Eaton Intelligent Power Limited

Patent Trials and Appeals Board

Oct 30, 2020

15763847 - (D) (P.T.A.B. Oct. 30, 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.
15/763,847 03/28/2018 Dipak Gopal Singh 816317 1086
95683 7590 10/30/2020
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
HOOK, JAMES F
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DIPAK GOPAL SINGH and JUERGEN SCHMIDT
____________

Appeal 2020-001172
Application 15/763,847
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and
CARL M. DEFRANCO, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4 and 6–13 under 35 U.S.C. § 103 as
unpatentable over Miyamoto (US 2015/0183970 A1; pub. July 2, 2015) and
Saito (US 4,983,678; iss. Jan. 8, 1991). We have jurisdiction over the appeal

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Eaton Intelligent
Power Limited. Appeal Br. 2.
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under 35 U.S.C. § 6(b). A telephonic oral hearing was held October 8,
2020.2
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claim 1 is reproduced below.
1. A curing composition for rubber, comprising:
2 to 15 parts per hundred parts of rubber of a metallic co-
agent selected from the group consisting of zinc diacrylate and
zinc methacrylate;
organic peroxide;
sulfur; and
a hydrotalcite compound.

OPINION
Appellant argues claims 1–4 and 6–13 as a group. Appeal Br. 6–10.
We select claim 1 as the representative claim, and claims 2–4 and 6–13
stand or fall therewith. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Miyamoto teaches all of the limitations of
independent claim 1 “with the exception of providing the composition with a
metallic co-agent selected from zinc diacrylate or zine methacrylate in
specific amounts.” Final Act. 2–3. The Examiner finds that Saito teaches
that it is known in the art to form a curing composition that
includes NBR and hydrogenated forms of NBR . . . with zinc
methacrylate . . . and organic peroxide . . . which can be used to
form a hose . . . , where providing the zinc methacrylate and the
organic peroxide to hydrogenated NBR provides at least high
strength.
Id. at 3 (citing Saito 1:47–51, 2:17–26, 2:45–3:8, 3:57–60). The Examiner
concludes that it would have been obvious:

