Ex Parte Kirino

Patent Trial and Appeal Board

Jun 7, 2017

11913632 (P.T.A.B. Jun. 7, 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.
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.
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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).
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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
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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.
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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)
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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
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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,
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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
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