SUMITOMO RUBBER INDUSTRIES LTD.

Patent Trials and Appeals Board

Mar 29, 2022

2022000596 (P.T.A.B. Mar. 29, 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. 15/767,964 04/12/2018 Ryo MASHITA 1403-0469PUS1 1802 2292 7590 03/29/2022 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 03/29/2022 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 2022-000596 Application 15/767,964 Technology Center 1700 BEFORE ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and JEFFREY R. SNAY, Administrative Patent Judges. FRANKLIN, 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 9-42. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sumitomo Rubber Industries, LTD. Appeal Br. 1. Appeal 2022-000596 Application 15/767,964 2 CLAIMED SUBJECT MATTER Claim 9 is illustrative of Appellant’s subject matter on appeal and is set forth below (with text in bold for emphasis): 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 glass transition temperature of -20°C or lower, 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. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Hardy et al. (“Hardy”) US 2016/0237259 A1 Aug. 18, 2016 REJECTION Claims 9-42 are rejected under U.S.C. § 103 as being unpatentable over Hardy. Appeal 2022-000596 Application 15/767,964 3 OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse the Examiner’s rejection on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. We refer to the Examiner’s statement of the rejection set forth on pages 2-5 of the Final Office Action. Therein, the Examiner relies upon Hardy for teaching certain claim elements, and recognizes that Hardy is silent about the properties recited in the claim recitation below: 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 glass transition temperature of -20°C or lower Final Act. 2. The Examiner then states that the claimed properties associated with the low density region and void portion can be achieved using certain kneading times and temperatures according to paragraph 44 of the Specification and Table 3 of the Specification. Final Act. 2-3. The Examiner finds that Hardy discloses an exemplary composition that is Appeal 2022-000596 Application 15/767,964 4 “extremely similar” to that taught by Appellant in Appellant’s Table 3 (Table 3 shows data for Examples 14-16). Final Act. 3. The Examiner finds that “[g]iven the extreme similarity in kneading temperatures and the express disclosure to use kneading times as high as 15 minutes, it reasons that a wide variety of composition[s] taught by Hardy would demonstrate properties in accordance to the claimed invention.” Final Act. 3. In other words, the Examiner finds that the claimed properties are inherent in Hardy. Appellant explains that the kneading conditions are applied to Examples 14 to 16 while using the particular chemicals listed in paragraph 113 of the Specification, for achieving the volumes of a low density region and a void portion. Appeal Br. 13. Appellant states that if different styrene-butadiene rubbers (SBR), different butadiene rubber (BR), or different additives are employed other than the chemicals of the present Specification, or different kneading time from that in the present Specification, then the claimed properties are not achieved. Appeal Br. 13. Appellant refers to the Declaration by Ryo Mashita (signed on May 12, 2021 and filed on May 13, 2021). Appeal Br. 14-15. Therein, the closest examples of Hardy (Examples 3 and 7) are compared with Appellant’s Examples 14-16 of Appellant’s Table 3. It is stated (in section (3-1) on page 3 of this Declaration) that the kind and amount of ingredients are not identical between Examples 14-16 and the closest examples of Hardy. Appeal Br. 14. We are persuaded by Appellant’s position in this regard. Contrary to the Examiner’s position, it cannot be said with certainty that the tread composition ingredients of Hardy are identical or substantially identical to that used by Appellant in making the tread product based upon Appeal 2022-000596 Application 15/767,964 5 the evidence discussed in Appellant’s Appeal Brief. 2 In fact, the Examiner states that Hardy’s exemplary tread composition does not achieve the claimed low density region and void portion. Ans. 3. This undermines the inherency position taken in the rejection. Furthermore, it appears as though the Examiner believes that only the kneading times and temperatures need be substantially the same. Final Act. 2-3. Ans. 3-5. However, as Appellant points out, the ingredients must also be substantially the same in order to achieve the claimed properties. Appeal Br. 13. We reiterate that this point made by Appellant is not adequately addressed by the Examiner in the record. In view of the above, we reverse the rejection. CONCLUSION We reverse the Examiner’s decision. 2 We note that aside from the specific Hardy examples in the aforementioned Declaration, a case similarly has not been made as to how any of the other relied-upon teachings of Hardy indicate that identical or substantially identical compositions are used in the method of making the tread of Hardy, such that the properties are inherent in Hardy. We note that an examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure 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.”). Appeal 2022-000596 Application 15/767,964 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9-42 103 Hardy 9-42 REVERSED