Bridgestone Corporation

Patent Trials and Appeals Board

Feb 24, 2020

14363230 - (D) (P.T.A.B. Feb. 24, 2020)

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.
14/363,230 06/05/2014 Amy M. Randall P07070US2A 4923
48985 7590 02/24/2020
BRIDGESTONE AMERICAS, INC.
10 East Firestone Blvd.
AKRON, OH 44317
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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):
iplawpat@bfusa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMY M. RANDALL, WILLIAM L. HERGENROTHER, SHEEL
AGARWAL, and ASHLEY S. HILTON
Appeal 2019-003735
Application 14/363,230
Technology Center 1700
Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, 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 21–31 and 41–46. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Bridgestone
Corporation. Appeal Br. 2.
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Application 14/363,230

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to water-based adhesives
for rubber compositions in the tire and air spring industry. Spec. ¶ 1. Two
independent claims, claims 21 and 41, are on appeal. Claim 21 is illustrative:
21. An adhesive comprising:
a polymeric latex;
a penetrant, wherein the penetrant is limonene;
a reinforcing filler in an amount of 15 to about 80 phr;
wherein the adhesive has a solids content of 35-65% and
a pH of 9 to 12.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Doss et al.
(“Doss”)
Butch, III et al.
(“Butch”)
Hart et al.
(“Hart”)
Silvers et al.
(“Silvers”)
Ruckel et al.
(“Ruckel”)
Rowitsch et al.
(“Rowitsch”)
Reference
US 3,963,850

US 4,411,954

US 4,601,892

US 2004/0147663 A1

US 2004/0158003 A1

US 2007/0224395 A1

Date
June 15, 1976

Oct. 25, 1983

July 22, 1986

July 29, 2004

Aug. 12, 2004

Sep. 27, 2007

2 In this Decision, we refer to the Final Office Action dated June 11, 2018
(“Final Act.”), the Appeal Brief filed January 11, 2019 (“Appeal Br.”), the
Examiner’s Answer dated February 7, 2019 (“Ans.”), and the Reply Brief
filed April 8, 2019 (“Reply Br.”).
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Application 14/363,230

3
Goodyear3
Seferin et al.
(“Seferin”)

England 836,250

WO 2011/079365 A1

July 19, 1961

July 7, 2011

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 21, 24–28, 30, 31, 41–44, and 46 under 35 U.S.C. § 103 as
obvious over Rowitsch in view of Silvers, Ruckel, Doss, and Hart.
Ans. 4.
B. Claims 22, 23, 29, and 45 under 35 U.S.C. § 103 as obvious over
Rowitsch in view of Silvers, Ruckel, Doss, and Hart and further in
view of Goodyear in view of Butch. Id. at 8.
C. Claims 21, 24–28, 30, 31, 41–44, and 46 under 35 U.S.C. § 103 as
obvious over Rowitsch in view of Silvers, Ruckel, Doss, Hart, and
Seferin. Id. at 10.
D. Claims 22, 23, 29, and 45 under 35 U.S.C. § 103 as obvious over
Rowitsch in view of Silvers, Ruckel, Doss, Hart, and Seferin and
further in view of Goodyear and Butch. Id. at 15.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant 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)

