Ex Parte Scholz et alDownload PDFPatent Trial and Appeal BoardMay 11, 201710591610 (P.T.A.B. May. 11, 2017) Copy Citation 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. 10/591,610 09/05/2006 Mario Scholz 032301.592 3091 441 7590 05/16/2017 SMITH, GAMBRELL & RUSSELL, LLP 1055 Thomas Jefferson Street Suite 400 WASHINGTON, DC 20007 EXAMINER SALVITTI, MICHAEL A ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 05/16/2017 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): dcdocketing @ sgrlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARIO SCHOLZ and JURGEN MEYER Appeal 2015-005216 Application 10/591,610 Technology Center 1700 Before PETER F. KRATZ, JEFFREY T. SMITH, and ELIZABETH M. ROESEL, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal1 under 35U.S.C. § 134 from the Examiner’s Final Rejection of claims 1—3 and 5—10. Claim 4 was cancelled. We have jurisdiction pursuant to 35 U.S.C. § 6. Oral argument was presented on May 2, 2017. Appellants’ claimed invention is directed to a silicone rubber comprising an organopolysiloxane and a silanized structurally modified pyrogenic silica reinforcing filler, which filler-containing rubber has a high tear propagation resistance. The silica is claimed to have a specified or 1 Appellants identify Evonik Degussa GMBH as the real party in interest (App. Br. 2). Appeal 2015-005216 Application 10/591,610 indeterminate DBP value2 as set forth in claim 1, the sole independent claim on appeal. According to the subject Specification, “structurally modified silica can be produced by treating the silica with the surface-modifying agents, heat treating, and then structurally modifying the mixture obtained” such as by mechanical action, e.g., in a ball mill (Spec. 2,11., 2 — p. 3,1. 21).3 The surface-modifying agents are compounds suitable for fixing vinyl and methyl-containing silyl groups to the silica surface (Spec. 6:1—5). Claim 1, the sole independent claim on appeal, is illustrative and reproduced below: 1. A silicone rubber having high tear propagation resistance, containing, as reinforcing filler, silanized structurally modified pyrogenic silica, characterized by vinyl groups fixed to the silica and hydrophobic groups including methyl containing silyl groups also fixed to the silica and a surface area, as measured by BET, between 10 and 1000 m.2/g and a DBP value % < 200 or not determinable, wherein the silicone rubber is a organopolysiloxane and the DBP value results from treatment of the pyrogenic silica with a ball mill or a continuous ball mill. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Hartmann et al., US 5,959,005 Sept. 28, 1999 Azechi et al. US 6,331,588 B1 Dec. 18, 2001 2 According to Appellants, “[t]he dibutyl phalate (DBP) number is a measure of the adsorbancy of a pulverent product” (App. Br. 8). 3 Nargiello (US Patent No. 6,193,795 Bl, Feb. 27, 2001) is relied upon by Appellants in the Appeal Brief for evincing a relationship between destructuring pyrogenic silica and DBP values (App. Br. 6—7, n. 5; Evidence Appendix). Nargiello discloses a technique for producing low structure (de- structured) pyrogenic silica filler via specified dry milling processes wherein the de-structured pyrogenic silica filler can be a hydrophobic silica and used as a silicone rubber reinforcement additive/filler to provide good flow properties and improve extrusion rates to the polymer (col. 2,1. 63— col. 3,1. 41, col. 6,11. 1-31, col. 7,1. 6-col. 9,1. 26). 2 Appeal 2015-005216 Application 10/591,610 Kobayashi et al. Scholz et al. US 2002/007412 Al June 20, 2002 US 2003/0195290 Al Oct. 16, 2003 The Examiner maintains the following grounds of rejection: Claims 1—3 and 6—10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Azechi in view of Scholz or Hartmann. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Azechi in view of Scholz or Hartmann, and Kobayashi. After review of the opposing positions articulated by Appellants and the Examiner, the applied references, and Appellants’ claims and Specification disclosures and the evidence cited by Appellants including the Declaration of Dr. Mario Scholz under 37 C.F.R. § 1.132 (Scholz Declaration), we determine that the Appellants’ arguments are insufficient to identify reversible error in the Examiner’s obviousness rejections for substantially the fact findings and reasons set forth by the Examiner in the Final Office Action and in the Answer. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated obviousness rejections for substantially the fact findings and the reasons set forth by the Examiner in the Examiner’s Answer and the Final Office Action. We offer the following for emphasis. Concerning the Examiner’s first stated rejection, Appellants argue claims 1—3, 6, 9, and 10 together as a group and present additional argument for dependent claims 7 and 8. Accordingly, we select claim 1 as the representative claim on which we decide this appeal as to claims 1—3, 6, 9, and 10, and we consider claims 7 and 8 separately to the extent Appellants 3 Appeal 2015-005216 Application 10/591,610 have presented separate substantive argument with respect to the latter claims in the Appeal Brief.4 Appellants argue, inter alia, that the rubber product of Azechi is dissimilar to the claimed product particular because Azechi does not teach or