Ex Parte Veyland et al

Patent Trial and Appeal Board

Mar 20, 2017

12809777 (P.T.A.B. Mar. 20, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/809,777 09/21/2010 Anne Veyland 5460-279PUS-300482.000 1346
27799 7590
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
EASHOO, MARK
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNE VEYLAND and JESE CARLOS ARAUJO DA SILVA
Appeal 2015-004535
Application 12/809,1111
Technology Center 1700
Before CHUNG K. PAK, ROMULO H. DELMENDO, and
JEFFREY R. SNAY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s decision to reject claims 1,3, and 7—
15.2 We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants state that the real parties in interest are “Compagnie
Generale des Etablissements Michelin and Michelin Recherche et Technique
S.A.” (Appeal Brief filed on November 14, 2014, hereinafter “Appeal Br.,”
2).
2 Appeal Br. 2, 5—15; Reply Brief filed on March 12, 2015, hereinafter
“Reply Br.,” 2—8; Non-Final Office Action (notice emailed on August 14,
2014), hereinafter “Non-Final Act.,” 3—6; Examiner’s Answer (notice
emailed on January 12, 2015), hereinafter “Ans.,” 2—9.
Appeal 2015-004535
Application 12/809,777
We affirm. Because we discern no error in the Examiner’s factual
findings, analysis, and legal conclusion as thoroughly set forth in the
Answer, we adopt them as our own and add the following to highlight the
main issues raised in this appeal.
BACKGROUND
The subject matter on appeal relates to a diene elastomer (rubber)
composition that can be used to manufacture tires or semi-finished products
for tires such as treads (Specification, hereinafter “Spec.,” 1,11. 3^4).
Representative claim 1 is reproduced from the Claims Appendix (A-l) to the
Appeal Brief (abbreviations in brackets added3), as follows:
1. A rubber composition based on at least one diene
elastomer, containing less than 0.5 phe of zinc, phe signifying
parts per hundred parts of elastomer, and based on at least:
- one reinforcing filler;
- one sulphur and primary vulcanization accelerator-based
crosslinking system, comprising a copper(II) carboxylate of
formula: (RCOO)2Cu, wherein the primary vulcanization
accelerator is selected from the group consisting of 2-
mercaptobenzothiazyl disulphide [MBTS], N,N-dicyclohexyl-
2-benzothiazyl sulphenamide [DCBS], and N-tert-butyl-2-
benzothiazyl sulphenimide [TBSI], and mixtures thereof,
in which R represents a hydrocarbon-based group chosen from
linear or branched, cyclic or non-cyclic alkyls having from 1 to
13 carbon atoms, aryls, aralkyls or alkaryls having from 1 to 13
carbon atoms.
3 The abbreviations for the recited compounds are provided in the current
Specification at page 10, lines 17—23.
2
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Application 12/809,777
REJECTION ON APPEAL
The Examiner rejected claims 1,3, and 7—15 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Nakamura et al.4 (hereinafter “Nakamura”) in
view of Chassagnon et al.5 (hereinafter “Chassagnon”) (Ans. 2—9; Non-Final
Act. 2-6).
DISCUSSION
The Appellants argue claims 1,3, and 7—15 together, focusing only on
claim 1 (Appeal Br. 5—15). Therefore, claims 3 and 7—15 stand or fall with
claim 1, which we select as representative. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Nakamura teaches every limitation recited in
claim 1, except the reference exemplifies N-cyclohexyl-2-benzothiazole
sulfenamide (CBS) and N-z-butyl-2-benzothiazole sulfenamide (TBBS) as
suitable sulfenamide vulcanization accelerators rather than the Appellants’
specified MBTS, DCBS, TBSI, or mixtures thereof (Ans. 2—3). To resolve
this difference, the Examiner relies on Chassagnon {id. at 3). Specifically,
the Examiner finds that Chassagnon discloses MBTS, CBS, DCBS, TBBS,
and TBSI are all suitable vulcanization accelerators for diene elastomers in
the presence of sulfur {id.). Based on these findings, the Examiner
concludes that “[i]t would have been obvious to one of ordinary skill in the
art to have substituted the MBTS, DCBS, or TBSI of Chassagnon ... for the
CBS or TBBS sulphenamide vulcanization accelerator of Nakamura” {id.)
