Sumitomo Rubber Industries, Ltd.

Patent Trials and Appeals BoardNov 29, 2021

2021002996 (P.T.A.B. Nov. 29, 2021)

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. 16/340,000 04/05/2019 Shuichiro ONO 019600-SR0006 8242 78198 7590 11/29/2021 Studebaker & Brackett PC 8255 Greensboro Drive Suite 300 Tysons, VA 22102 EXAMINER SCOTT, ANGELA C ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 11/29/2021 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): info@sbpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte SHUICHIRO ONO and SUBARU TOYA ________________ Appeal 2021-002996 Application 16/340,000 Technology Center 1700 ________________ Before KAREN M. HASTINGS, GEORGE C. BEST, and MERRELL C. CASHION, Jr., Administrative Patent Judges. HASTINGS, Administrative Patent Judge. CASHION, Administrative Patent Judge, dissenting. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–10. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest of record in this application as Sumitomo Rubber Industries, Ltd. (Appeal Br. 2). Appeal 2021-002996 Application 16/340,000 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter: 1. A pneumatic tire, comprising a tread, the tread comprising blocks having an average sipe density of 1.0 cm/cm2 or higher and an average height of 0.6 to 2.0 cm, the blocks comprising a rubber composition that comprises a rubber component that includes natural rubber and/or polyisoprene rubber and polybutadiene rubber at concentrations such that the rubber composition has a tan δ at 100°C of 0.179 or less as determined at an initial strain of 10%, a dynamic strain of 2%, and a frequency of 10 Hz; and a ratio of a modulus at 100°C to a modulus at room temperature of 69% or greater as determined in accordance with JIS K625 l:2010, the rubber composition further comprising: silica in an amount of 15 parts by mass or more and 100 parts by mass or less per 100 parts by mass of the rubber component, carbon black in an amount of 60 parts by mass or less per 100 parts by mass of the rubber component, sulfur in an amount of 3 parts by mass or less per 100 parts by mass of the rubber component, and a paraffin wax. (Appeal Br. Claims Appendix 14). Independent claim 5 is directed to a rubber composition for tires, reciting a rubber component having the same properties and composition as that recited in claim 1. Appeal 2021-002996 Application 16/340,000 3 REFERENCES The Examiner relies upon the prior art listed below: Name Reference Date Mihara US 2011/0144236 A1 June 16, 2011 Sueyoshi US 2015/0336430 A1 Nov. 26, 2015 Piffard WO 2013/032468 A2 March 7, 2013 REJECTION Claims 1–4 are rejected under 35 U.S.C. § 103 as being unpatentable over Piffard in view of Sueyoshi and Mihara. Final Act. 2–4. Claims 5–10 are rejected under 35 U.S.C. § 103 as being unpatentable over Piffard in view of Sueyoshi. Final Act. 4–5. OPINION The Examiner has the initial burden of establishing a prima facie case of obviousness of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Claims 1 and 5 each require that the rubber composition has “a tan δ at 100°C of 0.179 or less as determined at an initial strain of 10%” and “a ratio of a modulus at 100°C to a modulus at room temperature of 69% or Appeal 2021-002996 Application 16/340,000 4 greater.” There is no dispute that the applied prior art does not describe these properties. The Examiner’s position is that since the applied prior art teaches or suggests all of the recited components of the rubber composition, these properties would be “implicitly achieved” (Ans. 3; Final Act. 3). The Examiner also explicitly states that optimization to achieve these properties is not needed, and that the Examiner is not relying upon the properties being known result effective variables that would have been obvious to optimize (Ans. 3). We are mindful that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the burden on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, however, Appellant points out that the Specification’s Tables “demonstrate that a rubber composition” having the recited ingredients does not necessarily have the recited properties (Reply Br. 3). Appellant explains that all the comparative examples of Table 1 have all of the recited components of claims 1 and 5, yet do not achieve the desired properties, in contrast to inventive Examples 1 to 7 of Table 2 (Reply Br. 3–4; see also Appeal Br. 8–9). A preponderance of the evidence supports Appellant’s position that the Examiner has not adequately explained how the Appeal 2021-002996 Application 16/340,000 5 Piffard/Mihara combination teaches or suggests the disputed features claimed in light of this evidence.2 In light of these circumstances, a preponderance of the evidence supports Appellant’s position that the Examiner has not pointed to any evidence to adequately establish that the applied prior art teaches or suggests the claimed product having the recited properties. On the record before us, the Examiner has not shown that each and every limitation of the claim is either described or suggested by the prior art or would have been obvious based on the knowledge or inferences and creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). The Examiner does not rely upon any other rationale to cure the above noted deficiency. Accordingly, we reverse the § 103 rejections on appeal. 