Ex Parte Yang

Patent Trial and Appeal Board

Aug 31, 2017

13517917 (P.T.A.B. Aug. 31, 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.
13/517,917 06/20/2012 Xiaofeng Shaw Yang MIC-341-PCT-US
(P50-034J-
4876
34043 7590 08/31/2017
DOR TTY & MANNING PA and MTPHF.T TN EXAMINER
NORTH AMERICA, INC.
Post Office Box 1449
EASHOO, MARK
GREENVILLE, SC 29602-1449 ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
08/31/2017 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 XIAOFENG SHAW YANG1
Appeal 2016-007072
Application 13/517,917
Technology Center 1700
Before MARKNAGUMO, MICHAEL P. COLAIANNI, and
MONTE T. SQUIRE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the Examiner’s Final
Rejection of claims 1, 2, 6—13, 18, and 21. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Michelin Recherche Et
Technique, S.A. and Compagnie Generale Des Etablissements Michelin.
App. Br. 1.
Appeal 2016-007072
Application 13/517,917
Appellant’s invention is directed to aircraft tire treads formed from a
rubber composition that includes, inter alia, a polyterpene resin and a poly­
thiosulfate anti-reversion agent having the formula recited in claim 1 (Spec.
111, 5, 6,).
Claim 1 is illustrative:
1. An aircraft tire tread formed from a material that is
based upon a cross-linkable rubber composition, the cross-
linkable rubber composition comprising, per 100 parts by
weight of rubber:
between 60 phr and 90 phr of a polyisoprene rubber;
between 10 and 40 phr of a polybutadiene rubber;
between 5 phr and 25 phr of a polylimonene2 resin
having a glass transition temperature of between 50 °C and 100
°C; and
between 1 phr and 6 phr of a poly-thiosulfate anti­
reversion agent having the formula:
M03S-S-X-S-S03M
wherein X is the alkylene radical or a radical comprising two or
more alkylene units, pairs of which units being linked through
an oxygen or a sulfur atom, through a group —SO2—NH—, —
NH2+—,—N(Ci_i6alkyl)—or—COO—, or through an arylene or
cycloalkylene radical and M is a metal, wherein the cross-
linkable rubber composition includes no processing oil.
Appellant appeals the following rejection:
Claims 1, 2, 6—13, 18, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Moniotte (US 2005/0032945 Al; published Feb. 10, 2005)
in view of Garro (US 5,362,793; issued Nov. 8, 1994), Bergman (US
2 Polylimonene is a polyterpene resin according the Specification (Spec. 1
15).
2
Appeal 2016-007072
Application 13/517,917
2007/0161735 Al; published July 12, 2007 ) and Ramos (US 4,167,544;
issued Sep. 11, 1979).
Appellant separately argues claims 1 and 21 (App. Br. 5-16).
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Application 13/517,917
FINDINGS OF FACT & ANALYSIS
CLAIM 1
The Examiner’s findings and conclusions regarding Moniotte, Garro,
Bergman, and Ramos are located on pages 2—\ of the Final Office Action.
Appellant argues that none of the references are directed to aircraft
tire tread compositions (App. Br. 7). Appellant contends that Moniotte is
directed to compositions that use Bunte salts to impart increased scorch
safetytime to the composition (App. Br. 8). Appellant argues that one of
ordinary skill in the art would not have combined Ramos’ teaching that it
was known conventionally to use up to 40 phr of polybutadiene in a
polyisoprene-polybutadiene tire composition blend because it is unclear if
Ramos’ polymer composition would have scorch safetytime problems (App.
Br. 10). Appellant contends that Ramos teaches to use a diblock copolymer
to aid in ensuring that the polybutadiene and polyisoprene are blended such
that the substitution proposed by the Examiner would entail using the
diblock copolymer along with the polybutadiene and polyisoprene (App. Br.
9).
Appellant’s arguments regarding Ramos are not persuasive because
the Examiner relies on Ramos to teach a conventional tire composition that
includes up to 40 phr of butadiene (Final Act. 3; Ans. 5). We are
unpersuaded by Appellant’s contention that the Examiner is not considering
Ramos’ teachings in their entirety by focusing on the conventional tire
composition disclosure in the background of the invention. All disclosures
in a reference must be evaluated for what they fairly teach one of ordinary
skill in the art. In re Boe, 355 F.2d 961, 965 (CCPA 1966). In this case,
Ramos teaches that it is conventionally known to use up to 40 phr of
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Application 13/517,917
polybutadiene with polyisoprene in tire compositions. That Ramos uses a
diblock copolymer to improve the ability to disperse the polybutadiene in the
polyisoprene does not detract from the fact that Ramos teaches that it was
known to use up to 40 phr polybutadiene in a tire composition.
Moreover, as found by the Examiner, claim 1 is open-ended and
would not exclude using Ramos’ diblock copolymer in the composition
(Ans. 5). Appellant may contend that the preferred amounts of
polybutadiene used in Ramos’ inventive composition are outside the range
of polybutadiene recited in claim 1 (Reply Br. 3—4). Ramos teaches,
however, a range of polybutadiene (i.e., 30 to 70 weight percent) that
overlaps with Appellant’s claimed range (1 to 40 phr) (Ramos col. 3,11. 43—
45). The overlapping range would have rendered obvious the amount of
polybutadiene required by claim 1. In re Peterson, 315 F.3d 1325, 1330
(Fed. Cir. 2003).
With regard to whether Ramos’ composition would have a problem
with the scorch safetytime as is the focus of the Moniotte reference, the
Examiner finds that Moniotte teaches compositions that include natural
rubber (NR), or styrene butadiene rubber (SBR), or blends of NR and SBR,
any of which can be used with one or more other rubbers, such as butadiene
rubber (BR) (Ans. 5). The Examiner finds that Ramos teaches a blend of
NR (polyisoprene) and BR (Ans. 5), which would reasonably have been
expected to have the same scorch safetytime issue as in Moniotte. Id.
Appellant contends that Moniotte does not indicate that the modified
composition as taught by Ramos would have the scorch safetytime issue
(Reply Br. 4). However, the Examiner’s finding is based upon Moniotte’s
and Ramos’ composition containing similar materials (NR and BR) in
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Application 13/517,917
conventionally used amounts as taught by Ramos. It would have been
reasonably expected that such a conventional composition would have
exhibited the same scorch problems that are addressed by Moniotte.
Appellant’s argument does not address the Examiner’s analysis based on
similarity in tire composition.
Appellant argues that Bergman is directed to forming gas barrier
layers on inner liners of inflated articles (App. Br. 11). Appellant contends
that one of ordinary skill in the art would not have looked to Bergman which
is directed to producing barrier layers for modifying Moniotte’s tire
composition that is directed to a rubber vulcanizate with increased scorch
safetytime (App. Br. 11—12). Appellant argues that the Examiner’s reason
for substituting Bergman’s terpene resin(e.g., polylimonene) for Moniotte’s
processing oil to improve processability and gas permeability without having
to incorporate traditional plasticizers lacks merit (App. Br. 12). Appellant
argues that Bergman’s use of terpene oil to improve processability is tied to
Bergman’s composition that uses a “platy filler” material that reduces
permeability of the layer and is not applicable to all rubber compositions. Id.
Appellant contends that there is no disclosure in Bergman that using only the
terpene resin in Moniotte would in any way reduce gas permeability absent
the use of the permeability reducing platy filler material (Reply Br. 6).
Appellant argues that contrary to the Examiner’s finding in the Answer,
Moniotte does not teach that carbon black or silica would function as
permeability reducing particles (Reply Br. 6). Appellant contends that
carbon black and silica are “undoubtedly” spherical in nature and not the
plate-like structure of Bergman’s “platy filler” that provides the gas
impermeability (Reply Br. 6-7). Appellant contends that the Examiner’s
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modification of Moniotte with Bergman’s teachings are based on
impermissible hindsight (App. Br. 13).
The Examiner finds that Moniotte and Bergman are each directed to
rubber compositions for tires comprising a rubber elastomer and particulate
filler (Ans. 6). The Examiner finds that there are several similarities
between Moniotte’s composition and Bergman’s composition. Id. The
Examiner finds that Moniotte’s silica material is similar to Bergman’s
silicate material and would function as a permeability-reducing particle. Id.
Based on these findings, the Examiner concludes that it would have been
expected that Moniotte’s composition as modified to include Bergman’s
terpene resin would have had similar properties and benefits, including
improved processability and reduced gas permeability (Ans. 6). The
Examiner finds that reduced gas permeability would be desirable in
Moniotte’s tire in order to prevent deflation of the tire (Ans. 6). The
Examiner further finds that Bergman’s teaching in 125 indicates that the
particles provide gas impermeability and the terpene resin imparts some
additional level of gas impermeability to the composition (Ans. 6—7).
Appellant’s arguments have not shown reversible error in the
Examiner’s combination of the teachings of Moniotte and Bergman.
