Ex Parte Heulings et al

Patent Trial and Appeal Board

Jul 19, 2016

13331687 (P.T.A.B. Jul. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/331,687 12/20/2011 Harry R. HEULINGS
21898 7590 07/21/2016
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
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.
70670 4068
EXAMINER
TISCHLER, FRANCES
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/21/2016 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HARRY R. HEULINGS and WILLIE LAU1
Appeal2015-000955
Application 13/331,687
Technology Center 1700
Before: ROMULO H. DELMENDO, BRIAND. RANGE, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants timely appeal under 35 U.S.C. § 134(a) from a Rejection2
of claims 1-9. (App. Br. 4.)3 We have jurisdiction. 35 U.S.C. § 6(b). We
affirm.
1 The Real Party in Interest is identified as Rohm and Haas Company.
(Appeal Brief, filed 21July2014 ("App. Br."), 2.)
2 Final Office Action mailed 20 February 2014 ("Final Rejection"; cited as
"FR.").
3 No reply brief has been filed.
Appeal2015-000955
Application 13/331,687
A. Introduction4
OPINION
The subject matter on appeal relates the use of"[ w ]aste rubber or
vulcanizate, such as ground tire rubber" to "capture more of the value of the
materials in them." (Spec. 1, 11. 9, 13.) The claims are more specifically
directed to a solid phase mixing or SPM method "for forming shelf stable,
fluidizable particles comprising thermoplastic polymer encapsulated
vulcanizates from a waste stream, as well as to the fluidizable particles
themselves, and to shaped articles made from the fluidizable particles." (Id.
at 1, 11. 5-8; 2, 1. 11.) "The fluidizab le particles of the present invention can
[] be made from ground, shredded or pulverized waste rubber vulcanizate
particles" which is mixed with "the emulsion of [a] thermoplastic polymer"
to "form a moist mixture prior to adding and mixing in passivating agent."
(Id. at 2, 11. 25-26; 6, 11. 23-25.) As a result, the moist mixture includes
"thermoplastic polymer encapsulated vulcanize" which may be dried to form
granular particles. (Id. at 2, 11. 20-23.)
Representative Claim 1 reads:
A method for making substantially plasticizer free shelf-
stable fluidizable particles comprise mixing from 35 wt.% to 90
wt.%, based on total solids, of particles of one or more
vulcanizate having a sieve particle size of from 10 to 800 µm, 10
to 65 wt.%, based on total solids, of one or more thermoplastic
polymer in the form of an emulsion of a thermoplastic polymer
in the presence of from 0.05 to 3 wt.%, based on total solids, of
a passivating agent, to form a substantially plasticizer free moist
mixture having a total solids content of 65 wt.% or more,
4 Application 13/331,687, Method to Produce Polymer Modified Ground
Tire Rubber, filed 20 December 2011. We refer to the '"687 Specification,"
which we cite as "Spec."
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Application 13/331,687
followed by drying the moist mixture to form tluidizable
particles.
(App. Br. 9.)
The Examiner maintains the following grounds of rejection: 5
A. Claims 1--4 and 7-9 stand rejected under
35 U.S.C. § 103(a) in view ofFendley,6 Woods,7 and
Wideman. 8
A 1. Dependent claims 5 and 6 stand rejected under
35 U.S.C. § 103(a) in view of Fendley, Woods,
Wideman, and Coffey.9
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Rejection A: Claim 110
Appellants argue that "the art fails to disclose ... a water dispersion
of a vulcanizate" (App. Br. 5) but fail to refute the Examiner's specific fact
5 Examiner's Answer mailed 14 August 2014 ("Ans.").
6 John Atton Fendley, New Thermoplastic Moulding Compositions, GB
Patent No. 841215, published 13 July 1960 ("Fendley").
7 Martin E. Woods & Daniel M. Chang, Process for Producing Elastomeric
Particles Free of Agglomeration, U.S. Patent 4,269,740, issued 26 May
1981 ("Woods").