suggest destructuring the fumed (pyrogenic) silica filler and obtaining a filler with DBP values as claimed. Appellants argue that the combination of Azechi with Scholz or Hartmann is premised on hindsight because Scholz or Hartmann do not address any problem or need for a solution identified in Azechi and, while Hartmann is directed to a destructured hydrophobic pyrogenic silica filler, Appellants contend that Hartmann does not describe the filler with respect to a rubber product or its preparation (App. Br. 5—7). With respect to the Examiner’s proposed combination of Azechi and Scholz, Appellants contend that (1) Scholz is concerned with RTV 1C silicone rubber sealant compositions (one component, room temperature cross-linking silicone rubber formulation) with the DBP number employed as a thickening measure not a filler selection factor, (2) pyrogenic silica destructuring is not taught, (3) DBP values are not identified as a parameter for selecting and using destructured pyrogenic silica, (4) there is no mention of high tear propagation resistance properties in the applied references and filler type as a factor for this latter property (App. Br. 7—8; Scholz, Abstract). As for the Examiner’s proposed combination of Azechi and Hartmann, Appellants argue that Hartmann does not suggest “a hydrophobic 4 Merely pointing out what a claim recites is not an argument in support of separate patentability. Nor is a skeletal assertion that the prior art does not “disclose or suggest” a particular limitation. In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011). 4 Appeal 2015-005216 Application 10/591,610 layer with vinyl and methyl groups” and/or “how to achieve high tear propagation resistance silicone rubber products” (App. Br. 9; Reply Br. 4— 5). Furthermore, Appellants argue that “there is no guidance which suggests the changes required to modify the Azechi et al. rubber product so that it meets the description required by the claim”; hence, Azechi and Hartmann would not be combined in a manner to arrive at the claimed subject matter (App. Br. 9). Appellants’ arguments are not persuasive in that they fail to establish harmful error in the Examiner’s obviousness position substantially for reasons as set forth by the Examiner (Ans. 2—11; Final Act. 2—10). At the outset, we observe that representative claim 1 requires silanized structurally modified pyrogenic silica filler having hydrophobic vinyl groups and methyl-containing silyl groups fixed to the silica surface, where the silica has a specified BET surface area and a DBP value either within a specified range or “not determinable.” App. Br. 17. However, claim 1 is not otherwise limited to any particular kind, degree, or amount of structural modification of the pyrogenic silica. Nor do Appellants define any particular amount of tear propagation resistance for the rubber, as a minimum for the rubber to be considered as a “high tear propagation resistance” rubber (see Ans. 9). The Examiner finds that Azechi teaches or suggests liquid silicone rubber (organopolysiloxane) compositions that are especially useful for injection molding, the rubber having a fumed (pyrogenic) silica reinforcing filler, which filler is taught or suggested to be surface modified with hydrophobic methyl-containing silyl and vinyl groups, with the silica having 5 Appeal 2015-005216 Application 10/591,610 a BET surface area corresponding to that required by claim 1 (Final Act. 2— 3; Azechi, abstract, col. 1,1. 40-col. 2,1. 17; col. 5,11. 11—62).5 Appellants’ arguments do not persuasively articulate why Appellants may believe that Azechi does not teach or at least suggest treating the fumed (pyrogenic) silica of Azechi with surface modifying agents that would provide for the inclusion of vinyl groups and methyl-containing silyl groups fixed to the silica surface, given the Examiner’s findings concerning Azechi’s disclosure of employing surface modification agents that would impart such groups (Ans. 2, 6; Azechi, col. 5,11. 24—62). The Examiner finds that Azechi teaches the silica can be a ground silica (structurally modified at least to some extent) that can be heat treated (Final Act. 5; Azechi, col. 7,11. 10—16, 45—50; see Ans. 4—5). The Examiner finds that Azechi does not explicitly disclose a DBP value, as Appellants’ claim for the surface modified pyrogenic silica silicone rubber filler of Azechi (Final Act. 3; Ans. 2—3). However, the Examiner maintains, inter alia, that Scholz and/or Hartmann teach or suggest a pyrogenic silica having a DBP value that satisfies the claim 1 requirement for a DBP value falling with a specified range for a pyrogenic silica rubber filler with Hartmann explicitly describing destructuring silanized pyrogenic silica using ball milling for use as a rubber reinforcing filler additive (Final Act 3^4; Scholz 113, Examples 2, 7; Hartmann, col. 1,11. 10-37, col. 1,1. 42—col. 2,1. 8, Example, claim 1). As noted above, Nargiello, cited by Appellants, supplies 5 Appellants acknowledge that Azechi (U S Patent No. 6,331,588) “describes liquid silicone rubber (LSR), which contains pyrogenic silicas as fillers” and which silica has hydrophobic surfaces (Spec. 1,11. 6—11). 