Seiichi Katou et al.

Patent Trials and Appeals Board

Jul 19, 2019

13876978 - (D) (P.T.A.B. Jul. 19, 2019)

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.
13/876,978 05/02/2013 Seiichi Katou Q202253 6291
23373 7590 07/19/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
BUIE-HATCHER, NICOLE M
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
07/19/2019 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEIICHI KATOU and SATOSHI HORIE
____________
Appeal 2018-008447
Application 13/876,978
Technology Center 1700
____________

Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
BRIAN D. RANGE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection under 35 U.S.C. § 103(a) of claims 1, 7–9, and 14–16 as
unpatentable over the combined prior art of Hong et al. (US 2004/0014840
A1, publ. Jan. 22, 2004) (“Hong”) and Oliver Klockmann et al. (A new
silane for future requirements - lower rolling resistance, lower VOCs,
RUBBER WORLD, 36–40 (Aug. 2006) (“Klockmann”), and as evidenced by
Lynch et al. (US 6,274,662 B1; iss. Aug. 14, 2001) (“Lynch”). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is stated to be Bridgestone Corporation (Appeal
Br. 2).
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Application 13/876,978

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Claim 1 is representative of the invention (emphasis added to
highlight key disputed limitation):
1. A method for producing a rubber composition
containing a rubber component (A) of at least one selected from
synthetic dienic rubbers, a filler containing an inorganic filler
(B), and a silane coupling agent (C) of a compound having a
mercapto group, wherein the rubber composition is kneaded in
multiple stages, in a first stage of kneading, the rubber
component (A), all or a part of the inorganic filler (B), and all
or a part of the silane coupling agent (C) are kneaded, then in a
subsequent kneading stage, a mono-organic acid (D) and an
amino group-containing antiaging agent (E) is added,
wherein the ratio by mass of {silane coupling agent
(C)/inorganic filler (B)} is from (3/100) to (20/100), and
wherein the mercapto group-having compound is at least
one compound selected from a group consisting of compounds
represented by the following general formulae (I) and (II)
(RO)3-Si-(CH2)3-SH where R is C13H27(OC2H4)n" and C2H5,
wherein the proportion of C2H5 is about 33%, and n" is an
average number of 5:

wherein R1 represents a group selected from -O-Cj'H2j'+l
and Cn'H2n'+l, j' represents 0 or 3 to 12 and n' represents 0 or 2 to
12; R2 and R3 each independently represents a group selected
from -O-CjH2j+l, -(O-CkH2k-)a-O-CmH2m+l and -CnH2n+l; j, m and
n each independently indicates from 0 to 12; k and a each
independently indicates from 1 to 12; R4 represents a group
selected from linear, branched or cyclic, saturated or
unsaturated alkylene group, cycloalkylene group,
cycloalkylalkylene group, cycloalkenylalkylene group,
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Application 13/876,978

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alkenylene group, cycloalkenylene group, cycloalkylalkenylene
group, cycloalkenylalkenylene group, arylene group and
aralkylene group, having from 1 to 12 carbon atoms;

wherein W represents a group selected from -NR8-, -O-
and -CR9R10 - where R8 and R9 each represents -CpH2p+l, R10
represents -CqH2q+l, p and q each independently indicates from 0
to 20; R5 and R6 each independently represents -M-CrH2r-
where M represents -O- or -CH2-, and r indicates from 1 to 20;
R7 represents a group selected from -O-CjH2j+l, -(O-CkH2k-)a-O-
CmH2m+l and -CnH2n+l; j, m and n each independently indicates
from 0 to 12; k and a each independently indicates from 1 to 12;
R4 represents a group selected from linear, branched or cyclic,
saturated or unsaturated alkylene group, cycloalkylene group,
cycloalkylalkylene group, cycloalkenylalkylene group,
alkenylene group, cycloalkenylene group, cycloalkylalkenylene
group, cycloalkenylalkenylene group, arylene group and
aralkylene group, having from 1 to 12 carbon atoms;
wherein the mono-organic acid (D) and the amino
group-containing antiaging agent (E) are added in the final
stage of kneading; and
wherein the highest temperature of the rubber
composition in the final stage of kneading is from 80 to 120°C.

ANALYSIS
Upon consideration of the evidence of record and each of Appellants’
contentions as set forth in the Appeal Brief and Reply Brief, we determine
that Appellants have not demonstrated reversible error in the Examiner’s
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rejection (e.g., Ans. 3–8). We sustain the rejection for the reasons expressed
by the Examiner in the Final Office Action and the Answer. We add the
following for emphasis.
Appellants’ argument mainly focuses on the addition of acid (D) and
agent (E) in the final kneading step. As pointed out by the Examiner, Hong
does teach the addition of acid and an agent in a second cycle mixing stage
subsequent to the first stage mixing of diene rubber, silica filler, and a
coupling agent (e.g., Ans. 3, Hong ¶ 52). Notably, it has been held that the
selection of any order of performing process steps is prima facie obvious in
the absence of new or unexpected results (see In re Burhans, 154 F.2d 690,
692 (CCPA 1946)). See also, In re Gibson, 39 F.2d 975, 976 (CCPA 1930)
(Selection of any order of mixing ingredients is prima facie obvious.); Ex
parte Rubin, 128 USPQ 440, 441 (Bd. App. 1959) (Prior art reference
disclosing a process of making a laminated sheet wherein a base sheet is first
coated with a metallic film and thereafter impregnated with a thermosetting
material was held to render prima facie obvious claims directed to a process
of making a laminated sheet by reversing the order of the prior art process
steps.).
While Appellants urge that the examples of Tables 1 to 4 in the
Specification, as further discussed in the Tsuchida Declaration2, evince
unexpected results (Appeal Br. 8–12; Reply Br. 4–7), it is well established
that the burden of showing unexpected results rests on the person who

2 Filed October 6, 2017, this Declaration focuses on Example 1 compared to
Example 9 and Comparative Example 1. It does not analyze or discuss all of
the examples presented in Tables 1 to 4.
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asserts them by establishing that the difference between the claimed
invention and the closest prior art was unexpectedly different. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of
unexpected results must be commensurate in scope with the claims. See In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Here, claim 1 is permissive of many species within the claimed genus
of, e.g., a rubber component (A), an inorganic filler (B), a mono-organic
acid (D) and an amino group-containing antiaging agent (E). Furthermore,
there is no specific amount required of any component listed in the claim.
Thus, Appellants have not shown reversible error in the Examiner’s
determination that the evidence is not commensurate in scope with the
breadth of claim 1 (Ans. 8), and therefore, is not persuasive of
nonobviousness. We also note that Tables 1 to 4 show many comparative
example results that do not appear to be significantly different from the
alleged inventive examples. The evidence does not convincingly
demonstrate that the results obtained would have been considered
unexpected to one of ordinary skill in the art. As a final point, Appellants
have not presented the requisite analysis of the data presented in Tables 1 to
4 to establish unexpected results. It is not within the province of this board
to independently review all of Appellants’ data. It is well settled that the
burden of establishing unexpected results rests on the party asserting them.
Klosak, 455 F.2d at 1088 (CCPA 1972).
In sum, Appellants have not directed us to sufficient evidence or
persuasive technical reasoning that the required order of steps is nonobvious
or produces results differing in any unexpected way from those which would
be brought about if another order of steps were followed.
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The decision of the Examiner 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