James A. Belmont et al.

Patent Trials and Appeals Board

Oct 15, 2019

14381612 - (D) (P.T.A.B. Oct. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/381,612 03/18/2015
95360 7590 11/21/2019
Cabot Corporation/ LAK
Cabot Corporation, Law Department
157 Concord Road
Billerica, MA 01821
FIRST NAMED INVENTOR
James A. Belmont
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.
2012906 9289
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
11/21/2019 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):
iplaw@cabotcorp.com
lkilyk@kbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES A. BELMONT, VIJAY R. TIRUMALA, and
PING ZHANG
Appeal2018-004671
Application 14/381,612
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and BRIAND. RANGE,
Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's decision to finally reject claims 15 and 18 under 35 U.S.C.
1 We use the word "Appellant" to refer to "applicant" as defined in 37
C.F .R. § 1.42. Appellant identifies the real party in interest as Cabot
Corporation. Appeal Br. 3.
Appeal2018-004671
Application 14/381,612
§ 103(a) as unpatentable over Mowdood2 in view of Smith. 3 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE. 4
CLAIMED SUBJECT MATTER
The subject matter of the invention is directed to elastomeric
composites containing modified fillers and functionalized elastomers. 5 Title.
Appellant discloses that the modified filler can be a modified carbon black
that has at least one triazole and/or pyrazole adsorbed thereon. Spec. ,r 12.
According to Appellant, the modified filler improves abrasion resistance of
an elastomeric composition when compared to the composition with
unmodified filler. Id. ,r 21.
Claim 15, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal:
15. An elastomeric composition comprising at least one
functionalized elastomer and at least one modified filler,
wherein the modified filler comprises a filler having adsorbed
thereon prior to contacting the modified filler with the
functionalized elastomer:
a) at least one triazole;
b) at least one pyrazole; or
2 Mowdood et al., US 6,014,998, issued Jan. 18, 2000 ("Mowdood").
3 Smith et al., US 5,780, 537, issued Jul. 14, 1998 ("Smith").
4 Our Decision refers to the Specification ("Spec.") filed August 28, 2014,
the Examiner's Final Office Action ("Final Act.") dated September 11,
2017, Appellant's Appeal Brief ("Appeal Br.") filed January 22, 2018, the
Examiner's Answer ("Ans.") dated March 5, 2018, and Appellant's Reply
Brief ("Reply Br.") filed March 30, 2018.
5 The Examiner allowed claims 1, 3, 5-10, 19, 21-23, 33--41, 43--45, 48, 49,
51-53, 55---60, 62, 63, and 68-71. Final Act. 1, 4.
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Application 14/381,612
any combination thereof, wherein said modified filler
improves abrasion resistance when present in the elastomeric
composition compared to said filler that is not modified,
wherein said filler is carbon black and said carbon black is
present in the elastomeric composition in an amount of at least
40 phr.
OPINION
The Examiner rejects claims 15 and 18 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Mowdood and Smith. Ans. 3-
4. After review of the Examiner's and Appellant's opposing positions, the
applied prior art, and Appellant's claims and Specification disclosures, we
determine that Appellant has identified reversible error in the Examiner's
obviousness rejection as to claims 15 and 18. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011). Accordingly, we reverse the stated obviousness
rejection for the reasons set forth in the Appeal and Reply Briefs. We offer
the following for emphasis only.
The Examiner finds that Mowdood discloses silica-reinforced rubber
compositions comprising carbon black and triazoles having improved
abrasion resistance. Ans. 3. The Examiner acknowledges that neither
Mowdood's silica nor carbon black is pretreated with triazole prior to
mixing in bulk, but finds that Mowdood teaches that the triazole may modify
the surface of silica through an interaction such as hydrogen bonding. Id.
As such, the Examiner finds that this teaching suggests that pretreatment of
carbon black is unnecessary to obtain carbon black modified with triazole.
Id. The Examiner explains that the ordinary artisan would have expected
Mowdood's carbon black is modified by triazole because these components
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Application 14/381,612
are mixed together and at least some triazole would be adsorbed onto the
carbon black. Id. The Examiner further explains that Appellant's claim is a
product-by-process claim, i.e., the limitation that the triazole and/or pyrazole
is adsorbed onto the filler prior to contacting the modified filler with the
functionalized elastomer is a process limitation. Id. at 5. Because the
Examiner finds no difference in the resulting product, the Examiner
determines that Mowdood meets claim 15 even though it fails to teach this
process limitation. Id.
The Examiner further acknowledges that Mowdood fails to teach that
carbon black is added to the rubber composition in an amount of at least 40
phr. Ans. 5. For this feature, the Examiner finds that Smith teaches a silica-