(emphases omitted). According to the Examiner, the motivation to make the
substitution comes from the knowledge that these compounds are all known
sulfenamide vulcanization accelerators suitable for use as vulcanization
4 EP 0 864 606 Al, published September 16, 1998.
5 US 2007/0082991 Al, published April 12, 2007.
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Appeal 2015-004535
Application 12/809,777
accelerators in rubber compositions for tires and the substitution of art-
recognized equivalents would have been within the level of ordinary skill in
the art (id.). The Examiner adds further that “the substitution of one known
vulcanization accelerator for another is likely to be obvious when it does no
more than yield predictable results” (id.).
The Appellants contend that a person having ordinary skill in the art
would had to engage in “picking and choosing” less preferred embodiments
from various lists and possibilities in the prior art references to arrive at a
composition within the scope of claim 1 (Appeal Br. 11—12). According to
the Appellants, “Federal Circuit cases have rejected challenges of
patentability when the asserted prior art reference encompassed a large
number of compounds and did not establish preferences which would lead to
the claimed compound” (id. at 12) (citing, e.g., Eli Lilly & Co. v. Zenith
Goldline Pharm., Inc., 471 F.3d 1369, 1376-77 (Fed. Cir. 2006)). The
Appellants also argue that a person having ordinary skill in the art would not
have expected the beneficial or surprising results shown in the
Specification’s working examples—i.e., “that a composition comprising
copper carboxylates is advantageous over the prior art composition that
comprises copper oxide, zirconium carboxylate, etc. in effectively activating
the vulcanization” (Appeal Br. 13) (emphasis omitted). Finally, the
Appellants argue that the invention recited in claim 1 “met a long-felt but
unsolved need” (id.).
The Examiner responds that the prior art references’ disclosures of
examples or preferred embodiments do not constitute a teaching away as to
other disclosed embodiments including less preferred embodiments (Ans. 5).
Regarding the Appellants’ argument based on beneficial or surprising
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Application 12/809,777
results, the Examiner first points out that the Appellants have the burden of
explaining the data they proffer as evidence of nonobviousness (id. at 7).
The Examiner then finds that the proffered showing is not commensurate in
scope with claim 1 because the working examples are limited to a
composition including 100 parts of natural rubber, 47.5 phr of carbon black,
1.5 phr of sulfur, 0.6 phr of CBS, and a limited number of copper(II)
carboxylate compounds, whereas claim 1 is significantly broader in scope as
to the components and their relative amounts (id. at 7—8). Moreover, the
Examiner finds that the differences in results between the invention
examples and the examples representative of the prior art were not shown to
have been unexpected by a person having ordinary skill in the art (id. at 8).
Lastly, the Examiner finds that the Appellants’ assertion that the invention
fulfilled a long-felt need amounted to mere attorney argument, which cannot
take the place of objective evidence that an art-recognized problem existed
for a long period of time without solution (id.).
We are in complete agreement with the Examiner. Consistent with
the Examiner’s findings (Ans. 2—3), Nakamura teaches a rubber composition
comprising 100 parts by weight of a diene rubber component, 10—200 parts
by weight of a reinforcing agent, and 0.1—15 parts by weight of a fatty acid
salt such as copper octanoate, which corresponds to the Appellants’
copper(II) carboxylate having the specified formula (Nakamura 2,11. 46-47,
10,11. 3—15). In addition, Nakamura teaches that the composition may also
include conventional compounding ingredients such as: (1) a vulcanizing
agent (e.g., sulfur); (2) a vulcanizing accelerator such as a sulfenamide-type
vulcanizing accelerator—e.g., CBS (N-cyclohexyl-2-benzothiazole
sulfenamide) and TBBS (N-z-butyl-2-benzothiazole sulfenamide); and (3) a
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Application 12/809,777
vulcanizing activator such as a higher fatty acid, zinc oxide, or mixtures
thereof (id. at 10,11. 22—54; 10,1. 57—11,1. 11). Nakamura teaches that
when zinc oxide is selected as the vulcanizing activator, the amount is
usually in the range of 0.05—10 parts by weight (id. at 11,11. 7—8), which
overlaps the Appellants’ specified range of “less than 0.5 phe of zinc” as
recited in claim 1,6 In any event, Nakamura suggests that a higher fatty acid
may be used as the vulcanizing activator instead of zinc oxide (id. at 11,11.
4—11).