2 We are mindful that the Examiner stated “the instant specification does not teach how to achieve these properties except by making the claimed composition” and that “there is no teaching as to how to obtain the claimed properties with only the claimed ingredients” (Final Act. 4). However, there is no rejection of the claims based on a lack of enablement before us. It is noted that the Specification states that these properties “may be controlled by varying the types and amounts of chemicals” used (Spec. ¶ 21). Appeal 2021-002996 Application 16/340,000 6 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4 103 Piffard, Sueyoshi, Mihara 1–4 5–10 103 Piffard, Mihara 5–10 Overall Outcome 1–10 REVERSED Appeal 2021-002996 Application 16/340,000 7 UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte SHUICHIRO ONO and SUBARU TOYA ________________ Appeal 2021-002996 Application 16/340,000 Technology Center 1700 ________________ CASHION, Administrative Patent Judge, dissenting. I respectfully dissent from my colleagues’ decision reversing the rejections of claims 1–10 under 35 U.S.C. § 103. In my opinion, Appellant has not identified a reversible error in the Examiner’s determination of obviousness. Specifically, Appellant’s reliance on the Specification’s Tables 1 and 2 is insufficient to overcome the Examiner’s prima facie case of obviousness. Therefore, I would affirm the Examiner’s prior art rejections. My reasoning follows. Before I address the issue of the showing Appellant relies upon to overcome a prima facie case of obviousness, I must first determine if there is reversible error in the Examiner’s obviousness determination. Claim 1 recites a pneumatic tire with a tread including blocks comprising a rubber composition that comprises a rubber component that includes natural rubber and/or polyisoprene rubber and polybutadiene rubber at concentrations such that the rubber composition has a tan δ at 100°C of Appeal 2021-002996 Application 16/340,000 8 0.179 or less as determined at an initial strain of 10%, a dynamic strain of 2%, and a frequency of 10 Hz; and a ratio of a modulus at 100°C to a modulus at room temperature of 69% or greater as determined in accordance with JIS K625 l:2010.3 The Examiner finds Piffard discloses a diene rubber composition comprising natural rubber, polyisoprene rubber, polybutadiene rubber, and mixtures thereof. Final Act. 2; Piffard ¶¶ 50–51. The Examiner also finds Piffard teaches the diene rubber composition further comprises 75 parts by weight of silica and from 0.5 to 10 phr of sulfur. Final Act. 2; Piffard’s Table 1, ¶ 76. The Examiner further finds that carbon black is not a necessary component because the claim language for this component of “an amount of 60 parts by mass or less per 100 parts by mass of the rubber component” include no amount (0 parts). Final Act. 3. Appellant does not dispute these findings. See generally Appeal and Reply Briefs. Nor does Appellant argue that the noted amounts do not fall within the claimed amounts for those components. See generally Appeal and Reply Briefs. The Examiner finds Piffard does not teach the use of paraffin wax or the specific tan δ and ratio of a modulus at 100°C to a modulus at room temperature properties claimed. Final Act. 2–3. The Examiner finds Mihara teaches the claimed paraffin wax as a known additive for a diene rubber composition. Final Act. 3; Mihara Table 3. Given that Piffard teaches the use of wax in the disclosed compositions, the Examiner determines it would 3 Appellant argues independent claims 1 and 5 generally together. See generally Appeal Br. Therefore, I limit discussion to independent claim 1 with the understanding that the discussion also applies to independent claim 5. Appeal 2021-002996 Application 16/340,000 9 have been obvious to one of ordinary skill in the art to substitute Piffard’s wax for Mihara’s paraffin wax and reasonably expect that the modified diene rubber composition would be suitable for making Piffard’s tires. Final Act. 3. The Examiner finds Piffard does not teach blocks having an average height of 0.6 to 2.0 cm. The Examiner relies on Sueyoshi as teaching it was known to provide tires with tread blocks with a height of from 12 to 18 mm (1.2 to 1.8 cm). Final Act. 3; Sueyoshi ¶ 78. Sueyoshi teaches the disclosed block designs as improving the self-cleaning ability to remove mud from the tire grooves during traveling. Sueyoshi ¶ 54. The Examiner explains that improving traction on mud and on snow are similar problems as both are wet and slick. Ans. 5–6. The Examiner determines that it would have been obvious to one of ordinary skill in the art to modify Piffard’s tire by providing blocks having the dimensions Sueyoshi teaches to produce a tire with improved traction performance. Final Act. 3. In determining that the claimed subject matter would have been obvious, the Examiner explains that the prior art rubber composition would possess the claimed properties (tan δ and ratio of a modulus at 100°C to a modulus at room temperature) because the references teach all of the claimed ingredients and amounts, and a substantially similar process. Final Act. 3–4; Ans. 3. Appellant argues Mihara discloses a rubber composition that contains, among other components, 1 % paraffin wax for only rubber compositions containing diene-based rubber as an essential component and such a component would detrimentally affect the ice and snow tracking properties of Piffard’s tire. Appeal Br. 9–10. Appeal 2021-002996 Application 16/340,000 10 Appellant’s argument does not identify reversible error in the Examiner’s determination of obviousness because Appellant does not address the rejection