Ex Parte Halasa et al

Patent Trial and Appeal BoardFeb 12, 2019

12892204 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/892,204 09/28/2010 55369 7590 AL VIN T. ROCKHILL P.O. BOX 1283 BATH, OH 44210-1283 02/12/2019 FIRST NAMED INVENTOR Adel Parhan Halasa 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. DN2010-130 1828 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 02/12/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADEL F ARHAN HALASA, JOHN JOSEPH ANDRE VER THE, and ANNETTE LECHTENBOEHMER Appeal2018-003384 Application 12/892,204 Technology Center 1700 Before LINDA M GAUDETTE, WESLEY B. DERRICK, and JENNIFER R. GUPTA, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL 1 The Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision finally rejecting claims 12-19, 23-29, 31, and 32. Appeal Br. 2. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed Sept. 28, 2010 ("Spec."); Final Office Action dated Feb. 7, 2017 ("Final"); Appeal Brief filed Sept. 29, 2017 ("Appeal Br."); Examiner's Answer dated Dec. 6, 2017 ("Ans."); and Reply Brief filed Feb. 6, 2018 ("Reply Br."). 2 The Appellants identify The Goodyear Tire & Rubber Company as the real party in interest. Appeal Br. 2. Appeal2018-003384 Application 12/892,204 The invention relates to wire coat compositions for rubber articles, such as tires with metal reinforcing elements. Spec. 1: 1-5. The inventors are said to have discovered that "lignin can be incorporated into wire coat stock composition to improve metal to rubber adhesion." Id. at 3:22-23. Claim 12 is representative of the claims on appeal, and is reproduced below. 12. A composite comprising a cured rubber composition with a metal reinforcing element embedded therein, wherein said rubber composition consists of (1) a rubbery polymer, wherein the rubbery polymer consists essentially of natural rubber and/or synthetic polyisoprene rubber, (2) about 40 phr to about 80 phr of a carbon black selected from the group consisting ofN326 carbon black, N330 carbon black, N332 carbon black, N339 carbon black, N343 carbon black, N347 carbon black, N351 carbon black[,] N358 carbon black, N375 carbon black, N539 carbon black, N550 carbon black, N582 carbon black, N650 carbon black, N660 carbon black, N683 carbon black, N754 carbon black, N762 carbon black, N765 carbon black, N774 carbon black, and N787 carbon black, (3) 7 phr to about 30 phr of naturally occurring lignin having CAS number 9005-53-2, (4) 0.1 phr to 1 phr of a cobalt salt of an aliphatic or alicyclic carboxylic acid containing from 6 to 30 carbon atoms, (5) optionally a plasticizer, ( 6) optionally a cure accelerator, (7) optionally a processing oil, (8) optionally a retarder, (9) optionally an antiozonant, and (10) optionally an antioxidant. Appeal Br. 9 (Claims Appendix filed Nov. 1, 2017). The claims stand finally rejected under 35 U.S.C. Â§ 103(a) as follows: 1. claims 12-18, 23-29, 31, and 32 as unpatentable over Fukumoto (JP 60-38444, pub. Feb. 28, 1985 (as translated)) in view of Lora (EP 0461463 A2, pub. Dec. 18, 1991); and 2. claim 19 as unpatentable over Fukumoto in view of Lora and Carbon Black, https://monographs.iarc.fr/ENG/Monographs/vol93/mono93- 6.pdf (last visited Feb. 7, 2017). 2 Appeal2018-003384 Application 12/892,204 The Appellants do not present arguments in support of patentability of any particular claim or claim grouping. See generally Appeal Br. 4--7. Accordingly, we decide the appeal as to the claims subject to the above- listed, first ground of rejection on the basis of claim 12. See 37 C.F.R. Â§ 4I.37(c)(iv). As to the above-listed, second ground of rejection, the Appellants rely on the same arguments made in support of patentability of the claims subject to the first ground of rejection. Appeal Br. 7. The respective positions advanced by the Examiner and the Appellants on appeal raise the following two issues: (1) Have the Appellants identified reversible error in the Examiner's finding that one of ordinary skill in the art at the time of the invention would have had a reason to modify Fukumoto's rubber composition to include a lignin as taught by Lora? (2) Have the Appellants provided persuasive evidence of criticality in the claimed range of 0.1 phr to 1 phr of a cobalt salt? We answer these questions in the negative for the reasons expressed in the Final Office Action, the Answer, and below. Issue (])-Have the Appellants identified reversible error in the Examiner's finding that one of ordinary skill in the art at the time of the invention would have had a reason to modify Fukumoto 's rubber composition to include a lignin as taught by Lora? The Appellants do not dispute the Examiner's findings that Fukumoto discloses a composite comprising a metal reinforcing element and a rubber composition (i.e., a steel-belted tire), the rubber composition consisting of rubber (e.g., a natural rubber), 50-70 phr of a carbon black (specifically N326), and 0.5-5 phr of a cobalt salt (e.g., cobalt naphthenate). See Appeal Br. 5; Final 2. Nor do the Appellants dispute the Examiner's findings that Lora discloses a rubber composition containing a lignin for use, e.g., in tires. 3 Appeal2018-003384 Application 12/892,204 See Appeal Br. 5; Final 2. The Appellants argue, however, that the Examiner reversibly erred in finding one of ordinary skill in the art at the time of the invention would have included lignin in Fukumoto' s rubber composition based on Lora's disclosure. See Appeal Br. 6; Final 2-3. The Appellants argue Lora discloses the use of lignin only "as a tackifier and "in some cases as an antioxidant." Appeal Br. 5. The Appellants contend that at the time of the invention, one of ordinary skill would have known that tackifiers could be used to improve rubber-to-rubber adhesion characteristics, but that, prior to their discovery, one of ordinary skill in the art would not have known that lignin could be used to improve rubber-to-metal adhesion characteristics. Id. at 6. The Appellants explain that "good tack characteristics are needed in manufacturing rubber articles which are comprised of multiple layers of the same or different rubber constituents, such as tires, ... so that the various layers of rubber will hold together while the rubber article is being built (before being cured)." Id. at 5. The Appellants argue that Fukumoto does not call for a tackifier of any type and, therefore, the ordinary artisan would not have had a reason to include a tackifier in Fukumoto's rubber composition. Id. at 6. The Appellants further argue that even if Fukumoto did suggest the use of a tackifier, there would have been no reason to select lignin out of the multitude of tackifiers that were well known in the art at the time of the invention. Id. at 6; Reply Br. 2- 3. The Appellants' arguments are not persuasive of error in the Examiner's finding that the ordinary artisan would have included lignin in Fukumoto' s rubber composition. A reference's teachings and its obvious variants are relevant prior art, even if the reference addresses a problem 4 Appeal2018-003384 Application 12/892,204 which differs from that addressed by a patent applicant. In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). One of ordinary skill in the art need not see an applicant's identical problem addressed in a prior art reference to be motivated to apply its teachings. Cross Med. Prods., Inc., v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005). As found by the Examiner, Fukumoto discloses a rubber composition for a tire, and Lora discloses that the addition of lignin provides the benefit of functioning as a tackifier in rubber compositions used in tires. Ans. 5. Lora discloses, for example, that "the production of plyed rubber tire components such as tires, belts, hoses and other rubber parts comprising multiple layers of rubber depends upon rubber having good tack properties." Lora 2: 17-19. Lora discloses that lignin tackifiers "are effective in various types of rubber compositions, including ... natural rubbers." Id. at 3:1-2. The Appellants do not dispute the Examiner's finding that Fukumoto discloses the use of natural rubber in the disclosed tire composition (Final 2). Thus, although Fukumoto does not list tackifiers explicitly in the list of components that may be added to the disclosed rubber composition, the Examiner had a reasonable basis for finding that one of ordinary skill in the art would have understood from Lora that the addition of a tackifier would benefit Fukumoto' s composition by improving its tack properties. See Final 2; Ans. 5. Moreover, Lora provides direction to select lignin because "tackifier lignins ... have been found to equal and even exceed in performance parameters more expensive and commercially available tackifier compounds." Lora 3:3--4. As found by the Examiner, Lora discloses that lignin also provides anti-oxidative properties, thereby providing another reason for the ordinary 5 Appeal2018-003384 Application 12/892,204 artisan to have added lignin to Fukmnoto's composition. See Final 2. Lora discloses that "antioxidants used in rubber act as oxygen scavengers, preferentially diverting oxygen-generated free radicals away from unsaturated highly reactive sites in the polymer backbone of the rubber, thereby preventing, or at least delaying, oxygen attack and subsequent decomposition of the rubber." Lora 7:47--49. Although Fukumoto does not list antioxidants explicitly in the list of components that may be added to the disclosed rubber composition, the Examiner had a reasonable basis for finding that one of ordinary skill in the art would have understood from Lora that the addition of an antioxidant would benefit Fukumoto' s composition by delaying decomposition of the rubber. See Final 2; Ans. 5. In this regard, we note Fukumoto does include anti-aging compounds in the list of components that may be added to the disclosed rubber composition. Fukumoto 2: 14--16; see Ans. 6. We find that one of ordinary skill in the art would have understand from Lora that antioxidants, though not described as anti-aging compounds, would improve the lifespan of a tire by delaying decomposition of the rubber composition. Lora provides direction to select lignin as the antioxidant for use in rubber compositions for tires, describing it as "especially promising in view of the large number of-OH groups which are present in lignin ... [that] are believed to act as scavengers for the oxygen- generated free radicals" that "make the rubber vulnerable to oxygen attack." Lora 7:50-53. Appellants do not explain, with any degree of specificity, why the Examiner's finding that the ordinary artisan would have included lignin as an antioxidant in Fukumoto' s composition is erroneous or unreasonable. See, e.g., Appeal Br. 6 ("[T]he collective teachings of Fukumoto and Lora 6 Appeal2018-003384 Application 12/892,204 do not motivate a person having ordinary skill in the art to include lignin in wire coat stock compositions as a tackifier or for any other purpose."). The Appellants attempt to rebut the Examiner's prima facie case of obviousness by arguing the claimed composite exhibits an unexpected property, i.e., improved rubber-to-metal adhesion relative to prior art composites, but have not provided persuasive evidence to support this argument. See Appeal Br. 5-6. 3 Moreover, as explained by our reviewing court, "evidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness." Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009). We find the Examiner has presented a strong case of prima facie 3 We note that the Appellants cite to the Declaration of Dr. Adel F. Halasa, filed September 19, 2016, as support for their contention that "the collective teachings of the[] references do not suggest that the level of rubber-to-metal adhesion that is retained after being aged is highly superior in wire coat stocks that contain lignin." Appeal Br. 5. The Appellants do not cite to a particular paragraph in the Declaration, although we find that in paragraph 3 of the Declaration, Dr. Halasa, one of the named inventors in the present application, cites to Specification Examples 1-8 as support for his testimony that "it has been unexpectedly found that the level of rubber-to-metal adhesion that is retained after being aged is highly superior in wire coat stocks that contain lignin." Appellants, however, do not reference, and Dr. Halasa does not discuss, the Specification Examples. Therefore, we do not understand the Appellants to rely on the Specification Examples as evidence of unexpected results. See In re Klosak, 455 F.2d 1077, 1080 (CCP A 1972) ( explaining that the burden of analyzing and explaining data to support an argument of unexpected results rests on party asserting it). In any event, we have reviewed the Specification Examples (see Spec. 18-21) and do not find them to be commensurate in scope with the claims. Compare, e.g., Specification Tables 3 and 4 (indicating the test samples contained either no lignin or 10.0 phr lignin), with claim 12 (requiring "7 phr to about 30 phr of naturally occurring lignin"). 7 Appeal2018-003384 Application 12/892,204 obviousness. The Examiner has shown persuasively that although Lora fails to disclose that lignin improves rubber-to-metal adhesion, Fukumoto's composition, if modified to include lignin, would include the same components recited in claim 12 and, therefore, reasonably would be expected to possess this property. Ans. 6-7; see In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) ("Even if no prior art of record explicitly discusses the ... [limitation], [Appellants'] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [ claimed invention], but rather a property necessarily present in [the claimed invention]."); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious."); cf In re Papesch, 315 F.2d 381,391 (CCPA 1963) ("From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing."). In sum, we determine the Appellants have not identified reversible error in the Examiner's finding that one of ordinary skill in the art at the time of the invention would have had a reason to modify Fukumoto' s rubber composition to include a lignin as taught by Lora. Issue (2) -Have the Appellants provided persuasive evidence of criticality in the claimed range of 0.1 phr to 1 phr of a cobalt salt? The Appellants argue "the claims ... call for the cobalt compound to be included in the rubber component ... at a maximum level of 1 phr." Appeal Br. 7. The Appellants argue Fukumoto indicates that the cobalt compound can be included at a level within the range of 0.5 to 5 parts and, 8 Appeal2018-003384 Application 12/892,204 therefore, fails to appreciate the importance of limiting the amount of cobalt to 1 phr. Id. "[T]he existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious." In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). When an applicant seeks to overcome a prima facie case of obviousness by showing improved performance in a range that is within or overlaps with a range disclosed in the prior art, the applicant must "show that the [ claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Geisler, 116 F.3d 1465, 1469--70 (Fed. Cir. 1997) (emphasis omitted) (quoting In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)). The Appellants have not identified persuasive evidence to support their argument that the claimed range is critical. The Appellants do not direct us to, or discuss, the Specification Examples (Spec. 18-21 ). See Klosak, 455 F.2d at 1080. As discussed in note 3 supra, even if the Appellants intended to rely on these Examples, we do not find them commensurate in scope with the claims. See Spec. Tables 3 and 4 (testing of samples containing 0.0, 0.68 and 1.35 phr cobalt salt). Moreover, contrary to the Appellants' arguments, the Specification indicates the upper limit of the range recited in claim 12 is not critical. See Spec. 14:9--12 ("Amounts of the organo-cobalt compound that should be employed depend upon the specific nature of the cobalt material selected, particularly the amount of cobalt metal present in the compound. The amount of the cobalt material utilized will typically be within the range of about 0.1 phr to about 1.5 phr." (emphasis added)). 9 Appeal2018-003384 Application 12/892,204 In sum, we determine the Appellants have not provided persuasive evidence of criticality in the claimed range of 0.1 phr to 1 phr of a cobalt salt. CONCLUSION The Appellants have not identified reversible error in the Examiner's rejections of claims 12-19, 23-29, 31, and 32. We sustain both grounds of rejection. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§1.136(a)(l)(iv). AFFIRMED 10