Gates Corporation

Patent Trials and Appeals Board

Mar 9, 2021

2020002893 (P.T.A.B. Mar. 9, 2021)

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. 15/967,333 04/30/2018 Yuding FENG B13-005B 6453 26683 7590 03/09/2021 GATES CORPORATION IP LAW DEPT. 1144 Fifteenth Street, Suite 1400 DENVER, CO 80202 EXAMINER HILL, NICHOLAS E ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 03/09/2021 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): Erica.Halverson@gates.com alyssa.sandrowitz@gates.com patent@gates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUDING FENG and SHAWN XIANG WU Appeal 2020-002893 Application 15/967,333 Technology Center 1700 Before MICHAEL P. COLAIANNI, MERRELL C. CASHION, JR., and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-18. We have jurisdiction. 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Gates Corporation. Appeal Br. 3. Appeal 2020-002893 Application 15/967,333 2 CLAIMED SUBJECT MATTER The claims are directed to rubber compositions comprising at least four elements (claims 1-11 and 13-17), a “dry, vulcanizable, rubber composition” comprising at least five elements (claim 18), and “power transmission belt[s]” comprising the rubber compositions of claims 1 and 16. See Appeal Br. 27-28 (Claims Appendix). The Specification indicates that the rubber composition is “useful for rubber products such as belts and hose[s].” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A rubber composition comprising a base elastomer, polyvinylpyrrolidone, a cellulosic fiber, and a curative. REFERENCES The Examiner relies on the following prior art to reject the claims: Name Reference Date Makuuchi US 6,090,328 July 18, 2000 Lee US 2011/0073008 A1 Mar. 31, 2011 Feng US 2013/0150488 A1 June 13, 2013 Feng ʼ2012 US 9,255,201 B2 February 9, 2016 REJECTIONS I. Claims 1-13 are rejected under 35 U.S.C. § 103 over Feng in view of Makuuchi. II. Claims 14-17 are rejected under 35 U.S.C. § 103 over Feng in view of Makuuchi. 2 Feng ʼ201 is the issued patent of US 2013/0150488 A1 to Feng. Feng ʼ201 code (65). Appeal 2020-002893 Application 15/967,333 3 III. Claim 18 is rejected under 35 U.S.C. § 103 over Feng in view of Makuuchi. IV. Claims 1-13 are rejected under 35 U.S.C. § 103 over Feng in view of Lee. V. Claims 14-17 are rejected under 35 U.S.C. § 103 over Feng in view of Lee. VI. Claim 18 is rejected under 35 U.S.C. § 103 over Feng in view of Lee. VII. Claims 1, 2, and 4-13 are rejected on the ground of nonstatutory double patenting over claims 1-11 of Feng ʼ201 in view of Lee. VIII. Claim 3 is rejected on the ground of nonstatutory double patenting over claims 1-11 of Feng ʼ201 in view of Lee, as applied to claim 1, in further view of Feng. IX. Claims 14-17 are rejected on the ground of nonstatutory double patenting over claims 1-11 of over Feng ʼ201 in view of Lee and Feng. X. Claim 18 is rejected on the ground of nonstatutory double patenting over Feng ʼ201 in view of Lee. OPINION In our discussion of the rejections, we address the claims separately to the extent they are so argued by Appellant. 37 C.F.R. § 41.37(c)(1)(iv). Rejection I The Examiner rejects claims 1-13 over the combined disclosures of Feng and Makuuchi. Final Act. 2-3. Appeal 2020-002893 Application 15/967,333 4 Appellant first argues that Makuuchi is non-analogous art. Appeal Br. 10-16. Specifically, regarding “[t]he first prong of the analogous art analysis,” Appellant asserts that the Examiner provides an overly broad field of endeavor for the invention, and argues that “[t]he field of endeavor . . . is the composition and preparation of rubber compositions, specifically, dry, solid, vulcanizable, rubber compositions useful for belts or hose.” Id. at 11. Regarding the alternative second prong, Appellant asserts that the Examiner again employs “an overly broad generalization” in stating that both the subject application and Makuuchi “are concerned with preparing solid rubber articles with adequate or enhanced tear strengths.” Id. at 13; Final Act. 3. We are unpersuaded by Appellant’s arguments that Makuuchi is not analogous art. Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). Applying this legal framework to the facts of this case reveals that Makuuchi meets both of these requirements, even though it need only satisfy one. As correctly found by the Examiner (Ans. 13-14), Makuuchi expressly discloses “[r]ubber products” including “various kinds of gloves such as surgical rubber gloves, inspection rubber gloves and household rubber gloves, and miscellaneous rubber products including catheters, condoms and balloons.” Makuuchi, 2:15-22. The Specification discloses that the invention “relates generally to a rubber composition useful for rubber Appeal 2020-002893 Application 15/967,333 5 products such as belts and hose[s].” Spec. ¶ 1 (emphasis added). Therefore, the invention’s field of endeavor is not limited to rubber compositions that can be used for belts and hoses as Appellant asserts. Appeal Br. 11. We furthermore agree with the Examiner that Makuuchi is reasonably pertinent to the problem with which the inventor was involved. Ans. 14-15. Makuuchi expressly discloses a desire to improve the tear strength of its rubber products. Makuuchi, 2:15-16. The Specification makes clear that the inventor was also concerned with improving the tear strength of a rubber composition. See Spec. ¶¶ 45, 46, 49, 55. And, as observed by the Examiner (Ans. 14), each of Makuuchi and the instant application recognize that PVP increases the level of tear strength. In the context of the analogous art inquiry, Appellant’s attempt to distinguish between “rubber” and “latex” compositions is unavailing. Appeal Br. 11-16 (citing Exhibits A-E). Here, we note that the Specification incorporates by reference “the entire contents” of U.S. patent application serial number 13/692,585 filed December 3, 2012. Spec. ¶ 2. That application published as US 2013/0150488 A1,3 and is before us in this very rejection as “Feng.”4 Final Act. 2-3. Feng discusses the advantageous inclusion of latex into an elastomer composition which improves adhesion or dispersion of fibers in the base elastomer or elastomer matrix. Feng ¶¶ 28, 30. Because Feng’s disclosure is effectively part of the instant application, Makuuchi’s discussion of latex, if anything, makes it more likely to be 3 US 2013/0150488 A1 matured into US 9,255,201 B2. This patent is relied upon in the Examiner’s obviousness-type double patenting rejections before us on appeal (Rejections VII-X). 4 Notably, Appellant does not argue that Feng is non-analogous art. Appeal 2020-002893 Application 15/967,333 6 consulted by the skilled artisan when seeking how to enhance the tear strength of an elastomeric article which contains latex. For these reasons, and those expressed by the Examiner, Appellant’s argument that Makuuchi is non-analogous art is unpersuasive. Appellant also argues that the Examiner failed to establish a prima facie case of obviousness. Appeal Br. 16-18. We have considered these arguments, and are unpersuaded of reversible error in the rejection for the reasons well-expressed by the Examiner. Final Act. 2-3; Ans. 15-17. We add the following comments only for emphasis. Appellant’s argument that the skilled artisan would not have been motivated to modify Feng’s composition based on the teachings of Makuuchi falls short because Feng discloses blending an elastomer such as “natural rubber” with vulcanization agents or curatives (Feng ¶¶ 31, 32), and exemplifies belt rubber compositions that are either sulfur-cured or peroxide-cured (id. ¶¶ 38, 39). Feng also discloses that it is advantageous to include latex in an elastomer composition. Id. ¶ 28. On the other hand, Makuuchi discloses that polyvinyl pyrrolidone (PVP) is “effective in improving the tear strength of radiation vulcanized rubber.” Makuuchi 2:35-46. Makuuchi exemplifies formation of “[a] radiation vulcanized natural rubber latex.” Id. at 3:29-30. And Appellant acknowledges that “curing” and “vulcanizing” are coterminous. Reply Br. 7. Considering these teachings as a whole, even though Makuuchi’s natural rubber latex is vulcanized by radiation and Feng’s natural rubber (which may contain latex) is apparently cured chemically, this is not enough of a difference that would dissuade the skilled artisan from combining the teachings of these references. Indeed, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize Appeal 2020-002893 Application 15/967,333 7 that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (emphases added). In other words, based on the teachings of Makuuchi, the skilled artisan would have recognized that adding PVP to Feng’s elastomeric composition would likely improve its tear strength, regardless of the curing process employed. And Appellant has not argued, much less demonstrated, that adding PVP to Feng’s composition would have been beyond the level of ordinary skill in the art.5 Thus, Appellant has failed to reveal error in the Examiner’s rationale for combining the teachings of these references. Nor are we persuaded by Appellant’s argument that the term “rubber composition” recited in the preamble is limiting. Reply Br. 5-6. Generally, a preamble is not construed as a limitation, but can be depending on the facts of a given case. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). In particular, “when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention,” the preamble is not considered a limitation. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (citing IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000)). Such is precisely the case here--the composition recited in claim 1 has at least four structural elements, i.e., “a base elastomer, polyvinylpyrrolidone, a cellulosic fiber, 5 We do not consider Appellant’s belated argument regarding the level of ordinary skill. Reply Br. 8-9. Our rules make clear that we do not consider such arguments absent a showing of good cause, which is lacking here. 37 C.F.R. § 41.41(b)(2). Appellant has not explained, nor do we discern, why Appellant could not have made this argument in its principal brief. Appeal 2020-002893 Application 15/967,333 8 and a curative.” The preamble’s recitation of a “rubber composition” does not signify any additional structure beyond that recited in the body of the claim. Indeed, the Specification appears to treat the terms “elastomer” (recited in the body of claim 1) and “rubber” (recited in the preamble) equally. See Spec. ¶ 5 (“The elastomeric or rubber compositions include an elastomer, [PVP], a cellulosic fiber, and a curative.”) (emphasis added); id. ¶ 18 (disclosing how “[t]he term ‘rubber’ refers to a material” with certain characteristics that make it “‘elastomeric’”); id. ¶ 19 (allowing, but not requiring, a “rubber composition” to include “additional ingredients besides the elastomer(s)”). We also disagree with Appellant that “the entire [S]pecification contributes to the fact that the rubber composition claimed is of the kind useful for belts, hose and the like, and is compounded and processed in ways associated with dry, vulcanizable rubber, not latex.” Reply Br. 5. This argument--which seeks to narrow the construction of the term “rubber composition”--ignores the Specification’s incorporation by reference of Feng’s disclosure in its entirety (which teaches the advantageous incorporation of latex into elastomer compositions (Feng ¶ 28)) (Spec. ¶ 2), and furthermore does not consider the full breadth of the Specification’s disclosure. See Spec. ¶ 1 (“This invention relates generally to a rubber composition useful for rubber products such as belts and hose[s].”); id. at 19 (claim 12, depending from claim 1, directed to “[a] power transmission belt”). In sum, because Appellant has failed to identify reversible error in Rejection I, we sustain it. Appeal 2020-002893 Application 15/967,333 9 Rejection II Appellant relies on the same deficient arguments for the Examiner’s rejection of claims 14-17, so we sustain Rejection II for the reasons set forth by the Examiner and provided supra. Appeal Br. 19. Rejection III In addition to again relying on the deficient arguments discussed supra, Appellant asserts that because Makuuchi fails to disclose fillers, “there is even less possible motivation or expectation of success to modify Feng with Makuuchi.” Appeal Br. 19-20. We reject this argument because the Examiner does not rely on Makuuchi to teach fillers, but rather asserts Feng discloses such fillers. Final Act. 5 (citing Feng ¶ 32). Appellant also asserts, without explanation, that the Examiner employed impermissible hindsight in arriving at the obviousness conclusion. Such bare assertions, however, lack persuasive merit. Rejection III is sustained. Rejections IV-VI These rejections rely on the combined disclosures of Feng and Lee. Final Act. 6-8. Appellant advances similar arguments to those provided against Rejections I-III--namely, that Lee is non-analogous art, and that the Examiner has not established a prima facie case of obviousness. Appeal Br. 20-25. We are unpersuaded by these arguments for essentially the same reasons as those provided supra. We add the following for emphasis. Appellant focuses on Lee’s disclosure of thermoplastics and asserts that “[p]lastics and rubber occupy distinct fields of endeavor.” Appeal Br. 20. Appellant’s non-analogous art argument regarding Lee lacks merit because, here again, the argument ignores the express incorporation by Appeal 2020-002893 Application 15/967,333 10 reference of Feng. Spec. ¶ 2. Feng discloses that elastomeric belt bodies may include one or more of a vulcanized rubber composition or a thermoplastic elastomer (Feng ¶ 5), and kenaf products can be used as a filler in plastics (id. ¶ 25). Based on Feng’s disclosure, which is incorporated by reference into the instant application, Lee is at the very least reasonably pertinent to the particular problem with which the inventor is involved--using kenaf fibers as a reinforcing material. Spec. ¶¶ 25, 29, 47, 53; Feng ¶ 25; Lee ¶¶ 87, 90, 92, 93, 102. We are furthermore unpersuaded by Appellant’s arguments regarding lack of a prima facie case for the reasons well-expressed by the Examiner in the Answer, unrebutted by Appellant. Ans. 20-21. Rejections IV-VI are sustained. Rejections VII-X Because Appellant relies on the same unpersuasive arguments for these rejections as those advanced for Rejections IV-VI, we sustain these rejections for the same reasons provided supra. Appeal Br. 25. CONCLUSION The Examiner’s rejections are affirmed. Appeal 2020-002893 Application 15/967,333 11 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s) / Basis Affirmed Reversed 1-13 103 Feng, Makuuchi 1-13 14-17 103 Feng, Makuuchi 14-17 18 103 Feng, Makuuchi 18 1-13 103 Feng, Lee 1-13 14-17 103 Feng, Lee 14-17 18 103 Feng, Lee 18 1, 2, 4-13 Nonstatutory double patenting over Feng ʼ201 in view of Lee 1, 2, 4-13 3 Nonstatutory double patenting over Feng ʼ201 in view of Lee, Feng 3 14-17 Nonstatutory double patenting over Feng ʼ201 in view of Lee, Feng 14-17 18 Nonstatutory double patenting over Feng ʼ201 in view of Lee 18 Overall Outcome 1-18 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED