Ex Parte Lopitaux

Patent Trial and Appeal BoardMar 28, 2017

13997319 (P.T.A.B. Mar. 28, 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. 13/997,319 09/09/2013 Garance Lopitaux 338180-00622 5845 35161 7590 03/29/2017 DICKINSON WRIGHT PLLC 1825 Eye St., NW Suite 900 WASHINGTON, DC 20006 EXAMINER KOLLIAS, ALEXANDER C ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 03/29/2017 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 GARANCE LOPITAUX ____________________ Appeal 2016-002735 Application 13/997,3191 Technology Center 1700 ____________________ Before MARK NAGUMO, N. WHITNEY WILSON, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–14. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appellant, the real party in interest is Compagnie Generale des Establissements Michelin and Michelin Recherche et Technique S.A. Appeal Br. 2. Appeal 2016-002735 Application 13/997,319 2 STATEMENT OF THE CASE2 Appellant describes the invention as relating to a rubber composition which, when used as a tire tread, improves the wet grip of the tires. Spec. 1:29–31.3 Claim 1, reproduced below with some spacing added for readability, is the only independent claim on appeal and is illustrative of the claimed subject matter: 1. A tire comprising a tread which comprises a rubber composition comprising: - a diene elastomer, as a first elastomer; - a thermoplastic polyurethane block copolymer having polyurethane blocks and polydiene blocks, as a second elastomer; - a reinforcing inorganic filler in an amount of 70 to 150 phr; - a plasticizing system comprising: - a hydrocarbon resin exhibiting a Tg of greater than 20 °C in an amount A of between 5 and 60 phr; and - a plasticizer which is liquid at 20 °C, the Tg of which is less than −20 °C in an amount B of between 5 and 60 phr, wherein A+B is greater than 30 phr. Appeal Br. Claims App’x 1. 2 In this decision, we refer to the Non-Final Office Action mailed May 16, 2014 (“Non-Final Act.”), Final Office Action mailed September 8, 2014 (“Final Act.”), the Appeal Brief filed August 6, 2015 (“Appeal Br.”), the Examiner’s Answer mailed October 28, 2015 (“Ans.”), and the Reply Brief filed December 28, 2015 (“Reply Br.”). 3 Citations to the Specification refer to the June 24, 2013, substitute specification. Appeal 2016-002735 Application 13/997,319 3 REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Nordsiek US 3,937,681 Feb. 10, 1976 Vasseur et al. US 2004/0127617 A1 July 1, 2004 (hereinafter “Vasseur”) Robert et al. US 2009/0292063 A1 Nov. 26, 2009 (hereinafter “Robert”) Henning WO 2007/025690 A1 Mar. 8, 2007 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 1–14 under 35 U.S.C. § 103 as unpatentable over Vasseur in view of Henning. Final Act. 2. Rejection 2. Claims 1–14 under 35 U.S.C. § 103 as unpatentable over Henning in view of Robert and Nordsiek. Id. at 3. ANALYSIS We review the appealed rejections for error based upon the issues identified by the Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After considering the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Non-Final Appeal 2016-002735 Application 13/997,319 4 Office Action, Final Office Action, and the Answer. We add the following primarily for emphasis. Appellant does not separately argue claims 2–14 with respect to either of the Examiner’s rejections. We therefore limit our discussion to claim 1. Claims 2–14 stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(iv) (2013). Rejection 1, Vasseur and Henning. The Examiner rejects claims 1–14 as obvious over Vasseur in view of Henning. Non-Final Act. 4–5 (providing citations to Vasseur). The Examiner finds that Vasseur teaches a tire comprising a tread which comprises first diene elastomer, a second diene elastomer, filler in amounts overlapping those recited in claim 1, and a plasticizing system with properties and plasticizers meeting the recitations of claim 1. Id. The Examiner finds that Vasseur does not teach that its second diene elastomer is a polyurethane block copolymer as recited in claim 1. Id. at 5. The Examiner finds, however, that Henning teaches a rubber composition for tires that comprises a thermoplastic polyurethane (i.e., “TPU”) block copolymer with characteristics overlapping those recited by claim 1. Id. at 5 (providing citations to Henning). The Examiner finds that Henning teaches the TPU minimizes contribution to heat build-up by providing improved curing compatibility and increases modulus of the compound without hysteresis effects. Id. The Examiner thus concludes that “it would therefore have been obvious to one of ordinary skill in the art to include such polyurethanes [as taught by Henning] in the rubber composition disclosed by Vasseur et al[.] with a reasonable expectation of Appeal 2016-002735 Application 13/997,319 5 success.” Id. at 5–6. A preponderance of the evidence supports the Examiner’s findings and conclusion. Because Appellant’s argument (see, e.g., Appeal Br. 13, Reply Br. 2– 3) and the Examiner’s statements (see, e.g., Ans. 2–3) indicate some potential disagreement as to each side’s relative burdens, we first address that issue. Appellant is correct that, assuming Appellant has preserved appropriate arguments on appeal (see Ex parte Frye, 94 USPQ2d at 1075 (“the Board will generally not reach the merits of any issues not contested by an Applicant”)), the Examiner bears the initial burden of establishing obviousness. See, e.g., In re Oetiker, 977 F.2d 1443, 1445 (“the examiner bears the initial burden, on review of the prior art or on any other ground, of present a prima facie case of unpatentability”). Nevertheless, on appeal, it is Appellant’s burden to demonstrate harmful error in the appealed rejections. See Ex parte Yamaguchi, 88 USPQ2d 1606, 1614 (BPAI 2008) (on appeal, applicant must show error by the Examiner); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010), quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009) (“the burden of showing that an error is harmful normally falls upon the party attacking the agency’s determination.”). We address Appellant’s arguments below, and we understand that the bulk of the arguments (i.e., arguments not relating to unexpected results) as an effort to establish that the Examiner has failed to meet the initial burden of establishing obviousness. See, e.g., Reply Br. 2 (explaining that Appellant’s arguments attempt to show that the Examiner has not established a prima facie case of obviousness). On the merits, Appellant argues that the Examiner has not established that a person of skill in the art would have combined the TPU of Henning with Vasseur and its teachings regarding plasticizers because the Examiner Appeal 2016-002735 Application 13/997,319 6 presents no evidence regarding the miscibility of TPU when combined with the Vasseur plasticizer and presents no evidence that the combined teachings of Henning and Vasseur would bring improved results. Appeal Br. 5–6. Appellant also argues that Vasseur’s plasticizers were chosen to work with the elastomers taught by Vasseur and that adding TPU would change Vasseur’s principle of operation. Appeal Br. 9–10; Reply Br. 5. As explained above, however, the Examiner finds that Vasseur teaches all elements of claim 1 including two dienes but does not specifically teach TPU. Non-Final Act. 4–5. The Examiner also finds that Henning teaches TPU and focuses on why TPU is advantageous as compared to other dienes. Id. at 5; see also Henning 2:3–3:16. Henning thus encourages a person of skill in the art to use TPU. The Examiner also finds that Henning teaches that TPU is compatible with a variety of plasticizers. Ans. 7–8; Henning 7:23–29. While the plasticizers listed by Henning are not identical to those taught by Vasseur, Henning teaches that the listed plasticizers are merely “[e]xample of suitable plasticizers.” Henning 7:23–25. Because Henning teaches TPU as an improvement over prior art dienes (id. at 2:3–3:16) and because Vasseur teaches plasticizers intended for use with dienes (Non-Final Act. 4; Vasseur ¶¶ 46–49, 74–89), the Examiner’s finding that a person of skill in the art would have had a reasonable expectation of success in using TPU in combination with Vasseur’s plasticizers is adequately supported by the evidence of record. Ans. 5, 10; see also In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.”). Meanwhile, Appellant presents no persuasive evidence to support the argument that a person of skill in the art would not expect Henning’s TPU to Appeal 2016-002735 Application 13/997,319 7 successfully combine with Vasseur’s plasticizers. As such, a preponderance of the evidence supports the Examiner’s obviousness conclusion. Appellant also argues that the addition of Henning’s TPU to Vasseur’s formulation would change the relative amounts of ingredients in the compositions. Appeal Br. 7–8. The Examiner, however, finds that the relative amounts of filler, plasticizer etc., would not need to change because Vasseur expresses those components in phr (parts per hundred rubber or resin). Ans. 9. Appellant does not persuasively rebut this finding of fact. Appellant also does not identify which claim recitation, if any, would not be met due to relative amounts of ingredients changing. Cf. Ex parte Frye, 94 USPQ2d at 1075. This argument therefore does not establish reversible error. Appellant also mentions evidence of unexpected results that might rebut a prima facie case of obviousness. Appeal Br. 13. A party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are reasonably commensurate in scope with the protection sought by claim 1 on appeal. See, e.g., In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); cf. Reply Br. 9 (urging that the burden is on the Examiner to show results would not occur over scope of Appellant’s claims). Here, the evidence of unexpected results presents only one data point within the scope of the claims and one comparative data point. Spec. 16–18. Appellant presents no evidence (or arguments based on fundamental principles) that any benefits would be maintained across the range of possible plasticizers, elastomers, and fillers, permitted within the scope of claim 1. Ans. 23–24. Accordingly, Appellant’s mention of unexpected results does not establish harmful error underpinning the obviousness rejection. Appeal 2016-002735 Application 13/997,319 8 Because Appellant’s arguments do not identify reversible error, we sustain the Examiner’s rejection of claims 1–14 based on Vasseur and Henning. Rejection 2, Henning, Robert, and Nordsiek. The Examiner also rejects claims 1–14 as obvious over Henning in view of Robert and Nordsiek. Final Act. 3. The Examiner finds that Henning (as also discussed above) discloses a rubber tire composition comprising a natural or diene- based elastomer and TPU possessing the blocks recited in claim 1. Non- Final Act. 8–9 (providing citations to Henning). The Examiner finds that Henning also teaches fillers as recited in claim 1, but does not teach the plasticizer system recited in claim 1. Id. at 9. The Examiner finds, however, that Robert teaches the plasticizer system of claim 1. Id. at 9–10 (providing citations to Robert). The Examiner further finds that Roberts teaches compositions comprising its plasticizer exhibit improved abrasion and cut resistance. Id. at 10 (citing Robert, Abstract). The Examiner thus concludes that it “would therefore have been obvious to one of ordinary skill in the art to include such plasticizers in the rubber composition disclosed by Henning with a reasonable expectation of success.” Id. The Examiner finds that while Henning teaches a rubber composition for a tire, it does not teach a tire tread comprising the rubber composition. The Examiner, however, finds that Nordsiek teaches that conventional automotive tires are based on vulcanites of rubber blends filled with oil and carbon black. Id. at 10. The Examiner concludes that it would have been obvious to use Henning for a tire tread in view of Nordsiek, and Appellant Appeal 2016-002735 Application 13/997,319 9 does not persuasively dispute this conclusion.4 A preponderance of the evidence supports the Examiner’s findings and conclusions. Appellant argues that Robert is concerned with preventing chipping or scaling damage of tires for off-road vehicles and that a person of skill in the art would have had no reason to combine the plasticizing system of Robert with the elastomer of Henning because “nothing in Henning teaches or suggests that the elastomers disclosed therein were subject to problems with chipping.” Appeal Br. 15; see also Reply Br. 10. Appellant’s argument appears to assert that a second reference cannot be combined with a first reference unless the first reference expressly states that it suffers from a problem that the second reference solves. Appeal Br. 15–16. The Supreme Court, however, has expressly rejected this kind of rigid obviousness analysis. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.). Here, Robert provides evidence that its features are improvements over, for example, rubber making use of aromatic oils as a plasticizer (Robert ¶¶ 2–5), and Henning teaches use of aromatic oils as a plasticizer (Henning 7:23–39). Thus, a preponderance of the evidence supports the Examiner’s findings that Robert teaches improved abrasion and cut resistance and a person of skill in the art would be motivated to ensure these advantages when employing the composition of Henning. Ans. 25; Non- Final Act. 10. Appellant, meanwhile, offers no evidence or argument as to 4 We also note that Robert seeks to overcome its rubber being damaged when vehicles “run over different types of soils” (Robert ¶ 5) and therefore suggests that its rubber is intended for use as a tire tread. Appeal 2016-002735 Application 13/997,319 10 why a person of ordinary skill would not have believed that Henning would benefit from Robert’s plasticizer. A person of skill in the art would reasonably expect Robert’s plasticizer to improve Henning in the same way it improves Robert, and improving Henning by implementing the improved plasticizers of Robert is no more than predictable use of a prior art element according to its established function. KSR Int’l Co., 550 U.S. at 417 (2007). Appellant also states that Robert is not a “reasonably pertinent” reference. Appeal Br. 18. Appellant indicates that the Appellant is not making an argument in this regard (id.) but then, in reply, clarifies that Appellant is arguing that the references “are not from the same field of endeavor” and “[a]s a result, they are not properly combinable” (Reply Br. 11). Appellant’s position is unclear. In any event, claim 1, Henning, Robert, and Nordsiek, all relate to rubber for tires and are within the same field of endeavor. Appellant’s argument to the contrary does not identify reversible error. Because Appellant does not identify reversible error in the Examiner’s rejection, we sustain the Examiner’s rejection of claims 1–14 based on Henning, Robert, and Nordsiek. DECISION For the above reasons, we affirm the Examiner’s rejection of claims 1–14. 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