3 The patent indicates it was filed by “The Goodyear Tire & Rubber
Company” (with the company name in small caps). The Examiner refers to
the reference as “Goodyear,” and we do the same.
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(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error except where
otherwise identified below. Thus, we affirm the Examiner’s rejections for the
reasons expressed in the Final Office Action and the Answer. We add the
following primarily for emphasis.
Appellant presents substantively the same arguments for all claims
and all rejections except that Appellant separately argues against the Seferin
reference as applied to Rejections C and D and also provides a concise but
separate argument for claim 44. See Appeal Br. 5, 15–17. Therefore,
consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit
our discussion to claims 21 and 44, and all other claims on appeal stand or
fall together with claim 21.
Rejections A and B, obviousness based in part on Ruckel
The Examiner rejects the two independent claims on appeal, claims 21
and 41, as obvious over Rowitsch in view of Silvers, Ruckel, Doss, and Hart
(with the Goodyear and Butch references being additionally applied to
certain dependent claims in Rejection B). Ans. 4. For these two rejections, to
reach the limonene recitation of independent claims 21 and 41, the Examiner
relies on the Ruckel reference. Id. at 5. The Examiner finds that Ruckel
teaches limonene as a preferred terpene for its combination of a tackifier and
a surfactant and determines that “it would have been obvious . . . to have
used the surfactant-including terpene tackifier ingredients (including . . .
limonene tackifier) from Ruckel as the tackifiers called for in modified
Rowitsch because Ruckel teaches that these surfactant-including tackifiers
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provide improved aqueous dispersability of the tackifier in an aqueous
adhesive.” Id. at 5 (citing Ruckel).
Appellant argues that Ruckel does not teach monomer limonene.
Appeal Br. 7–11. Appellant’s argument persuades us of error.
As a threshold matter, we address claim construction. Appellant
maintains that the recitation “limonene” in the claims refers to the monomer
limonene. Appeal Br. 7. The Examiner does not dispute this construction.
Appellant’s construction is consistent with the Specification and language of
the claims. See, e.g., Spec. ¶ 4 (referring to limonene as a penetrant along
with other possibilities that are not polymers). We, therefore, adopt
Appellant’s construction of limonene.
With respect to the teachings of Ruckel, the key passage of Ruckel
states: “The terpene resin may comprise, in addition to the residues from the
above terpenes, the residues of various non-terpenic unsaturated
compounds.” Ruckel ¶ 24. Ruckel’s “above terpenes” include limonene. Id.
¶ 23 (“[o]ther preferred terpenes are limonene”). The Examiner argues that
Ruckel’s reference to “residues from” limonene refers to unreacted limonene
monomer. Ans. 29–36. Appellant, in contrast, argues that Ruckel’s “residues
from the above [limonene]” refers to a polymer prepared from multiple
monomer limonene units. Appeal Br. 7–8.
Appellant and the Examiner offer competing evidence as to the
meaning of “residue” in different contexts. Id. at 8–10; Ans. 29–36. Based
on this evidence, we determine that, based solely on the general context of
polymer preparation rather than the specific context of Ruckel, both the
Appellant and the Examiner present reasonable positions regarding the
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meaning of “residue.” The key issue, however, is what a person of skill in
the art would understand Ruckel to mean by “residue.”
The context of Ruckel itself better supports Appellant’s position. In
particular, in the second sentence of Ruckel’s first paragraph of the detailed
description of the invention, Ruckel states that its process for preparing a
surfactant “includes selecting a resin, where the resin comprises the
polymerization residues of monomers.” Ruckel ¶ 17. This sentence strongly
suggests that Ruckel does not intend use of unreacted monomers as its resin,
and the phrase “polymerization residues” suggests use of the term residue
consistent with Appellant’s position. Other portions of Ruckel further
suggest that Ruckel’s resin should be the product of a something prepared
from monomers rather than being monomers themselves. Id. at ¶¶ 18–22.
As an alternative position, the Examiner finds that any polymerization
process will include some unreacted residues because polymerization
