Ex Parte Kirino

Patent Trial and Appeal BoardJul 12, 2016

12279906 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/279,906 08/19/2008 30678 7590 POLSINELLI PC (DC OFFICE) 1000 Louisiana Street Fifty-Third Floor HOUSTON, TX 77002 07114/2016 FIRST NAMED INVENTOR Y oshiaki Kirino 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. 21713-00105-USl 6015 EXAMINER PATEL, RONAK C ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 07/14/2016 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): dcdocketing@novakdruce.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHIAKI KIRIN0 1 Appeal2014-008295 Application 12/279,906 Technology Center 1700 Before MARK NAGUMO, CHRISTOPHER M. KAISER, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appellant Kirino ("Kirino") timely appeals under 35 U.S.C. Â§ 134(a) from a Rejection2 of claims 2--4 and 6-21. (Br. 2. )3 We have jurisdiction. 35 U.S.C. Â§ 6(b). We affirm. 1 The Real Party in Interest is identified as The Yokohama Rubber Co., Ltd. (Appeal Brief, filed 26 February 2014 ("Br."), 2.) 2 Final Office Action mailed 18 September 2013 ("Final Rejection"; cited as "FR."). 3 No reply brief has been filed. Appeal2014-008295 Application 12/279,906 OPINION A. Introduction4 The subject matter on appeal relates to "a pneumatic tire" said to have "improved[] weatherability" and other superior properties. (Spec. 1, 11. 12- 13.) The claims are directed to "a laminate of a thermoplastic elastomer layer and a tackifier/adhesive layer maintaining a high bondability suitable for use as an air barrier layer and a tie rubber layer and/or carcass layer of [the] pneumatic tire." (Id. at 1, 11. 8-11.) Representative Claim 13 reads: 13. A pneumatic tire comprising as an air barrier layer, a laminate comprising: (A) a thermoplastic elastomer layer comprising a thermoplastic resin, as a matrix, in which a rubber phase having a halogenated isobutylene-isoprene copolymer and/or halogenated isobutylene p-methyl styrene copolymer is dispersed, as a polymer ingredient, and (B) a tackifier/adhesive composition layer comprising as the only polymer component 100 parts by vveight of a polymer component consisting of a styrene-based copolymer having a double bond, 60 to 300 parts by weight of at least one metal oxide selected from the group consisting of zinc oxide and magnesium oxide and a vulcanizer and/or a vulcanization accelerator, wherein said metal oxide absorbs halogens and halogenated hydrogen released from the halogenated isobutylene-isoprene copolymer and/or halogenated isobutylene p-methyl styrene copolymer and wherein the laminate has 4 Application 12/279,906, Multilayer Body and Pneumatic Tire System Using Same, filed 19 August 2008. We refer to the '"906 Specification," which we cite as "Spec." The Specification as filed is entitled "Laminate and Pneumatic Tire using the Same." (Spec. 1, 1. 4.) The transmittal of new application, transmittal letter, and the application data sheet filed at the same time, however, state that the '906 Specification is entitled "Multilayer Body and Pneumatic Tire System Using Same." 2 Appeal2014-008295 Application 12/279,906 improved bondability and weatherability, as compared to a tackifier/adhesive composition layer not containing 60 to 300 parts by weight of at least one metal oxide selected from the group consisting of zinc oxide and magnesium oxide. (Claims App., Br. 19 (emphases added).)5 The Examiner maintains the following ground of rejection: 6 A. Claims 2--4, 6-8, and 10-21 stand rejected under 35 U.S.C. Â§ 103(a) in view ofKaido,7 Aimura,8 Watanabe,9 and Corvasce. 10 Al. Dependent claim 9 stands rejected under 35 U.S.C. Â§ 103(a) in view of Kaido, Aimura, Watanabe, Corvasce, and Kanari. 11 5 Claims 2--4, 6-8, 10-12, and 14-21 stand or fall \vith claim 13. (Br. 5.) 6 Examiner's Answer mailed 29 May 2014 ("Ans."). 7 Hiroyuki Kaido et al., Process of Production of Pneumatic Tire, US Patent 6, 136, 123, issued 24 October 2000 ("Kaido"). 8 Yoshiaki Aimura & Suguru Ito, Vulcanizable Rubber Composition, Seal Used in Dynamic State, and Sealing Material, US Patent 5,852,093, issued 22 December 199 8 ("Aimura"). 9 Jiro Watanabe et al., Pneumatic Tire Made by Using Lowly permeable Thermoplastic Elastomer Composition in Gas-Barrier Layer and Thermoplastic Elastomer Composition for Use Therein, European Patent Application 0 857 761, published 08 December 1998 ("Watanabe"). 10 Filomeno Genaro Corvasce, Tire with Sidewall Having At Least One Internal Rubber Insert Having Graduated Physical Properties Comprised of Overlapping Rubber Segments, US Patent Application Publication 2005/0133135 Al, published 23 June 2005 ("Corvasce"). 