Ex Parte Voge et alDownload PDFPatent Trial and Appeal BoardOct 17, 201713576143 (P.T.A.B. Oct. 17, 2017) Copy Citation 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. 13/576,143 10/18/2012 Bozena Voge 5460-429PUS - 324416.000 2011 27799 7590 Cozen O'Connor 277 Park Avenue, 20th floor NEW YORK, NY 10172 10/19/2017 EXAMINER SHAH, SAMIR ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 10/19/2017 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): patentsecretary @ cozen. com patentdocket@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BOZENA VOGE, JOSE CARLOS ARAUJO DA SILVA, and JOSE MERINO LOPEZ Appeal 2017-001375 Application 13/576,143 Technology Center 1700 Before BRADLEY R. GARRIS, PETER F. KRATZ, and AVELYN M. ROSS, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal1 under 35U.S.C. § 134 from the Examiner’s Final Rejection of claims 1—6, 8—11, 15, and 20-30. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants’ claimed invention is directed to an elastomer composition having a self-sealing property that is useful in a puncture-resistant layer and an inflatable article having a layer comprising such a composition. 1 Compagnie Generale Des Establissements Michelin and Michelin Recherche Et Techniques S.A. are identified as the real parties in interest (App. Br. 2). Appeal 2017-001375 Application 13/576,143 Claim 1 is illustrative and reproduced below: 1. An elastomer composition having a self-sealing property which can be used in particular as puncture-resistant layer in an inflatable article, comprising (phr meaning parts by weight per 100 parts of solid elastomer): a solid unsaturated diene elastomer; a hydrocarbon resin within a range from 45 to 75 phr; between 0.5 and 5 of carbon black as filler; between 0.5 and 15 phr of thiuram polysulphide; and from 5 to 40 phr of a liquid plasticizer for which the glass transition temperature (Tg) is less than -20°C; wherein the liquid plasticizer is selected from the group consisting of liquid elastomers, polyolefin oils, naphthenic oils, paraffinic oils, DAE oils, MES oils, TDAE oils, mineral oils, vegetable oils, ether plasticizers, ester plasticizers, phosphate plasticizers, sulphonate plasticizers and the mixtures of these compounds. The Examiner maintains the following grounds of rejection: 1. Claims 1—6, 8—11, 15, and 20-22 stand rejected provisionally under the judicially created doctrine of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 16—36 of copending Application No. 13/576, 153. 2. Claims 1—6, 8—11, 15, and 20-30 stand rejected under the judicially created doctrine of nonstatutory obviousness-type double patenting as being unpatentable over claims 1—37 of copending Application No. 13/576, 151 (now U.S. Patent No. 9,243,133). 3. Claims 1—6, 8—11, 15, and 20-22 stand rejected under the judicially created doctrine of nonstatutory obviousness-type double 2 Appeal 2017-001375 Application 13/576,143 patenting as being unpatentable over claims 1 and 16-43 of copending Application No. 13/576,154 (nowU.S. Patent No. 8,957,132). 4. Claims 1—6, 8—11, 15, and 20-22 stand rejected under the judicially created doctrine of nonstatutory obviousness-type double patenting as being unpatentable over claims 43—47, 50—59, and 62-76 of copending Application No. 14/131, 372 (nowU.S. Patent No. 9,393,837). 5. Claims 1—6, 8—11, 15, and 20-28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sanda (US 2006/0194898 Al; published Aug. 31, 2006) in view of Pille-Wolf (US 2007/0037908 Al; published Feb. 15, 2007), Galimberti (US 2009/0165915 Al; published July 2, 2009), and the evidence given in Davis (US 5,145,750; issued Sep. 8, 1992), Bergman (US 2007/0161735 Al; published July 12, 2007), and Rodgers (US 2010/0036038 Al; published Feb. 11, 2010) (Final Act. 6-9). 6. Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sanda in view of Pille-Wolf, Galimberti, and the evidence given in Davis, Bergman, and Rodgers, and further in view of Chautard (US 4,239,076; issued Dec. 16, 1980) (Final Act. 10). Appellants do not contest the aforementioned obviousness-type double patenting rejections. Accordingly, we summarily affirm the aforementioned Rejections \—A. Contested Obviousness Rejections After review of the opposing positions articulated by Appellants and the Examiner and the evidence of obviousness adduced by the Examiner, we determine that the Appellants’ arguments are insufficient to identify 3 Appeal 2017-001375 Application 13/576,143 reversible error in the Examiner’s obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated obviousness rejections for substantially the fact findings and the reasons set forth by the Examiner in the Examiner’s Answer and in the Final Office Action. We offer the following for emphasis. For Rejection 5, Appellants argue the rejected claims together as a group with the exception of dependent claim 15. Accordingly, we select claim 1 as the representative claim on which we decide this appeal as to this rejection with the exception of claim 15, which we consider separately to the extent separately argued. The Examiner has determined that “Sanda discloses puncture sealing elastomeric composition (title, paragraph 0007) comprising a solid unsaturated diene elastomer (paragraph 0007), tackifying substance, carbon black, i.e. filler, (paragraph 0024) and tetramethyl thiuram disulfide (paragraph 0015)” (Final Act. 6). Based on these teachings and, in light of the further evidence relied upon in the stated rejection, the Examiner maintains that it would have been obvious for one of ordinary skill in the art to select a workable or optimum amount of carbon black filler for use as a colorant in Sanda and, in so doing, arrive at an amount of carbon black filler satisfying Appellants’ claim 1 range amount criteria (Final Act. 6, 11—12). In addition, the Examiner relies on Davis for evidencing “that tetramethyl thiuram disulfide is also know a thiuram polysulfide (column 6, lines 25-26)” (id.) and finds that Sanda teaches criteria for determining and selecting a workable amount of crosslinking agent which 4 Appeal 2017-001375 Application 13/576,143 would have led one of ordinary skill in the art to select an amount of thiuram polysulfide corresponding to the amount required by Appellants’ claim 1 (Ans. 8; Davis 121). As for the hydrocarbon resin component and the liquid plasticizer component and amount thereof corresponding to that required by claim 1, the Examiner further relies on Pille-Wolfe, Galimberti, Bergman, and Rodgers to suggest these component features and amounts as being options that one of ordinary skill in the art would have arrived at and found obvious to incorporate into the puncture-sealing elastomeric composition of Sanda for the reasons set forth in the Final Rejection (Final Act. 7—8; Pille-Wolf Tflf32, 36, 37, 39; Bergman 128; Sandra 112; Galimberti H 26, 118, 119; Rodgers 13). Appellants argue that none of the applied prior art, including Sanda, would have suggested using an amount of carbon black filler corresponding to the carbon black amount Appellants require in claim 1 (between 0.5 and 5 parts by weight per hundred parts solid elastomer)2 (Appeal Br. 5—9; Reply Br. 2-3). This argument is not persuasive of reversible error in the Examiner’s obviousness rejection because Sanda suggests that the composition can optionally include a filler, such as carbon black as a pigment, which would have suggested to one of ordinary skill in the art that any amount of the filler/pigment can be employed as a colorant depending on the color or 2 Claim 1 recites “between 0.5 and 5 of carbon black as filler” without specifying the units of measurement. For purposes of deciding this appeal, we consider claim 1 as if the units of measurement were stated to be “phr” or parts by weight per hundred parts solid elastomer. 5 Appeal 2017-001375 Application 13/576,143 shading desired so long as the amount would not be so great as to significantly impact the functionality of the composition as a puncture sealing composition desired by Sanda, which amount of carbon black would obviously embrace the limited amounts within the scope of Appellants’ claim 1 (see Ans. 2-4; Sanda 124). In addition, Appellants argue that the other applied references (Pile- Wolf, Galimberti, Davis, Bergman, and Rodgers) teach away from employing the claimed amount of carbon black (Appeal Br. 5—9; Reply Br. 3—4). Contrary to Appellants’ argument, however, Pille-Wolf teaches that the filler, including carbon black, may be present in any amount, which includes about 5 parts per hundred, by weight (phr), which amount overlaps/embraces, and/or otherwise suggests amounts of carbon black within the claim range of between 0.5 and 5 phr carbon black as required by representative claim 1 (Pille-Wolf 164, see Tflf 53, 96).3 Consequently, Appellants’ teaching away argument is not substantiated by the evidence relied upon and lacks merit in showing harmful error in the Examiner’s obviousness rejection. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed in the . . . application.”). 3 According to Appellants, “the expression ‘between a and b’ represents the range of values greater than ‘a’ and lower than ‘b’” (Spec. 4,11. 9—12); however, the about 5 parts per hundred, by weight (phr) of filler, as disclosed by Pille-Wolf, would also suggest values lower than 5 parts by weight in light of the “about” term utilized. 6 Appeal 2017-001375 Application 13/576,143 Appellants argue that too much selection is required for one of ordinary skill in the art to arrive at the claimed subject matter and in a manner so as to be attended by a reasonable expectation of success because, in addition to the amount of carbon black, one of ordinary skill in the art would further need to select: (1) the thiuram polysulphide disclosed by Sanda as the crosslinking agent from among a few other choices offered by Sanda and in an amount within the scope of the claim 1 required amount of between 0.5 and 15 phr; (2) an amount of hydrocarbon resin within the claim 1 range of from 45 to 75 phr based on Pille-Wolf s teaching of using up to 50 phr of a tackifier resin, such as terpene resin; and (3) an amount of naphthenic oil within the claim range of 5 to 40 phr based on Galimberti’s teaching of using 0 to 70 phr naphthenic oil in an elastomeric composition (Appeal Br. 10—12; Reply Br. 6—8). None of the latter arguments indicate reversible error in the Examiner’s obviousness rejection based on the fact findings and reasons articulated by the Examiner for making such selections (Final Act. 6—8, 11— 12; Ans. 6—9). In particular, Appellants’ contentions that the Examiner has engaged in improper picking and choosing is off the mark because Appellants’ argument exposes no reversible error in the Examiner’s expressed obvious position bottomed on the combined teachings and suggestions found in the applied prior art for reasons as set forth in the Final Rejection and the Examiner’s Answer. See In re Corkill, 111 F.2d 1496, 1500 (Fed.Cir.1985) (obviousness rejection affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among 7 Appeal 2017-001375 Application 13/576,143 ‘thousands' of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was “huge, but it undeniably include [d] at least some of the compounds recited in appellant's generic claims and it is of a class of chemicals to be used for the same purpose as appellant's additives”); In reArkley, 455 F.2d 586, 587—88 (CCPA 1972) (“picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art”). In addition and based on a reported running time and running conditions for an example tire including a self-sealing composition according to the instant invention reported in the subject Specification as compared by Appellants with the running time and running conditions for a tire having a self-sealing composition as reported by Sanda, Appellants state that ‘Tajpparently, the composition of the instant invention allows a tire to run (after puncture) faster, longer, and further than the composition disclosed in Sandra’s reference” and argue that unexpected results are demonstrated in the examples of the present application (App. Br. 13; Spec. 29,11. 23—35; Sanda 140; see App. Br. 12). Appellants contend that the specific test reported coupled with the guidance provided in certain portions of the Specification for forming an effective self-sealing composition suffice to furnish a reasonable expectation to an ordinarily skilled artisan that similar beneficial results would be obtained when employing any composition falling within the scope of the 8 Appeal 2017-001375 Application 13/576,143 appealed claims, such as representative claim 1 (App. Br. 9-10; Reply Br. 4—6). It is well settled that Appellants have the burden of production to present evidence that establishes tests results for the claimed subject matter that are unexpected, that the comparisons made are with the closest prior art, and that the showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Here, we concur with the Examiner that the single example presented for comparison has not been shown to be reasonably commensurate in scope with the claimed subject matter, including representative claim 1 (Ans. 6), even when coupled with the Specification disclosures referenced in the Appeal Brief and Reply Brief. In particular, at the cited portions of page 9 and 13 of the Specification, Appellants refer to certain unsaturated diene elastomers that have a recommended narrow range of thermoplastic hydrocarbon resin added thereto, which composition is said to be capable of functioning as an effective self-sealing composition as further detailed in the Specification and Appellants cite to a specified advantageous embodiment wherein a limited amount, specified by range, of filler is employed, which composition is said to yield excellent self-sealing performance (App. Br. 9—10; Reply Br. 5—6, Spec. 9,11. 36-AO, 13,11. 30-36). However, Appellants have not proffered any scientific explanation and or reasoning articulating why test results for the particular tire with the particular self-sealing layer composition made according to the single example presented at page 29 of the Specification would be expected to be substantially the same for other tires that employ a self-sealing layer of 9 Appeal 2017-001375 Application 13/576,143 other thickness than the 3mm layer tested and/or made with other compositions falling within the scope of representative claim 1, which claim employs the open transitional term “comprising” and embraces the inclusion of other unspecified ingredients (see claim 1). Thus, claim 1 includes compositions made with many other solid elastomers, plasticizers, and other ingredients, as well as amounts thereof, than the specific components and amounts employed in the single tested Specification example (Spec. pp. 26— 29). Moreover, Appellants have not articulated how the comparison with the example of Sanda represents a reasonably fair comparison with the closest prior art given the plural unfixed variables with respect to the test conditions employed by Sandra, such as the use of eight rusted nails thrust into the tire tread of Sandra and operation at an unspecified load, as compared to the test conditions employed by Appellants wherein four punches were employed to perforate the tire thread and a specified load of 440 kg was employed during the test (Compare paragraph 40 of Sanda with page 29, lines 14—25 of Appellants’ Specification.). As such, we concur with the Examiner that Appellants have not satisfied their burden to produce evidence showing unexpected results for subject matter that is reasonably commensurate in scope with the claimed subject matter when compared with the closest prior art. On balance and after reweighing all of the evidence, we determine that the evidence of obviousness furnished by the Examiner outweighs the evidence and argument that may tend to indicate the non-obviousness of the claimed subject matter, as relied upon by Appellants. 10 Appeal 2017-001375 Application 13/576,143 As for dependent claim 15, Appellants further contend that the narrower range of carbon black (between 0.5 and 2phr) required by claim 15 further distinguishes over the cited prior art (App. Br. 13—14). However, Appellants do not detail how unexpected results for the narrower range of carbon black specified in claim 15 is supported by the single example wherein the “comprising” term permits the inclusion of a host of other ingredients in the composition, including other fillers. Nor have Appellants further explained why the teachings of the applied prior art, including Sanda with respect to employing an appropriate amount of pigments, such as carbon black, would not be suggestive of an amount of carbon black within the claim 15 range. Hence, we are not persuaded of reversible error in the Examiner’s rejection of claim 15 by the additional argument presented for claim 15. Thus, we shall sustain Rejection 5. As for Rejection 6 with respect to certain other dependent claims, Appellants rely on the same argument as presented against base Rejection 5 (App. Br. 14). We have determined that these arguments are unpersuasive for reasons discussed above and as presented by the Examiner in the Final Rejection and the Answer. It follows that we shall sustain Rejection 6. 11 Appeal 2017-001375 Application 13/576,143 CONCLUSION The Examiner’s decision to reject the appealed claims 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). AFFIRMED 12 Copy with citationCopy as parenthetical citation