processes are never 100% efficient. Ans. 29–30. Appellant does not dispute
this finding. Appellant, however, argues that the Examiner has not
adequately explained why a person of skill in the art would have used
unreacted limonene residue from Ruckel as a solvent in Rowitsch. Appeal
Br. 10–11. This argument is persuasive. The Examiner has not established
why a person of skill would want to implement into Rowitsch the undesired
unreacted limonene monomer of Ruckel.
The Examiner’s treatment of the dependent claims does not cure the
error explained above with regard to independent claims 21 and 41.
Accordingly, we do not sustain the Examiner’s Rejection A and Rejection B.
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Rejections C and D, obviousness based in part on Seferin
The Examiner rejects claim 21 as obvious over Rowitsch in view of
Silvers, Ruckel, Doss, Hart, and Seferin (with the Goodyear and Butch
references being additionally applied to certain dependent claims in
Rejection D).
The Examiner finds, among other things, that Rowitsch teaches an
adhesive including a natural rubber polymer latex, a filler, and/or thickener
and mixtures of tackifiers including terpene tackifiers. Ans. 10–11 (citing
Rowitsch). The Examiner finds that Rowitsch teaches pH adjusting agents
but does not teach the pH of its composition. Id. at 11. The Examiner finds
that Silvers teaches a pH of 7–10.9 and determines that a person of ordinary
skill in the art would have adjusted the pH of Rowitsch to improve stability
and facilitate incorporation of non-latex based ingredients. Id. (citing
Silvers).
The Examiner finds that modified Rowitsch does not teach limonene.
The Examiner again cites Ruckel to meet this limitation, as we discuss with
Rejections A and B above. Ans. 11–12. The Examiner, however, also finds
that Seferin teaches limonene “as a more environmentally friendly and less
toxic solvent” and finds that Rowitsch has a similar goal of reducing
toxicity. Ans. 14 (citing Seferin and Rowitsch). The Examiner determines
that it would have been obvious to use Seferin’s limonene solvent as the
solvent Rowitsch calls for in order to provide a solvent without toxic side
effects. Id.
The Examiner finds that modified Rowitsch teaches fillers and/or
thickeners but does not explicitly disclose reinforcing fillers. Id. at 12. The
Examiner finds that Doss teaches an adhesive with carbon black as a
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thickening filler in order to make the adhesive more viscous and “to promote
better surface holding when applied to a porous substrate” and “also to allow
for the adhesive to be trowelable.” Id. (citing Doss). The Examiner
determines that a person of skill in the art would have used the carbon black
thickener of Doss in modified Rowitsch because “it provides better adhesive
properties on porous substrates and allows for the composition to be
troweled.” Id. As an addition and as an alternative, the Examiner also cites
Hart as teaching reinforcing fibers and determines that it would have been
obvious to use Hart’s type of fibers in combination with modified Rowitsch.
Id. at 13–14 (citing Hart).
Appellant makes broad arguments regarding obviousness of claim 21
as a whole and also makes specific arguments regarding many of the
Examiner’s findings and determinations regarding specific references. We
address the specific arguments first because the details illuminated from
analysis of those arguments helps inform analysis of Appellant’s broader
argument.
Appellant argues that a person of skill in the art would not have used
the limonene of Seferin as a solvent in Rowitsch because Rowitsch is a
water based composition and Seferin is not a water based composition.
Appeal Br. 16–17. Appellant emphasizes that limonene is not soluble in
water. Id.; December 6, 2017 Declaration of Daniel Graves, ¶ 8. The
Examiner, however, finds that co-solvents do not need to be soluble with
each other to provide effective solubility properties. Ans. 28. The Examiner
further finds that Rowitsch teaches the use of emulsifiers and that
emulsifiers would help stabilize an otherwise immiscible mixture. Id. (citing
Rowitsch ¶ 24). Indeed, Rowitsch’s teaching of emulsifiers suggests that
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Rowitsch is open to components that are not water soluble. See also Seferin
¶ 21 (indicating compatibility with non-polar co-solvents). Appellant does
not persuasively refute these positions.
Moreover, the Examiner’s rationale for combining the teachings of
Rowitsch and Seferin is strong. Appeal Br. 14. Rowitsch seeks to avoid
