Ex Parte Zimmer et al

Board of Patent Appeals and Interferences

May 9, 2012

12327216 (B.P.A.I. May. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/327,216 12/03/2008 Rene Jean Zimmer DN2007193 4843
27280 7590 05/10/2012
THE GOODYEAR TIRE & RUBBER COMPANY
INTELLECTUAL PROPERTY DEPARTMENT 823
1144 EAST MARKET STREET
AKRON, OH 44316-0001
EXAMINER
REDDY, SATHAVARAM I
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
05/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RENE JEAN ZIMMER, CLAUDE ERNEST FELIX BOES,
GEORGES KOSTER, HANS-BERND FUCHS, KLAUS UNSELD, and
WOLFGANG ALBERT LAUER
____________

Appeal 2010-012458
Application 12/327,216
Technology Center 1700
____________

Before CHUNG K. PAK, ROMULO H. DELMENDO, and MARK
NAGUMO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
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Appeal 2010-012458
Application 12/327,216

3
logo 4, which are formed from the coating composition recited in the
appealed claims. Id. at 11, ll. 3-7. According to the Appellants, the
magnetic cores of the nanoparticles enhance the susceptibility of the coating
to heating by application of electromagnetic radiation such as a radio
frequency or microwave radiation. Id. at 10, ll. 25-29. Specifically, the
Appellants explain that “[i]n one embodiment, the coating may be exposed
to an electromagnetic field in such a way as to heat the coating due to
interaction of the magnetic particles with the electromagnetic field” and thus
“the coating may be heated and cured selectively without application of heat
to the entire tire.” Id. at 10, l. 20 to 11, l. 1.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A pneumatic tire comprising one or more indicia
formed from an elastomeric coating composition comprising a
diene based elastomer and from 1 to 100 parts by weight, per
100 parts by weight of elastomer (phr), of nanoparticles
comprising an inner core of an inorganic magnetic material at
least partially covered by an outer layer of silica.
Br. 11, Claims App’x.
The Examiner rejected claims 1-13 under 35 U.S.C. § 103(a) as
follows:
I. Claims 1-6 and 11-13 as unpatentable over the combined
teachings of Zimmer,3 Tan,4 and Weidinger;5

3 U.S. Patent 7,232,498 B2 issued June 19, 2007, based on Application
10/917,738 filed August 13, 2004.
4 U.S. Patent 6,548,264 B1 issued April 15, 2003.
5 U.S. Patent Application Publication 2006/0094818 A1 published May 4,
2006.
Appeal 2010-012458
Application 12/327,216

4
II. Claim 7 as unpatentable over the combined teachings of
Zimmer, Tan, Weidinger, and Zanzig ’575;6 and
III. Claims 8-10 as unpatentable over the combined teachings
of Zimmer, Tan, Weidinger and Zanzig ’356.7
Examiner’s Answer mailed June 22, 2010 (“Ans.”) at 4-13.

ISSUES
The Examiner found that Zimmer describes a pneumatic tire
comprising one or more indicia formed from an elastomeric coating
composition comprising a diene-based curable elastomer and from 50-100
parts by weight of an ethylene-alpha-olefin elastomer. Ans. 4. The
Examiner acknowledged that Zimmer does not teach the use of
“nanoparticles comprising an inner core of an inorganic magnetic material at
least partially covered by an outer layer of silica,” as recited in claim 1. Id.
The Examiner found, however, that Tan discloses nanoparticles comprising
an inner core of a magnetic material covered by an outer layer of silica to be
useful as components in aesthetic or functional coatings. Ans. 4, 14. The
Examiner thus concluded that it would have been obvious to a person of
ordinary skill in the art to modify Zimmer’s elastomeric composition to
include Tan’s nanoparticles comprising an inner core of magnetic material
covered by an outer layer of silica in appropriate amounts. Ans. 10-11.
The Appellants contend that Tan is not analogous art. Br. 5-7. The
Appellants further argue that “Tan is directed to making of nanoparticles and

6 U.S. Patent Application Publication 2004/0020575 A1 published February
5, 2004.
7 U.S. Patent Application Publication 2005/0049356 A1 published March 3,
2005.
Appeal 2010-012458
Application 12/327,216

5
their use in non-rubber, non-tire applications, such as cell isolation, cell
labeling, targeted drug or gene delivery, biosensors, magnetic recording
media, magnetic resonance imaging and micro or nano-sized machines” and
that “the [E]xaminer has provided no rationale to modify the indicia of
Zimmer with the [magnetic] nanoparticles of Tan.” Br. 8-9.
Thus, the dispositive issue arising from these contentions is:
Does the evidence support a conclusion that a person of ordinary skill
in the art would have been prompted to include Tan’s nanoparticles
comprising an inner core of magnetic material covered by an outer layer of
silica as part of Zimmer’s curable elastomeric coating composition?

DISCUSSION
We find that the Examiner’s rejection, as presented in this appeal,
falls short of identifying a sufficient reason supporting a conclusion that a
person of ordinary skill in the art would have combined the prior art
elements in the manner claimed. Our analysis follows.
The Examiner correctly found that Zimmer describes a pneumatic tire
with indicia (e.g., decorative markings) formed from a curable elastomeric
composition. Ans. 4; Zimmer at col. 2, ll. 44-52, 59-66 and Fig. 1. The
Examiner, also correctly, did not identify any disclosure in Zimmer with
respect to “nanoparticles comprising an inner core of an inorganic magnetic
material at least partially covered by an outer layer of silica” in the
elastomeric coating composition, as required by claim 1.
In an attempt to account for the difference between the subject matter
of claim 1 and Zimmer, the Examiner relied on Tan. Tan does disclose
silica-coated nanoparticles “for use in a variety of applications.” Abst.
Appeal 2010-012458
Application 12/327,216

6
According to Tan, the small size of the nanoparticles allows them “to be
exploited to produce a variety of products such as dyes and pigments;
aesthetic or functional coatings; tools for biological discovery, medical
imaging, and therapeutics; magnetic recording media; quantum dots; and
even uniform and nanosize semiconductors.” Col. 1, ll. 29-35.
But Tan’s column 4, lines 55 through 60, which was cited by the
Examiner (Ans. 4), teaches that the substance making up the core is selected
“to suit the particular application intended.” Thus, a person of ordinary skill
in the art would have drawn a reasonable inference from this disclosure that
not all core materials would be useful for all disclosed applications. As for
nanoparticles with a magnetic core, the relied-upon teachings of Tan – in
context – state that the magnetic core imparts a magnetic quality on the
nanoparticle such that these nanoparticles “can be used for magnetically
based application, e.g., cell separation/purification, diagnostic imaging,
recording media, etc.” Col. 4, ll. 60-67. The Examiner, however, has not
identified any other teaching in Tan or offered any persuasive reasoning that
would have indicated to one of ordinary skill in the art that “nanoparticles
comprising an inner core of an inorganic magnetic material at least partially
covered by an outer layer of silica,” as recited in claim 1, would have been
useful as part of an aesthetic or functional elastomeric curable coating of the
type described in Zimmer.
Therefore, the Examiner failed to meet the initial burden of
articulating sufficient reasoning with some rational underpinning to support
the conclusion that a person of ordinary skill in the art would have combined
the teachings of Zimmer and Tan in the manner claimed by the Appellants.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Appeal 2010-012458
Application 12/327,216

7
We need not discuss the other applied prior art references because the
Examiner did not apply them to resolve the absence of disclosure in Zimmer
with respect to magnetic nanoparticles at least partially covered with a silica
outer layer. Ans. 5-6, 11, 12, 14-15. Additionally, we need not address the
Appellants’ argument based on non-analogous art because we have found
that the Examiner failed to articulate a sufficient reason for combining
Zimmer with Tan.

ORDER
The Examiner’s decision to reject claims 1-13 over the applied prior
art references based on the reasoning offered is reversed.

REVERSED

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