Ex Parte Ohta et al

Patent Trial and Appeal Board

Oct 31, 2016

12529979 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/529,979 12/18/2009
23373 7590 11/02/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Fuminori Ohta
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.
Ql 14863 7909
EXAMINER
LENIHAN, JEFFREYS
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FUMINORI OHTA and KOJI MASAKI 1
Appeal2014-005277
Application 12/529,979
Technology Center 1700
Before CHUNG K. PAK, BEYERL YA. FRANKLIN, and CHRISTOPHER L.
OGDEN, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 finally rejecting claims 1 and 3-11, which are all of the
claims pending in the above-identified application. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is said to be Bridgestone Corporation. Appeal Brief
filed October 9, 2013 ("App. Br.") at 2.
2 Non-Final Action entered June 23, 2011 ("First Non-Final Act.") at 4-11; First
Final Action entered March 13, 2012 ("First Final Act.") at 1-3; Second Non-Final
Action entered October 1, 2012 ("Second Non-Final Act.") at 2-11; Second Final
Action entered May 10, 2013 ("Second Final Act.") at 1-7, and the Examiner's
Answer entered January 31, 2014 ("Ans.") at 2-9.
Appeal2014-005277
Application 12/529,979
STATEMENT OF THE CASE
The subject matter on appeal is directed to "a rubber composition and a tire
using the rubber composition[.]" Spec. 1, ,-i 1. The rubber composition, according
to paragraph 9 of the Specification,
is characterized by compounding 1-60 parts by mass of a low-
molecular weight conjugated diene-based polymer (B) having a
weight average molecular weight as measured through a gel
permeation chromatography molecular weight as measured through a
gel permeation chromatography and converted to polystyrene of
10,000-200,000 and vinyl bond content in a conjugated diene
compound portion of not less than 40% based on 100 parts by mass of
a rubber component (A) comprised of at least one selected from the
group consisting of natural rubber, polyisoprene rubber, and styrene-
butadiene copolymer rubber, polybutadiene rubber and isobutylene
isoprene rubber, wherein the rubber component (A) comprises natural
rubber and/or polyisoprene rubber, and a proportion of styrene units in
total of the low-molecular weight conjugated diene-based polymer (B)
is less than 5% by mass.
This rubber composition is said to be "excellent in the workability during
production and the heat resistance, high in the storage elastic modulus (G') and
small in the loss of tangent (tan 8) [reflective of reduced rolling resistance]."
Spec. ,-i,-i 1, 3, and 7.
Details of the appealed subject matter are recited in illustrative claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief (with
disputed limitations in italicized form):
1. A rubber composition characterized by compounding 1-60 parts by mass
of a low-molecular weight conjugated diene-based polymer (B) synthesized
through an anionic polymerization and having a weight average molecular weight
as measured through a gel permeation chromatography and converted to
polystyrene of 40, 000-200, 000 and a vinyl bond content in a conjugated diene
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Application 12/529,979
compound portion of not less than 40% based on 100 parts by mass of a rubber
component (A) having a weight average molecular weight as measured through a
gel permeation chromatography and converted to polystyrene of more than
200,000,
wherein the rubber component (A) comprises natural rubber and/or
polyisoprene rubber, and
an amount of the aromatic vinyl compound bonded in the low-molecular
weight conjugated diene-based polymer (B) is less than 5% by mass.
App. Br. 15, Claims Appendix.
The Examiner maintains, and Appellants seek review of, the following
grounds of rejection:
1. Claims 1and3-11under35 U.S.C. §103(a) as unpatentable over
Yokoyama (US 5,959,039 issued Sept. 28, 1999)
2. Claims 1, 3-5, 8, and 9 under 35 U.S.C. §103(a) as unpatentable over
Miyoshi3 (WO 2006/098103 Al published Sept. 21, 2006) in view of Yokoyama;
and
3. Claims 1and3-9 under 35 U.S.C. §103(a) as unpatentable over
Sakurai4 (JP 2006-249230 published Sept. 21, 2006) in view of Yokoyama. First
3 Our reference to Miyoshi is to US 2009/0054549 Al published in the name of
Miyoshi on February 26, 2009. Appellants do not question the Examiner's
reliance on US 2009/0054549 Al as the English translation of WO 2006/098103
A 1 published in the name of Miyoshi.
4 Our reference to Sakurai is to the English translation entered into the record by
the Examiner on June 23, 2011.
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Final Act. 1-3; Second Non-Final Act. 1-3; Second Final Act. 1-7; Ans. 2-9;
Appeal Br. 7-13; and Reply Br. 3.
DISCUSSION
Having considered the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we affirm the
Examiner's §103(a) rejections of claims 1and3-11 as unpatentable over
Yokoyama and claims 1 and 3-9 as unpatentable over Sakurai in view of
Yokoyama for the reasons set forth in the Final Action and the Answer, but reverse
the Examiner's §103(a) rejection of claims 1, 3-5, 8, and 9 as unpatentable over
Miyoshi in view of Yokoyama for the reasons set forth in the Appeal Brief. We
add the following for emphasis and completeness.
I. Rejection 1
As evidence of obviousness of the subject matter recited in claims 1 and 3-
11 under § 103 (a), the Examiner relies upon the disclosure of Yokoyama. Second
Non-Final Act. 4-6; Second Final Act. 2-3. Yokoyama teaches a rubber
composition useful for forming, for example, a tire tread, a tire side wall and a tire
bead portion, which comprises 100 parts of by weight of a high molecular weight
conjugated diene-based polymer component having a weight-average weight
molecular weight of at least 30 x 104 (at least 300,000) in terms of polystyrene
corresponding to the recited rubber component (A) and 30 to 120 parts by weight
of a low molecular weight conjugated diene-based component having a weight-
average molecular weight of from 0.2 x 104 (2000) to 8 x 104 (80,000) in terms of
polystyrene and containing not greater than 30% by weight of bound styrene
synthesized through an anionic solution polymerization corresponding to the
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recited low-molecular weight conjugated diene-based polymer (B) synthesized
through an anionic polymerization. See First Non-Final Act. 4-6, Second Non-
Final Act 2-6 and Second Final Act. 2-3; compare Yokoyama, col. 2, 11. 25--49,
col. 4, 11. 26-62, and col. 6, 11. 25-31, with claim 1 on appeal. Yokoyama also
teaches that one of the two high molecular weight conjugated diene based polymer
components used in its rubber composition is a conjugated diene polymer which
may be obtained by polymerizing a conjugated diene hydrocarbon monomer, such
as 1, 3 butadiene, isoprene, 2,3-dimethyl-l, 3-butadiene, 1, 3-pentadiene,
octadiene, or a combination thereof. See Second Final Act. 4 and Ans. 2; compare
Yokoyama, col. 4, 11. 26--41, with claim 1 on appeal. Yokoyama further
exemplifies a high molecular weight conjugated diene (butadiene) polymer
component having a weight-average weight molecular weight of 850,000 and a
low molecular weight conjugated diene-based polymer component having a
weight-average molecular weight of at least 20,000 in terms of polystyrene, a
styrene content of 0 to 25%, and a vinyl content of 10 to 40%. See First Non-Final
Act. 5 and Second Final Act. 2; compare Yokoyama, col. 7, 1. 30-col. 8, 1. 21 and
col. 10, Table 1, with claim 1 on appeal.
Based on the above disclosures in Yokoyama, the Examiner concludes, and
Appellants do not question, that a person having ordinary skill in the art would
have been led to employ, inter alia, 30 to 60 parts by weight of a low molecular
weight conjugated diene-based component having a weight-average molecular
weight of 40,000 to 80,000 in terms of polystyrene, a styrene content of less than
5%, and a vinyl content of 40% (corresponding to the recited low-molecular
weight conjugated diene-based polymer (B)) in the rubber composition taught by
Yokoyama. Compare First Non-Final Act. 5 and Second Final Act. 2, with App.
Br. 7-10; see also In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) ("In
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cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie case
of obviousness.")
