Ex Parte Merino Lopez et al

Patent Trial and Appeal Board

Oct 10, 2018

13386210 (P.T.A.B. Oct. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/386,210 04/20/2012 Jose Merino Lopez
153967 7590 10/11/2018
FITZPATRICK CELLA HARPER & SCINTO (MICHELIN)
1290 A venue of the Americas
NEW YORK, NY 10104-3800
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
03161.002299. 6730
EXAMINER
CHANG, JOSEPHINE L
ART UNIT PAPER NUMBER
1768
MAIL DATE DELIVERY MODE
10/11/2018 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 JOSE MERINO LOPEZ, SEBASTIEN RIGO,
MICHEL AHOUANTO, FREDERIC PIALOT,
and DAMIEN FOMBELLE
Appeal2017-008410
Application 13/3 86,210
Technology Center 1700
Before TERRY J. OWENS, RAEL YNN P. GUEST, and
CHRISTOPHER L. OGDEN Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 16-20 and 26-29. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a pneumatic tire having a built-in self-sealing
layer. Claims 16 and 20 are illustrative:
16. A pneumatic tire with a built-in self-sealing layer, the tire
compnsmg:
an outer rubbery tread;
a carcass reinforcement;
Appeal2017-008410
Application 13/386,210
a gastight layer located at an inside position relative to
the carcass reinforcement;
a separable protective layer positioned innermost; and
a self-sealing layer adjacent to the separable protective
layer and located at an inside position relative to the gastight
layer,
wherein the separable protective layer is a thermoplastic
film that includes at least a fluorinated ethylene-propylene
(PEP) copolymer, the thickness of the film being between 7 and
30 micrometers, and
wherein the self-sealing layer comprises at least one
thermoplastic styrene (TPS) elastomer and more than 200 phr
of an extender oil of said elastomer, with phr signifying parts
by weight per 100 parts of elastomer.
20. A pneumatic tire with a built-in self-sealing layer, the tire
compnsmg:
an outer rubbery tread;
a carcass reinforcement;
a gastight layer located at an inside position relative to
the carcass reinforcement;
a separable protective layer positioned innermost; and
a self-sealing layer adjacent to the separable protective
layer and located at an inside position relative to the gastight
layer,
wherein the separable protective layer is a thermoplastic
film that includes at least a fluorinated ethylene-propylene
(PEP) copolymer, the thickness of the film being between 7 and
30 micrometers, and
wherein the self-sealing layer includes at least:
(a) greater than 70 phr of natural rubber,
(b) 45 to 7 5 phr of a hydrocarbon resin having a
softening point above 50°C,
( c) 10 to 30 phr of a liquid polybutadiene
plasticizer having a glass transition temperature
below -20°C, and
( d) from Oto less than 30 phr of a filler,
with phr signifying parts by weight per 100 parts of
elastomer.
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Appeal2017-008410
Application 13/386,210
Majmndar (Majmndar '967)
Sanda
Majmndar (Majmndar '557)
Majmndar (Majmndar '482)
Albert 1
The References
US 2004/0103967 Al
US 2006/0194898 Al
US 7,419,557 B2
US 2009/0084482 Al
US 2010/0051158 Al
The Rejections
June 3, 2004
Aug. 31, 2006
Sept. 2, 2008
Apr. 2, 2009
Mar. 4, 2010
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
claims 16-19 and 26-29 over Majumdar '482 in view ofMajumdar '967 and
Albert, as evidenced by Majumdar '557, and claim 20 over Majumdar '482
in view of Majumdar '967 and Sanda.
OPINION
We affirm the rejections.
The Appellants argue claims 16-19 and 26-29 as a group
(App. Br. 17). We, therefore, limit our discussion to one claim in that group,
i.e., claim 16, and claim 20. Claims 17-19 and 26-29 stand or fall with
claim 16. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012). Claims 16 and 20 require
a pneumatic tire comprising a self-sealing layer adjacent to a separable
protective layer which is a thermoplastic film including at least a fluorinated
ethylene-propylene (PEP) copolymer.
Majumdar '482 discloses a pneumatic tire comprising a self-sealing
layer (precursor sealant layer 23) adjacent to a separable protective layer
(removable barrier layer 24) (i1i116, 17; Fig. 2). The self-sealing layer is
exemplified as a polyurethane or a butyl-based rubber, but generally can be
any non-flowing sealant material known in the art (i1i119, 20, 22). The
1 The Examiner relies upon Albert as an English language equivalent of
FR 2 910 478 Al (filed June 27, 2008) (Ans. 2).
3
Appeal2017-008410
Application 13/386,210
removable barrier layer (24) is a thermoformable film exemplified as nylon
or a blend of nylon and rubber (i-f 17).
Majumdar '967 discloses a pneumatic tire comprising a self-sealing
layer which typically is a butyl/polyisobutylene rubber, and a separable
protective layer (barrier film (20) (i1i1 43, 80). The barrier film (20) is a
thermoformable film and can be a fluorinated lower olefin having from 2 to
4 carbon atoms ( e.g., a fluorinated ethylene-propylene (PEP) copolymer),
poly(mehylpentene ), or an unoriented or partially oriented polyamide such
as nylon (i1i1 17, 31 ), and is placed on any virgin interior or exterior tire
surface to prevent it from being contacted by release agent applied to the tire
(i1i1 4--6, 30, 31, 95).
Establishing a prima facie case of obviousness requires showing that
one of ordinary skill in the art would have had both an apparent reason or
suggestion to modify the prior art and predictability or a reasonable
expectation of success in doing so. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007); In re Vaeck, 947 F.2d 488,493 (Fed. Cir. 1991).
The Appellants argue that one of ordinary skill in the art would not
have been motivated to combine Majumdar '482 and Majumdar '967
because 1) Majumdar '482 's precursor sealant layer (23) differs chemically
and functionally from Majumdar '967's rubber innerliner (16), 2) Majumdar
did not include PEP from the Majumdar '967 patent application in the
later-filed Majumdar '482 application, and 3) Majumdar '557 disparages
Majumdar '967's removable films (App. Br. 9-13, 15; Reply Br. 2, 3, 5). 2
2 Majumdar '557 states that "[w]hile the [Majumdar '967] protective barrier
initially sticks well to the green innerliner, it has a tendency to separate or
shift during the high pressure lining cement spray and/ or during shaping by
4
Appeal2017-008410
Application 13/386,210
The tire surfaces to which Majmndar '967's barrier film (20) can be
applied are not limited to the rubber innerliner (16) but, rather, include any
interior or exterior virgin surface (i1i16, 30). Because Majumdar '482's
precursor sealant layer (23) is a virgin surface and Majumdar '967's tire can
include a self-sealing layer (80), 3 one of ordinary skill in the art would have
been motivated to use Majumdar 967's barrier film (20) as Majumdar '482's
removable barrier layer (24) applied to Majumdar '482 's precursor sealant
layer (23). Whether Majumdar included PEP in the Majumdar '482
application is irrelevant because obviousness is determined based upon what
would have been obvious to one of ordinary skill in the art, not what an
inventor chose to include in a patent application. Majumdar '557's
discussion ofMajumdar '967's barrier film (20)'s adhesion (col. 2, 11. 37-
42) pertains to adhesion to Majumdar '967's rubber innerliner (16), not to
Majumdar '482's precursor sealant layer (23) which, Majumdar '482 states,
can be gel-like and tacky (i-f 20).
Regarding predictability or reasonable expectation of success, the
Appellants argue that one of ordinary skill in the art would not have been
able to predict that Albert's or Sanda's pneumatic tire self-sealing
compositions relied upon by the Examiner with respect to claims 16 and 20,
respectively (Ans. 3, 5), could be used with Majumdar '967's barrier
layer (20) because neither Albert nor Sanda discloses that the self-sealing
the curing bladder, and thus, may not completely prevent contamination of
the innerliner surface" (col. 2, 11. 37--42).
3 Majumdar '967 does not disclose whether the self-sealing layer (80), like
Majumdar '482's precursor sealing layer (23) (i-f 18), is applied before the
tire is cured, in which case covering it with the barrier film (20) would shield
it from release agent, or after the tire has been cured.
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Appeal2017-008410
Application 13/386,210
composition can be used with any separable protective layer, particularly
one containing PEP (App. Br. 10, 16; Reply Br. 6).
Majumdar '482's disclosure that generally any non-flowing sealant
material known in the art can be used with the removable barrier layer (24)
(i-f 16) would have indicated to one of ordinary skill in the art that Albert's or
Sanda's self-sealing composition can be used with Majumdar '482's
removable barrier layer (24) (i-f 17). Both that barrier layer and
Majumdar '967's barrier film (20) are a thermoformable film which is
conforming, non-elastomeric, non-memory, substantially inextensible at
ambient temperature, removable from the protected tire surface without
tearing into pieces, not fusable to itself when overlapped and heated to tire
cure temperature, and overlappable at its ends to form a pull tab for easy
removal (Majumdar '482 ,r,r 17, 18; Majumdar '967, Abstract; ,r 17). Due to
this similarity of properties ofMajumdar '482's removable barrier layer (24)
and Majumdar '967's barrier film (20) and Majumdar '482 's disclosure that
generally any non-flowing sealant material known in the art can be used
with the removable barrier layer (24) (i-f 17), one of ordinary skill in the art
would have had a reasonable expectation that Albert's and Sanda's
self-sealing layer can be used with Majumdar '967's barrier film (20). See
In re O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988) ("Obviousness does
not require absolute predictability of success .... For obviousness under
§ 103, all that is required is a reasonable expectation of success").
Moreover, Majumdar '967's PEP barrier film (20), compared to nylon
(Majumdar '482 ,r 17; Majumdar '967 i-f 31), provides the desirable benefit
of relatively clean separation from the surface to which it is applied
(Majumdar '967 ,r,r 72, 73).
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Appeal2017-008410
Application 13/386,210
Thus, we are not persuaded of reversible error in the rejections.
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 16-19 and 26-29
over Majumdar '482 in view of Majumdar '967 and Albert, as evidenced by
Majumdar '557, and claim 20 over Majumdar '482 in view of
Majumdar '967 and Sanda are affirmed.
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).
AFFIRMED
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