Ex Parte Bergman

Patent Trial and Appeal BoardMar 30, 2018

13877156 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/877, 156 03/29/2013 27215 7590 04/03/2018 MICHELIN NORTH AMERICA, INC. INTELLECTUAL PROPERTY DEPARTMENT 515 MICHELIN ROAD GREENVILLE, SC 29605 FIRST NAMED INVENTOR Brian R Bergman 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. PS0-0373-US-PCT 4190 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 04/03/2018 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): ncapi.mailbox@michelin.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN R. BERGMAN Appeal2017-004282 Application 13/877, 15 6 Technology Center 1700 Before BEYERL YA. FRANKLIN, JAMES C. HOUSEL, and BRIAND. RANGE, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL 1 Pursuant to 35 U.S.C. Â§ 134(a), Appellant2 appeals from the Examiner's decision rejecting claims 1 and 3-16. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Our decision refers to the Specification (Spec.) filed March 29, 2013, the Examiner's Final Office Action (Final) dated March 24, 2016, Appellant's Appeal Brief (Appeal Br.) filed October 24, 2016, the Examiner's Answer (Ans.) dated November 16, 2016, and Appellant's Reply Brief (Reply Br.) filed January 17, 2017. 2 According to Appellant, the real party in interest is Michelin Recherche et Technique S.A. and Compagnie Generale des Etablissements Michelin. Appeal Br. 1. Appeal2017-004282 Application 13/877,156 STATEMENT OF THE CASE The invention relates to a barrier layer and an inflatable article including the barrier layer, wherein the barrier layer is made of a cross- linkable rubber composition comprising 50-90 phr of a butyl rubber and 10- 50 phr of a total amount of a GCO copolymer having epichlorohydrin (ECH) derived units and allyl glycidyl ether (AGE) derived units and a GECO terpolymer having ECH derived units, AGE derived units, and ethylene oxide (EO) derived units, the GECO terpolymer being present at 1-50 wt.% of the GCO and GECO total (Spec. i-f 4 ). According to Appellant, the addition of a small amount of the GECO terpolymer along with a GCO copolymer and a butyl rubber surprisingly provides a superior rubber composition for a barrier layer having low hysteresis and improved air impermeability (id. i-f 23). Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. 1. A barrier layer for impeding the flow of inflation gas through an inflatable article, the barrier layer constructed of a material that is based upon a cross-linkable rubber composition, the cross-linkable rubber composition comprising, per 100 parts by weight of rubber (phr): between 50 phr and 90 phr of a butyl rubber; between 10 phr and 50 phr of a total amount of a GCO copolymer comprising epichlorohydrin derived units and allyl glycidyl ether derived units and a GECO terpolymer comprising epichlorohydrin derived units, allyl glycidyl ether derived units and ethylene oxide derived units, wherein the GECO terpolymer is between 1 percent by weight and 50 percent by weight of the GCO and GECO total; a sulfur cure system only; and a platy filler. 2 Appeal2017-004282 Application 13/877,156 Remaining independent claim 14 recites a pneumatic tire comprising the barrier layer, which is the same barrier layer as recited in claim 1. REJECTIONS The Examiner maintains, and Appellant requests our review of, the following grounds of rejection under 35 U.S.C. Â§ 103(a): 1. Claims 1, 3-5, and 7-14 as unpatentable over Schaefer; 3 2. Claim 6 as unpatentable over Schaefer in view of Bergman; 4 3. Claims 1, 3-5, and 7-16 as unpatentable over JP465 5 in view of Schaefer; and 4. Claim 6 as unpatentable over JP465 and Schaefer, further in view of Bergman. ANALYSIS Rejection 1: Obviousness over Schaefer Appellant argues all the claims as a group, focusing on the limitations of claims 1 and 14 only. We select claim 1 as representative. Claims 3-5 and 7-14 stand or fall with claim 1. 37 C.F.R. Â§ 41.37(c)(l)(iv). After review of the opposing positions articulated by Appellant and the Examiner, the applied prior art, and Appellant's claims and Specification disclosures, we determine that the Appellant's arguments are insufficient to identify reversible error in the Examiner's obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the 3 US 5,385,980, issued January 31, 1995. 4 US 7,649,043 B2, issued January 19, 2010. 5 JP 74034465 B, published September 13, 1974 ("JP465"). The Examiner refers to this reference as "Takase." 3 Appeal2017-004282 Application 13/877,156 stated obviousness rejection for substantially the fact findings and the reasons set forth by the Examiner in the Examiner's Answer and the Final Office Action. We offer the following for emphasis only. The Examiner finds, without dispute, that Schaefer teaches a pneumatic tire including a barrier layer comprising a butyl rubber, epihalohydrin rubber, a sulfur curative system, and a platy filler (Final 2). The Examiner also finds, without dispute, that Schaefer teaches the butyl rubber is present at 50-98% and the epihalohydrin rubber is present at 2- 50% (id.). With regard to the epihalohydrin rubber, the Examiner finds Schaefer suggests the use of GCO copolymers and GECO terpolymers, but fails to expressly teach a composition including both a GCO copolymer and a GECO terpolymer (id.). Nonetheless, the Examiner concludes that it would have been obvious to include a combination of epihalohydrin rubbers, in any ratio, "since rubbers are commonly described in the tire industry as being used individually or as mixtures" (id. at 3). The Examiner further determines that the record lacks a "conclusive showing of unexpected results to establish a criticality for the claimed combination of rubber components" (id.). Appellant raises three primary arguments against the Examiner's stated obviousness rejection over Schaefer (Appeal Br. 7-14; Reply Br. 2- 4). The first argument is that the Examiner has failed to present a prima facie case of obviousness (id. at 8-10). The second argument is that Schaefer fails to teach or suggest the claimed combination of a GCO copolymer and a GECO terpolymer (id. at 11-13). The third argument is 4 Appeal2017-004282 Application 13/877,156 that Appellant has provided evidence of unexpected results which overcome any presumption of obviousness (id. at 14). 