Nakamura differs from claim 1 in that CBS and TBBS are disclosed
as suitable sulfenamide-type vulcanizing accelerators rather than the
Appellants’ specified MBTS, DCBS, or TBSI. But, as correctly found by
the Examiner (Ans. 3), Chassagnon teaches that CBS, TBBS, MBTS,
DCBS, and TBSI are all interchangeable vulcanization accelerators for diene
elastomers in the presence of sulfur (| 95). Therefore, we share the
Examiner’s conclusion that a person having ordinary skill in the art would
have found it obvious to substitute Nakamura’s CBS or TBBS with MBTS,
DCBS, or TBSI based on the expectation that these sulfenamide-type
compounds would be interchangeable as vulcanizing accelerators for diene
elastomers when sulfur is used as the vulcanizing agent, as suggested by
Chassagnon. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”).
6 The Appellants’ Specification indicates that “zinc” includes zinc oxide
(Spec. 1,1. 7-10; 10,11. 29-32).
6
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Application 12/809,777
We find no merit in the Appellants’ preferred embodiment, “laundry
list,” and “picking and choosing” arguments (Appeal Br. 11—13; Reply Br.
2-4). As stated by the Examiner (Ans. 5), a prior art reference’s disclosure
of preferred embodiments or examples does not negate other disclosures
pertaining to alternative or even less preferred embodiments. In re Fulton,
391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[C]ase law does not require that a
particular combination must be the preferred, or the most desirable,
combination described in the prior art in order to provide [the] motivation
[or reason] for the current invention.”).
As explained by our reviewing court, “in a section 103 inquiry, ‘the
fact that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered.’” Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750
(CCPA 1976)).
Furthermore, the mere fact “[t]hat the [reference] discloses a
multitude of effective combinations does not render any particular
formulation less obvious.” Id. at 807; see also In re Corkill, 111 F.2d 1496,
1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of
prior art teaching that “hydrated zeolites will work” in detergent
formulations, even though “the inventors selected the zeolites of the claims
from among ‘thousands’ of compounds”).7
7 In support, the Appellants cite a number of cases involving pharmaceutical
drugs (Appeal Br. 12—13). Those cases are less relevant because they
related to art that is significantly more unpredictable than the art of rubber
compositions.
7
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Application 12/809,777
Turning to the Specification examples, the Appellants argue that
invention examples Cl—C4 and control or prior art examples Tl—T3 and
Al—A3 (Spec. 14—17) provide evidence that “a composition comprising
Conner carboxylates is advantageous over the prior art composition that
comprises copper oxide, zirconium carboxylate, etc. in effectively activating
the vulcanization” (Appeal Br. 13). Again, we are in complete agreement
with the Examiner’s analysis (Ans. 7).
First, the Appellants do not explain the factual basis for concluding
that a person having ordinary skill in the art would have considered the
results shown in Tables 1 and 2 (Spec. 16) to be unexpected. In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972) (burden of showing unexpected results
rests on the applicant who asserts them). See also In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005) (“The 32—43% increase in stress-rupture life . . .
does not represent a ‘difference in kind’ that is required to show unexpected
results.”) (quoting In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)).
Second, the Appellants do not direct us to a comparison between the
claimed composition and the closest prior art (e.g., Nakamura’s
compositions as disclosed in Table 6 on pages 15 and 18). In re Baxter
TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”).
Third, we are in complete agreement with the Examiner (Ans. 7—8)
that the proffered showing is not commensurate in scope with claim 1 for the
reasons given by the Examiner. Significantly, the Appellants’ evidence
lacks a showing establishing that a rubber composition comprising 0.5 phe
of zinc oxide, which claim 1 broadly encompasses, would exhibit
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Application 12/809,777
unexpectedly better properties compared to the rubber compositions
described in Nakamura’s examples. See, e.g., In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983) (“With respect to appellants’ broad claims to a catalyst
with ‘an alkali metal,’ the experiments detailed in Friedrich III, being limited
to sodium only, are not commensurate in scope, and are, therefore,
insufficient to rebut the prima facie case.”); Harris, 409 F.3d at 1344 (“Even
assuming that the results were unexpected, Harris needed to show results
covering the scope of the claimed range. Alternatively Harris needed to
narrow the claims.”).
Lastly, we briefly address the Appellants’ argument based on
fulfilling a long-felt need. As pointed out by the Examiner (Ans. 8), the
Appellants’ mere argument that the invention satisfies a long-felt need does
not take the place of objective evidence that would be required to make a
showing that the invention in fact satisfies a long-felt need. See, e.g., In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
For these reasons, we uphold the Examiner’s rejection.
SUMMARY
The Examiner’s decision to reject claims 1, 3, and 7—15 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)(1).
AFFIRMED
9