11317087 (P.T.A.B. Mar. 14, 2013)

Ex Parte Hochi et al

Patent Trial and Appeal BoardMar 14, 2013

11317087 (P.T.A.B. Mar. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SUMITOMO RUBBER INDUSTRIES, LTD (Inventors: Kazuo Hochi and Kenichi Uesaka) ____________________ Appeal 2012-001615 Application 11/317,087 Technology Center 1700 ____________________ Before FRED E. McKELVEY, KAREN M. HASTINGS and MICHAEL P. COLAIANNI, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001615 Application 11/317,087 2 Statement of the case Sumitomo Rubber Industries, Ltd. (“applicant”), the real party in interest 1 (Brief, page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 2 25 January 2011. 3 The application was filed in the USPTO on 27 December 2005. 4 The application on appeal claims priority of Japanese patent application 5 2005-21240, filed 28 January 2005. 6 The application has been published as U.S. Patent Application Publication 7 2006/0173118 A1. 8 In support of prior art rejections, the Examiner relies on the following 9 evidence: 10 Amaddeo et al. “Amaddeo” U.S. Patent 6,624,233 B2 23 Sep. 2003 Yamazaki et al. “JP ‘939” Japanese published patent application JP 57-170939 A 21 Oct. 1982 Consistent with the Examiner and applicant, we will refer to Yamazaki as 11 “JP ‘939”. 12 Applicant does not contest the prior art status of the evidence relied upon by 13 the Examiner. 14 Applicant relies on the following evidence: 15 Rule 132 Declaration of Kenichi Uesaka Signed 12 March 2009 Rule 132 Declaration of Kazuo Hochi Dated: 18 Aug. 2010 Appeal 2012-001615 Application 11/317,087 3 We refer to the following evidence: 1 Chevallier et al. “Chevallier” U.S. Patent 4,590,0521 20 May 1986 Amino et al. “Amino” U.S. Patent 7,652,096 B2 26 Jan. 2010 Komatsu et al. “Komatsu” EP 0819741 A2 21 Jan. 1998 Nakamura et al. “Nakamura” EP 0816424 B1 18 Jul. 2001 Mizuno EP 1125976 B1 9 Nov. 2005 Brunauer et al. “Brunauer” Adsorption of Gases in Multimolecular Layers, 60 J. Am. Chem. Soc. 309-319 1938 We have jurisdiction under 35 U.S.C. § 134(a). 2 Claims on appeal 3 Claims 1, 3-4, 6 and 9-10 are on appeal. Brief, page 2; Answer, page 3. 4 Claim 1, which we reproduce from the Claim Appendix of the Brief 5 (page 8), reads [matter in brackets, strikethrough and indentation added (see 6 37 CFR § 1.75(i)); principal limitations in issue in italics]: 7 A rubber composition comprising 8 [[A] a rubber component]: 9 [B] 30 to 150 parts by weight [based on 100 parts by weight of 10 the rubber component] of the total of 11 1 Chevallier is the U.S. equivalent of EP 0 157 703 mentioned at col. 3:55 of Amaddeo. Appeal 2012-001615 Application 11/317,087 4 (1) silica with a nitrogen adsorption specific area of 1 20 to 50 m2/g and 2 (2) silica with a nitrogen adsorption specific area of 3 180 m2/g or more 4 based on 100 parts by weight of a rubber component, 5 wherein the content of silica (1) and silica (2) satisfies the 6 following formula: 7 [content of silica (1)] x 0.2 ≤ [content of silica (2)] ≤ [content of silica (1)] x 6.5 8 [C] further comprising 0.5 to 5 parts by weight [based on 100 9 parts by weight of the rubber component] of an organic vulcanizing agent 10 represented by the 11 following formula: 12 ─(R─Sx)n─ 13 wherein 14 R is (CH2─CH2─O)m─CH2─CH2, 15 x is an integer of 3 to 5, 16 n is an integer of 200 to 300, and 17 m is an integer of 2 to 3, based on 100 parts by weight of a 18 rubber component. 19 Claim 1 reproduced above is our understanding of what applicant intends to 20 claim. The deleted “of the total” language is not fully understood. In two 21 instances the language “a rubber component” is not entirely clear; we have added a 22 limitation requiring a rubber component as element [A]. For clarity, we have 23 Appeal 2012-001615 Application 11/317,087 5 moved the 100 parts by weight of the rubber component. Lastly, we understand R 1 to be: 2 ─(CH2─CH2─O)m─CH2─CH2─. 3 Any needed clarifications can be made in the event of further prosecution. 4 Applicant does not single out Claims 3-4, 6 and 9-10 for separate 5 consideration. Accordingly, we decide the appeal on the basis of Claim 1. 6 37 CFR § 41.37(c)(1)(vii). 7 Rejection 8 In the Answer, the Examiner maintains a final rejection of the claims on 9 appeal as being unpatentable under § 103(a) over Amaddeo and JP ‘939. Answer, 10 page 4. 11 Analysis 12 New rejection 13 Claim 1 calls for a nitrogen adsorption specific area of 20 to 50 m2/g and a 14 nitrogen adsorption specific area of 180 m2/g or more. The Specification fails to 15 state how the nitrogen adsorption specific area is measured. 16 Evidence reveals that there are several ways to measure nitrogen adsorption 17 specific area. 18 Amino, a Yokohama Rubber Co., Ltd. patent, indicates that nitrogen 19 adsorption specific area can be measured using JIS-K6217. Col. 2:31-3. 20 Nakamura, a Nippon Zeon Co., Ltd. patent, indicates that nitrogen 21 adsorption specific area can be measured using a BET method according to 22 ASTM D 3037-81. Page 3:1-2. 23 Appeal 2012-001615 Application 11/317,087 6 Komatsu, a Bridgestone Corporation patent, indicates that nitrogen 1 adsorption specific area can be measured according to ASTM D 3037-89. Page 3, 2 eighth paragraph. 3 Mizuno, a Sumitomo Rubber Industries Ltd. patent, (like Nakamura) 4 indicates that nitrogen adsorption specific area can be measured ASTM D 3037-81. 5 Page 2. 6 Brunauer, where the BET method was described in 1938, appears to indicate 7 that the BET method can be used to determine surface area and that the method is 8 based on a gas adsorption. 9 What is missing from applicant’s specification, but is present in Amino, 10 Nakamura, Komatsu and Mizuno (owned by applicant), is a description of the 11 method used to determine specific area using nitrogen adsorption. 12 Because a description of the method used to determine nitrogen adsorption 13 specific area is missing from applicant’s Specification, we find that the 14 Specification does not contain a “full”, “clear” or “exact” description which would 15 enable one skilled in the art to practice the invention (35 U.S.C. § 112(a)) and that 16 the phrase “nitrogen adsorption specific area” is indefinite (35 U.S.C. § 112(b)). 17 Cf. Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 18 2008) (claim is indefinite when it includes a numeric limitation without disclosing 19 which of multiple methods of measuring that number should be used, Honeywell 20 Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1340 (Fed. Cir. 2003)). 21 The definition of nitrogen adsorption surface area is important in this appeal. 22 Applicant attempts to distinguish Amaddeo on the basis of alleged nitrogen 23 adsorption surface area differences. 24 Appeal 2012-001615 Application 11/317,087 7 Ordinarily when a claim term is indefinite, it is not necessary to address a 1 § 103(a) rejection. Claimed subject matter does not become obvious because a 2 claim is indefinite. In re Steele, 305 F.2d 859, 863 (CCPA 1962); In re Wilson, 3 424 F.2d 1382, 1385 (CCPA 1970) (if a word in a claim has no clear meaning, the 4 claimed subject matter does not become obvious -- the claim becomes indefinite). 5 In this case, we will review the § 103(a) rejection. The applicant and the 6 Examiner seem to have assumed sub silencio that the standard used to determine 7 applicant’s nitrogen adsorption surface area measurements and the standard 8 described by Amaddeo for determining BET surface area is not significant. In 9 deciding the § 103(a) rejection, we will do likewise. 10 Rejection on appeal 11 Applicant presents two principal arguments on appeal. 12 First, applicant maintains that there are significant differences between the 13 prior art and the subject matter of Claim 1. Brief, pages 5-7. 14 Second, applicant further maintains that the invention of Claim 1 has 15 “advantages” over the prior art. Brief, pages 3-4. According to applicant, 16 Amaddeo “fails to recognize the unexpected advantages . . .” Brief, page 6:4. 17 Alleged differences between Claim 1 and the prior art 18 (1) 19 According to applicant, Amaddeo fails to describe a rubber composition 20 having: 21 (1) a first silica with a N2SA [nitrogen adsorption specific area] of 22 20 to 50 m2/g [square meters per gram] in combination with 23 (2) a second silica. 24 Appeal 2012-001615 Application 11/317,087 8 Amaddeo describes a rubber composition containing a first silica having a 1 BET surface area not greater than 130 m2/g, preferably not greater than 110 m2/g.2 2 Col. 3:42-43. At the time of applicant’s invention, silica having a N2SA surface 3 area of 50 m2/g was known. For example, a known silica is ULTRASIL 360 said 4 to be manufactured by Degussa Corporation (Specification, page 7:15-16.3 5 Applicant appears to be using a known silica (ULTRASIL 360) having a 6 surface area not greater than 110 m2/g (as called for by Amaddeo) for its intended 7 purpose. Amaddeo, like applicant, seeks “reduced rolling resistance” col 2:24-25. 8 In addition to its “[p]referably” (col. 3:29) discussion, Amaddeo states that 9 for the purpose of its invention, silica can be that described in EP 0 157 703. The 10 U.S. equivalent of EP 0 157 703 describes silica have a BET surface area between 11 about 50 and 350 m2/g. Chevallier, col. 3:12-14 (italics added). The Amaddeo 12 invention, of course, is not limited to its preferred embodiment. 13 2 Consistent with our assumption, applicant does not contend that there is a difference between (1) Amaddeo’s BET surface area according to ISO standard 5794/1 and (2) applicant’s nitrogen adsorption specific area measurements (however made). 3 Applicant maintains that Amaddeo “prefers a first silica with a BET surface area of at least 80 m2/g.” Brief, page 5. No citation to Amaddeo is provided by applicant for a BET surface area of at least 80 m2/g. It appears applicant bases its “BET surface area at least 80 m2/g” on Amaddeo’s description of CTAB adsorption according to ISO standards 6810. Col. 3:44-46. A CTAB surface area does not appear to be a nitrogen adsorption based measurement. See Chevallier, col. 1:25-30 (Chevallier being the US equivalent of EP 0 157 703 mentioned at col. 3:55 of Amaddeo). Appeal 2012-001615 Application 11/317,087 9 Amaddeo also describes the use of a combination of two silicas. 1 Col. 4:12-14. See also Amaddeo Claim 5. 2 (2) 3 Amaddeo does not describe the use of applicant’s claimed “organic 4 vulcanizing agent.” Rather, Amaddeo describes the use of “sulfur or sulfur-5 containing molecules (sulfur donors) . . .” Col. 7:52-53. 6 Sulfur has long been used to vulcanize rubber. JP ‘939, page 2. However, 7 according to JP ‘939, compounds of Formula I when used to vulcanize rubber 8 result in good heat aging resistance and flex cracking resistance. JP ‘939, 9 pages 2-3. Formula 1 compounds have the formula: 10 ─(R─Sx)n─ 11 wherein 12 R is (CH2─CH2─O)3-5─CH2─CH2─ 13 x is an integer of 3 to 6 (applicant’s x is 3-5), 14 n is an integer of 10 to 300 (applicant’s n is 200-300). 15 JP ‘939, page 2:1-2. 16 JP ‘939 describes specific embodiments of Formula 1 wherein n is 62 17 (page 8), 94 (page 9) and 177 (page 8). 18 Nevertheless, the organic vulcanizing agents described by JP ‘939 overlap in 19 scope with those claimed by applicant. Applicant faults JP ‘939 because it fails to 20 describe a specific embodiment where n is in the range of 200-300. However, a 21 reference is not limited to its specific embodiments and JP ‘939 explicitly 22 describes a range that includes n = 200 to 300. 