Appellants contend that one of ordinary skill in the art would not have been
led to employ natural rubber or polyisoprene in the rubber composition of
Yokoyama "because the rubber composition in Yokoyama does not comprise
natural rubber and/or polyisoprene rubber as its essential component and because
the Examples in Yokoyama comprise only butadiene rubber as the rubber
component[.]" App. Br. 7. However, as correctly explained by the Examiner,
Yokoyama, as a whole, would have suggested using, inter alia, a polyisoprene
rubber as the high molecular weight conjugated diene-based polymer component
of its rubber composition. Ans. 2 (citing Yokoyama, col. 4, 11. 26-30 and 35-37).5
In particular, Yokoyama, at column 4, lines 26-34, teaches that one of the two high
molecular weight conjugated diene-based polymer components used in its rubber
composition is a conjugated diene polymer which may be obtained by
polymerizing a conjugated diene hydrocarbon monomer containing 4-12 carbon
atoms, preferably 4-8 carbon atoms per molecule. Yokoyama further teaches (col.
4, 11. 35-41) that:
Examples of the conjugated diene hydrocarbon monomer usable in the
present invention include 1, 3 butadiene, isoprene, 2, 3-dimethyl-l, 3-
butadiene, 1, 3-pentadiene, and octadiene, with 1, 3-butadien being
particularly preferred. They can be used singly or in combination. As
5 Although Appellants appear to refer to Yokoyama's disclosure of optionally
employing a natural rubber in its rubber composition as describing a natural rubber
as a non-essential component, such disclosure of Yokoyama would also have
suggested employing the natural rubber in the amount recited in claim 1. Compare
App. Br. 7, with Yokoyama, col., 5, 11. 52-62. In the event of further prosecution,
both the Examiner and Appellants should also consider the applicability of this
disclosure of Yokoyama as an additional basis for prima facie obviousness.
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a conjugated diene polymer, polybutadiene is preferred in light of
industrial productivity. [Emphasis added.]
The Examiner finds, and Appellants do not dispute, that polymerizing isoprene,
one of the five listed conjugated diene monomers useful for forming a desired high
molecular weight conjugated diene polymer corresponding to the recited rubber
component (A), would result in a polyisoprene (isoprene rubber). Compare
Second Final Act. 4 and Ans. 2, with App. Br. 7-10. Although Yokoyama
exemplifies or prefers a polybutadiene as the high molecular weight conjugated
diene-based polymer component of its rubber composition, it not limited to its
examples or its preferred embodiment as is apparent from the above quoted
passage of Yokoyama. Second Final Act. 4-5; Ans. 2-3; see also Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all disclosures of
the prior art, including unpreferred embodiments, must be considered") (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); In re Chapman, 357 F.2d 418, 424
( CCP A 1966) ("A reference can be used for all it realistically teaches, and is not
limited to disclosures in its specific illustrative examples.")
Consequently, we find no harmful error in the Examiner's determination that
the above passage of Yokoyama would have suggested using, inter alia, a
polyisoprene as the high molecular weight conjugated diene-based polymer
component of Yokoyama's rubber composition, with a reasonable expectation of
successfully forming a rubber composition useful for making tire parts. Merck &
Co., Inc. v. Biocraft Labs., Inc., 874 F.2d at 807 ("That the '813 patent discloses a
multitude of effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for the
identical purpose."); see also Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc.,
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246 F. 3d 1368, 1380 (Fed. Cir. 2001) ("[T]he disclosure of a small genus may
anticipate the species of that genus even if the species are not themselves
recited.").
Appellants contend that a Rule 132 Declaration executed by Eiju Suzuki on
September 12, 2012 ("Suzuki Declaration") demonstrates that the claimed rubber
composition imparts unexpected results relative to the rubber composition taught
by Yokoyama, the closest prior art. App. Br. 7-10. The Suzuki Declaration shows
two rubber compositions (supposedly representative of the rubber compositions
recited in claim 1) in Example 1 and Additional Example 1 as containing 60 parts
by weight of a natural rubber or an isoprene rubber, 40 parts by weight of a
butadiene rubber, 10 parts by weight of a "B-3" low molecular weight conjugated
diene, 5 parts by weight of aromatic oil, 60 parts by weight of carbon black, 1.5
parts by weight of stearic acid, 1.5 parts by weight of zinc white, 1 part by weight
of an antioxidant, 0.2 part by weight of a "DM" vulcanization accelerator, 0.5 part
by weight of a "CZ" vulcanization accelerator, and 1 part by weight of sulfur. See
the Suzuki Declaration, p. 2, Table A. The Suzuki Declaration also shows one
rubber composition in Comparative Example 2, which is identical to that of
Example 1, except for having no low molecular weight conjugated diene-based
polymer and 15 parts by weight of an aromatic oil (3 times more than that
employed in Example 1 ), another rubber composition in Additional Comparative
Example 1, which is identical to that of Example 1, except for having 100 parts by
weight of a butadiene rubber and no natural rubber, and another rubber
composition in Additional Comparative Example 2, which is identical to that of
Example 1, except for 100 parts by weight of a butadiene rubber, no natural rubber,
no low molecular weight conjugated diene-based polymer, and 15 parts by weight
of an aromatic oil (3 times more than that employed in Example 1 ). Id. The
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Suzuki Declaration further shows another rubber composition in Additional
Comparative Example 3, which is identical to that of Additional Example 1, except
for having no low molecular weight conjugated diene-based polymer and 15 parts
by weight of an aromatic oil (3 times more than that employed in Additional
Example 1 ). Id. According to Appellants, Comparative Example 2 and Additional
Comparative Examples 1, 2, and 3 are representative of the rubber compositions
described in Yokoyama. App. Br. 7-8.
The specific natural rubber, isoprene rubber, butadiene rubber, low
molecular weight conjugated diene, aromatic oil, antioxidant, and vulcanization
accelerators referred to in the Suzuki Declaration are those disclosed in Table 2 of
the above-identified application. See the Suzuki Declaration, p. 2. Table 2
referred to in the Suzuki Declaration is provided at paragraph 5 8 of the above-
identified application. According to paragraph 60 of the above-identified
application, the natural rubber used in Table 2 is identified as having a weight
average molecular weight of 1,500,000, the polybutadiene rubber used in Table 2
is identified as having a weight average molecular weight of 550,000, the
antioxidant used in Table 2 is identified as N-(1,3-dimethylbutyl)-N'-phenyl-p-
phenylenediamine, the "DM" vulcanization accelerator is identified as di-2-
benzothiazolyl disulfide, and the "CZ" vulcanization accelerator is identified as N-
cyclohexyl-2-benzothiazoly sulfonamide. Paragraph 52 of the above-identified
application identifies the "B-3" low molecular weight conjugated diene used in
Table 2 as having a weight average molecular weight of 80,000, a vinyl bond
content of 45%, and no bound styrene content. The isoprene rubber employed in
the Suzuki Declaration is not shown or described in Table 2 of the above-identified
application. Spec. ,-i 60. Nor does the Suzuki Declaration indicate the weight
average molecular weight or any other properties of the isoprene rubber used in its
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Additional Example 1 and Additional Comparative Example 3. See the Suzuki
Declaration 1-3.
Appellants bear the burden of showing unexpected results. In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972) ("[T]he burden of showing of unexpected
results rests on he who asserts them."); see also In re Heyna, 360 F.2d 222, 228
(CCP A 1966) ("It was incumbent upon appellants to submit clear and convincing
evidence to support their allegation of unexpected property.") This burden
requires Appellants to demonstrate that the claimed invention actually imparts
unexpected results relative to the closest prior art, In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed. Cir. 1991), and that such showing of unexpected results is
reasonably commensurate in scope with the degree of protection sought by the
claims on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980). "[U]nexpected results must be
established by factual evidence. Mere arguments or conclusory statements in the
specification do not suffice." In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984),
quoted with approval in In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
Here, notwithstanding Appellants' arguments to the contrary, Appellants do
not demonstrate that the claimed invention imparts unexpected results relative to
the closest prior art. Second Final Act. 6. Although the Suzuki Declaration shows
some improvement in fracture strength and heat resistance in Example 1 and
Additional Example 1 (supposedly representative of the claimed subject matter)
relative to Comparative Example 2 and Additional Comparative Examples 1-3
(supposedly representative of the closest prior art), it does not aver that such
improvement is unexpected by one of ordinary skill in the art. In re Geisler, 116
F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that "Geisler made no such assertion
[of unexpected results] in his application ... [or] submit any such statement
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through other evidentiary submissions, such as an atlidavit or declaration .... ")
(citing In re Orfeo, 440 F.2d 439, 441(CCPA1971)). Nor do Appellants
adequately explain why the improvement is unexpected relative to the closest prior
art despite the fact that Comparative Example 2 and Additional Comparative
Examples 1-3 do not show Yokoyama' s exemplified rubber composition
containing a high molecular weight conjugated diene (butadiene) having a weight
average molecular weight of 850,000 (closer to the weight average molecular
weight of the natural rubber employed in Example 1 allegedly representative of the
claimed subject matter), a low molecular weight conjugated diene having either a
weight average molecular weight of 20,000, a vinyl content of 40%, and a styrene
content of 0% or a weight average molecular weight of 60,000, a vinyl content of
10%, and a styrene content of 0%, carbon black, stearic acid, antioxidant (N-(1,3-
dimethylbutyl)-N'-phenyl-p-phenylenediamine ), zinc oxide, the "DM"
