Ex Parte Makiuchi et al

Patent Trial and Appeal BoardDec 21, 2016

13321826 (P.T.A.B. Dec. 21, 2016)

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. 13/321,826 02/29/2012 Kazumi Makiuchi 5460-369PUS - 314116.000 6281 27799 7590 Cozen O'Connor 277 Park Avenue, 20th floor NEW YORK, NY 10172 12/23/2016 EXAMINER FINK, BRIEANN R ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): patentsecretary @ cozen. com patentdocket@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUMIMAKIUCHI and SALVATORE PAGANO Appeal 2015-005566 Application 13/321,826 Technology Center 1700 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JULIA HEANEY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner to reject claims 1, 3, 4, 6-13, 16—18, 20 and 21 of Application 13/321,826 as unpatentable under 35 U.S.C. § 103(a).2 We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify the real parties in interest as Michelin Recherche et Technique S.A. and Compagnie Generale Des Etablissements Michelin. App. Br. 2. 2 Final Act. dated August 22, 2014. Appeal 2015-005566 Application 13/321,826 We reverse because the Examiner has not considered evidence of unexpected results presented by Appellants to overcome the Examiner’s determination of unpatentability under 35 U.S.C. § 103(a). We note that this reversal is procedural in nature. We express no opinion on the merits of the rejection set forth in the Final Action. BACKGROUND The subject matter on appeal is a rubber composition, particularly for use in a tire. Specification 11. The rubber composition comprises a diene elastomer, filler, a crosslinking system, antioxidant, and an acetylacetonate of an alkali metal or alkaline earth metal. Spec. Tflf 30—110. Appellants describe the rubber composition as having “the distinguishing feature of consuming less antioxidant” during ageing, and thereby improved longevity, because of the presence of the alkali metal or alkaline earth metal acetylacetonate. Spec. Ill—12. Claim 1 is representative of the claims on appeal and is reproduced below: 1. A rubber composition, usable in particular in the manufacture of a tire, comprising at least a diene elastomer that is natural rubber, between 30 and 150 phr of a reinforcing filler, a crosslinking system, between 0.2 and 10 phr of an antioxidant and between 0.2 and 10 phr of an alkali metal or alkaline earth metal acetylacetonate. Appeal Br. A-1 (Claims Appx.) 2 Appeal 2015-005566 Application 13/321,826 THE REJECTION Claims 1, 3, 4, 6—13, 16—18, 20, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Galimberti.3 DISCUSSION Appellants argue that the rejection does not establish a prima facie case of obviousness (App. Br. 5—9), and further that a person of ordinary skill in the art would not reasonably have expected the substantial reduction in consumption of antioxidant in the claimed rubber composition which is shown in the examples of the Specification. App. Br. 9. Appellants rely on Table 3 of the Specification, which shows the weight percentage of antioxidant after thermal ageing tests for four rubber compositions containing an alkali metal or alkaline earth metal acetylacetonate within the claimed range (Examples C-2 to C-5), as compared to a control composition (C-l) that does not contain an acetylacetonate. Id., see Spec. ]Hf 125—136. Specifically, the Specification provides: On reading this Table 3, it is first of all found that, unexpectedly, the presence of an alkali metal or alkaline earth metal acetylacetonate already makes it possible, immediately after curing (initial state), to substantially (approximately 7%) reduce the loss of antioxidant present in the compositions, whatever the acetylacetonate tested. In addition, after accelerated thermal ageing, it is noted that, whatever the duration of the ageing and the acetylacetonate tested, the presence of the alkali metal or alkaline earth metal acetylacetonate makes it possible to reduce, in a noteworthy fashion, the consumption of antioxidant over time, in comparison with the control composition. 3 WO 2007/098784 Al, published September 7, 2007 (“Galimberti”). 3 Appeal 2015-005566 Application 13/321,826 Spec. 134—135. The Specification further provides: By virtue of the presence of the above specific acetylacetonate, a significant reduction in the consumption of antioxidant has unexpectedly been observed in the rubber compositions during the ageing of the latter. Spec. 111. The Examiner does not respond to Appellants’ assertion of unexpected results. Rather, the Examiner states “applicants do not assert or show any unexpected results.” Ans. 8. The Examiner’s failure to consider Appellants’ evidence of unexpected results requires reversal. We emphasize that our reversal is based upon the Examiner’s failure to consider the evidence and not upon the merits of whether such evidence would show that the difference between the claimed invention and the closest prior art was an unexpected difference, or that the evidence of unexpected results is reasonably commensurate with the scope of claim 1. We express no opinion regarding the merits of the rejection set forth in the Final Action. CONCLUSION For the reasons set forth above, we reverse the Examiner’s rejection of claims 1, 3, 4, 6—13, 16—18, 20, and 21 of Application 13/321,826 as unpatentable under 35 U.S.C. § 103(a). REVERSED 4