23 Appeal 2012-001615 Application 11/317,087 10 Unexpected results 1 An applicant attempting to establish unexpected results must do so with 2 clear and convincing evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It 3 was incumbent upon appellants to submit clear and convincing evidence to support 4 their allegation of unexpected . . . property.”). See also McClain v. Ortmayer, 5 141 U.S. 419, 429 (1891) (conclusive evidence needed to establish new function). 6 Moreover, a showing of unexpected results must be commensurate scope with a 7 claimed range. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“[T]he record 8 does not show that the improved performance would result if the weight-9 percentages were varied within the claimed ranges. Even assuming that the results 10 were unexpected, Harris needed to show results covering the scope of the claimed 11 range.”). 12 The Examiner declined to give controlling weight to the Specification and 13 declaration data. Answer, page 6. In particular, the Examiner found that the 14 evidence of alleged unexpected results is not commensurate in scope with the 15 breadth of the claims. Id. 16 Examples 1 and 2 (Table 1) of the Specification do not fall within the scope 17 of the claimed invention because only a sulfur vulcanization agent is described as 18 having been used. The claims on appeal call for use of an organic vulcanizing 19 agent. 20 Examples 3-4 and 6 (Table 2) appear to fall within the scope of the 21 invention. Example 5 describes use of only a sulfur vulcanizing agent. Example 7 22 describes the use of 35 parts of organic vulcanizing agent per 100 parts of SBR 23 Appeal 2012-001615 Application 11/317,087 11 (Claims calls for 0.5 to 5 parts per 100 parts of rubber). Table 2 reveals the 1 following data (matter in italics referring to limitations in Claim 1 added): 2 Table 2 Compounding amounts (parts by weight) Example 3 Invention Example 4 Invention Example 5 not invention Example 6 Invention Example 7 Not invention SBR (styrene butadiene rubber 100 100 100 100 100 Silica (1) area 50 m2/g (Claim 1 20-50 m2/g) 40 40 40 40 40 Silica (2) area 200 m2/g (Claim 1 > 180 m2/g) 20 20 20 20 20 Sulfur vulcanizing agent 1 - 1.5 1 - Organic vulcanizing agent x =4 m = 2 n = 200 (Claim 1 x = 3-5 m = 2-3 n = 200-300) 1 (Claim 1 0.5 – 5) 5 (Claim 1 0.5 – 5) - 0.5 (Claim 1 0.5 – 5) 35 (Claim 1 0.5 – 5) Index of rolling resistance 102 103 100 102 104 Appeal 2012-001615 Application 11/317,087 12 1 Inventor Kenichi Uesaka presented Rule 132 testimony (dated 12 March 2 2009) based on what he says is experimental work. According to Inventor Uesaka, 3 SBR containing a sulfur vulcanizing agent (but no organic vulcanizing agent) 4 resulted in an index of rolling resistance performance of 104 and 106 when various 5 amounts of 50 m2/g silica was tested (40 and 48 parts per 100 parts of SBR) vis-à-6 vis an index of rolling resistance performance of 96 and 98 when 60 m2/g silica 7 was tested (again 40 and 48 parts per 100 parts of SBR). Declaration, page 5, 8 Table A. 9 The Uesaka experiments are of compositions outside the scope of Claim 1 10 because no organic vulcanizing agent is indicated as being present. 11 Inventor Kazuo Hochi also presented Rule 132 testimony (dated 18 August 12 2010) based on experimental work. The purpose of the Hochi testimony is to 13 establish the significance of the use of Sumitomo’s organic vulcanizing agent 14 vis-à-vis those described by Yamazaki. Examples 3-6 represent the claimed 15 invention, although Examples 3 and 6 include sulfur (not excluded by Claim 1). 