vulcanization accelerator ( dibenzothiazyl disulfide) and the "DPG" vulcanization
accelerator ( diphenylguanidine ). Compare Yokoyama, col. 10, Table 1, E6 and
El 1, with App. Br. 7-10. It is not clear from the Suzuki Declaration whether the
improvement is due to the difference in the weight-average molecular weights of
the natural rubber, polyisoprene, and butadiene employed, the amount of the
specific low molecular weight conjugated diene employed, the amount of the
aromatic oil employed, and/or a combination of the specific proportions of the
specific ingredients employed. In re Dunn, 349 F.2d 433, 439 (CCPA 1965)
("While we do not intend to slight the alleged improvements, we do not feel it an
unreasonable burden on appellants to require comparative examples relied on for
non-obviousness to be truly comparative. The cause and effect sought to be
proven is lost here in the welter of unfixed variables.")
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As also found by the Examiner, Appellants do not demonstrate that the
showing relied upon is reasonably commensurate in scope with the degree of
protection sought by the claims on appeal. Second Final Act. 5; Ans. 3-6. While
the showing is limited to two particular rubber compositions having specific
proportions of various ingredients, including a specific proportion of particular
natural rubber or polyisoprene having a specific weight-average molecular weight
and a specific proportion of a low molecular weight conjugated diene-based
polymer having a weight average molecular weight of 80,000, a vinyl bond content
of 45%, and no bound styrene content (Example 1 and Additional Example 1
shown in the Suzuki Declaration as indicated supra), the claims on appeal are not
so limited. See Ans. 4-6; See also In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) ("Even assuming that the results were unexpected, Harris needed to show
results covering the scope of the claimed range. Alternatively Harris needed to
narrow the claims."); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978)
("Establishing that one (or a small number of) species gives unexpected results is
inadequate proof, for 'it is the view of this court that objective evidence of non-
obviousness must be commensurate in scope with the claims which the evidence is
offered to support."') (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). On
this record, Appellants do not show that the improvement resulting from
employing the two rubber compositions shown in the Suzuki Declaration is also
applicable to the multifarious rubber compositions encompassed by the claims on
appeal. App. Br. 7-10.
Consequently, we find no reversible error in the Examiner's determination
that the evidence of obviousness, on balance, outweighs the evidence of non-
obviousness relied upon by Appellants.
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II. Rejection 2
As evidence of obviousness of the subject matter recited in claims 1, 3-5, 8,
and 9 under § 103 (a), the Examiner relies upon the combined disclosures of
Miyoshi and Yokoyama. Second Final Act. 3. The Examiner finds that Miyoshi
teaches a rubber composition comprising 100 part by mass of natural rubber or
synthetic diene-based rubbers and 5 to 60 parts by mass of a low-molecular weight
conjugated diene-based polymer having a weight average molecular weight of
5,000 to 200,000, a vinyl bond content of 10 to 80% by mass, and an aromatic
vinyl compound content of 5 to 80% by mass. Id; First Non-Final Act. 7; see also
Miyoshi ,-i,-i 7 and 18. To account for the recited weight average molecular weight
of natural rubber or synthetic diene-based rubbers missing in Miyoshi, the
Examiner relies upon Yokoyama's disclosure directed to the high molecular
weight conjugated diene-based rubber, such as an isoprene rubber having the
weight average molecular weight recited in claim 1. Second Non-Final Act. 5;
Second Final Act. 3.
In terms of the amount of the aromatic vinyl compound content in the low-
molecular weight conjugated diene-based polymer recited in claim 1, the Examiner
takes the position that:
Miyoshi teaches that the amount of styrene units in the prior art LMW
polymer is 5 to 80% by mass. It has been held that a prima facie case
of obviousness exists where the claimed ranges and the prior art
ranges do not overlap but are close enough that one skilled in the art
would have expected them to have the same properties, see Titanium
Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773
(Fed. Cir. 1985). [See Ans. 7; First Non-Final Act. 7.]
