14376703 (P.T.A.B. Nov. 28, 2018)

Ex Parte Obrecht et al

Patent Trial and Appeal BoardNov 28, 2018

14376703 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/376,703 08/05/2014 34947 7590 11/30/2018 LANXESS CORPORATION 111 RIDC PARK WEST DRIVE PITTSBURGH, PA 15275-1112 FIRST NAMED INVENTOR Werner Obrecht 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. POOl 00645USPCT 5960 EXAMINER LEE,DORISL ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 11/30/2018 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): ipmail@lanxess.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WERNER OBRECHT and LOTHAR STEGER Appeal2018-001939 Application 14/376,703 1 Technology Center 1700 Before BEYERL YA. FRANKLIN, BRIAND. RANGE, and JANE E. INGLESE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1, 3-5, 7-9, 11-15, and 21-23. We have jurisdiction. 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Appellant is the Applicant, LANXESS Deutschland GmbH. According to the Appeal Brief, the real party in interest is ARLANXEO Deutschland GmbH. Br. 3. Appeal2018-001939 Application 14/376,703 STATEMENT OF THE CASE2 Appellant describes the invention as relating to vulcanizable rubber mixtures suitable for studless treads for winter tires. Spec. 1 :3--4. In particular, Appellant states an object of the invention is producing treads that are reversion-resistant in the course of vulcanization while also having improved grip on snow and ice as well as high abrasion resistance and low rolling resistance. Id. at 3 :24--27. Claim 1, reproduced below with emphasis added to certain key recitations and some formatting modified for readability, is illustrative of the claimed subject matter: 1. A vulcanizable rubber mixture comprising: I.) 100 parts by weight of an oil-free rubber matrix having a glass transition temperature (Tg(matrix)) of -70Â°C to -90Â°C, and consisting of: a) 15 to 79 parts by weight of at least one solution SBR (S-SBR) (oil-free) having a glass transition temperature (Tg(s-sBR) of -70Â°C to -10Â°C, b) 20 to 7 5 parts by weight of at least one 1,4- cis-polybutadiene (BR) (oil-free) having a glass transition temperature (Tg(BR)) of -95Â°C to -115Â°C, and c) 1 to 37.5 parts by weight of natural rubber (NR) (oil-free) and/ or at least one synthetic polyisoprene (IR) (oil-free) having a glass transition temperature (Tg(NR)) of -50Â°C to -75Â°C, II.) at least one hydroxyl-containing microgel based on polybutadiene, 2 In this Decision, we refer to the Final Office Action dated May 12, 2016 ("Final Act."), the Appeal Brief filed May 23, 2017 ("Br."), and the Examiner's Answer dated August 25, 2017 ("Ans."). 2 Appeal2018-001939 Application 14/376,703 III.) at least one hydroxyl-containing oxidic filler, IV.) at least one polysulphide-containing alkoxysilane, and V.) at least one vulcanizing agent, wherein the Tgcmatrix) is calculated by the general equation Tgcmatrix) = XcBR) X Tg(BR) + Xcs-SBR) X Tgcs-SBR)+ XcNR) X Tg(NR) where Tgcmatrix) Xcs-SBR) X(NR) Tg(BR) Appeal Br. 13 (Claims App.). glass transition temperature of the rubber matrix (oil-free) proportion by weight of the 1,4-cis- polybutadiene in the rubber matrix proportion by weight of the S-SBR in the rubber matrix proportion by weight of the NR and/or IR in the rubber matrix glass transition temperature of the 1,4 cis-polybutadiene glass transition temperature of the S- SBR REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Obrecht et al. ("Obrecht '685") Obrecht et al. ("Obrecht '827") Durel et al. ("Durel '880") Nicolini et al. US 2001/0051685 Al Dec. 13, 2001 US 2003/0092827 Al May 15, 2003 US 2004/0132880 Al July 8, 2004 WO 2009/077837 Al June 25, 2009 3 Appeal2018-001939 Application 14/376,703 ("Nicolini") Zhao et al. ("Zhao") US 2010/0186859 Al July 29, 2010 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 1, 4, 5, 8, 12, 13, and 15 under 35 U.S.C. Â§ 103 as unpatentable over Obrecht '827 in view of Zhao. Final Act. 2. Rejection 2. Claim 3 under 35 U.S.C. Â§ 103 as unpatentable over Obrecht '827 in view of Zhao and Nicolini. Id. at 5. Rejection 3. Claims 7, 9, and 11 under 35 U.S.C. Â§ 103 as unpatentable over Obrecht '827 in view of Zhao and Obrecht '685. Id. at 6. Rejection 4. Claims 14 and 21 under 35 U.S.C. Â§ 103 as unpatentable over Obrecht '82 7 in view of Zhao and Dure 1. Id. at 7. Rejection 5. Claims 22 and 23 under 35 U.S.C. Â§ 103 as unpatentable over Obrecht '827 in view of Zhao, Durel, Nicolini, and Obrecht '685. Id. at 8. ANALYSIS 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) ("[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. Thus, we affirm the 4 Appeal2018-001939 Application 14/376,703 Examiner's rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant argues all rejections together and argues all claims as a group. See Br. 7-11. Therefore, consistent with the provisions of 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and all other claims on appeal stand or fall together with claim 1. The Examiner finds that Obrecht '827 teaches a (I) rubber matrix consisting of (a) solution styrene-butadiene rubber, (b) polybutadiene rubber in the 1, 4-cis configuration, and ( c) polyisopropene rubber in proportions overlapping those recited by claim 1. Final Act. 2-3 ( citing Obrecht '827). The Examiner finds that Obrecht '827 also teaches inclusion of (II) polybutadiene rubber microgel, (III) hydroxyl-containing oxidic filler, (IV) polysulfide-containing alkoxysilane, and a (V) vulcanizing agent. Id. at 3. With respect to claim 1 's "oil-free" recitations, the Examiner determines that Obrecht '827 does not list oil as mandatory and therefore it would be obvious to omit oil. Id. at 3. The Examiner also finds that Zhao teaches improved rubber using no oil. Id. at 4 ( citing Zhao). With respect to claim 1 's recitation regarding the glass transition temperature of polyisoprene, the Examiner finds that Zhao teaches rubber compositions having a glass transition temperature of -65 to -70 Â°C. Id. at 4. The Examiner determines that it would have been obvious to have the polyisopreme of Obrech '827 have the glass transition temperature of Zhao in order to process the rubber without oil and to promote tear resistance. Id. at 4. With respect to claim 1 's recitation of matrix glass transition temperature (Tgcmatrix)), the Examiner finds that proportions taught by 5 Appeal2018-001939 Application 14/376,703 Obrecht '827 would result in a glass transition temperature within claim 1 's recited range. Appellant argues that there would be no reason to follow the teachings of Obrecht '827 to meet claim 1 's recited matrix glass transition temperature. Br. 6-8. Appellant does not, however, persuasively dispute the Examiner's findings regarding the range of compositions taught by Obrecht '827 and does not persuasively dispute that some of the compositions taught by Obrecht '827 would necessarily have characterics falling within claim 1 's matrix glass transition temperature recitation. Indeed, Appellant admits that "the total possible range that could be provided by using the polyisoprene of Zhao in Obrecht" is between -89 .25 ~C and -19.08 Â°C. Br. 8-9. The preponderance of the evidence thus supports that Obrecht' s range of formulations includes formulations with a matrix glass transition temperature that overlaps the claim's 1 's recited range of -7 0 Â°C to -90 Â°C. The prior art's teachings overlapping with claim 1 's recitations is sufficient to establish prima facie case of obviousness. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (same). Obviousness is further supported by the Examiner's finding that "[i]t is well known in the art to change the amounts of the rubber component matrix to optimize the glass transition temperature to achieve desired performance from rubber mixture in tires." Ans. 2-3; see also id. at 5. The Examiner's finding is supported by Zhao which teaches using different rubber components to meet desired performance characteristics (see, e.g., 6 Appeal2018-001939 Application 14/376,703 Zhang ,r,r 4--19), and Appellant does not persuasively dispute this finding. Based on this teaching of Zhao, a person of skill in the art would have reason to adjust the amount of rubber components taught by Obrecht in order to reach desired characteristics. Appellant also argues criticality of the recited matrix glass transition temperature range. Br. 9-11. We have carefully considered Appellant's evidence, but we find the evidence unpersuasive. In particular, Appellant provides no evidence that differing performance based on glass transition is unexpected in view of the art. Ans. 3. Rather, as explained above, Zhao indicates that such a change is expected. Appellant's evidence is also not reasonably commensurate with the scope of claim 1. Appellant addresses only one inventive example ( example 3.6) having a Tgcmatrix) of -73.4 Â°C. Br. 9-11. Appellant presents no evidence that desirable properties exist at, for example, -90 Â°C. Ans. 3. Also, Appellant provides no data suggesting that all II-V components within the scope of claim 1 will result in desirable properties. Id. Because Appellant does not identify reversible error, we sustain the Examiner's rejections. DECISION For the above reasons, we affirm the Examiner's rejections of claims 1, 3-5, 7-9, 11-15, and 21-23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7