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. Â§ 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie 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, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Here, Appellant contends that the Examiner's statement that rubber compositions in the tire industry are commonly described as being used individually and as mixtures is insufficient to establish a prima facie case of obviousness (Appeal Br. 9; Reply Br. 2). Appellant asserts that the Examiner fails to provide anything more, such as examples of such combinations, motivation for such combinations, findings of fact, or recitation of a benefit that would have been apparent to the ordinary artisan regarding such combinations (id. at 10). Further, Appellant urges that Schaefer's teaching of providing a high degree of air impermeability and a good balance of cure rate, scorch safety, and physical properties relates to the motivation to combine butyl rubber and epihalohydrin rubber, not to the motivation to combine butyl rubber with a combination of GCO copolymer and GECO terpolymer (id.). 5 Appeal2017-004282 Application 13/877,156 Appellant's second argument relates to the first argument. Appellant asserts that where Schaefer intends to include a combination, Schaefer expressly discloses such (Appeal Br. 9). However, Appellant urges that Schaefer does not disclose that the epihalohydrin is disclosed as a combination, let alone a combination of GCO copolymer and GECO terpolymer (id. at 11 ). In particular, Appellant argues that the ordinary artisan would have had to decide to employ a combination of epihalohydrin rubbers despite no suggestion of such in Schaefer, pick epichlorohydrin from Schaefer's disclosed generic "epihalohydrin," choose GCO copolymer from among other epihalohydrin copolymers, and choose GECO terpolymer from among other epihalohydrin terpolymers, and choose to employ an amount of the terpolymer that is 1-50 wt.% of the total amount of the GCO copolymer and GECO terpolymer (id. at 12-13). These arguments are not persuasive of reversible error in the Examiner's obviousness rejection based on Schaefer. To begin, we note that Schaefer teaches "Epihalohydrin rubber includes" homopolymers, copolymers, and terpolymers (Schaefer 7:57-65), thereby suggesting that epihalohydrin rubber includes a combination or mixture of these polymers. Further, even if Schaefer's description of the epihalohydrin rubber does not expressly include a combination or mixture of these polymers, Schaefer's description would nonetheless indicate that each of these epihalohydrin polymers may be used for the same purpose. As such, absent evidence of unexpected results, it would have been obvious to use any combination of these epihalohydrin polymers as the epihalohydrin rubber constituent in Schaefer's rubber composition. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) ("It is prima facie obvious to combine two compositions each of 6 Appeal2017-004282 Application 13/877,156 which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art."). With regard to the specific selections of epichlorohydrin, a GCO copolymer, and a GECO terpolymer, we note Schaefer expressly suggests and uses epichlorohydrin (Schaefer 7:58, 8:59). In addition, Schaefer teaches the epihalohydrin copolymers would be with either saturated or unsaturated epoxy monomer and the epihalohydrin terpolymers would be with saturated or unsaturated epoxy monomers or both (id. at 7:59---65). For these epoxy monomers, Schaefer teaches "[t]ypical saturated epoxy monomers include alkylene oxides, such as ethylene oxide, and typical unsaturated epoxy monomers include allylglycidyl ether" (id. at 8: 13-16). Thus, Schaefer discloses each of the components as recited in claim 1 as alternatives for the same purpose. As the Examiner indicates, absent a persuasive showing of unexpected results, the selection of any one or more of these epihalohydrin polymers for use in combination with a butyl rubber would have been obvious to one of ordinary skill in the art. Kerkhoven, 626 F.2d at 850. Turning to Appellant's third argument regarding unexpected results, we agree with the Examiner that Appellant's proffered evidence, Table 1 of the Specification, is insufficient to establish unexpected results for claim 1. Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no hard- and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness." Kao Corp. v. 7 Appeal2017-004282 Application 13/877,156 Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be considered on its own facts."). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Appellant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 1 on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of the showing relied upon by Appellant also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Although Appellant describes that the addition of a small amount of the terpolymer of epichlorohydrin rubber surprisingly balances the compromise between two desired characteristics of a barrier layer, hysteresis and air impermeability (Spec. i-f 8) and that a relatively small amount of GECO terpolymer along with GCO copolymer and a butyl rubber surprisingly provides a superior rubber composition for forming a barrier layer with the desirable physical properties of both low hysteresis and improved air impermeability (id. i-f 23), Appellant's evidence in Table 1 of the Specification fails to persuasively support these statements of surprising 8 Appeal2017-004282 Application 13/877,156 results. In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) ("[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness"); Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1372 ("[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion."); see also Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769 (Fed. Cir. 1988). For example, we note that while Appellant's evidence shows that GCO copolymer has low oxygen permeability (composition F2), this evidence also shows that GECO terpolymer has low hysteresis (composition F4) (Spec. Table 1 ). Therefore, any combination including both GCO copolymer and GECO terpolymer reasonably would have been expected to have hysteresis loss and oxygen permeability between that of the GECO terpolymer and that of the GCO copolymer and butyl rubber (id.). As such, the results shown for composition FS and composition F8 (within the scope of claim 1) have not been shown to have been unexpected to one of ordinary skill in the art. Indeed, "a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine." Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). In addition, as the Examiner notes (Ans. 5), Appellant fails to establish that any criticality for the range of 1-50 wt. % of the GECO 9 Appeal2017-004282 Application 13/877,156 terpolymer relative to the combined total of the GCO copolymer and the GECO terpolymer. Specification Table 1 provides only one data point in this range (5/15 or 33.3 wt.%), but Appellant fails to explain why the results for this data point would have been expected for the recited range, but not outside this range. Finally, again as noted by the Examiner (Ans. 4), there are no comparative examples including butyl rubber, an epihalohydrin polymer, and a platy filler for comparison to composition F8. Accordingly, we sustain the Examiner's obviousness rejection over Schaefer. Rejection 2: Obviousness over Schaefer and Bergman Appellant merely alleges that Bergman fails to remedy the deficiencies of Schaefer (Appeal Br. 15). However, as discussed above, there is no deficiency in Schaefer. Accordingly, we sustain the Examiner's obviousness rejection over Schaefer and Bergman. Rejection 3: Obviousness over JP465 and Schaefer The Examiner finds JP465 teaches a tire innerliner or barrier layer composition comprising epihalohydrin rubber and butyl rubber in a ratio between 1:9 and 5:5, and conventional additives such as fillers and sulfur vulcanizing agent (Final 4 ). The Examiner acknowledges JP465 fails to teach the combination of epihalohydrin rubbers recited in claim 1 (id.). The Examiner finds Schaefer teaches each of the epihalohydrin rubbers is known for use in tire innerliner applications (id.). The Examiner, therefore, concludes that it would have been obvious to form the composition of JP465 to include a mixture of the epihalohydrin rubbers taught in Schaefer because the use of mixtures of rubbers was well known and conventional in the tire industry, absent a persuasive showing of unexpected results (id. at 4--5). 10 Appeal2017-004282 Application 13/877,156 Appellant initially contends that the Examiner relies on a single paragraph of the two page abstract of JP465, which merely teaches the presence of "usual compounding ingredients, rather than a "filler" (Appeal Br. 15). Appellant also contends that the Examiner relies on this same paragraph to support the finding of a lack of urea or a urea-based compound as recited in claims 15 and 16 (id. at 16). In response, the Examiner finds JP465 teaches the inclusion of carbon black, which is "the most conventional and extensively used reinforcing filler" (Ans. 5). Appellant fails to rebut or otherwise respond to this additional finding, which we therefore take as fact. In addition, while Appellant asserts that the Examiner relies on the abstract for JP465 to support the finding that the composition of JP465 is devoid of urea or urea- based compound, Appellant fails to rebut this finding with any particularity. Further, a cursory review of the abstract of JP465, which does not disclose urea or a urea-based compound in the composition, supports the Examiner's finding. Appellant's remaining arguments are substantively the same as raised against the Examiner's rejection based solely on Schaefer, differing only in arguing that JP465, like Schaefer, fails to teach or suggest the recited combination of butyl rubber, a GCO copolymer and a GECO terpolymer (Appeal Br. 16-21). For the same reasons given above, these arguments are not persuasive of reversible error for substantially the same reasons as discussed above with regards to Schaefer. Accordingly, we sustain the Examiner's obviousness rejection over JP465 in view of Schaefer for substantially the same reasons as above. 11 Appeal2017-004282 Application 13/877,156 Rejection 4: Obviousness over JP465 in view of Schaefer and Bergman Appellant merely alleges that Bergman fails to remedy the deficiencies of the combination of JP465 and Schaefer (Appeal Br. 21). However, as discussed above, there is no deficiency in the combination of JP465 and Schaefer. Accordingly, we sustain the Examiner's obviousness rejection over JP465, Schaefer, and Bergman. DECISION Upon consideration of the record, and for the reasons given above and in the Final Office Action and the Examiner's Answer, the decision of the Examiner rejecting claims 1 and 3-16 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). AFFIRMED 12