8 Lawson Gibson Wideman et al, Process for Improving the Properties of
Ground Recycled Rubber, U.S. Patent No. 5,883,139, issued 16 March 1999
("Wideman").
9 Gerald P. Coffey, Process for Coloring Vulcanized Rubber with Improved
Color Durability, U.S. Patent Application Publication 2002/0128366 Al,
published 12 September 2002 ("Coffey").
10 Claims 2--4 and 7-9 stand or fall with claim 1. (App. Br. 4.)
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Application 13/331,687
findings with regard to the cited references Fendley, Woods, and Wideman.
(Id. at 4-6.) In particular, the Examiner found that Fendley discloses mixing
"100 parts of a methacrylate-styrene polymer" which is a thermoplastic with
"10-70 parts" of "a partially crosslinked" polymer-the crosslinked form
thereof being a "vulcanizate" as recited in claim 1-to prepare an end
product. (NFR. 5.) 11 The Examiner found that Fendley discloses using
"emulsion polymerisation [sic]" to make the end product. (Id. (citing
Fendley, 1, 11. 34-35).) In addition, the Examiner found that Fendley
teaches mixing the methacrylate copolymer and the partially cross-linked
rubber polymer "in any known way" including dispersion followed by the
mixing of the materials and drying to isolate the solids. (NFR. at 5-6.) The
Examiner found further that because Fendley does not add plasticizers and
the process in Fendley is substantially identical to the process recited in
claim 1 it would result in a "substantially plasticizer free" product. (Id. at 6;
Ans. 3.)12 None of these findings have been shown to be harmfully
erroneous.
Other than stating "Woods also fails to disclose any vulcanizate"
which is unrefuted, Appellants do not discuss the cited reference Woods.
(See App. Br. 5.) Therefore, the Examiner's finding that Woods "discloses a
method of mixing an emulsion of a thermoplastic with a dispersion of
11 In the Final Rejection mailed 20 February 2014, the Examiner maintained
the rejections for reasons "as stated in the previous office action of
10/24/13." The previous Non-Final Rejection mailed 24 October 2013 is
cited as "NFR."
12 The '955 Specification provides that "the term 'substantially plasticizer
free' refers to a composition that has no added plasticizer." (Spec., 5, 11. 16-
17.) Appellants do not refute the Examiner's finding that Fendley is silent
on adding plasticizer to the mixing process. (Ans. 3; see App. Br. 4-5.)
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Application 13/331,687
powdered or crumb rubber, and further adding conventional coagulating
agents ... to form free flowing/fluidizable particles upon drying" is
unrefuted. (See id; Ans. 4.) The Examiner's finding that Woods discloses
using "2-10% of a coagulating agent such as aluminum sulfate, which is a
passivating agent" to "mix the crumb rubber with an emulsion of a
thermoplastic" is also unrefuted. (See App. Br. 5; Ans. 11.)
With regard to the cited reference Wideman, Appellants do not refute
that it discloses a method of mixing recycled vulcanized rubber "having an
individual particle size no greater than 420 microns" with other
unvulcanized polymers and adding a multivalent metal as a passivating
agent to improve certain properties of the vulcanizate. (Ans. 6 (citing
Wideman Abstract and other portions)). Appellants do not refute the finding
that Wideman discloses mixing "[f]rom 1 to 40 parts by weight of the treated
recycle rubber" with "60 to 99 parts by weight of at least one unvulcanized
rubber" which overlaps with the claimed ranges. (Ans. 6 (citing Wideman 2,
11. 30-33).) Appellants, however, argue that the Examiner erred because
"Fendley fails to disclose any method of mixing vulcanizate with another
polymer ... that would result from the instantly recited methods" as "it
would be improper to combine Fendley with Wideman to add a
vulcanizate." (App. Br. 5-6)
"An assertion of what seems to follow from common experience is
just attorney argument and not the kind of factual evidence that is required to
rebut a primafacie case of obviousness." In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997). Here, other than asserting that "it would be improper
to combine Fendley with Wideman to add a vulcanizate," Appellants do not
explain why the Examiner erred in finding that one of ordinary skill in the
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Application 13/331,687
art would have known to replace the "cross-linked polymer" disclosed in
Fendley (Fendley, 2, 11. 44) with the "recycled rubber" in Wideman
(Wideman, 2, 11. 29-37) because the references "are in the same field of
endeavor of mixing cross-linked rubber and an emulsion polymer and a
multivalent metal component." (See App. Br. 5; see also Ans. 10.)
