Ex Parte KirinoDownload PDFPatent Trial and Appeal BoardJun 7, 201711913632 (P.T.A.B. Jun. 7, 2017) Copy Citation 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. 11/913,632 11/05/2007 Y oshiaki Kirino 21713-00080-USl 7251 30678 7590 06/09/2017 POT STNFT T T PC EXAMINER (DC OFFICE) 1000 Louisiana Street SHAH, SAMIR Fifty-Third Floor HOUSTON, TX 77002 ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 06/09/2017 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): DC-IPDocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHIAKI KIRINO Appeal 2016-004060 Application 11/913,632 Technology Center 1700 Before KAREN M. HASTINGS, MONTE T. SQUIRE, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 7, 19, 22, and 23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this decision, we refer to Appellant’s Specification filed November 5, 2007; the Final Office Action mailed February 3, 2015 (“Final Act.”); the Appeal Brief filed July 14, 2015 (“Br.”); and the Examiner’s Answer mailed October 19, 2015 (“Ans.”). 2 Appellant identifies the real party in interest as The Yokohama Rubber Co., Ltd. Br. 2. Appeal 2016-004060 Application 11/913,632 Claim 7, the sole independent claim on appeal, reproduced below, is illustrative of the claims on appeal. 7. A pneumatic tire using, as an air barrier layer, a laminate comprising a layer of a thermoplastic elastomer (A) comprising an elastomer component dispersed in a thermoplastic resin matrix, a layer of an adhesive composition (B) comprising (i) as the only polymer component 100 parts by weight of a polymer component consisting of a partially or wholly epoxy modified styrene-butadiene-styrene block copolymer (ESBS), (ii) 20 to 100 parts by weight of a tackifier selected from the group consisting of a terpene resin, modified terpene resin, pinene resin, terpene phenol resin, rosin-based resin, C5-based petroleum resin and C9-based petroleum resin, (iii) 0.5 to 10 parts by weight of a thiuram-based vulcanization accelerator, wherein said thiuram-based vulcanization accelerator is selected from the group consisting of tetramethyl thiuram disulfide, tetraethyl thiuram disulfide, tetrakis(2-ethylhexyl) thiuram disulfide, tetrabenzyl thiuram disulfide and their monosulfide compounds and (iv) 30 to 80 parts by weight of carbon black or silica as a bonding improvement agent, and a layer of an unvulcanized rubber composition (C), the laminate being made integral at the time of vulcanization of rubber, wherein a ratio of a 100% modulus to a 50% modulus of the adhesive composition (B) after vulcanization is 1.41 to 2.45. Br. 17 (Appendix A-Claims on Appeal). REJECTIONS ON APPEAL Rejection 1: Claims 7, 19, 22 and 23 stand rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. Final Act. 2. Rejection 2: Claims 7, 19, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kaido et al. (US 6,136,123, issued October 24, 2000) (hereinafter “Kaido”) in view of Kirino et al. 2 Appeal 2016-004060 Application 11/913,632 (US 2001/0041765 Al, published November 15, 2001) (hereinafter “Kirino”). Id. at 3. Rejection 3: Claims 7, 19, 22, and 23 stand rejected under 35 U.S.C. 103(a) as unpatentable over Kaido in view of Scholl et al. (US 2002/0120055 Al, published August 29, 2002 (hereinafter “Scholl”). Id. at 4. DISCUSSION Rejection 1 Claim 7 recites, a pneumatic tire using, as an air barrier layer, a laminate comprising, in relevant part, an adhesive composition (B) comprising, inter alia, “(iv) 30 to 80 parts by weight of carbon black or silica as a bonding improvement agent.'1'’ (emphasis added). The Examiner finds that Appellant’s Specification provides support for carbon black or silica as an “adhesiveness improving agent,” but does not provide adequate written description support for carbon black or silica as a “bonding improvement agent.” Ans. 2—3; Final Act. 2. Appellant argues that page 2, lines 30 through 36, and the Examples in their Specification provide written description support for the disputed limitation. Br. 4—5. “[T]he test for [compliance with the written description requirement] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). 