solvent or use little solvent in order to avoid the “environmental and worker
exposure concerns” associated with typical solvents. Rowitsch ¶¶ 5–6; 24. A
person of skill in the art would have recognized that use of limonene, as
Seferin teaches, would further advance Rowtisch’s goals in this regard
because Seferin teaches that its natural solvent eliminates “traditional
solvents—which are problematic to the environment and human health.”
Seferin ¶ 12. Appellant does not persuasively refute this reason to combine
the references’ teachings.
Appellant also argues that Silvers discourages the Examiner’s
combination because the Examiner proposes an adhesive that is trowelable
(after adding the carbon black of Doss) whereas Silvers teaches the benefit
of a sprayable composition. Appeal Br. 12–13; Reply Br. 5–7. Appellant
does not, however, establish a teaching away from use of a basic pH with
Rowitsch because Silvers “does not criticize, discredit, or otherwise
discourage” such a combination. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). Rather, Rowitsch itself suggests controlling pH (Ans. 22;
Rowitsch ¶ 43), and Silvers teaches the benefits of a basic pH (providing
stability for the adhesive and better incorporation of ingredients) (Ans. 4;
Silvers ¶¶ 29–33).
Moreover, Silvers encouraging spraying does not discourage
combining a high pH with Rowitsch because Rowitsch also encourages
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spraying. See, e.g., Rowitsch Title, Abstract. Silvers suggests that the
benefits of a high pH are not limited to when the composition is sprayed.
Silvers ¶ 54. Also, no evidence suggests that, if the Rowitsch composition
were troweled, troweling would be problematic at a high pH. Moreover, for
the reasons explained by the Examiner, we agree with the Examiner that
Appellant’s other cited references (argued at Appeal Br. 11–13) do not
establish that a person of skill in the art would be disinclined to reach a high
(basic) pH in combination with the teachings of Rowitsch. Ans. 20–22.
Appellant also argues that a person of skill in the art would not add
Doss’s reinforcing filler to Rowitsch because Doss teaches carbon black
filler to prevent penetration of the adhesive into the substrate whereas
Appellant’s Specification suggests carbon black allows more penetration.
Appeal Br. 14. Appellant’s argument is not persuasive because it does not
persuasively refute the Examiner’s stated rationale for combining the
teachings of Rowitsch and Doss; namely, the Examiner determines that a
person of skill would add the carbon black thickener of Doss as the filler or
thickener called for in Rowitsch because it provides better adhesive
properties. Ans. 6; Doss Abstract, 1:37–2:33.
Appellant further argues that Doss does not teach a phr content of
carbon black and that its example with 3% by weight filler would only be
4.4 phr. Appeal Br. 14. In the claims, phr is “per hundred rubber” by weight.
Spec. ¶ 22. The Examiner explains how the Examiner calculated the carbon
black phr of Doss, and the Examiner’s calculation indicates that the carbon
black phr of Doss overlaps with that of claim 21. Ans. 20. Appellant does
not persuasively identify any error in the Examiner’s calculation. Appeal Br.
14; Reply Br. 7–8.
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Appellant also argues that a person of skill in the art would not reach
the thickener amount taught by Doss because Rowitsch teaches a different
thickener amount especially for the Rowitsch embodiment capable of
spraying. Appeal Br. 15. The argument is unpersuasive because it does not
refute the Examiner’s stated reason for combining the teachings of Doss and
Rowitsch (better adhesion). Ans. 6. Moreover, while Rowitsch teaches that
its paragraph 45 example is “suitable for spraying,” Rowitsch also teaches
that its sprayable compositions can also be troweled. Rowitsch ¶¶ 45, 55. In
addition, Doss discloses that its composition can be sprayed or troweled
(Doss 2:29–33); this disclosure further indicates compatibility of Doss’s
carbon black as the filler of Rowitsch in the amount taught by Doss.
Finally, we address Appellant’s over-arching arguments regarding the
predictability of combining all of the cited references’ teachings. Appeal
Br. 4–7; Reply Br. 11–12. To address obviousness generally, we determine
the scope and content of the prior art are to be determined, ascertain
differences between the prior art and the claims at issue, and resolve the
level of ordinary skill in the pertinent art resolved. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966). Here, Appellant argues that the art is