Appellant do not dispute the Examiner’s finding that the terpene resin
imparts some additional level of gas impermeability to the tire composition
apart from the platy filler or that it would have been desirable to impart gas
impermeability to Moniotte’s tire composition (Reply Br. generally).
Appellant proffers no evidence to support the argument that Moniotte’s
silica and carbon black are spherical and not plate-like filler as required by
Bergman. Indeed, Appellant does not contest the Examiner’s finding that
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Moniotte’s silica reinforcing particles includes the silicate particles disclosed
in 125 of Bergman (Reply Br. 6—7). Moreover, Moniotte discloses that
“clay” may be used as an additive in the tire composition (Moniotte 120).
Bergman teaches that the “platy filler” include silicates and “various other
clay materials” (Bergman | 50). Bergman further teaches that the terpene
resin provides the advantage of reducing gas permeability through the
inflatable article, aids in processing the composition, and replaces traditional
oil based plasticizers that have an adverse effect on the permeability
characteristic of the layer (Bergman | 56). Therefore, using Bergman’s
terpene resin in Moniotte’s tire composition would have reasonably been
expected to impart improved gas impermeability to Moniotte’s tire
composition that may contain clay.
The preponderance of the evidence favors the Examiner’s finding and
conclusion that it would have been obvious to substitute Bergman’s terpene
resin for the plasticizing process oils in Moniotte in order to improve
processability of the composition and impart better gas impermeability to the
tire composition. We find that the Examiner has established the subject
matter of claim 1 would have been prima facie obvious over the combined
teachings of Moniotte, Bergman, Ramos and Garro. We now reconsider the
evidence of obviousness in light of Appellant’s evidence of unexpected
results.
Appellant contends that the evidence provided on pages 12 to 13 of
the Specification evince that tire compositions including the polylimonene
resin and the poly-thiosulfate anti-reversion agent have a dramatically better
tear resistance index (Example 2; Table 2) and are more resistant to chevron
cutting (Example 3; Table 3) (App. Br. 14).
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The Examiner finds that the evidence of unexpected results fails to
establish that the unexpected results occur over the range of polylimonene
(i.e., 5 to 25 phr) and for the range of poly-thiosulfate anti-reversion agent
(i.e., 1 phr to 6 phr) (Ans. 7). The Examiner further finds that the showing
in the Specification is limited to a single, commercially available poly­
thiosulfate anti-reversion agent falling within the formula recited in claim 1.
Id. In other words, the evidence proffered is not commensurate in scope
with the claimed invention.
Appellant cites In re Kao, 639 F.3d 1057 (Fed. Cir. 2011) for the
proposition that applicant is not required to test every embodiment within
the scope of the claims as long as applicant tests one embodiment and
provides a basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner (Reply Br. 8). Although
Appellant contends that the showing in Tables 2 and 3 of the Specification
“provide adequate basis to support the scope of claim 1,” no evidence or
argument is made that other examples outside the showing in Tables 2 or 3
would have been expected to behave in the same manner (Reply Br. 9). On
this record, Appellant’s evidence of unexpected results fails to overcome the
prima facie case of obviousness established by the Examiner.
CLAIM 21
Claim 21 depends from claim 1 and requires that “wherein the cross-
linkable rubber composition includes no SBR [styrene-butadiene rubber].”
Appellant argues that Moniotte does not disclose or suggest a rubber
composition as in claim 21 (App. Br. 16). Appellant contends that Moniotte
does not teach or suggest a tire composition that includes the required
amounts of polyisoprene and polybutadiene (BR) but no styrene butadiene
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Application 13/517,917
(SBR). Id. Appellant argues that Ramos teaches blends of polybutadiene
and polyisoprene with a diblock copolymer and thus, does not cure the
deficiencies of Moniotte. Id.
Appellant’s arguments are unpersuasive for similar reasons discussed
above with regard to claim 1 and the Ramos reference. Moreover, Appellant
does not dispute the Examiner’s finding that Moniotte teaches that natural
rubber (NR) may be used in combination with other rubbers, such as
butadiene (Ans. 5). Ramos teaches a conventional tire composition that
includes polyisoprene and up to 40 phr polybutadiene. Accordingly, the
teachings of Moniotte and Ramos would have suggested a suitable tire
composition would have included polyisoprene and polybutadiene without
styrene butadiene rubber (SBR).
On this record, we affirm the Examiner’s § 103 rejection of claims 1,
2, 6-13, 18, and 21 over Moniotte in view of Garro, Ramos and Bergman.
DECISION
The Examiner’s decision 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)(l)(iv).
ORDER
AFFIRMED
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