Ex Parte Hodjat et al

Patent Trial and Appeal BoardJun 20, 2017

12815241 (P.T.A.B. Jun. 20, 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. 12/815,241 06/14/2010 Yahya Hodjat P08-052A 1993 26683 7590 06/20/2017 OATFS torpor atton EXAMINER IP LAW DEPT. 10-A3 SHAH, SAMIR 1551 WEWATTA STREET DENVER, CO 80202 ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 06/20/2017 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 YAHYA HODJAT and YUDING FENG Appeal 2016-000069 Application 12/815,241 Technology Center 1700 Before CATHERINE Q. TIMM, JULIA HEANEY, and MICHAEL G. McMANUS, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF CASE Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the Examiner’s decision to reject claims 16—24 and 26—32 under 35 U.S.C. 1 In explaining our Decision, we cite to the Specification dated June 14, 2010 (“Spec.”), Final Office Action dated Oct. 14, 2014 (“Final”), the Appeal Brief dated Apr. 20, 2015 (“Br.”), and the Examiner’s Answer dated July 21, 2015 (“Ans.”). 2 The real party in interest is Gates Corporation. Br. 4. Appeal 2016-000069 Application 12/815,241 § 103(a) as obvious over Feng3 in view of Chen,4 as evidenced by NZ 12/H.5 The Examiner adds Hasegawa6 to reject claim 25. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 16 is the only independent claim and is directed to a composite article comprising a substantially fully-cured elastomer member “self- bonded to” a structural member. According to the Specification, “substantially fully cured” means “the elastomer is crosslinked to the desired state for full functionality in the intended final use.” Spec. 121. “Substantially” allows for the possibility of some small amounts of additional crosslinking or marching modulus effects over time. Id. The elastomer member further includes at least one adhesion promoter having an activation temperature above said cure temperature at which the elastomer is crosslinked. Claim 16; Spec. 121. Claim 16, with the limitations at issue in the appeal highlighted, reads: 16. A composite article comprising at least one structural member and a substantially fully- cured elastomer member self-bonded to said structural member; said elastomer member comprising the substantially fully-cured reaction product of: at least one elastomeric polymer component, and at least one curative component at a cure temperature, 3 Feng et al., US 2009/0036609 Al, published Feb. 5, 2009. 4 Chen, US 5,378,539, issued Jan. 3, 1995. 5 Kenrich Petrochemicals, Inc., Product Data Sheet for Ken-React® CAPOW® NZ® 12/H — Zirconate Coupling Agent Powder (Jan. 28, 2004). 6 Hasegawa et al., US 2001/0032764 Al, published Oct. 25, 2001. 2 Appeal 2016-000069 Application 12/815,241 and further comprising at least one adhesion promoter having an activation temperature above said cure temperature and which upon activation resulted in said self-bonding between said structural member and said fully-cured elastomer member. Claims Appendix, Br. 20 (emphasis and formatting added). OPINION The Examiner finds that Feng teaches a composite article including an elastomer bonded to a metal structural member. Final 2. The Examiner acknowledges that Feng does not disclose including an adhesion promoter of the type claimed, but finds that Chen discloses using NZ 12/H (neopentyl- diallyl-oxy tri-dioctylphosphato zirconate) as a coupling agent in a polymer composition. Id. According to the Examiner, “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to use NZ 12/H of Chen in the elastomer of Chen [sic, Feng] to obtain improved properties.” Final 3. Appellants’ Specification discloses using neopentyl-diallyl-oxy tri- dioctylphosphato zirconate as an adhesion promoter. Spec. 111. According to the Examiner, Given that Feng in view of Chen discloses the same curative component and adhesion promoter as claimed, it is clear that upon activation results in a self-bonding between said structural member and said elastomer member and the activation temperature is above the cure temperature and that all adhesion promoter is nonreactive with curative cure temperature. Final 3. As pointed out by Appellants, the Examiner’s finding relies upon the inherent properties of the materials and the effects of those properties. 3 Appeal 2016-000069 Application 12/815,241 Br. 11. Specifically, the Examiner’s finding is based on the presumption that the self-bonding required by claim 16 will necessarily occur when NZ 12/El is added as a coupling agent to the elastomer taught by Feng. Self bonding, according to the Specification, refers to direct adherence of the composition to a substrate without the need for other adhesives or adhesive coatings on the substrates or between the elastomer and the substrate. Spec. 122. Appellants contend that the claim requires that the article have actually been heated or otherwise activated at an activation temperature above the elastomer’s cure temperature to result in the required self-bonding and, thus, the addition of NZ 12/El without this processing step will not result in the necessary self-bonding. Br. 11—12. The Examiner provides no evidence that Feng discloses heating or otherwise activating at a temperature above the elastomer’s cure temperature when forming the composite article. Instead, the Examiner responds that claim 16 does not require such heating or activating at a higher temperature. Ans. 2—3. Appellants have identified a reversible error in the Examiner’s finding. This becomes clear when one considers the limiting nature of the recitations of claim 16 on the composite article claimed. Although claim 16 is directed to a structure and, thus, the activating step recited in the claim does not directly limit the claim, its effect on the resulting structure of the claim cannot be ignored. Claim 16 expressly states that the substantially fully-cured elastomer member is self-bonded to the structure member. Claim 16, line 2. It is in this context the limitation on the adhesion promoter in the last clause of the claim must be read. Claim 16 requires the adhesion promoter have an activation temperature and the recitation “which upon activation resulted in said self- 4 Appeal 2016-000069 Application 12/815,241 bonding” requires structure that would occur due to this activation. The use of “said self-bonding” refers back to the affirmatively recited requirement that the fully-cured elastomer member be self-bonded to the structural member and the past tense “resulted” limits self-bonding to a bonding reaction between the fully-cured elastomer and the structural member due to the adhesion promoter. There must be some chemical bond between the elastomer and structural member that is due to the presence of the adhesion promoter that resulted in self-bonding. Moreover, because the activation temperature of the adhesion promoter NZ 12/H is above the curing temperature of the elastomeric polymer component, the fully-cured elastomer must be one that cures at a temperature lower than the activation temperature of the adhesion promoter, NZ 12/H. The “which upon activation resulted in said self-bonding” limitation along with the limitation on the activation being above the cure temperature, and the limitation on self-bonding being between the structural member and fully-cured elastomer member place limits on the formulation of the elastomer and the structure of the self-bond. We agree with Appellants that the mere presence of NZ 12/H in the elastomeric formulation of Feng does not establish that NZ 12/H would necessarily provide the self-bonding structure required by claim 16. A preponderance of the evidence indicates that the necessary self-bonding results when the elastomeric composition is heated to an activation temperature higher than the curing temperature. The Examiner has neither established that such heating occurs in Feng nor that Feng teaches another mechanism that would inherently result in activation giving rise to self- bonding. Thus, the Examiner has not provided sufficient evidence that the 5 Appeal 2016-000069 Application 12/815,241 necessary structure will inherently result when using NZ 12/H when forming the elastomer of Feng. The Examiner’s addition of Hasegawa to reject claim 25 does not remedy the deficiency. CONCLUSION We do not sustain the Examiner’s rejections. DECISION The Examiner’s decision is reversed. REVERSED 6