filled rubber composition containing two different carbon blacks that may be
replace some of the silica to reduce cost and ease mixing. Id. The Examiner
finds Smith exemplifies a formulation including 52 phr carbon black. Id.
Therefore, the Examiner concludes that it would have been obvious to utilize
at least 40 phr carbon black in Mowdood's rubber composition which is also
silica-filled and includes carbon black. Id.
Appellant argues, inter alia, that evidence in the present application
confirms that different interactions occur depending upon when the triazole
and carbon black are added to the elastomer. Appeal Br. 6 and 11, citing
Spec. Tables VIII and XIV, ,r,r 171 and 183, respectively. Specifically,
Appellant contends that this evidence establishes that, when the modified
filler comprises carbon black having triazole or pyrazole pre-adsorbed
thereon, prior to contacting the modified filler with the functionalized
elastomer, the resulting elastomeric composition exhibits improved abrasion
index values compared to elastomeric compositions having the same exact
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Application 14/381,612
formulation but where the triazole is added in situ rather than being pre-
adsorbed. Id. Appellant asserts that Table XIV shows that adding triazole
during compounding without preadsorbtion to the carbon black actually
lowers abrasion resistance as compared to a composition without triazole,
whereas preabsorbing triazole to the carbon black prior to compounding
increases abrasion resistance. Id. at 17-19.
Appellant's argument and evidence are persuasive of reversible error
in the Examiner's obviousness rejection. The Examiner correctly responds
that this evidence is not persuasive to establish unexpected results because it
neither compares the invention to the closest prior art nor is it commensurate
in scope with the claims. Ans. 6. In particular, the Examiner notes that
Appellant's evidence only shows results for two triazoles, 3-amino-1,2,4-
triazole-5-thiol and 3-amino-1,2,4-triazol-5-yl disulfide, neither of which is
Mowdood's triazole and are not representative of the scope of any triazole
and pyrazole within the scope of claim 15. Id. at 6-7. However, although
Appellant's evidence fails to establish unexpected results in this case, this
evidence nonetheless is effective to rebut the Examiner's obviousness
rejection which is based on an inherency position, i.e., that the product is
inherently the same regardless of whether the triazole and/or pyrazole is
mixed in situ with the functionalized elastomer and carbon black as taught in
both Mowdood and Smith or is preadsorbed to the carbon black prior to
mixing this modified filler with the functionalized elastomer as claimed.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
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Application 14/381,612
prior art or on any other ground, of presenting a prim a f acie case of
unpatentability"). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 83 7 F .2d 1071,
1074 (Fed. Cir. 1988).
In general, a limitation is inherent "if it is the 'natural result flowing
from' the explicit disclosure of the prior art." Schering Corp. v. Geneva
Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003) (quoting Eli Lilly & Co. v.
Barr Labs., Inc., 251 F.3d 955,970 (Fed. Cir. 2001)). "The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
MEHL/Biophile Int'! Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (quoting Oelrich, 666 F.2d at 581). What is required is that the
inherent feature inevitably results from the disclosed steps; "[i]nherency ...
may not be established by probabilities or possibilities." In re Montgomery,
677 F.3d 1375, 1380 (Fed. Cir. 2012).
Viewing Appellant's evidence, not as a showing of unexpected
results, but as a rebuttal to the Examiner's finding of inherency, we are
persuaded that this finding is erroneous because the evidence shows that
preadsorbing carbon black likely produces a different product than one that
involves mixing in situ as was done in Mowdood and Smith. In re Marosi,
710 F.2d 799, 803 (Fed. Cir. 1983) ("Where a product-by-process claim is
rejected over a prior art product that appears to be identical, although
produced by a different process, the burden is upon the applicants to come
forward with evidence establishing an unobvious difference between the
claimed product and the prior art product.") Thus, the Examiner has not set
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forth a factual basis which is sufficient to support a prima facie case of
obviousness of the Appellant's claimed invention. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section 103 clearly
must rest on a factual basis, and these facts must be interpreted without
hindsight reconstruction of the invention from the prior art"). Accordingly,
we reverse the Examiner's obviousness rejection of claim 15, as well as the
obviousness rejection of claim 18, which depends therefrom.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 15 and 18 under 35 U.S.C. § 103(a) as unpatentable over Mowdood
in view of Smith is reversed.
15, 18
CONCLUSION
In summary:
§ 103(A); Mowdood,
Smith
REVERSED
7
15, 18