Ex Parte Merino Lopez et alDownload PDFPatent Trial and Appeal BoardOct 10, 201813386210 (P.T.A.B. Oct. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/386,210 04/20/2012 Jose Merino Lopez 153967 7590 10/11/2018 FITZPATRICK CELLA HARPER & SCINTO (MICHELIN) 1290 A venue of the Americas NEW YORK, NY 10104-3800 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. 03161.002299. 6730 EXAMINER CHANG, JOSEPHINE L ART UNIT PAPER NUMBER 1768 MAIL DATE DELIVERY MODE 10/11/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSE MERINO LOPEZ, SEBASTIEN RIGO, MICHEL AHOUANTO, FREDERIC PIALOT, and DAMIEN FOMBELLE Appeal2017-008410 Application 13/3 86,210 Technology Center 1700 Before TERRY J. OWENS, RAEL YNN P. GUEST, and CHRISTOPHER L. OGDEN Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 16-20 and 26-29. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a pneumatic tire having a built-in self-sealing layer. Claims 16 and 20 are illustrative: 16. A pneumatic tire with a built-in self-sealing layer, the tire compnsmg: an outer rubbery tread; a carcass reinforcement; Appeal2017-008410 Application 13/386,210 a gastight layer located at an inside position relative to the carcass reinforcement; a separable protective layer positioned innermost; and a self-sealing layer adjacent to the separable protective layer and located at an inside position relative to the gastight layer, wherein the separable protective layer is a thermoplastic film that includes at least a fluorinated ethylene-propylene (PEP) copolymer, the thickness of the film being between 7 and 30 micrometers, and wherein the self-sealing layer comprises at least one thermoplastic styrene (TPS) elastomer and more than 200 phr of an extender oil of said elastomer, with phr signifying parts by weight per 100 parts of elastomer. 20. A pneumatic tire with a built-in self-sealing layer, the tire compnsmg: an outer rubbery tread; a carcass reinforcement; a gastight layer located at an inside position relative to the carcass reinforcement; a separable protective layer positioned innermost; and a self-sealing layer adjacent to the separable protective layer and located at an inside position relative to the gastight layer, wherein the separable protective layer is a thermoplastic film that includes at least a fluorinated ethylene-propylene (PEP) copolymer, the thickness of the film being between 7 and 30 micrometers, and wherein the self-sealing layer includes at least: (a) greater than 70 phr of natural rubber, (b) 45 to 7 5 phr of a hydrocarbon resin having a softening point above 50°C, ( c) 10 to 30 phr of a liquid polybutadiene plasticizer having a glass transition temperature below -20°C, and ( d) from Oto less than 30 phr of a filler, with phr signifying parts by weight per 100 parts of elastomer. 2 Appeal2017-008410 Application 13/386,210 Majmndar (Majmndar '967) Sanda Majmndar (Majmndar '557) Majmndar (Majmndar '482) Albert 1 The References US 2004/0103967 Al US 2006/0194898 Al US 7,419,557 B2 US 2009/0084482 Al US 2010/0051158 Al The Rejections June 3, 2004 Aug. 31, 2006 Sept. 2, 2008 Apr. 2, 2009 Mar. 4, 2010 The claims stand rejected under 35 U.S.C. § I03(a) as follows: claims 16-19 and 26-29 over Majumdar '482 in view ofMajumdar '967 and Albert, as evidenced by Majumdar '557, and claim 20 over Majumdar '482 in view of Majumdar '967 and Sanda. OPINION We affirm the rejections. The Appellants argue claims 16-19 and 26-29 as a group (App. Br. 17). We, therefore, limit our discussion to one claim in that group, i.e., claim 16, and claim 20. Claims 17-19 and 26-29 stand or fall with claim 16. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012). Claims 16 and 20 require a pneumatic tire comprising a self-sealing layer adjacent to a separable protective layer which is a thermoplastic film including at least a fluorinated ethylene-propylene (PEP) copolymer. Majumdar '482 discloses a pneumatic tire comprising a self-sealing layer (precursor sealant layer 23) adjacent to a separable protective layer (removable barrier layer 24) (i1i116, 17; Fig. 2). The self-sealing layer is exemplified as a polyurethane or a butyl-based rubber, but generally can be any non-flowing sealant material known in the art (i1i119, 20, 22). The 1 The Examiner relies upon Albert as an English language equivalent of FR 2 910 478 Al (filed June 27, 2008) (Ans. 2). 3 Appeal2017-008410 Application 13/386,210 removable barrier layer (24) is a thermoformable film exemplified as nylon or a blend of nylon and rubber (i-f 17). Majumdar '967 discloses a pneumatic tire comprising a self-sealing layer which typically is a butyl/polyisobutylene rubber, and a separable protective layer (barrier film (20) (i1i1 43, 80). The barrier film (20) is a thermoformable film and can be a fluorinated lower olefin having from 2 to 4 carbon atoms ( e.g., a fluorinated ethylene-propylene (PEP) copolymer), poly(mehylpentene ), or an unoriented or partially oriented polyamide such as nylon (i1i1 17, 31 ), and is placed on any virgin interior or exterior tire surface to prevent it from being contacted by release agent applied to the tire (i1i1 4--6, 30, 31, 95). Establishing a prima facie case of obviousness requires showing that one of ordinary skill in the art would have had both an apparent reason or suggestion to modify the prior art and predictability or a reasonable expectation of success in doing so. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007); In re Vaeck, 947 F.2d 488,493 (Fed. Cir. 1991). The Appellants argue that one of ordinary skill in the art would not have been motivated to combine Majumdar '482 and Majumdar '967 because 1) Majumdar '482 's precursor sealant layer (23) differs chemically and functionally from Majumdar '967's rubber innerliner (16), 2) Majumdar did not include PEP from the Majumdar '967 patent application in the later-filed Majumdar '482 application, and 3) Majumdar '557 disparages Majumdar '967's removable films (App. Br. 9-13, 15; Reply Br. 2, 3, 5). 2 2 Majumdar '557 states that "[w]hile the [Majumdar '967] protective barrier initially sticks well to the green innerliner, it has a tendency to separate or shift during the high pressure lining cement spray and/ or during shaping by 4 Appeal2017-008410 Application 13/386,210 The tire surfaces to which Majmndar '967's barrier film (20) can be applied are not limited to the rubber innerliner (16) but, rather, include any interior or exterior virgin surface (i1i16, 30). Because Majumdar '482's precursor sealant layer (23) is a virgin surface and Majumdar '967's tire can include a self-sealing layer (80), 3 one of ordinary skill in the art would have been motivated to use Majumdar 967's barrier film (20) as Majumdar '482's removable barrier layer (24) applied to Majumdar '482 's precursor sealant layer (23). Whether Majumdar included PEP in the Majumdar '482 application is irrelevant because obviousness is determined based upon what would have been obvious to one of ordinary skill in the art, not what an inventor chose to include in a patent application. Majumdar '557's discussion ofMajumdar '967's barrier film (20)'s adhesion (col. 2, 11. 37- 42) pertains to adhesion to Majumdar '967's rubber innerliner (16), not to Majumdar '482's precursor sealant layer (23) which, Majumdar '482 states, can be gel-like and tacky (i-f 20). Regarding predictability or reasonable expectation of success, the Appellants argue that one of ordinary skill in the art would not have been able to predict that Albert's or Sanda's pneumatic tire self-sealing compositions relied upon by the Examiner with respect to claims 16 and 20, respectively (Ans. 3, 5), could be used with Majumdar '967's barrier layer (20) because neither Albert nor Sanda discloses that the self-sealing the curing bladder, and thus, may not completely prevent contamination of the innerliner surface" (col. 2, 11. 37--42). 3 Majumdar '967 does not disclose whether the self-sealing layer (80), like Majumdar '482's precursor sealing layer (23) (i-f 18), is applied before the tire is cured, in which case covering it with the barrier film (20) would shield it from release agent, or after the tire has been cured. 5 Appeal2017-008410 Application 13/386,210 composition can be used with any separable protective layer, particularly one containing PEP (App. Br. 10, 16; Reply Br. 6). Majumdar '482's disclosure that generally any non-flowing sealant material known in the art can be used with the removable barrier layer (24) (i-f 16) would have indicated to one of ordinary skill in the art that Albert's or Sanda's self-sealing composition can be used with Majumdar '482's removable barrier layer (24) (i-f 17). Both that barrier layer and Majumdar '967's barrier film (20) are a thermoformable film which is conforming, non-elastomeric, non-memory, substantially inextensible at ambient temperature, removable from the protected tire surface without tearing into pieces, not fusable to itself when overlapped and heated to tire cure temperature, and overlappable at its ends to form a pull tab for easy removal (Majumdar '482 ,r,r 17, 18; Majumdar '967, Abstract; ,r 17). Due to this similarity of properties ofMajumdar '482's removable barrier layer (24) and Majumdar '967's barrier film (20) and Majumdar '482 's disclosure that generally any non-flowing sealant material known in the art can be used with the removable barrier layer (24) (i-f 17), one of ordinary skill in the art would have had a reasonable expectation that Albert's and Sanda's self-sealing layer can be used with Majumdar '967's barrier film (20). See In re O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988) ("Obviousness does not require absolute predictability of success .... For obviousness under § 103, all that is required is a reasonable expectation of success"). Moreover, Majumdar '967's PEP barrier film (20), compared to nylon (Majumdar '482 ,r 17; Majumdar '967 i-f 31), provides the desirable benefit of relatively clean separation from the surface to which it is applied (Majumdar '967 ,r,r 72, 73). 6 Appeal2017-008410 Application 13/386,210 Thus, we are not persuaded of reversible error in the rejections. DECISION The rejections under 35 U.S.C. § 103(a) of claims 16-19 and 26-29 over Majumdar '482 in view of Majumdar '967 and Albert, as evidenced by Majumdar '557, and claim 20 over Majumdar '482 in view of Majumdar '967 and Sanda are affirmed. The Examiner's decision is affirmed. 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 7 Copy with citationCopy as parenthetical citation