Ex Parte Thielen et al

Patent Trial and Appeal BoardDec 11, 2012

11930805 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/930,805 10/31/2007 Georges Marcel Victor Thielen DN2006221 1361 27280 7590 12/11/2012 THE GOODYEAR TIRE & RUBBER COMPANY INTELLECTUAL PROPERTY DEPARTMENT 823 1144 EAST MARKET STREET AKRON, OH 44316-0001 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 12/11/2012 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 GEORGES MARCEL VICTOR THIELEN, UWE ERNST FRANK and FRANK SCHMITZ ____________ Appeal 2011-007076 Application 11/930,805 Technology Center 1700 ____________ Before ANDREW H. METZ, CHARLES F. WARREN, and JEFFREY T. SMITH, Administrative Patent Judges. METZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007076 Application 11/930,805 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 through 9, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. THE INVENTION Appellants disclose rubber compositions useful for incorporation in a variety of rubber components of a tire. The rubber components may be the tire tread, sidewall, apex, chafer, sidewall insert, wirecoat or innerliner. The tire may be a race tire, passenger tire, aircraft tire, agricultural tire, earthmover, off-the-road, truck tire and the like. The tire may be a radial or bias tire. Spec., page 15, lines 23 through 29. The rubber composition from which a pneumatic tire may be prepared comprises 100 parts by weight of elastomer and is prepared by mixing a silica filler and a diene based elastomer to form a first nonproductive compound. Subsequently a second nonproductive compound is prepared by mixing a rubber containing a nitrile moiety and the first nonproductive compound to form a second nonproductive compound. Thereafter, a third composition comprising curatives and the second nonproductive compound are mixed to form a third productive compound which is the rubber composition used to prepare the pneumatic tire. Id. at page 1, line 29 through page 2, line 8. The method of preparing the rubber compositions includes two nonproductive steps followed by a third productive step. Each of the first two nonproductive steps may include other optional additives exclusive of curatives. In the Appeal 2011-007076 Application 11/930,805 3 productive mix step curatives are mixed with the second nonproductive mix to produce a productive compound useful for forming into the desired tire component. Id. at page 2, lines 10 through 29. Both the first nonproductive compound and the second nonproductive compound may contain various commonly used additives. These other additives may be mixed in the first or second nonproductive compound in any ratio and at different levels. They may also be added to subsequent mixes, including the productive step. Id. at page 13, line 32 through page 14, line 18. Claim 1 is believed to be adequately representative of the appealed subject matter and is reproduced below for a more facile understanding of the claimed invention. 1. A process for the production of a pneumatic tire comprising a component comprising a rubber composition, wherein the rubber composition comprises 100 parts by weight of elastomer and is produced by (A) mixing a first composition comprising 30 to 110 parts by weight, per 100 parts by weight of elastomer (phr) of a silica filler and 20 to 90 phr of a diene based elastomer selected from cis 1,4-polyisoprene rubber (natural or synthetic), 3,4-polyisoprene rubber, styrene/isoprene/butadiene rubber, emulsion and solution polymerization derived styrene/butadiene rubbers, and cis 1,4-polybutadiene rubbers, to form a first nonproductive compound; (B) mixing a second composition comprising from 10 to 80 phr of a rubber containing a nitrile moiety and the first nonproductive1 compound to form a second nonproductive compound; and 1 The claim reproduced in Appellants’ Claim Appendix incorrectly recites “the first productive compound.” Appeal 2011-007076 Application 11/930,805 4 (C) mixing a third composition comprising curatives and the second nonproductive compound to form a productive compound. The references of record which are being relied on by the Examiner as evidence of obviousness are: Sandstrom US 5,462,979 Oct. 31, 1995 Smith et al. (Smith) US 5,696,197 Dec. 9, 1997 Obrecht et al. (Obrecht) US 6,127,488 Oct. 3, 2000 THE REJECTIONS Claims 1, 2 and 6 through 9 stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the claimed subject matter would have been obvious from the combined disclosure of Sandstrom and Smith. Claims 3 through 5 stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the claimed subject matter would have been obvious from the disclosure of Sandstrom and Smith considered with Obrecht. Claims 1, 2 and 7 through 9 stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the claimed subject matter would have been obvious from the disclosure of Smith. Claims 3 through 5 stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the claimed subject matter would have been obvious from the combined disclosure of Smith and Obrecht. OPINION Appellants have chosen to argue the claims on appeal without regard to any specific claim or any specific claim limitation. Accordingly, we shall Appeal 2011-007076 Application 11/930,805 5 limit our decision to the subject matter of claim 1, the only independent claim before us in this appeal. Appellants argue that the rejection of claims 1, 2 and 6 through 9 as being obvious from the disclosure of Sandstrom considered with Smith should be reversed because (1) Sandstrom does not teach addition of silica in a first non-productive mix step; (2) Sandstrom teaches epoxidized rubber as a component in the first non-productive mixing step and Appellants’ claims do not recite or require epoxidized natural rubber as a component in the first non-productive mixing step and (3) Smith does not require that the acrylonitrile/butadiene copolymer be added in the second, non-productive stage. We find no merit in any of Appellants’ arguments. Sandstrom discloses rubber compositions in Table III of column 9 wherein polybutadiene and polyisoprene are mixed with silica in a first non- productive mixing step. Thus, Sandstrom not only teaches that silica may be added in the first non-productive mixing step but also exemplifies the addition of silica with polyisoprene in the first non-productive mixing step. The silica disclosed as useful by Sandstrom has a BET surface area in the range of from 40 to 600 square meters per gram, preferably 50 to 300 square meters per gram. Sandstrom’s silica also has DBP absorption value of from about 200 to about 400. Thus, not only does Sandstrom disclose adding silica to the first non-productive mixing step but the silica used by Sandstrom includes Appellants’ preferred silica. See page 8, lines 15 through 23 of Appellants’ Specification. As correctly observed by the Examiner, because Appellants’ claims utilize the term “comprising” they do not exclude epoxidized natural rubber or any other component. Additionally, Appeal 2011-007076 Application 11/930,805 6 Appellants specifically provide in their Specification for the inclusion of other “various commonly used additive materials” which may be added in any mixing step or even in subsequent mixing steps, including the productive step. Spec., page 13, line 33. Smith discloses that the rubbers used in the first and second non- productive steps are different from each other and one of said first or second rubbers can be cis-1,4-polyisoprene, 3,4-polyisoprene, styrene/isoprene/butadiene, emulsion or solution polymerized styrene/butadiene copolymers, cis1,4-polybutadiene and acrylonitrile/butadiene copolymers. Smith also discloses that one of the two different rubbers is always cis 1,4-polyisoprene and that the other may be acrylonitrile/butadiene copolymer. The first or second may be the cis 1,4- polyisoprene and, correspondingly, the first or second rubber is selected from the above group. See Smith, column 2, lines 9 through 58. Thus, when cis 1,4-polyisoprene is the first rubber Smith clearly discloses using a “rubber containing a nitrile moiety” as one of the rubbers to be added to the second mixing step as required by Appellants’ claim 1, step (B). We find that disclosure to be sufficient to support the conclusion that the skilled polymer chemist or tire engineer would have been motivated at the time Appellants made their invention to have used a “rubber containing a nitrile moiety” as the rubber in the second non-productive mixing step. Accordingly, we find the Examiner has made out a prima facie case of obviousness based on the disclosure of Sandstrom considered with Smith and we affirm that rejection. Appeal 2011-007076 Application 11/930,805 7 As we stated above, Sandstrom discloses adding silica in the first of two non-productive compound mixing steps so Appellants’ extensive argument on that issue at page 8 of their Brief is entirely unpersuasive. Appellants’ pronouncement on page 8 of their Brief that “Sandstrom does not teach addition of silica in a first non-productive mix stage” is erroneous. We have also carefully considered Appellants’ argument that the rejection of the claims (claims 1, 2 and 7 through 9) over Smith is based on impermissible hindsight and find that argument to be unpersuasive. Smith clearly discloses that different rubbers are used in the first and second non- productive mixing steps. In Table 1 there is disclosed a method comprising a first non-productive mix including cis 1,4-polyisoprene (NR). According to the disclosure of Smith, the rubber in the second step must be one selected from the group disclosed as useful but which is not cis 1,4-polyisoprene. One of the members of the group of rubbers useful in Smith’s process is acrylonitrile/butadiene copolymers so its selection and use in Smith’s process is clear, unequivocal and suggested. Thus, when the acrylonitrile/butadiene copolymer is not used in the first non-productive step, its use as the rubber in the second step is specifically suggested as are the other rubbers listed by Smith as useful for that purpose. We also observe that Smith claims the acrylonitrile/butadiene rubber component in their claims. Thus, Smith discloses and claims a finite number of useful rubbers for inclusion in the second non-productive mixing step. Appellants also urge that because “nowhere does Smith teach or suggest an advantage to using acrylonitrile/butadiene rubber over all the other rubber disclosed,” the hypothetical person of ordinary skill in the art Appeal 2011-007076 Application 11/930,805 8 would have “no reason to expect a successful result of doing so as shown in the present specification.” (Brief at page 13). In the first instance, while Appellants’ argument suggests that Appellants have demonstrated some advantage in using a “rubber containing a nitrile moiety” in the second non- productive mixing step of their process for making a rubber compound for use in preparing pneumatic tires, there is no evidence in the record which supports their argument. The data in Table 1 of Appellants’ Specification merely shows the effect of adding a “rubber containing a nitrile moiety” during a first non-productive step compared to adding it in a second non- productive step on the “tan delta” of the final rubber compound obtained after the productive step. Because Smith specifically suggests adding a “rubber containing a nitrile moiety” to their second non-productive step, the basis for Appellants’ conclusion that the data exhibit an “advantage” is not apparent on this record. Suffice it to say that Appellants bear the burden of explaining why the results they obtained were truly representative of the prior art and also that the results obtained were truly “unexpected.” This Appellants have not done. Nevertheless, it is not necessary for purposes of determining obviousness for a reference to show an advantage to using a particular rubber. By disclosing acrylonitrile/butadiene rubber as a component for use in the second non-productive mixing step of their process of preparing carbon black-filled rubber compositions useful for preparing pneumatic tires, Smith informed persons of ordinary skill in the art that said rubber would function for that purpose. We find that disclosure to be sufficient to support the Examiner’s conclusion of obviousness. Accordingly, we affirm the Appeal 2011-007076 Application 11/930,805 9 Examiner’s rejection of Claims 1, 2 and 6 through 9 from the disclosure of Smith under 35 U.S.C. § 103(a). Claims 3 through 5 further limit the process of claim 1 to include a particulate rubber gel filler. The Examiner recognized that neither Sandstrom nor Smith disclosed the use of such a filler although both references provided for the inclusion of fillers among other additional conventional additives. The Examiner cited Obrecht as evidence that particulate rubber gel fillers were well-known additives for rubber compositions useful for preparing tires and which were known to impart beneficial properties to the final rubber composition to which they were added. Accordingly, the Examiner rejected the claims over the same combination of references on which he relied to reject claims 1, 2 and 6 through 9 in further view of Obrecht. Appellants’ complete response to these rejections may be found on pages 9 and 14 of their Brief. Therein, without discussing the relevance of Obrecht as set forth in the Examiner’s rejections, Appellants urge that their arguments with respect to the rejection of the claims based on Sandstrom considered with Smith or over Smith alone “apply equally to claims 3 through 5 as these claims are dependent on claim 1.” (Brief at page 9). Because we have affirmed each of the Examiner’s aforementioned rejections, we summarily affirm the rejections of claims 3 through 5 on each separate ground of rejection. The decision of the Examiner is 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)(1)(iv). AFFIRMED Appeal 2011-007076 Application 11/930,805 10 bar