Ex Parte Scholz et al

Patent Trial and Appeal Board

May 11, 2017

10591610 (P.T.A.B. May. 11, 2017)

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).
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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).
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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
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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
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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
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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).
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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).
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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
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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.
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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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