Ex Parte Minagoshi et al

Patent Trial and Appeal Board

Jun 19, 2018

13981026 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/981,026 07/22/2013
127226 7590 06/21/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Akira Minagoshi
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.
5051-0259PUS1 7147
EXAMINER
CHANG, JOSEPHINE L
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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 AK.IRA MINAGOSHI and KENICHI UESAKA
Appeal2017-005300
Application 13/981,026
Technology Center 1700
Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 3-5. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 We cite the Specification ("Spec.") filed July 22, 2013; Final Office Action
("Final Act.") dated December 30, 2015; Appellants' Appeal Brief ("Br.")
dated June 24, 2016; and Examiner's Answer ("Ans.") dated October 4,
2016.
2 Appellants identify Sumitomo Rubber Industries, Ltd. as the real party in
interest. Br. 3.
Appeal2017-005300
Application 13/981,026
BACKGROUND
The invention relates to a rubber tire composition. Spec. ,r 1. Claim
I-the sole independent claim-reads:
1. A rubber composition for a tire, said rubber
composition comprising:
(i) a rubber component comprising 20 to 90% by
mass, based upon 100% by mass of the rubber component, of a
modified styrene butadiene rubber that contains a constitutional
unit derived from at least one member selected from the group
consisting of
3-(2-azetidinoethyl )styrene,
4-(2-azetidinoethyl)styrene,
3-(2-pyrro lidinoethyl )styrene,
4-(2- pyrrolidinoethyl)styrene,
3-(2-piperidinoethyl )styrene,
4-(2-piperidinoethyl )styrene,
3-(2-hexamethyleneiminoethyl)styrene, and
4-(2-hexamethy leneiminoethyl )styrene,
(ii) 50 to 120 parts by mass, per 100 parts by mass of
the rubber component, of silica with a nitrogen adsorption
specific surface area of 150 to 200 m2/g, and
(iii) 6 to 10 parts by mass, per 100 parts by mass of the
silica, of at least one silane coupling agent selected from the
group consisting of a silane coupling agent represented by the
following formula (1) and a silane coupling agent comprising
linking units A represented by the following formula (2) and
linking units B represented by the following formula (3):
R21
j
R22 '""'""'"Si"'""""R2,1----SH
I .Fl R::.,)
2
tn \ l /
Appeal2017-005300
Application 13/981,026
wherein R21 represents a group represented by -O-(R25-0)cR26
in which t pieces of R25 are the same or different and each
represents a branched or unbranched Cl-C30 divalent
hydrocarbon group; R26 represents a branched or unbranched
Cl-C30 alkyl group, a branched or unbranched C2-C30 alkenyl
group, a C6-C30 aryl group, or a C7-C30 aralkyl group; and t
represents an integer of 1 to 30; R22 and R23 are the same or
different and each represent a group as defined for R21 , a
branched or unbranched Cl-Cl2 alkyl group, or a group
represented by -O-R27 in which R27 represents a hydrogen atom,
a branched or unbranched Cl-C30 alkyl group, a branched or
unbranched C2-C30 alkenyl group, a C6-C30 aryl group, or a
C7-C30 aralkyl group; and R24 represents a branched or
unbranched Cl-C30 alkylene group;
and
SH
I
> I
( ' \_ . 2!1
·······\··()········S·1········»()~R }- (3)
I y
()
1,)8 It~
3
Appeal2017-005300
Application 13/981,026
wherein x is an integer of O or greater; y is an integer of 1
or greater; R28 represents a hydrogen atom, a halogen atom, a
branched or unbranched Cl-C5 alkyl group, a branched or
unbranched Cl-CI2 alkylene group, a branched or unbranched
C2-CI2 alkenyl or alkenylene group, a branched or unbranched
C2-CI2 alkynyl or alkynylene group, or the alkyl or alkenyl
group that is terminally substituted with a hydroxy or carboxyl
group; R29 represents a hydrogen atom, a branched or
unbranched Cl-CI2 alkylene group, a branched or unbranched
Cl-C5 alkyl group, a branched or unbranched C2-CI2
alkenylene or alkenyl group, or a branched or unbranched C2-
C 12 alkynylene or alkynyl group; and a pair of R28 and R29 may
form a ring structure, wherein the silane coupling agent
containing the linking units A and the linking units B is
obtained by copolymerizing the linking unit Bin a proportion
of 30 to 60 mol % of the total amount of the linking units A and
the linking units B, and the total repeating number (x + y) of the
repeating number (x) of the linking unit A and the repeating
number (y) of the linking unit B is in the range of 3 to 3 00.
Br. 21-23 (Claims Appendix).
REJECTIONS
I. Claims 1 and 3-5 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Nishioka3 and Hattori '968. 4
II. Claim 1 stands rejected on the ground of non-statutory double
patenting over claim 7 of Hattori '5 82 5 in view of Nishioka.
3 US 2010/0099810 Al, published April 22, 2010 ("Nishioka").
4 US 2011/0136968 Al, published June 9, 2011 ("Hattori '968").
5 US 8,455,582 B2, issued June 4, 2013 ("Hattori '582").
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Appeal2017-005300
Application 13/981,026
I. Obviousness
OPINION
With regard to Rejection I, Appellants argue the claims as a group.
See Br. 11-19. In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select
claim 1 as representative and decide the appeal based on the representative
claim alone.
The Examiner finds that Nishioka discloses a rubber tire composition
that includes a styrene butadiene rubber modified to contain at least one of
the claimed nitrogen-containing constitutional units, and teaches that the so-
modified rubber provides enhanced fuel economy and wet grip performance.
Final Act. 2, 5. The Examiner further finds that Nishioka discloses
including a silane coupling agent, such as bis(3-
triethoxysilylpropyl)tetrasulfide, but does not teach use of one of the silane
coupling agents set forth in Claim 1. Id. at 3.
The Examiner finds that Hattori '968 discloses a rubber tire
composition that includes an in-chain modified styrene butadiene rubber and
a silane coupling agent. Id. at 3-5. The Examiner finds that Hattori
identifies coupling agents having linking units A and B as defined in Claim
1 as alternatives to bis(3-triethoxysilylpropyl)tetrasulfide to produce a
rubber with improved reinforcement, but does not teach the claimed
nitrogen-containing constitutional units for modifying the styrene butadiene
rubber. Id.
The foregoing findings are supported by a preponderance of the
evidence (see, e.g., Nishioka Abstract, ,r,r 32-34; Hattori '968 Abstract, ,r,r
19, 30), and are not in dispute (see Br. 9-19).
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Application 13/981,026
In light of the above-noted disclosures, the Examiner finds that one of
ordinary skill in the art would have had reason to modify Nishioka's
composition by replacing the bis(3-triethoxysilylpropyl)tetrasulfide coupling
agent with a coupling agent having the recited linking units A and B
pursuant to the teaching in Hattori '968 that both coupling agents were
preferred for achieving improved reinforcement. Final Act. 4.
Alternatively, the Examiner finds that one of ordinary skill in the art would
have had reason to modify the composition of Hattori '968 by replacing the
rubber component with Nishioka's modified rubber to achieve the described
benefits of enhanced fuel economy and wet grip performance. Id. at 5---6.
Appellants argue that the claimed combination of elements yields
unexpected, synergistic improvement of fuel economy, wet grip
performance, and abrasion resistance. Br. 12. To substantiate that
contention, Appellants point generally to Tables 1 and 2 in the Specification.
Id. at 10. According to Appellants, the data presented in the Tables
demonstrates unexpected improvement in fuel efficiency and wet grip
performance achieved by incorporating the claimed modified styrene
butadiene rubber relative to similar compositions formulated with un-
modified styrene butadiene rubber. Id. Appellants also contend that the
same data demonstrates that combining the claimed modified rubber
component and the claimed coupling agent synergistically improved fuel
efficiency and abrasion resistance relative to compositions that contained
either but not both those components. Id.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469-70 (Fed. Cir. 1997). Here, Appellants provide no analysis
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Appeal2017-005300
Application 13/981,026
or explanation as to how the data reported in the relied-upon Tables 1 and 2
demonstrates unexpected performance results. Nor is the existence of
unexpected results immediately apparent from the relied-upon data. For
example, Comparative Example 3 and Example 4 in Table 1 reportedly
exhibited identical values for rolling resistance ( a measure of fuel efficiency)
and wet grip performance, even though Comparative Example 3 lacked the
claimed silane coupling agent. See Spec. ,r 93, Table 1. Similarly,
Comparative Example 4 reportedly exhibited the same rolling resistance
value, and a better abrasion resistance value, as compared with Example 4,
even though Comparative Example 4 lacked the claimed modified rubber
component. See id.
On this Appeal record, Appellants do not point us to persuasive
evidence of unexpected or synergistic results associated with the claimed
composition.
Moreover, we agree with the Examiner's assessment that the scope of
information contained in Tables 1 and 2 is not shown to be reasonably
commensurate with the claims. Advisory Action, dated April 14, 2016.
Claim 1 encompasses azetidino-, pyrrolidino-, piperidino-, and
hexamethyleneimino-based modifiers for the modified rubber component,
whereas as the data in Tables 1 and 2 relates only to pyrrolidino-modified
rubber. See Spec. ,r,r 80, 82, 83. As the Examiner finds (Ans. 11), and
Appellants do not dispute, 6 the claimed modifiers present different ring
structures and, in the case of hexamethyleneiminoethyl, no ring structure at
6 No Reply Brief was received.
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Appeal2017-005300
Application 13/981,026
all. Appellants' reliance on the Minagoshi Declaration 7 is insufficient to
refute the Examiner's assessment. For example, the Declaration presents
data obtained from experiments using a rubber component, formed from
2,2 '-Dipyridylamine, which is not shown to be within the group of rubber
components specified in the claim and does not address the Examiner's
observation that the claim encompasses modifiers that present materially
different chemical structures for which no data has been provided.
For the foregoing reasons, Appellants do not persuade us of error in
the Examiner's obviousness determination. Rejection I is sustained.
II. Obvious-type double patenting
With regard to Rejection II, Appellants rely on the same arguments
concerning purported unexpected and synergistic results as are presented in
connection with Rejection I. See Br. 9-10. Having found Appellants'
argument unpersuasive for the reasons given above, Rejection II also is
sustained.
DECISION
The Examiner's decision rejecting claims 1 and 3-5 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
7 Declaration of Akira Minagoshi, dated May 28, 2015, of record.
8