11 Kanari Daisuke, Hardenable Pressure-Sensitive Adhesive Composition and Pneumatic Tire Obtained Using the Same, Japan Patent Application Publication 2005/2005068173, published 17 March 2005 ("Kanari"). 3 Appeal2014-008295 Application 12/279,906 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Rejection A: Claim 13 Kirino does not dispute the Examiner's findings with regard to the Kaido reference. (See Br. 8-9; FR. 3.) In particular, Kirino does not dispute the Examiner's findings that Kaido discloses the inclusion in a pneumatic tire a tackifier-adhesive layer that includes a styrene based copolymer having a double bond as well as a vulcanization agent. (Br. 8-9; see FR. 3 (citing various portions ofKirino).) Kirino does not dispute the Examiner's findings that Aimura teaches or suggests the limitation of "60 to 300 parts by weight of at least one metal oxide selected from the group consisting of zinc oxide and magnesium oxide" recited in claim 13. (See Br. 9-10 (stating that "Aimura discloses a vulcanizable rubber ... [having] 30-200 parts by weight of a metal oxide"); see also FR. 4-5 (citing portions of Aimura in support of the obviousness rejection including the teachings of zinc or magnesium oxide).) Kirino instead argues that the Examiner erred in applying Aimura because "the highly saturated nitrile rubber required by Aimura is not used in the present invention." (Br. 9.) Kirino, however, does not explain why the teachings of Aimura would have suggested to a skilled artisan that the characteristics of the metal oxides are applicable only to a rubber composition having highly saturated nitrile rubber. Kirino does not dispute the Examiner's finding that Aimura teaches incorporating "other rubbers" such as styrene butadiene copolymer rubber into the rubber composition. (See FR. 4.) Kirino does not dispute the finding that Aimura teaches using 4 Appeal2014-008295 Application 12/279,906 metal oxides to modify characteristics such as the compression set of the rubber composition. (See id. at 4-5; see also Ans. 6 (citing Aimura at 5, 11. 15-3 0 (disclosing changes in characteristics based on the amount of metal oxide included).) Kirino' s assertion that the particular rubber composition disclosed in Aimura requires highly saturated nitrile rubber does not explain why the Examiner erred in finding that a skilled artisan would have had the skill and reason to implement the metal oxides in other types of rubber. We are also not persuaded by the argument that Aimura is not analogous art. In In re Clay, the Federal Circuit held: Two criteria have evolved for determining whether prior art is analogous: ( 1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. 966 F.2d 656, 658-59 (Fed. Cir. 1992) (emphasis added). In this case, similar to Kaido' s teaching of a "thermoplastic film" for "preventing the permeation of air" (Kaido, 3, 11. 3--4), Aimura teaches using a rubber seal for fluids and gases. (Aimura, 12, 11. 37-40, 44, 45 (disclosing that a rubber seal may be used in a gas well).) Kirino's unelaborated statement that Aimura "is not concerned with the problems addressed by the present invention" (Br. 10) does not show that Aimura is non-analogous art under either prong of the test enunciated in Clay or that the Examiner committed harmful error in this aspect of the obviousness analysis. Because Kirino has failed to come forward with evidence and argument showing that the analogous art determination fails to satisfy the Clay criteria, we are not persuaded that harmful error has been shown in this aspect of the obviousness analysis. 5 Appeal2014-008295 Application 12/279,906 We are also not persuaded that the Examiner erred harmfully in combining Aimura and Kaido. Kirino argues that the rejection lacks motivation to combine the prior art references because "unlike the present invention," "Aimura does not relate to the adhesive composition for the laminate, which is used as an air barrier layer of a pneumatic tire[.]" (Br. 10.) Kirino, however, does not dispute the Examiner's findings that "both Aimura and Kaido discloses the rubber composition which comprises rubber, carbon black, [and a] [ v ]ulcanizer" and that "it would be obvious to one of ordinary skill in the art at the time of invention to incorporate the teaching of Aimura in the rubber composition of Kaido as Aimura discloses the importance of having metal oxides such as zinc oxide in the rubber composition to have improved thermal conductivity, which would be beneficial in the rubber composition of Kaido." (FR. 19-20; see Br. 10.) Kirino has not shown harmful error in the Examiner's "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 12 With regard to the references Watanabe and Corvasce, Kirino does not dispute the Examiner's findings that Watanabe teaches "dispersing bromide of isobutylene p-methyl styrene copolymer in [a] thermoplastic resin" for making a pneumatic tire and that Corvasce teaches using metal 12 Kirino does not dispute the Examiner's finding that the combined teachings of Kaido and Aimura would have suggested to a skilled artisan that the metal oxide "would intrinsically absorb halogens and halogenated hydrogen released from the halogenated isobutylene-isoprene copolymer and/or halogenated isobutylene p-methyl styrene copolymer." (See Br. 9; FR. 5.) 