2 The record includes a transcript of the oral hearing.
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to modify the curing composition in Miyamoto by providing the
rubber with a metallic co-agent such as zinc methacrylate in
amounts at least of 10–100 parts per hundred of rubber as
suggested by Saito where such is a known additive to be provided
to hydrogenated NBR material blended with organic peroxide
which is used for a hose layer, and where such would provide the
material with high strength properties which are known benefits
of adding zinc methacrylate to the composition.
Id. at 3–4. The Examiner also points out that “the composition set forth in
Saito would not only afford excellent strength as required by Miyamoto[,]
but also would have beneficial improved properties of excellent heat and
ozone resistance as well, therefore providing an improvement over
Miyamoto.” Ans. 8.
Appellant argues that “Miyamoto teaches that the ‘best mechanical
strength of rubber’ is obtained when the disclosed compositions further
comprise a sulfenamide-based vulcanization accelerator” and Miyamoto
does not describe “alternate curing systems, let alone curing systems based
on chemistry other than sulfur.” Appeal Br. 7 (citing Miyamoto ¶¶ 67, 68,
75). Even if Miyamoto describes a sulfur-based curing system as providing
the rubber with the best mechanical strength, this does not preclude one of
ordinary skill in the art from being led to modify the curing system to
incorporate zinc methacrylate as taught by Saito for also improving strength
and other mechanical properties. The disclosure in Miyamoto does not
actually criticize, discredit, or discourage the incorporation of zinc
methacrylate into its curing system. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“A reference does not teach
away . . . if it merely expresses a general preference for an alternative
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invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.”).
Appellant also argues that
Miyamoto discloses that the amount of NBR, when present, is
critical to achieving improved performance and should be
present in an amount of 15-50 mass% . . . and describes that in
compositions comprising NBR, EPDM, and SBR that “(i)[ ]if the
. . . content of the NBR exceeds 50 parts by mass, low
temperature resistance will be insufficient”.
Appeal Br. 8 (citing Miyamoto ¶¶ 48–49). Appellant argues “Miyamoto
teaches away from rubber compositions containing more than 50 parts by
mass NBR since desirable physical properties are not obtained using these
compositions.” Id. As an initial matter, we do not find such argument
persuasive in that the Examiner’s rejection does not appear to be expressly
based on modifying the mass percent of NBR used. Moreover, even to the
extent that a modification of the mass percent of NBR may be implied by the
Examiner’s rejection, the Examiner responds that even if amounts of NBR
that exceed 50 parts by mass would lead to insufficient low temperature
resistance, one of ordinary skill in the art “would understand other amounts
of NBR can be used when other material properties are desired for the hose
based on its intended use.” Ans. 9. That is, the Examiner explains that
“when using a hose for other uses that would not require low temperature
resistance, the specific amounts of NBR cited in Miyamoto would no longer
be applicable” and “therefore Miyamoto does not teach away from using
different amounts of NBR for other applications or needed material
properties for other uses of the hose.” Id. at 9–10.
In sum, we do not agree that one of ordinary skill in the art would
have been discouraged from modifying Miyamoto to contain more than
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50 parts by mass NBR in order to improve strength, heat resistance, and/or
ozone resistance (Final Act. 3–4; Ans. 8), even if that might have potentially
had a negative effect on low temperature resistance. Our reviewing court
has recognized that a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate any or
all reasons to combine teachings. See Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) (explaining that if there are tradeoffs
involved regarding features, such things do not necessarily prevent the
proposed combination); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”). Given the acceptable consideration of tradeoffs, we are not
persuaded of Examiner error because the record does not support that any
potential negative effect on low temperature resistance outweighs the benefit
in improved strength, heat resistance, and/or ozone resistance.
We have also considered Appellant’s argument that “Saito teaches
away from using sulfur vulcanizing agents.” Appeal Br. 9; see also id. at 8
(“Saito discloses a zinc and peroxide based curing system, which avoids
using sulfur chemistry.”). We, however, do not find such an argument
persuasive because the Examiner is relying on Miyamoto for its explicit
teaching of the inclusion of sulfur, and the Examiner does not need to
modify Miyamoto in order to arrive at the inclusion of sulfur. Moreover,
Appellant has not identified any passage in Saito that actually criticizes,
discredits, or discourages the use of sulfur vulcanizing agents.
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Appellant also argues that “the individual teachings of Miyamoto and
Saito reside in separate silos such that a person of ordinary skill in the art,
when contemplating the teachings of one reference, would not be led to
contemplate the teachings of the other reference.” Appeal Br. 8. In
particular, Appellant asserts that Miyamoto is directed to rubber
compositions comprising less than 50% by mass NBR that are cured using a
peroxide and a sulfur vulcanizing agent, whereas Saito is directed to rubber
compositions comprising at least 60% by weight NBR and do not use a
sulfur-based curing system. Id. at 8–9. Appellant maintains that “nothing in
the cited references provide a reasonable expectation of success to the
skilled artisan contemplating modifying the compositions of Miyamoto
using the teachings of Saito.” Id. at 9. Appellant continues that “the
individual teachings of the two references are divergent and teach away from
their combination, and thus teaches away from [the] proposed modification
of adding Saito’s zinc methacrylate to the curing system of Miyamoto.” Id.
at 9–10.
As an initial matter, the presence of differences between two
references does not necessarily undermine a prima facie case of obviousness.
See In re Beattie, 974 F.2d 1309, 1312–13 (Fed. Cir. 1992). As explained
by the Examiner, “[b]oth references . . . are directed to rubber compositions
which are formed of NBR mixtures, where peroxide is used for the curing of
the composition, and it is these properties that the references have in
common.” Ans. 11–12. As further explained by the Examiner, “[t]he
reference to Saito is being used solely to teach that zinc methacrylate is a
known additive to the curing materials used . . . with organic peroxides and
that a large range of specific amounts of zinc methacrylate can be used.” Id.
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at 4. According to the Examiner, “using zinc methacrylate is taught by Saito
to be one . . . additive used in the curing process of NBR regardless of the
amount of NBR taught by either reference.” Id. at 4–5. Appellant has not
persuaded us that any differences in mass percent of NBR and/or whether or
not the curing system also incorporates sulfur would have led one of
ordinary skill in the art away from the use of zinc methacrylate as a known
additive to hydrogenated NBR material blended with organic peroxide to be
used for a hose layer exhibiting high strength, heat resistance, and/or ozone
resistance properties.
We have also considered Appellant’s argument that “Miyamoto
provides no teaching as to specifically how and in what concentrations
peroxide can be used in its compositions.” Reply Br. 3. Miyamoto,
however, is clear in its teachings of the use of both sulfur and organic
peroxide, which is the level of detail that is recited in claim 1. See
Miyamoto ¶¶ 63–64 (emphasis added) (“[T]he composition of the present
embodiment can use an organic peroxide together with the vulcanizing agent
described above or instead of the vulcanizing agent described above” and
examples of the preceding vulcanizing agent include “sulfurs such as
powered sulfur, precipitated sulfur, highly dispersible sulfur, surface-treated
sulfur, and insoluble sulfur, and organic-containing sulfur compounds such
as dimorpholine disulfide and alkylphenol disulfide.”).
We have also considered Appellant’s argument that “one of ordinary
skill in the art would not be motivated to combine the cited references—let
alone with a reasonable expectation of success—except apparently based on
improper hindsight with knowledge of the present invention.” Appeal Br. 10
(citing In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999)). Appellant’s
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argument is unavailing because, as explained above, Appellant does not
establish adequately any flaw in the articulated reasoning for combining
Miyamoto and Saito (i.e., to use an additive known to be provided to
hydrogenated NBR material blended with organic peroxide with the known
benefit of providing high strength properties for a hose layer (Final Act. 3–4)
and improving properties of heat and/or ozone resistance (Ans. 8)), nor point
to any knowledge relied on by the Office that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of the invention. See In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight reasoning, but so
long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant's disclosure, such a
reconstruction is proper.”).
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s determination that Miyamoto and Saito render obvious the
subject matter of independent claim 1. Accordingly, we sustain the rejection
of claim 1, and claims 2–4 and 6–13 falling therewith, under 35 U.S.C.
§ 103(a) as unpatentable over Miyamoto and Saito.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 6–13 103 Miyamoto, Saito 1–4, 6–13

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED