Ex Parte Wu

Board of Patent Appeals and Interferences

Jun 26, 2009

10828170 (B.P.A.I. Jun. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LU-LIANG WU
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Appeal 2009-002741
Application 10/828,170
Technology Center 1700
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Decided1: June 26, 2009
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Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
JEFFERY B. ROBERTSON, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, and 4 through 16. Claims 17 and 18, the other
pending claims in the above-identified application, stand withdrawn by the
Examiner. We have jurisdiction under 35 U.S.C. § 6(b).2
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

2 An oral hearing was held on May 13, 2009.
Appeal 2009-002741
Application 10/828,170

STATEMENT OF THE CASE
The subject matter on appeal is directed to an organosilane
masterbatch comprising one or more carbon black fillers as the only fillers in
the organosilane masterbatch. Details of the appealed subject matter are
recited in representative claim 1 reproduced below:
1. An organosilane masterbatch comprising
(a) 2 to 20 parts by weight of one or more rubbers,
(b) 30 to 60 parts by weight of one or more carbon black fillers,
wherein said fillers are the only fillers in the organosilane masterbatch,
(c) 5 to 55 parts by weight of one or more organosilanes, and
(d) 0 to 10 parts by weight of one or more dispersing agents.

The Examiner relied upon the following as evidence of
unpatentability:
Chen US 7,101,922 B2 Sep. 5, 2006
The Examiner rejected claims 1, 2, and 4 through 16 under 35 U.S.C.
§ 102(e) as anticipated by the disclosure of Chen (Ans. 3-5).3

ISSUE
Has Appellant identified reversible error in the Examiner’s
determination that the claims on appeal read on Chen’s disclosure directed to
a silica filler reinforced organosilane masterbatch having optional carbon
black fillers within the meaning of 35 U.S.C. § 102(e)?

FINDINGS OF FACT

3 The Examiner also rejected claim 3. However, claim 3 is not appealed and
is no longer pending in the above-identified application.
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Application 10/828,170
1. Chen discloses a silica filler reinforced elastomer masterbatch
comprising colloidal silica, a silane, and a diene-based rubber (col. 1,
ll. 10-20 and col. 2, ll. 35-41).
2. Appellants do not dispute the Examiner’s finding that Chen teaches
organosilane polysulfides, inclusive of those claimed, as its silane
coupling agent (Compare Ans. 3 with App. Br. 3-4 and Reply Br. 1-2;
see also Chen, col. 3, ll. 21-28 and col. 3, l. 47 to col. 5, l. 12.)
3. Chen exemplifies preparation of a masterbatch containing, inter alia,
22.8 parts of silica, about 4.1 parts of an organosilane polysulfide
coupler, and 20 parts of a SBR rubber containing about 23 weight
percent bound styrene (col. 10, ll. 16-62, Example A).
4. Chen teaches a pre-formed composite of rubber and silica comprised
of, based on 100phr of elastomers, about 10 to 90 phr of at least one
diene-based elastomer, about 90 to about 10 phr of at least one of said
preformed composite rubber and silica and about 30 to about 120 phr
of additional reinforcing fillers, such as carbon black and modified
carbon black, and optionally a coupling agent having a moiety
reactive with the filler and another moiety interactive with the
elastomer (e.g., organosilane polysulfides) (col. 6, ll. 17-43).
5. Chen exemplifies a rubber-containing composition comprising an
organosilane masterbatch (Table 2, col. 11, ll. 30-52).
6. Chen teaches employing about 0.5 to about 5phr of fatty acids (col. 9,
ll. 9-11).
7. Chen teaches employing the pre-formed composite to form an article
such as a belt, a tire, or a hose (col. 6, ll. 44-56 and col. 10, ll. 11-15).
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8. Chen teaches that “[t]he rubber composite itself can also be provided
as being a sulfur cured composition through vulcanization of the
uncured elastomer composition” (col. 7, ll. 47-48).
PRINCIPLES OF LAW
In making a patentability determination, analysis must begin with the
question, “what is the invention claimed?” since “[c]laim interpretation, . . .
will normally control the remainder of the decisional process.” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987).
Claim terms are normally given their broadest reasonable construction
consistent with the specification during prosecution of a patent application.
In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007)(“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms but otherwise apply a broad
interpretation.”); see also In re Corr, 347 F.2d 578,580 (CCPA 1965)
(Although a patent applicant is entitled to be his or her own
lexicographer of patent claim terms, the applicant must provide definitions
for such claim terms in the Specification with sufficient clarity to provide a
person of ordinary skill in the art with clear and precise notice of the
meaning that is to be construed .). Limitations appearing in the specification
but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v.
3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
The appropriate starting point for claim construction “is always with
the language of the asserted claim itself.” Comark Commc’ns, Inc. v. Harris
Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). ). “[T]he claims themselves
provide substantial guidance as to the meaning of particular claim terms.”
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)(en banc).
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Application 10/828,170
Under 35 U.S.C. § 102(e), anticipation is established only if “each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros.Inc., v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
ANAYLSIS
As correctly argued by Appellant, the plain language of the claims on
appeal excludes fillers other than carbon black fillers. Specifically, the
claim language “one or more carbon black fillers, wherein said fillers are the
only fillers in the organosilane masterbatch” clearly excludes the presence of
fillers other than the claimed one or more carbon black fillers from various
sources described at pages 2-3 of the Specification from the claimed
organosilane masterbatch. Although the Specification indicates that carbon
black fillers can be optionally combined with other materials, e.g., silicon,
glass fibres, etc., those optional materials are not carbon blacks and are
excluded if they are fillers.
As argued by the Examiner, the term “comprising” permits inclusion
of the additional ingredients not recited in the claims on appeal. However, it
does not permit the presence of those fillers, including silica fillers, which
are specifically excluded by the explicit language in the claims on appeal.
It follows that Appellant has identified reversible error in the
Examiner’s determination that the claims on appeal read on Chen’s
disclosure directed to a silica filler reinforced organosilane masterbatch
having optional carbon black fillers within the meaning of 35 U.S.C. §
102(e).
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Application 10/828,170
NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b).
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Chen.
ADDITIONAL FINDINGS OF FACT
9. Chen teaches an alternative embodiment directed to “[c]lassical
rubber-reinforcing carbon blacks” rather than a silica reinforced
rubber (col. 7, ll. 35-46).
10. Chen teaches employing optional additional fillers, such as silica
and/or carbon black, together with classical rubber-reinforcing carbon
blacks, in forming a composite of pre-formed reinforced elastomer
and additional elastomer as indicated above in the context of forming
a composite using a silica-reinforced rubber (col. 7, l. 35 to col. 8, l.
2).
11. Chen also teaches (col. 9, l. 63 and col. 10, l. 6) that:
The ingredients are typically mixed in at least two stages,
namely, at least one non-productive stage followed by a
productive mix stage. The final curatives are typically mixed
in the final stage which is conventionally called the
“productive” mix stage in which the mixing typically occurs
at a temperature, or ultimate temperature, lower than the mix
temperature(s) than the preceding non-productive mix
stage(s). The rubber, carbon black and coupling agent if used,
are mixed in one or more non-productive mix stages. The
terms “non-productive” and “productive” mix stages are well
known to those having skill in the rubber mixing art.

PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
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differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966).
As stated in KSR Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 418 (2007):
“[A]nalysis [of whether the subject matter of a claim
would have been prima facie obvious] need not seek out precise
teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.”

“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976)).
KSR also instructs “that when a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” Id.
According to In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even
a slight overlap in range establishes a prima facie
case of obviousness . . . . We have also held that
a prima facie case of obviousness exists when the
claimed range and the prior art range do not
overlap but are close enough such that one skilled
in the art would have expected them to have the
same properties. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).

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ANALYSIS
Chen exemplifies preparation of a silica filler reinforced masterbatch
containing, inter alia, 22.8 parts of silica fillers, about 4.1 parts of an
organosilane coupler very close to the claimed amount of one or more
organosilanes, and 20 parts of a SBR rubber. Although Chen does not
exemplify a carbon black filler reinforced masterbatch , i.e., a masterbatch
containing the claimed amounts of carbon black fillers, an organosilane
coupling agent, and a SBR rubber, it does mention that its invention can be
equally useful as classical rubber-reinforcing carbon black fillers. It also
teaches premixing carbon black fillers, a coupling agent (organosilane), and
a rubber prior to forming a final rubber composition.
From the above disclosures of Chen, one of ordinary skill in the art
would have reasonably drawn an inference that Chen’s masterbatch includes
either a carbon black or silica reinforced masterbatch containing the same,
with either carbon black or silica reinforcing fillers. Thus, it would have
been prima facie obvious to one of ordinary skill in the art to form a carbon
black filler reinforced masterbatch having the claimed amounts of a rubber,
an organosilane coupling agent, and a carbon black filler (as a substitute for
a silica filler), with a reasonable expectation of successfully imparting the
same or similar properties as the preferred silica filler reinforced
masterbatch. KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 418 (“[W]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”); Peterson,
315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783
(“We have also held that a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are close enough
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Application 10/828,170
such that one skilled in the art would have expected them to have the same
properties.”)
We have limited our discussion to the obviousness of the subject
matter of claim 1. It is up to the Examiner and Appellants to determine the
patentability of the subject matter recited in remaining pending claims 2 and
4 through 16.
DECISION
The decision of the Examiner rejecting claims 1, 2, and 4 through 16
under 35 U.S.C. § 102(e) is reversed.
Claim 1 is newly rejected under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Chen.
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen Prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceedings will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceedings be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED
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Appeal 2009-002741
Application 10/828,170
37 C.F.R. § 41.50(b)

tc

OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314

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