However, the Examiner do not show that the amount of styrene units in the prior
art LMW polymer and the amount of styrene units in the LMW polymer recited in
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claim 1 are close enough such that "one skilled in the art would have expected to
have the same [or similar] properties" as required by Titanium Metals Corp. of
America. Miyoshi teaches that its rubber composition is not expected to have the
same or similar properties, when the bound aromatic vinyl compound content of
the LMW polymer is reduced to less than 5% by mass. See Miyoshi ,-i 19 ("When
the bound aromatic vinyl compound content is less than 5% by mass or exceeds
80% by mass, the low heat buildup and wet performance of the rubber composition
cannot be sufficiently and simultaneously established."). Thus, on this record, the
Examiner does not establish that one of ordinary skill in the art would have been
led to use the LMW polymer recited in claim 1 in Miyoshi's rubber composition,
with a reasonable expectation of successfully obtaining the same or similar
properties imparted by the amount of styrene units in Miyoshi's LMW polymer.
Accordingly, we concur with Appellants that the Examiner fails to carry the
burden of establishing a prima facie case of obviousness.
III. Rejection 3
As evidence of obviousness of the subject matter recited in claims 1 and 3-9
under § 103 (a), the Examiner relies upon the combined disclosures of Sakurai and
Yokoyama. Second Final Act. 3. The Examiner finds, and Appellants do not
dispute, that
Sakurai discloses a composition comprising 100 parts by mass of a
rubber component (A) such as natural rubber or polyisoprene
rubber ... (abstract, ,-ioo35), corresponding to claimed component (A)
(for claim 1 ); 5 to 50 parts by mass of a softener (abstract); and carbon
black ... (,-i0037). Said softener is high vinyl polybutadiene ...
having a molecular weight in the range of 3000 to 30000 (for claims
1,3, 4) and a vinyl bond content greater than or equal to 50% c,-iool5,
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0025 ), corresponding to claimed component ( B) (for claim 1 ). Said
polybutadiene is not reported to contain styrene; the styrene content is
therefore 0% (for claim 1 ). The ... [Sakurai] composition may be
used for the production of pneumatic tire treads (for claim 9). [First
Non-Final Act. 8-9 and Second Final Act. 3.]
The Examiner acknowledges that Sakurai does not mention its low molecular
weight conjugated diene component (polybutadiene softener) as having the weight-
average molecular weights recited in claim 1. Id. However, the Examiner finds,
and Appellants do not dispute, that Yokoyama, like Sakurai, teaches that the LMW
polybutadiene as an additive in the rubber composition used for tire parts and can
have the weight average molecular weight taught by Sakurai or recited in claim 1
for the purpose of making a tire having improved gripping performance within a
wide temperature range. Compare Second Final Act 3, with App. Br. 12-13; see
also Yokoyama, col. 3, 11. 37-47.
Under the above circumstances, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ a polybutadiene additive
having the weight-average molecular weight taught by Yokoyama in the rubber
composition of Sakurai, with a reasonable expectation of successfully forming a
rubber composition useful for tire parts.
Appellants "notes again that the unexpectedly superior properties of the
presently claimed invention are achieved by not only the use of the presently
recited molecular weight of component (B), but also by the combination of the
rubber component (A) comprising natural rubber and/or isoprene rubber with the
component (B)." However, as indicated above, we agree with the Examiner that
Appellants do not demonstrate that the claimed invention imparts unexpected
results relative to the closest prior art (either Yokoyama or Sakurai) and that the
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showing relied upon is reasonably commensurate in scope with the degree of
protection sought by the claims on appeal.
Consequently, we find no reversible error in the Examiner's determination
that the evidence of obviousness, on balance, outweighs the evidence of non-
obviousness relied upon by Appellants.
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1 and 3-11
under 35 U.S.C. §103(a) as unpatentable over Yokoyama is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject Claims 1,
3-5, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Miyoshi in view of
Yokoyama is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject Claims 1
and 3-9 under 35 U.S.C. §103(a) as unpatentable over Sakurai in view of
Yokoyama is AFFIRMED; and,
FURTHER ORDERED that no time period for taking any subsequent action
in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED
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