6 Appeal2014-008295 Application 12/279,906 oxides to improve various physical properties of a pneumatic tire. (See Br. 10-11; see Ans. 8, 11; see also FR. 5-6.) Kirino does not argue against the Examiner's reasoning in combining these references. (See Br. 10-11 ). Kirino instead repeats the argument that neither references teaches or suggests "the use of the halogenated isobutylene-isoprene and/or the halogenated isobutylene-p-methyl styrene copolymer together with 60-300 phr. of[] ZnO and/or MgO in the adhesive layer in the laminate for the air barrier layer of the pneumatic tire" and because the "remarkable improvement in the weatherability obtained therefrom are neither disclosed nor taught by Watanabe" or Corvasce. (Br. 10-11.) "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Kirino's argument, based solely on the individual teachings of the references, does not address "what the combined teachings of the references would have suggested to those of ordinary skill in the art" and fails to show harmful error in the Examiner's obviousness analysis. See In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations omitted). Kirino additionally cites to Table II of the '906 Specification in support of the asserted unexpected results not present in any of the cited references. (Br. 6-8.) Table II of the '906 Specification is reproduced below: 7 Appeal2014-008295 Application 12/279,906 .....----Â·---- Fo.nm.ila ti on "(OO':;t_Â·;Â·-~e ight) hÂ·:t.ioxvl---( 2"'.2.,....6...,.l-. .....,.,..{ 2 6~II('~I' fÂ£Va'il1atacJ pnysic_!tl. ! G G \lG VG VG VG Q. GO 0. 65 t1. 71 .!?EQ1!!':.:.';'.::t:!Â£.i! Bon.ding <:est Wee>xherability; Rat')) of ;.;han<~'lt of bnw.kdQ"e st. r.ength Rate of Cbnge of I ._:_;_~_~_i_"_i:_i_o_n_a_t ___ __,_o_._s_o __ a_._1_9.....,,...~~Â· a~~--~---~~~~-----~-: .. ~~---- o. 9~ o. 9~~~. Â·rable I! !continued) ! Ex. 6 <:x. i i::x. 8 S>:. 9 Ex. 10 E>;. 9 Ex. HI !-":xMÂ·Â·-.",.,~11"] r-Â·z,-,o 2.nO ZnO Zr.O Â·-7.nO MgO M\)"0 ,,â€¢; 1 --Â·-..... ! {300 1th-E.L!,!'6I_P.t'.!:l (6ll phr) (6_~~.) (60 ol"i~'.L.J.!.Q..2!}.::l ... \<50 phrl (30.~!!E.LJ ~Â·o!':r.u;.tat.inn ! ! Â·i;;Â«;:tÂ·; ... t;;: .. ;;,;,.,.ir;ht.) ! EpOl:Ylilted :SB:>" J 100 100 l!lO 10(! IOO 100 100 1 6 0 0 CI .I!: Tackifierâ€¢ 2 l 60 60 60 GO 60 60 60 : z..w.c oxideâ€¢'. , j :rno 60 60 60. 60 Magn<.>s1um cx.tcte ' ! 10 l>IJ J.00 I Stea.::ic H:id" ! 1 l. l J I Pei:oxicteÂ« ! 0. 5 . ' Thiu.1:~m disulficte~ 1 1 O.S lQ 5 .5 5 I Thi.u?:arn. di.::iu.lfid~~"' l - 5 ~-- Â·--- ~- - - Â· 1TC..t::iff ...... - .. Â·Â·-Â·-Â· .. -rÂ·Â·(166)Â·Â·Â·Â·Â·-i2~i6) ... r22i-:5fÂ·---1:r:i1)----Â·-,22:i-.-s-1 --1-l-., --i--.,-...-2-s:Â·---, -61 I -- ' â€¢ Q -Â·-'-~- â€¢â€¢ '. .......... ..i.2.?.. . ~va~!'"t~~ .. E!Y.!'.~S:~! ! EÂ£Operti.Â·es : Sondinq te~t l ?VG E11:g::11gl.:!~ II 0.!3S elongation at C.9< break VG VG 0. 71 o.9o VG VG VG o. 70 l"l. 61 i). ')() Table II of the '906 Specification showing various formulations for the "Preparation of Tackifier/Adhesive Composition Sample." ('906 Spec. 10, 1. 11-13, 1. 9.) According to Kirino, Table II shows that "although ZnO and MgO are known as general compounding agents for rubber compositions, in which case usually the compounding amount is at most less than 10 phr., and more typically 3 - 5 phr., the use thereof in amounts of 60-300 phr. provides 8 Appeal2014-008295 Application 12/279,906 unexpected results compared with the conventional amount of 5 phr." shown in "Comparative Example 2." (Br. 8.) Kirino does not argue unexpected results as compared to the prior art range of 30-200 parts by weight of a metal oxide disclosed in Aimura. (See Br. 7-8, 9-10.) Table II in fact shows that a product having 200 parts by weight of ZnO and a product having 300 parts by weight of ZnO have similar properties: they are both rated "VG" (very good) for bonding test and have nearly identical weatherability (0.84 and 0.85, respectively). (Br. 7.) Absent a showing that the "claimed range achieves unexpected results relative to the prior art range," we are not