6 Appeal 2015-005216 Application 10/591,610 additional disclosure that appears to support the Examiner’s obviousness position.6 Consequently, Appellants’ arguments lodged against the Examiner’s determination that the applied combination of prior art references would have led an ordinarily skilled artisan to the use of a reinforcing filler in Azechi that has a DBP value satisfying the claim 1 requirement are insufficient to identify reversible error in the Examiner’s obviousness rejection of representative claim 1 for reasons advanced by the Examiner (Ans. 2-10). In addition, Appellants argue that paragraphs 5 and 6 of the Declaration of Mario Scholz and the subject Specification Tables 5 and 6 furnish evidence of unexpected results that serves to refute the Examiner’s obviousness determination (App. Br. 11; Reply Br. 3; Spec. Tables 5, 6; Deck 11 5, 6). However, the Examiner finds that the Declaration of Mario Scholz and the Specification Tables are insufficient to show unexpected results for the claimed subject matter and/or to otherwise outweigh the evidence tending to establish the obviousness of the claimed subject matter based on the combined teachings of the applied prior art (Final Act. 8—10; Ans. 11). In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (Appellants bear the initial burden of showing that the claimed invention imparts unexpected results). In this regard and while the Specification Examples 1 through 3 show lower viscosities as compared to the hydrophobic educt example, Appellants 6 References relied upon by the appellants may also be relied upon by the PTO in contravention of the appellants' position. In re Hedges, 228 USPQ 685, 687 (Fed. Cir. 1986). 7 Appeal 2015-005216 Application 10/591,610 have not carried their burden to articulate and establish how the comparison educt corresponds to the surface treated silica of Azechi and/or how Examples 1 through 3 of the Specification which employ Aerosil® 300 that has been treated with a combination of particularly specified surface modification agents (see Sils 3,7, 11, Spec. Table 2) and subjected to multi stage heat treatments and ball milling with or without post-grinding when incorporating 20 percent of such silica in a particular organopolysiloxane (Silopren U 10 GE Bayer) are reasonably commensurate in scope with representative claim 1. This is because claim 1 does not require the particular silicone rubber, the particular surface modified silicas and their percentage amounts and being made by processing conditions as per the tested examples (See Spec. pp. 11—17; Decl. Tflf 5, 6). For reasons set forth above, Appellants, including Declarant, have not established how Table 5 of the subject Specification represents a comparison that is reasonably commensurate in scope with the claimed subject matter and the applied prior art and that would have a clear nexus to the claimed subject matter for showing an unexpected improvement in properties. As for separately argued dependent claims 7 and 8, we concur with the Examiner that Azechi would have suggested a ground silica as required by claim 7 and/or a heat treated silica as called for in claim 8 (Ans. 10; Azechi, col. 5,11. 11—18, col. 7,1. 10-16, 45—50). As for the argued tear propagation resistance property reported in Table 6 of the Specification for Example 3, Appellants have not established that the tear resistance property for Example 3 has any nexus to the tear resistance property to be reasonably expected from a rubber commensurate in scope with either of these dependent claims. In this regard, claims 7 and 8 do not require the particular 8 Appeal 2015-005216 Application 10/591,610 silicone rubber, the particular surface modified silica and the percentage amounts and being made by processing conditions as per the tested Example 3. Also, dependent claim 7 requires no heating and dependent claim 8 requires no particular degree of heating whereas Example 3 (Sil 3) was prepared with heat treatment at a specified temperature and for a specified duration (Spec. 11—17; Tables 2, 5, 6). Consequently, we sustain the Examiner’s first stated rejection. Concerning the Examiner’s separate obviousness rejection of claim 5, dependent claim 5 requires that the structurally modified hydrophobic pyrogenic silica has a compacted bulk density between 120g/l and 266g/l. The Examiner relies on Kobayashi for teaching a hydrophobic surface treated silica that has a bulk density of 100—300g/l, which is taught to be useful as a reinforcing filler for a silicone resin coating having good flowbility, which would have been a useful density for the silica of Azechi for ensuring good flow (Final Act. 6; Kobayashi 123). Appellants argue that the Examiner has not established that Kobayashi evinces that the density of its silica is for a mechanically destructured pyrogenic silica (App. Br. 12—13). This argument is not persuasive for reasons advanced by the Examiner and, because this argument is undercut by Hartmann disclosing a tapped density for a mechanically de-structured pyrogenic silica that falls within Appellants’ claimed range (Ans. 10; Hartmann, col. 2,11. 15—35). It follows that we affirm the Examiner’s obviousness rejection of claim 5. CONCLUSION/ORDER The Examiner’s decision to reject the appealed claims is affirmed. 9 Appeal 2015-005216 Application 10/591,610 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 10 Copy with citationCopy as parenthetical citation