unpredictable and this weighs against obviousness. Appeal Br. 5–6.; Reply
Br. 2. The Examiner maintains that Appellant overstates the unpredictability
of the field because Appellant’s claims relate to the more “well-known” side
of the chemical arts. We agree with the Examiner, that here, a person of skill
in the art would have been able to predictably combine the teachings of the
cited references in the manner the Examiner proposes.
In particular, Rowitsch teaches an adhesive that may include pH
adjusting agents (Rowitsch ¶ 43 (teaching inclusion of basic catalysts)), may
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include fillers (id. ¶ 43 (suggesting reinforcing fillers)), and may include a
small amount of solvent but seeks to avoid volatile organic solvents as much
as possible (id. at ¶ 24). Ans. 4–7. Against this backdrop, a person having
ordinary skill in the art would have looked at other references relating to
adhesives to determine the best pH adjusting agents, fillers, and solvents to
include. The Examiner provides reasons, all supported by the secondary
references, why a person of skill in the art would have recognized that the
basic pH of Silvers, the carbon black of Doss, and the limonene of Seferin
would all be advantageous choices for inclusion in Rowitsch. Ans. 4–7
(explaining that Silvers teaches basic pH provides stability and improves
incorporation, that Doss’s carbon black provides better adhesive properties,
and that Seferin’s limonene provides a solvent that eliminates environmental
and human health problems of traditional solvents). In sum, the secondary
references help fill in details the primary reference lacks and suggest
improvements that could be made to the primary reference. Given the strong
evidentiary support for the reasons to combine the references’ teachings, we
do not agree that undue hindsight is at issue here. Rather, the preponderance
of the evidence supports that implementation of the teachings of Silvers,
Doss, and Seferin with Rowitsch would be no more than the predictable use
of prior art elements according to their established function. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
Appellant also argues that it would be too difficult to manipulate the
pH and filler of Rowitsch without adverse effects because the variables are
not independent. Appeal Br. 11–12. This argument is also not persuasive.
Silvers indicates that pH can be adjusted by adding a very small percent of
stabilizer (0.1-1% by weight). Silvers ¶¶ 24–33. Addition of stabilizer would
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not, therefore, greatly impact filler phr or percent solids relative to the fairly
broad ranges claim 21 recites. Furthermore, as the Examiner explains,
Appellant has not persuasively connected Appellant’s general evidence
regarding the combination of high pH and high percent solids causing
difficulty to the Examiner’s cited references in particular. Appeal Br. 11–13;
Ans. 20–22. Also, Appellant does not persuasively explain why adding
carbon black would affect pH or take solids content out of claim 21’s recited
range.
Because Appellant’s argument does not identify reversible Examiner
error, we sustain the Examiner’s rejections C and D.
Rejection C, claim 44. Claim 44 requires 20 phr to 60 phr carbon
black. Appellant argues that, similarly to claim 21, the references do not
teach this amount of carbon black and “there is even less reason to modify
the combination to raise the amount of carbon black even higher.” Appeal
Br. 15.
The Examiner, however, calculates that modified Rowitsch would
have 20 phr carbon black (Ans. 26), and, as explained above with respect to
claim 21, Appellant does not persuasively refute the Examiner’s calculation.
The Examiner thus establishes an overlapping range sufficient to establish
obviousness here. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) (“A prima facie case of obviousness typically exists when the ranges
of the claimed composition overlap the ranges disclosed in the prior art.”).
We sustain this rejection.

CONCLUSION
In summary:
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 24–28,
30, 31, 41–
44, 46
103 Rowitsch, Silvers,
Ruckel, Doss, Hart
21, 24–28,
30, 31, 41–
44, 46
22, 23, 29,
45
103 Rowitsch, Silvers,
Ruckel, Doss, Hart,
Goodyear, Butch
22, 23, 29,
45
21, 24–28,
30, 31, 41–
44, 46
103 Rowitsch, Silvers,
Ruckel, Doss, Hart,
Seferin
21, 24–28,
30, 31, 41–
44, 46

22, 23, 29,
45
103 Rowitsch, Silvers,
Ruckel, Doss, Hart,
Seferin, Goodyear,
Butch
22, 23, 29,
45

Overall
Outcome
21–31, 41–
46

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED