Ex Parte Voge et al

Patent Trial and Appeal Board

Oct 17, 2017

13576143 (P.T.A.B. Oct. 17, 2017)

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).
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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
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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
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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
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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.
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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.
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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
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‘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
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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
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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.
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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.
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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
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