id.). The base polymer comprises 80 to 99 parts by weight of a
thermoplastic elastomer and 1 to 20 parts by weight of a halogenated rubber
(id.). Details of the claimed invention are set forth in independent claim 12,
which is reproduced below from the Claims Appendix of the Appeal Brief:
12. An adhesive composition comprising 100 parts by
weight of a base polymer and 20 to 50 parts by weight of a
resol-type phenolic resin-based resin crosslinking agent,
wherein 100 parts by weight of the base polymer comprises 80
to 99 parts by weight of a thermoplastic elastomer and 1 to 20
parts by weight of a halogenated rubber, wherein the resol-type
phenolic resin-based resin crosslinking agent is an alkylphenol-
formaldehyde resin or a modified product thereof
App. Br. 15.
REJECTIONS
I. Claims 12, 13, 15, 16, 18, 19, 20, 24, 26, 28, 29, 31, and 32 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Toy2 in view of
Schunck. 3
2 Toy, U.S. Patent No. 4,497,926, issued February 5, 1985.
3 Schuncketal., U.S. Patent No. 4,131,709, issuedDecember26, 1978.
2
Appeal2015-003780
Application 13/259,062
II. Claims 14, 23, 25, 27, and 30 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Toy in view of Schunck, and further in view of
Tufprene A. 4
III. Claim 21 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toy in view of Schunck, and further in view of Giles.5
DISCUSSION
Appellants do not separately argue the rejection of any of the
dependent claims (see, e.g. Appeal Br. 8-9). Accordingly, our analysis will
focus on Rejection I, and in particular on the rejection of claim 12 over Toy
in view of Schunck.
The Examiner finds that Toy discloses an adhesive composition which
corresponds to the claimed base polymer, but does not teach the presence of
an alkylphenol-formaldehyde resin or modified product thereof as a cross-
linking agent (Final Act. 2-3). The Examiner further finds that Schunck
teaches an adhesive composition which includes a copolymer and a
cohesion-increasing resin which may be an alkylphenol-formaldehyde resin,
which is taught to improve the peel strength of the adhesive composition
(Final Act. 3, citing Schunck, 2:20-3:39, Tables 1 and 2). The Examiner
determines that it would have been obvious to have modified Toy's
composition by incorporating the alkylphenol-formaldehyde resin from
4 Product information sheet for Tufprene A from AKElastomer (available at
http://www.akelastomer.com/ eng/ eel/pub/proudcts/tufprene/tufprene_a.html).
5 Giles et al., Extrusion: The Definitive Processing Guide and Handbook
(William Andrew Publishing 2005).
3
Appeal2015-003780
Application 13/259,062
Schunck to improve the cohesion and improve the peel strength of the
composition (Final Act. 3).
Appellant argues, inter alia, that Toy does not teach the use of base
polymer which includes both from 80-99 parts of a thermoplastic elastomer
and 1-20 parts of a halogenated rubber (Appeal Br. 7). Appellant contends
that none of Toy's examples include a composition comprising both a
halogenated rubber and a thermoplastic elastomer.
The Examiner's response is that Toy specifically states that its
adhesive composition comprises an elastomer selected from the group
consisting of polar elastomers and unsaturated polar elastomers6 (Toy, 2:58-
61 ). However, the Examiner has not made any findings as to how or why a
person of skill in the art would have selected a composition which included a
combination of 80---99 parts of a thermoplastic elastomer and 1-20 parts of
a halogenated rubber.
In order to reject a claim in a patent application as obvious under
35 U.S.C. § 103(a), the Examiner must establish a prima facie case of
obviousness, including the presence of each element of the claim. In the
absence of a proper prima facie case of obviousness, an applicant who
complies with the other statutory requirements is entitled to a patent. In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also, In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). In this instance, we determine that the
preponderance of the evidence of record does not support a finding that the
6 The Examiner also finds (Ans. 8), and Appellant does not dispute, that Toy
discloses that "polar elastomers" can include the halogenated rubbers, such
as chloroprene, recited in claim 12 (Toy 3:65---66), and "unsaturated
elastomers" includes the claimed thermoplastic elastomers (Toy 3:11-18).
4
Appeal2015-003780
Application 13/259,062
prior art teaches, suggests, or renders obvious each of the limitations in claim
12, in particular the relative proportions of the thermoplastic elastomer and the
halogenated rubber in the base polymer of claim 12.
In view of the foregoing, we reverse the rejections of each of the
claims.
CONCLUSION
We REVERSE the rejections.
REVERSED
5