Appellants' statement that "[t]he vulcanizate in Wideman is recycled
rubber" whereas "the rubbery copolymer in Findley ... is thermoplastic, soft
and water dispersible" (App. Br. 6.) does not address the Examiner's finding
that Findley teaches using emulsion polymerization to mix a thermoplastic
with a partially cross-linked polymer which would include a vulcanizate.
Appellants do not explain, based on such differences, why it would have
been beyond a skilled artisan's skill to make the substitution found by the
Examiner. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellants' blanket assertion that the Examiner erred by failing to show a
reasonable expectation of success "in making a useful composition" based
on the combined teachings of the references (App. Br. 6), without
specificity, cannot show that the "combination of familiar elements
according to known methods ... does no more than yield predictable
results." See id., 550 U.S. at 416.
In this regard, the Appellants' arguments are also ineffective because
they fail to address the rationale provided by the Examiner for combining
these references-namely, for "the benefits of using scrap rubber in lieu of
virgin rubber in that there is a large source of vulcanized rubber available to
be recycled" and adding a passivating agent "to ensure that the crumb rubber
[disclosed in Woods] and the thermoplastic do not form separate phases and
so that the thermoplastic coats the crumb rubber." (Ans. 10, 11.) We are
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Application 13/331,687
also unpersuaded by the Appellants' individual arguments with respect to
Fendley or Wideman (without addressing Woods) because each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). See Ex parte Belinne, No 2009-
004693, 2009 WL 2477843 (BPAI 2009) (informative) ("[W]e find that the
Examiner has made extensive specific fact finding ... with respect to each
of the argued claims. Appellants' argument ... repeatedly restates elements
of the claim language and simply argues that the elements are missing from
the reference. However, Appellants do not present any arguments to explain
why the Examiner's explicit fact finding is in error"). See also 37 C.F.R.
§ 41.37(c)(l)(vii) (noting that an argument that merely points out what a
claim recites is unpersuasive).
Rejection Al: Claims 5-6
Dependent claim 5 depends from claim 1 and recites "wherein the
drying is carried out under vacuum and heat with agitation and fluidization."
Dependent claim 6 depends from claim 5 and recites "wherein the drying is
carried out in a ribbon mixer." (App. Br. 9.)
The Examiner found that Coffey discloses that the "binding
interactions between elastomer/colorant/vulcanized rubber particles should
be enhanced by the application of heat as in, for example, the drying step."
(NFR. 10 (citing Coffey,-i,-i 69, 70).) The Examiner found that Coffey
discloses using "blenders equipped with ribbon" or "a vibrating conveyer
belt passing through a bank of infrared heaters" to apply heat. (Coffey ,-i,-i
69, 70.) Appellants do not refute these teachings but argue that the cited
reference Coffey "cannot properly be combined with Fendley to arrive at the
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instant claims" because Coffey discloses "large rubber particles" which "is
not like either polymer of Fendley." (App. Br. 6.)
We are, however, not persuaded by this argument. Appellants do not
explain how the difference based on the "large rubber particles" in Coffey
would be applied to the drying process to show patentability over the prior
art teachings. Appellants do not argue, for example, the large rubber
particles in Coffey require a different type of drying process that would not
work for the process in Fendley. Appellants have pointed to no error in the
Examiner's rationale in combining the references-namely, a skilled artisan
would have known to apply the drying techniques in Coffey based on
Fendley's disclosure about drying the end product. (See App. Br. 6-7; see
also Ans. 13-14; NFR. 10-11.)
DECISION
The Examiner's rejections of claims 1-9 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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