that the Examiner presents. Ans. 5. As the Examiner finds, both Piffard and Mihara teach the use of wax components in tire rubber compositions. Final Act. 3; Piffard ¶ 79; Mihara Table 3. Given the noted disclosures, there is a reasonable basis for one skilled in the art to use Mihara’s paraffin wax as the wax additive in Piffard’s diene rubber compositions and still reasonably expect that the modified diene rubber composition would be suitable for making Piffard’s tires. Final Act. 3; In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.”). While Appellant argues that paraffin wax would detrimentally affect the ice and snow tracking properties of Piffard’s tire (Appeal Br. 9–10), Mihara discloses no such detrimental effect on the disclosed tires due to the addition of paraffin wax. Mihara discloses that the compounding agents listed in Table 3 (which includes paraffin wax) were added as a common formulation to the inventive and comparative examples listed in Tables 1 and 2, respectively. Mihara ¶ 37. In terms of wet grip performance and ice and snow grip performance, Mihara only discloses that Comparative Example 2 is inferior in both of these categories. Mihara ¶ 54. Further, Mihara attributes the inferior performance to the compounding of the silica 3 that has a CTAB specific surface area of 180 m2/g. Mihara ¶ 54. That is, Mihara does not attribute the deficient performance to the paraffin wax. Thus, there is no evidence that Mihara’s amount of paraffin wax would be Appeal 2021-002996 Application 16/340,000 11 detrimental to the ice and snow tracking properties of Mihara’s tires or Piffard’s tires. Appellant’s reliance on JP2014-133846 to support the argument that the addition of paraffin wax to tire rubber composition results in disadvantageous performance on snow and ice is also unavailing. Appeal Br. 10. Appellant does not direct us to any portion of this reference that would lead one skilled in the art to conclude that Mihara’s 1% paraffin wax is an amount large enough to lead to deficient tire performance on snow and ice (see Remarks dated September 10, 2020, 6 (quoting reference translation at page 1)). Thus, Appellant fails to explain sufficiently why one skilled in the art, using no more than ordinary creativity, would not have arrived at the claimed invention from the combined teachings of the cited art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). Appellant argues that one skilled in the art would not combine the teachings of Piffard and Sueyoshi because Sueyoshi is concerned with tire performance in mud terrain and not tire performance in ice and snow. Appeal Br. 11. According to Appellant, it would have been unreasonable to expect a person of skill in the art to apply Sueyoshi’s block height optimized to prevent mud blockage to Piffard’s tire intended for ice performance or snow performance. Appeal Br. 11. Appellant contends the characteristics of a rubber composition that promotes a tire’s mud performance are different from those used to improve ice performance and snow performance. Appeal Appeal 2021-002996 Application 16/340,000 12 Br. 11–12. In the Reply Brief, Appellant argues that mud is different from ice and snow because of the temperature at which they are formed. Reply Br. 7. Appellant contends that a tire that is equipped to perform at below 0°C temperatures to remove ice would not necessarily perform at temperatures above 0°C to remove mud. Reply Br. 7. Appellant’s arguments are not persuasive of reversible error in the Examiner’s determination of obviousness. The Examiner relies on Sueyoshi as teaching it was known to provide tires with tread blocks with a height of from 12 to 18 mm (1.2 to 1.8 cm). Final Act. 3; Sueyoshi ¶ 78. The Examiner explains that improving traction on mud and on snow are similar problems as both are wet and slick. Ans. 5– 6. The Examiner reasons that producing a tire that prevents mud from clogging treads would also be beneficial in preventing snow from clogging the tread. Ans. 5. Thus, the Examiner has provided a reasonable technical explanation of why one skilled in the art would have modified Piffard thread blocks by incorporating the Sueyoshi’s block height and reasonably expect that the modified tire would exhibit acceptable performance when used on snow or ice. Appellant’s arguments fails to address adequately the Examiner’s technical explanation. While Appellant points to the differences between the road hazards, Appellant does not explain sufficiently why the characteristics of Sueyoshi’s blocks would be unsuitable for tires used on snow and ice. Nor does Appellant provide objective evidence in support of these arguments. Appellant argues that the cited references do not disclose or suggest the properties of the rubber composition (tan δ and ratio of a modulus at Appeal 2021-002996 Application 16/340,000 13 100°C to a modulus at room temperature) recited in claim 1. Appeal Br. 7– 8. It is well settled that the mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability. Cf. In re Skoner, 517 F.2d 947, 950 (CCPA 1975). As my colleagues recognize, where the Examiner establishes a reasonable belief that the property or characteristic recited in the claims would have been inherent to the product or process, the burden of proof shifts to Appellant to show that this characteristic or property is not possessed by the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). According to the Specification, “[t] he tan δ and moduli of the rubber composition may be controlled by varying the types and amounts of chemicals, particularly rubber components, fillers, or vulcanizing agents, used in the rubber composition.” Spec. ¶ 21. The Examiner finds the combined teachings of Piffard and Mihara teach a diene rubber composition comprising the claimed natural rubber, polyisoprene rubber, polybutadiene rubber, and mixtures thereof. Final Act. 2; Piffard ¶¶ 50–51. The Examiner also finds Piffard teaches the diene rubber composition comprises the claimed further components silica, sulfur, and paraffin wax. Final Act. 2–3; Piffard’s Table 1, ¶ 76; Mihara Table 3. The Examiner finds that the product is a result from a process that is substantially similar to Appellant’s process. Final Act. 3–4; Ans. 3. Appellant does not dispute these findings by the Examiner. See generally Appeal and Reply Briefs. Nor does Appellant argue that the noted amounts do not fall within the claimed amounts for those components. See generally Appeal 2021-002996 Application 16/340,000 14 Appeal and Reply Briefs. In view of these findings, the Examiner has established a reasonable belief that the properties or characteristics recited in the claims would have been inherent to the product or process. Thus, the burden is now properly shifted to Appellant to show that this characteristic or property is not possessed by the prior art. Appellant argues that data from Tables 1 and 2 of the Specification demonstrate unexpected results for the inventive rubber compositions having the claimed tan δ and ratio of a modulus at 100°C to a modulus at room temperature. Appeal Br. 8. Appellant also relies on this evidence to show that the prior art rubber compositions do not possess the characteristics of the claimed rubber composition. Reply Br. 3. When evidence of secondary considerations is submitted, the Board begins anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). The burden of establishing unexpected results rests on the Appellant. Appellant may meet this burden by establishing that the difference between the claimed invention and the closest prior art is an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellant must establish the unexpected results with factual evidence; attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a showing of unexpected results with evidentiary support must be 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); see also In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). Appeal 2021-002996 Application 16/340,000 15 After consideration of Appellant’s evidence, the data from Tables 1 and 2 of the Specification are insufficient to show nonobviousness. Ans. 4– 5. First, while Appellant presents eight comparative examples, it is not clear that Appellant’s Tables 1 and 2 leads to a comparison to the closest prior art (Piffard). Second, focusing on the recited rubber composition further components silica, carbon black and sulfur, the inventive examples presented in Table 1 only test one value for silica (30) and carbon black (38) and two values for sulfur (1.0 and 1.25). Given the broad range of amounts recited in the claim for each of these components, Appellant has not explained why the limited number of examples tested, having only a limited number of values for the further components, is representative of the broad scope of the claims. In explaining the unexpected results, Appellant argues that the Specification’s Tables “demonstrate that a rubber composition” having the recited ingredients does not necessarily have the recited properties. Reply Br. 3. This argument is not persuasive. The issue here is whether the prior art rubber composition possesses the characteristics of the claimed rubber composition. As the Examiner finds, Piffard’s also describes a diene rubber composition comprising the claimed chemical components. Appellant has not established adequately that the Specification’s Tables compare the claimed composition against the closest prior art (Piffard). Nor does Appellant explain why the comparative Appeal 2021-002996 Application 16/340,000 16 rubber composition examples having the recited ingredients do not necessarily have the recited properties.4 Thus, on this record, Appellant has not explained adequately why one of ordinary skill in the art would have found the evidence relied upon unexpected or why that evidence is reasonably commensurate in scope with the claims. Nor does Appellant explain how the data from Tables 1 and 2 show that the prior art diene rubber composition does not possess the characteristics of the claimed invention. For the reasons I present above, I would affirm the Examiner’s prior art rejections of claims 1–10. 4 The Specification discloses the broadest concentrations for these components to be preferably 10% by mass or more for natural rubber and preferably 10% by mass or more for polybutadiene rubber, with all amounts based on 100% by mass of the rubber component. Spec. ¶¶ 21, 28, 29. The Specification does not describe an amount for the polyisoprene rubber, which claim 1 recites as an optional component. See generally Spec. The data from Tables 1 and 2 of the Specification lists inventive examples comprising 40% natural rubber and 36–54% polybutadiene rubber with the comparative examples comprising 40– 45% natural rubber and 55–60 polybutadiene /modified polybutadiene rubber. Given this data, the disclosure can be taken as further evidence that the data from Tables 1 and 2 of the Specification are insufficient to overcome a prima facie case of obviousness.