persuaded that the Examiner erred in finding the evidence insufficient to rebut the prima facie case of obviousness. In re Woodruff, 919 F. 2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Moreover, "mere improvement in properties does not always suffice to show unexpected results. In our view, however, when an applicant demonstrates substantially improved results ... and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary." In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (emphasis in original). In this case, Kirino points to no evidence showing that the results shown in Table II are described as unexpected in the '906 Specification. (See Br. 8.) Kirino has provided attorneys' arguments only and have not shown factual evidence in support of unexpected results. Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) ("Attorneys' argument is no substitute for evidence."). Other than the attorney argument that "60 - 300 phr. provides unexpected results compared with the conventional amount of 5 phr.", 9 Appeal2014-008295 Application 12/279,906 Kirino has not pointed to evidence in the record establishing unexpected results over the prior art range. (Br. 8; see FR. 7.) Superiority (if any) alone is not sufficient to show that the result is unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[A]ny superior property must be unexpected to be considered as evidence of non-obviousness." (emphasis in original)). No harmful error, therefore, has been shown in this aspect of the obviousness analysis. 13 Although not clearly presented, to the extent that Kirino argues that the particular properties of the claimed composition are distinguishable from those disclosed in the prior art, the mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Where, as here, the Examiner establishes a reasonable belief that the property or characteristic recited in the claims would have been inherent to the product or process, the burden of proof shifts to Appellant Kirino to show that this characteristic or property is not possessed by the prior art. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("Products of identical chemical composition cannot have mutually exclusive properties."). 13 The Examiner cites additional references "to show that it is well known that adding zinc oxide and magnesium oxide in the adhesive composition would increase weatherability and adhesion properties and results are not unexpected." (Ans. 10-11.) Because the obviousness rejection is based on Kaido, Aimura, Watanabe, and Corvasce, we decline to address these additional references which do not form the basis of the rejection. 10 Appeal2014-008295 Application 12/279,906 Rejection Al: Claim 9 Claim 9 depends from claim 13 and recites: "wherein at least part of the styrene-based copolymer is an epoxylated styrene-butadiene-styrene tri- block copolymer. (Br. 18.) In rejecting claim 9, the Examiner finds that the additional reference "Kanari discloses that the adhesive agents for laminates compris[ e] thermoplastic elastomer containing epoxy modified SBS block copolymer, tackifying resin and organic peroxide." (FR. 16.) Citing to the abstract of Kanari which states that Kanari seeks to "provide a hardenable pressure- sensitive adhesive composition which exhibit excellent operating efficiency when used as an air permeation-preventing layer for a pneumatic tire," the Examiner accordingly concludes that a skilled artisan would have found it obvious "to include epoxy lated SBS tri block copolymer of Kanari in the adhesive composition layer of Kaido motivated by the desire to have excellent workability and durability [for] pneumatic tires[.]" (Id.) Kirino does not dispute the Examiner's findings with regard to Kanari or point to error in the rationale for combining the references but instead repeats the argument that the reference does not teach or suggest "the use of the halogenated isobutylene-isoprene copolymer and/or the halogenated isobutylene-p-methyl styrene copolymer, together with the use [of] 60 - 300 phr. of ZnO and/or MgO ... and the above remarkable improvements in the weatherability and bondability .... " (Br. 13-14.) As already explained, we have found these arguments unpersuasive. Absent a showing of harmful error in the Examiner's findings with regard to claim 9 and Kanari, we are not persuaded that the Examiner committed harmful error here. See In re Lovin, 652 F.3d 1349, 1357 (Fed. 11 Appeal2014-008295 Application 12/279,906 Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). C. Order It is ORDERED that the rejections of claims 2--4 and 6-21 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a). AFFIRMED 12