16 Examples A, B and C are outside the scope of Claim 1 because n = 130 and 17 Claim 1 calls for n = 200 to 300. The results are shown in Table A on page 6 of 18 the Hochi Declaration. 19 Appeal 2012-001615 Application 11/317,087 13 Compounding amounts (parts by weight) Example 3 Invention Example 4 Invention Example 5 not invention Example 6 invention Example A not invention Example B not invention Example C not invention SBR (styrene butadiene rubber 100 100 100 100 100 100 100 Silica (1) area 50 m2/g (Claim 1 20-50 m2/g) 40 40 40 40 40 40 40 Silica (2) area 200 m2/g (Claim 1 > 180 m2/g) 20 20 20 20 20 20 20 Sulfur vulcanizing agent 1 - 1.5 1 1 - 1 Organic vulcanizing agent x =4 m = 2 n = 200 1 (Claim 1 0.5 – 5) 5 (Claim 1 0.5 – 5) - 0.5 (Claim 1 0.5 – 5) - - - Organic vulcanizing agent x =4 m = 2 n = 130 - - - - 1 5 0.5 Index of rolling resistance performance 102 103 100 102 99 96 99 The evidence shows that an index of rolling resistance performance above 1 100 can be achieved with rubber compositions falling within the scope of Claim 1. 2 The evidence also shows that an index of rolling resistance performance of 100 or 3 Appeal 2012-001615 Application 11/317,087 14 less can be achieved with rubber compositions outside the scope of Claim 1. The 1 significance of the index data is not altogether clear although we recognize that a 2 higher index means less resistance and less resistance in a tire is desirable. 3 We agree with the Examiner’s analysis of the data. Answer, pages 6-7. For 4 example, the Examiner has a point that the data does not cover the Silica (1) range 5 of 20-50 m2/g. Rather the Silica (1) data is limited to 50 m2/g. Data in Table A on 6 page 5 of the Uesaka testimony shows that a variance of 10 m2/g (from 50 m2/g 7 [Silica (1)) to 60 m2/g (Silica (4))] can lower the index of rolling resistance 8 performance from 104 and 106 to 96 and 98. Hence, there is no reliable, let alone 9 clear and convincing evidence, of what might result using Silica (1) at 20 m2/g. 10 The same analysis would be applicable to the Examiner’s finding that the 11 experimental data is limited to a Silica (2) having a nitrogen specific surface area 12 of 200 m2/g whereas Claim 1 calls for a Silica (2) having a nitrogen specific 13 surface area measured in m2/g of greater than 180. 14 We have no basis for disagreeing with the weight the Examiner assigned to 15 the data. 16 Other arguments 17 We have considered applicant’s remaining arguments and find none that 18 warrant reversal of the Examiner’s prior art rejection. Cf. In re Antor Media 19 Corp., 689 F.3d 1282, 1294 (Fed. Cir. 2012). 20 Decision 21 Upon consideration of the appeal, and for the reasons given herein, it is 22 ORDERED that the decision of the Examiner rejecting the claims on 23 appeal under § 103(a) is affirmed. 24 Appeal 2012-001615 Application 11/317,087 15 FURTHER ORDERED that we have entered a new rejection based 1 on § 112. 2 FURTHER ORDERED that since we have referred to the Chevallier 3 patent and the Specification to show silica having a 50 m2/g surface area, we 4 designate our affirmance as a new rejection. 37 CFR § 41.50(b). 5 FURTHER ORDERED that our decision is not a final agency 6 action. 7 FURTHER ORDERED that within two (2) months from the date of 8 our decision, appellant may further prosecute the application on appeal by 9 exercising on of the two following options: 10 Option 1: Request that prosecution be reopened by submitting 11 an amendment or evidence or both. 37 CFR § 41.50(b)(1). 12 Option 2: Request rehearing on the record presently before the 13 Board. 37 CFR § 41.50(b)(2). 14 FURTHER ORDERED that no time period for taking any 15 subsequent action in connection with this appeal may be extended under 37 CFR 16 § 1.136(a)(1)(iv). 17 AFFIRMED 18