3 Appeal 2016-004060 Application 11/913,632 Appellant’s Specification at page 2, lines 30-36 reads: According to the present invention, by compounding reinforcing filler conventionally used for rubber, such as carbon black, silica into the adhesive, the adhesiveness of the harder thermoplastic elastomer layer (or film) and a rubber layer can be improved. This is effective for the bonding of a tire use inner liner utilizing film. Although the portion of the Specification cited by Appellant describes carbon black or silica as improving adhesiveness and making it effective for bonding a tire use inner liner utilizing film, the Specification does describe carbon black or silica as improving bonding. Further, the Examiner contends that “‘[bjonding’ is broader than ‘adhesiveness’ given that bonding can include ionic or covalent bonding which appellant does not have support for in the specification.” Ans. 2. The Specification does not define the scope of the term “bonding,” however, the Examiner’s interpretation of the term “bonding” as being broader than the term “adhesiveness” appears to be supported by the ordinary and customary meaning of the term “bond.” See bonded, Oxford Online Dictionary, https://en.oxforddictionaries.com/defmition/bonded (defining bonded as “(of a thing or things) joined securely to another or each other, especially by adhesive, heat process, or pressure.”). Appellant does not file a reply brief that addresses or rebuts the Examiner’s contentions. Accordingly, we sustain the written description rejection of claim 7. Rejection 2 The Examiner finds that Kaido discloses a pneumatic tire using, as an air permeation preventive layer, a laminate including all the limitations recited in (A), (B), and (C) of claim 7, except “30 to 80 parts by weight of 4 Appeal 2016-004060 Application 11/913,632 carbon black or silica as a bonding improvement agent” (limitation (iv) of adhesive composition (B) in claim 7). Final Act. 3. The Examiner relies on Kirino to account for this difference. The Examiner finds that Kirino discloses a rubber composition comprising carbon black or silica, in an amount of 10 to 80 percent by weight, to improve electrical conductivity and abrasion resistance. Id. at 4 (citing Kirino 114). The Examiner determines that one of ordinary skill in the art would have been motivated, based on Kirino, to use 10 to 80 wt% of carbon black or silica in Kaido’s rubber adhesive to obtain improved abrasion resistance. Id. Appellant argues that Kirino relates to a general use rubber composition that includes carbon black or silica for improving abrasion resistance, but does not provide any teaching or suggestion for incorporating carbon black or silica into a tackifier-adhesive composition used for an inner liner of the tire, as disclosed in Kaido. See Br. 7. Appellant’s argument is persuasive of reversible error in the Examiner’s rejection. Although Kirino provides a motivation for including carbon black or silica in a rubber composition, the Examiner has not adequately explained why one of ordinary skill in the art would have been motivated to include carbon black or silica in a tackifier-adhesive composition, such as described in Kaido, which is used as an inner liner of a tire, and thus presumably would not need abrasion resistance. Accordingly, we do not sustain the Examiner’s obviousness rejection of claims 7, 19, 22, and 23 over Kaido in view of Kirino. 5 Appeal 2016-004060 Application 11/913,632 Rejection 3 As with Rejection 2 above, the Examiner finds that Kaido discloses a pneumatic tire using, as an air permeation preventive layer, a laminate including all the limitations recited in (A), (B), and (C) of claim 7, except “30 to 80 parts by weight of carbon black or silica as a bonding improvement agent” (limitation (iv) of adhesive composition (B) in claim 7). Final Act. 4—5. The Examiner, however, relies on Scholl in Rejection 3, not Kirino, to account for this difference. The Examiner finds that Scholl discloses an adhesive rubber composition comprising carbon black or silica, i.e., a bonding improvement agent, preferably in an amount of 10 to 250 parts by weight to obtain high strength and hydrolytic stability. Final Act. 5 (citing Scholl 7, 11, 32). The Examiner determines that one of ordinary skill in the art would have been motivated, based on Scholl, to use 10 to 250 parts by weight of carbon black or silica in Kaido’s rubber adhesive to obtain high strength and hydrolytic stability. Id. Appellant argues that important aspects of the claimed invention reside in the use of the carbon black or silica, in the adhesion rubber composition (B) containing only ESBS as a rubber component, for the “the improvement in the bonding or adhesion of the thermoplastic elastomer layer (A) and the rubber layer (C)[,]” and “Scholl is completely silent on this point.” Br. 9. Appellant’s argument is not persuasive of reversible error in the Examiner’s rejection of claim 7. “[Motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) 6 Appeal 2016-004060 Application 11/913,632 (“[T]he skilled artisan need not be motivated to combine [the prior art] for the same reason contemplated by [the inventor].” (citing In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.”))). The Examiner has identified a reason for using carbon black or silica in Kaido’s tackifier-adhesive composition—to obtain high strength and hydrolytic stability. Final Act. 5. Appellant does not explain why the Examiner’s reasoning is erroneous or why the use of carbon black or silica in Kaido’s tackifier-adhesive composition as a filler would have been anything more than the predictable use of prior art elements according to their established functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (assessing the obviousness of claims to a combination of prior art elements by asking “whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Appellant argues that it is improper for the Examiner to rely on a theory of inherency as part of an obviousness rejection. See Br. 10—15. Appellant’s argument is not persuasive of reversible error in the Examiner’s rejection. As the Examiner points out, “[t]he inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). Thus, the Examiner’s reliance on a theory of inherency in an obviousness rejection is not grounds for reversal. Further, we find no reversible error in the Examiner’s determination that the adhesive of Kaido in view of Scholl would intrinsically possess the same properties as recited 7 Appeal 2016-004060 Application 11/913,632 in claim 7—i.e., the ratio of a 100% modulus to a 50% modulus of the adhesive composition (B) after vulcanization is 1.41 to 2.45. Final Act. 5; 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.”); In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical composition and its properties are inseparable.). Finally, Appellant argues that the comparative examples provided in the Specification (Spec. 12—13 (Table II), and the Declarations under 37 C.F.R. 1.132 executed by Yuichi Hara on September 22, 2011, and September 30, 2013, illustrate unexpected results are obtained from the present invention, and all evidence must be considered in evaluating the non-obviousness of the invention. Br. 15. “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991). Although the evidence presented by Appellant demonstrates that certain laminates falling within the claims result in excellent bondability and have a modulus ratio within the claimed range, the evidence does not provide a side-by-side comparison with the closest prior art, i.e., Kaido. Moreover, neither Appellant’s Specification nor either of Mr. Hara’s Declarations establish that that the results would have been “unexpected.” On the record before us, only the attorney who authored the Appeal Brief states that the evidence is unexpected. See, e.g., Br. 15. Attorney argument, however, is inadequate to establish unexpected results. See In re Geisler, 116 F.3d 1465, 8 Appeal 2016-004060 Application 11/913,632 1470-71 (Fed. Cir. 1997) (reiterating that unexpected results must be established by factual evidence and that an attorney’s statement is insufficient to establish unexpected results). In sum, for the reasons stated in the Final Office Action, the Examiner’s Answer, and above, a preponderance of the evidence, taking into account Appellant’s evidence of unexpected results, favors the Examiner’s conclusion of obviousness as to claims 7, 19, 22, and 23. Accordingly, we sustain rejection of claims 7, 19, 22, and 23 under 35 U.S.C. § 103(a) over Kaido in view of Scholl. DECISION For the above reasons, the rejection of claims 7, 19, 22, and 23 under 35 U.S.C. § 103(a) over Kaido in view of Kirino is reversed, and the rejection of claim 7 under 35 U.S.C. § 112, first paragraph, and the rejection of claims 7, 19, 22, and 23 under 35 U.S.C. § 103(a) over Kaido in view of Scholl are 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 9 Copy with citationCopy as parenthetical citation