SUMITOMO RUBBER INDUSTRIES, LTD.

Patent Trials and Appeals Board

Mar 25, 2022

2022000585 (P.T.A.B. Mar. 25, 2022)

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. 15/767,900 04/12/2018 Ryo MASHITA 1403-0471PUS1 2760 2292 7590 03/25/2022 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1749 NOTIFICATION DATE DELIVERY MODE 03/25/2022 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYO MASHITA, HIROYUKI KISHIMOTO, and RYOTA KITAGO Appeal 2022-000585 Application 15/767,900 Technology Center 1700 Before JEFFREY T. SMITH, BRIAN D. RANGE, and JANE E. INGLESE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 9-40. 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 (2012). Appellant identifies the real party in interest as SUMITOMO RUBBER INDUSTRIES, LTD. Appeal Br. 1. Appeal 2022-000585 Application 15/767,900 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to “a pneumatic tire being excellent in abrasion resistance and a crosslinked rubber composition.” Spec. ¶ 7. In particular, the Specification discusses a desire for tires having good “breaking resistance and abrasion resistance.” Id. ¶¶ 2- 4. Claim 9 is the only independent claim on appeal. We reproduce claim 9 below while emphasizing a key recitation for resolving this appeal: 9. A pneumatic tire comprising: bead cores provided on a pair of right and left bead portions, respectively; a carcass ply extending from a crown portion to the both bead portions through both side wall portions and moored to the bead cores; an inner liner disposed at an inner side than the carcass ply in a direction of a tire diameter; and a tread disposed at an outer side than the carcass ply in a direction of a tire diameter and having a volume of the low density region of 35% or more at elongation by an applied stress of 1.5 MPa, a volume of the void portion of 7.5% or less at elongation by an applied stress of 3.0 MPa and a ratio of 40% by mass or more of a component having a weight- average molecular weight of not less than 1,000,000 in a molecular weight distribution measured by gel permeation chromatography, wherein the low density region is a region having a density of 0.1 to 0.8 time the density of a crosslinked rubber composition before the elongation, and wherein the void portion is a region having a density of 0 to 0.1 time the density of a crosslinked rubber composition before the elongation, 2 In this Decision, we refer to the Final Office Action dated January 15, 2021 (“Final Act.”), the Appeal Brief filed August 9, 2021 (“Appeal Br.”), and the Examiner’s Answer dated August 24, 2021 (“Ans.”). Appeal 2022-000585 Application 15/767,900 3 wherein the crosslinked rubber composition comprises a rubber component comprising two kinds of styrene-butadiene rubber, and butadiene rubber. Appeal Br. Claims App. (emphasis added). REJECTION AND REFERENCE The Examiner maintains the rejection of claims 9-40 under 35 U.S.C. § 103 as obvious over Hardy et al., US 9,938,398 B2, April 10, 2018. Final Act. 2; Ans. 3. OPINION The Examiner has the initial burden of establishing a prima facie case of obviousness 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). To resolve the issues before us on appeal, we focus on the Examiner’s findings and determinations that relate to the error Appellant identifies. The Examiner finds that “Hardy is silent with respect to a volume of the low density region and a volume of the void portion.” Final Act. 2. The Examiner finds that Hardy teaches that its method can involve as many as six mixing stages and that each stage can extend up to fifteen minutes. Id.; see also Hardy 16:29-30 (“The mixing can be effected in one stage or up to Appeal 2022-000585 Application 15/767,900 4 6 stages.”); 16:44-54 (suggesting mixing times between 1 to 15 minutes). Based on paragraph 44 of the Specification and Hardy disclosing an exemplary composition “that is extremely similar to that taught by Applicant in Table 3,” the Examiner determines that Hardy’s method involving overlapping mixing times and temperatures would “demonstrate properties in accordance to the claimed invention.” Final Act. 3. Appellant argues, among other things, that Hardy’s example comprises different materials than examples of the present invention. Appeal Br. 14-15. The Examiner does not persuasively dispute this point. Final Act. 3 (finding, without further explanation, that Hardy’s composition is “extremely similar”). Because of these different materials, Appellant further argues that “even if the rubber composition of Hardy was kneaded in the same manner as Examples 14, 15, or 16 of the present specification, a person having ordinary skill in the art could not assure that the rubber composition of Hardy would satisfy the requirements of the low density region and void portion of the present invention.” Appeal Br. 15. Our reviewing court has held that where “the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, the Examiner’s rejection is based on the premise that Hardy teaches or suggests a process substantially identical to the Specification’s process for creating the Table 3 products that meet claim 1’s low density region and void portion requirements. Final Act. 2-3. Spec. ¶¶ 123-124. The Specification’s process to reach the Table 3 products, however, involves different materials. The Examiner, thus, has not Appeal 2022-000585 Application 15/767,900 5 adequately established that the Specification’s process is substantially identical to Hardy’s process. The Examiner also relies on paragraph 44 of the Specification to reason “that tread compositions formed by 6 mixing stages, for example, or with individual mixing times as high as 15 minutes, for example, would necessarily demonstrate properties in accordance with the claimed invention.” Ans. 5. The Examiner’s reasoning overreads paragraph 44. Paragraph 44 states that to reach the low density and void portion recitations “it is necessary to make a crosslinked state in the rubber composition uniform.” Spec. ¶ 44. While the crosslinked state is necessary, paragraph 44 does not suggest that the stated uniformity is sufficient to reach the low density and void portion recitations. For example, temperature and composition might affect low density and void portions.3 The Examiner’s reliance on Paragraph 44, thus, does not persuasively establish that Hardy’s process would result in claim 1’s density and void recitations.4 3 Some evidence of record, if clarified, might further suggest that the use of different materials can result in products that do not meet the low density and void portion recitations. See September 19, 2019 Declaration of Ryo Mashita; Feb. 12, 2020 Declaration of Ryo Mashita. It is not clear from the Mashita declarations whether or not the comparative examples (not meeting the low density and void portion recitations) were made using the same mixing times and temperatures as Example 1. 4 The Examiner suggests that if kneading alone is not sufficient to reach claim 1’s properties, then an issue under 35 U.S.C. § 112 might arise. Ans. 5. The Examiner does not fully develop or support a 35 U.S.C. § 112 rejection as an alternative, and we do not address 35 U.S.C. § 112 at this time. We note that the Specification provides Examples 14 to 16 and provides information on the materials used for those examples. Spec. ¶¶ 123-124. Appeal 2022-000585 Application 15/767,900 6 For the reasons above, we do not sustain the Examiner’s rejection of claim 1. All other claims depend from claim 1, so we also do not sustain the rejection of those claims. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9-40 103 Hardy 9-40 REVERSED