Luca Giannini et al.

Patent Trials and Appeals Board

Feb 25, 2020

14430403 - (D) (P.T.A.B. Feb. 25, 2020)

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.
14/430,403 03/23/2015 Luca Giannini 13260.0008-00000 2307
22852 7590 02/25/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
02/25/2020 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUCA GIANNINI, ANGELA LOSTRITTO, and
MARIO MARIANI

Appeal 2019-004710
Application 14/430,403
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
SHELDON M. MCGEE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 21–27, 31, and 33–46.2 We heard
oral arguments from the Appellant’s representative on February 13, 2020.
We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, “PIRELLI TYRE S.P.A.” (Application Data
Sheet filed March 23, 2015 at 5), which is also identified as the real party in
interest (Appeal Brief filed February 25, 2019 (“Appeal Br.”) at 3).
2 See Appeal Br. 8–27; Reply Brief filed May 29, 2019 (“Reply Br.”) at 2–
13; Final Office Action entered July 27, 2018 (“Final Act.”) at 2–7;
Examiner’s Answer entered April 2, 2019 (“Ans.”) at 3–7.
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We affirm. Nevertheless, because our obviousness analysis relies on
new factual findings and reasoning not previously communicated to the
Appellant, we designate our decision as including a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b) so as to preserve the procedural safeguards
that must be afforded to the Appellant. See In re Stepan Co., 660 F.3d 1341,
1346 (Fed. Cir. 2011) (“Had the Board labeled its rejection as a new ground
of rejection, Stepan could have reopened prosecution to address the newly-
alleged deficiencies in its Declaration with the examiner.”); In re Leithem,
661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory
basis and the same prior art references, alone, is insufficient to avoid making
a new ground of rejection when the Board relies on new facts and rationales
not previously raised to the applicant by the examiner.”).
I. BACKGROUND
The subject matter on appeal relates to a tire for vehicle wheels
(Specification filed March 23, 2015 (“Spec.”) at 1, l. 4). The Inventors
characterize their discovery, as follows:
The Applicant found that it was possible to obtain tires
which have improved performance during use under extreme
working conditions by making the [tire’s] antiabrasive strip with
an elastomeric material comprising inorganic fibres having
nanometric dimensions, preferably inorganic fibres consisting of
magnesium and/or aluminium silicates.
The Applicant found that the addition of inorganic fibres
having nanometric dimensions to the elastomeric material with
which the antiabrasive strip is made resulted in an increase in
the performance of the tire under extreme working conditions,
in particular as regards the stability and handling, without
incurring any problems of fragility or rapid degradation of the
tire.
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This is surprising considering the fact that the Applicant
had noted that the elastomeric material reinforced with the
abovementioned magnesium and/or aluminium silicate inorganic
fibres having nanometric dimensions showed a large decrease in
the dynamic shear modulus as the dynamic strain increased, i.e.
a high Payne effect, which was such as to consider the material
unsuitable for use in high performance tires.
A high Payne effect typically involves a loss of
reinforcement as the strain increases, which results in a decline
in the performance of the tire.
Nevertheless, the Applicant performed tests on tires
bearing an antiabrasive strip made with an elastomeric
material reinforced with the abovementioned fibres and found,
surprisingly, optimum stability and handling performance
without the tire becoming fragile in the bead regions.
(Id. at 2, l. 22–3, l. 17 (emphases added)).
Figure 1 (annotated) is reproduced from the Drawings filed March 23,
2015, as follows:

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Figure 1 above shows a cross-sectional view of a radial tire 100 comprising,
inter alia: a carcass structure having at least one carcass layer 101; annular
anchoring structures 102 and bead filling 104 forming an annular reinforcing
structure 103; an antiabrasive strip 105; a belt structure 106 including belt
layers 106a–106c; a sidewall 108; a tread band 109; a belt consisting of
elastomeric material layer 110; a sublayer 111; and a rubber (liner) layer 112
(Spec. 13, l. 4–15, l. 17).
Representative claim 21 is reproduced from the Claims Appendix to
the Appeal Brief, as follows:
21. A tire for vehicle wheels comprising:
a carcass structure comprising at least one carcass layer
having opposed side edges associated with relative annular
reinforcing structure;
a tread band applied in a radially outer position with
respect to said carcass structure;
a pair of sidewalls laterally applied onto opposite sides
with respect to said carcass structure; and
at least one antiabrasive strip applied in an outer position
of each of said annular reinforcing structure,
wherein said at least one antiabrasive strip comprises a
crosslinked elastomeric material obtained by crosslinking of a
crosslinkable elastomeric composition comprising sepiolite
fibres having nanometric dimensions and at least one
additional reinforcing filler, wherein said sepiolite fibres are
present in an amount of about 1 to about 20 phr and said at least
one additional reinforcing filler is present in an amount of about
20 to about 90 phr, wherein said crosslinkable elastomeric
composition does not include attapulgite,
wherein said crosslinked elastomeric material has an
elastic dynamic modulus E’ value, at 70°C, and at a frequency
of 10 Hz, higher than about 8.00 M[P]a and has a value of
static load at 100% elongation equal to or higher than 5 M[P]a.
(Appeal Br. 28–29 (emphases added)).
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II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103(a) (pre-
AIA), as follows:
A. Claims 21–27, 31, and 33–46 as unpatentable over Mizuno et
al.3 (“Mizuno”) and Galan;4 and
B. Claims 42 and 43 as unpatentable over Mizuno, Galan, and
Yoshioka.5, 6
III. DISCUSSION
1. Grouping of Claims
The Appellant’s arguments against both rejections are based solely on
claim 21 (Appeal Br. 8–27). Therefore, we decide the appeal as to both
rejections on the basis of claim 21, which we select as representative
pursuant to 37 C.F.R. § 41.37(c)(1)(iv). Claims 22–27, 31, and 33–46 stand
or fall with claim 21.
2. The Examiner’s Position
The Examiner finds that Mizuno describes most of the limitations
recited in claim 21 but acknowledges that the reference teaches kaolin clay
rather than sepiolite clay specified in the claim (Final Act. 2). To resolve
this difference, the Examiner relies on Galan, which was found to teach that

3 US 2010/0190907 A1, published July 29, 2010.
4 E. Galan, Properties and Applications of Palygorskite-Sepiolite Clays, 31
CLAY MINERALS 443–53 (1996). The Examiner refers to this document as
“Properties and Applications” (Ans. 3; Final Act. 2)
5 JP 2006-151329 A, published June 15, 2006 (Partial translation).
6 Although the Examiner does not list this rejection in the Examiner’s
Answer, the Answer does not include any “WITHDRAWN REJECTIONS”
section (Ans. 3–7).
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sepiolite clay fibers having fiber widths between 10–30 nm and fiber
thicknesses between 5–10 nm, when incorporated into rubber (elastomer)
compositions, provide mechanical and aging properties that are equal to or
superior to those of kaolin clay-filled rubber compositions (id.). Based on
these findings, the Examiner concludes that a person having ordinary skill in
the art would have been prompted to combine Mizuno and Galan in the
manner claimed by the Inventors in order to obtain the benefits disclosed in
Galan (id.).
3. The Appellant’s Contentions
The Appellant contends that the Examiner’s rejection of claim 21 is
improper because a person of ordinary skill in the art would not have
substituted Galan’s sepiolite clay fibers for Mizuno’s layered kaolin clay
(Appeal Br. 10–16). Specifically, the Appellant argues that although
Mizuno teaches clay as an optional component, “it is but one of many sub-
classifications of inorganic fillers that are described as ‘another filler’ or
‘other filler’ to be included with silica” and that “[n]owhere does Mizuno
tout the use of a clay filler over the other disclosed inorganic fillers for a
clinch apex rubber composition”—i.e., the composition that corresponds to
the Inventors’ antiabrasive strip (id. at 11). The Appellant urges that,
therefore, Galan’s sepiolite clay and Mizuno’s kaolin clay are not functional
equivalents (id. at 11–12).
In addition, the Appellant argues that Galan’s sepiolite clay fibers are
not interchangeable with Mizuno’s layered kaolin clay because, contrary to
the Examiner’s basis for substituting Galan’s sepiolite clay for Mizuno’s
kaolin clay (i.e., improved mechanical), Mizuno teaches that the “‘other
fillers,’ such [as] kaolin clay, are not associated with improving mechanical
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properties in its clinch apex rubber compositions” (id. at 12–13). In the
Appellant’s view, Mizuno teaches that “it is the silica component and not the
‘other fillers,’ such as kaolin clay, that exert the mechanical ‘reinforcing
effect’ in its clinch apex rubber compositions” and that the “other fillers,”
such as kaolin clay, are added to improve processability—not mechanical
properties (id. at 13–14 (relying on Inventor Luca Giannini’s Declaration
filed June 20, 2013 (“Second Declaration” or “Second Decl.”) ¶¶ 9–10)).
The Appellant argues that Mizuno describes a structurally different clay (i.e.,
layered clay) than that described in Galan (i.e., fibrous clay) for a different
purpose (i.e., improved processability) than that described in Galan (i.e.,
improved mechanical properties) (id. at 14–15) and that, in view of the
functional and structural differences, “a person of ordinary skill in the art
would expect substitution to cause unforeseeable consequences on the
processability of Mizuno’s compositions” (id. at 15–16).
Furthermore, the Appellant contends that neither Mizuno nor Galan
would have taught or suggested a crosslinked elastomeric material having
the properties recited in claim 21 (id. at 16–17). According to the Appellant,
inherency may not be established by probabilities or possibilities (id. at 17).
The Appellant argues that, even if a prima facie case of obviousness
exists, it is rebutted by evidence of unexpected results (id. at 16). In support,
the Appellant relies on certain experimental evidence described in the
Inventors’ Specification and Inventor Giannini’s two declarations—namely,
a Declaration filed January 12, 2018 (“First Declaration” or “First Decl.”)
and the Second Declaration (id. at 18–26).

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4. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Mizuno’s Figure 1 (annotated) is reproduced, as follows:

Mizuno’s Figure 1 depicts a cross-sectional view showing a left half portion
of a pneumatic tire 1 comprising a tread portion 2, a sidewall portion 3, a
sidewall rubber 3G, a bead portion 4, a clinch apex rubber 4G, a bead core
5, a carcass 6, a belt layer 7, a bead apex rubber 8, and an inner liner rubber
9 (Mizuno ¶¶ 27–28). As the Appellant acknowledges (Appeal Br. 10, n.2),
Mizuno’s clinch apex rubber 4G corresponds to the “antiabrasive strip”
recited in claim 21. Mizuno teaches that the clinch apex rubber 4G
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composition uses a natural rubber component consisting of either natural
rubber or epoxidized natural rubber, with smaller amounts of compounded
carbon black such that materials derived from petroleum resources are
reduced, thereby resulting in a low heat-generating characteristic and
superior processability (id. ¶ 30). Mizuno further teaches that the clinch
apex rubber composition 4G includes an inorganic filler preferably blended
in an amount ranging from 50–80 parts by mass relative to 100 parts by
mass of the rubber composition, wherein, in an embodiment, the filler
includes (in addition to carbon black) silica in a preferred range from 30–55
parts by mass per 100 parts by mass of the rubber composition and an
inorganic filler other than silica (“other fillers”) in a preferred range from 20
parts by mass per 100 parts by mass of the rubber composition (id. ¶¶ 39–42,
47–50).
With respect to the inorganic filler other than silica (i.e., “other
fillers”), Mizuno teaches that “examples thereof include calcium carbonate,
aluminum hydroxide, clay, mica and magnesium oxide” (id. ¶ 46 (emphasis
added)), wherein “the clay to be used . . . typically refers to particles mainly
composed of clay minerals having a particle size of 2 µm” and “the clay
minerals typically mean crystalline or amorphous materials mainly
composed of layer-state silicates” (id. ¶ 48 (emphases added)). Mizuno
specifically identifies wet kaolin subject to treatment by a coupling agent as
a specific example (id. ¶ 49).
Thus, as the Examiner correctly finds (Ans. 3), Mizuno discloses only
five options for the secondary filler component—one option being clay.
Therefore, the Appellant is not entirely accurate in asserting that clay “is but
one of many sub-classifications of inorganic fillers that are described as
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‘another filler’ or ‘other filler’ to be included with silica” (Appeal Br. 11
(emphasis added)). Cf. Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
683 F.3d 1356, 1364–65 (Fed. Cir. 2012) (“strong case of obviousness”
exists where the combination of ingredients recited in the claims were based
on selections from a finite number of identified, predictable solutions).
As indicated above, the Appellant argues that “[n]owhere does
Mizuno tout the use of a clay filler over the other disclosed inorganic fillers
for a clinch apex rubber composition” (Appeal Br. 11). But Mizuno teaches
that any of the five options, including clay, makes it “possible to desirably
obtain the reducing effect of the amount of use of materials derived from
petroleum resources, with superior mechanical strength being maintained”
(Mizuno ¶ 47). Therefore, each of these five options would have reasonably
been expected to provide these advantages. In any event, although “case 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
motivation for the current invention” (In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004)), Galan provides direct motivation or reason to substitute
Mizuno’s clay (e.g., kaolin clay) with another species of clay—namely,
sepiolite clay having the characteristics recited in claim 21.
Specifically, Galan teaches a palygorskite-sepiolite group of clay
minerals, which were recited in canceled claim 28 as filed with the current
application, have a wide range of industrial applications including as
reinforcing fillers in rubber (e.g., natural rubber) compositions (Galan
Abstract, 445, 448). Galan teaches that these fillers are fibers having sizes
that “vary widely but generally range from c. 100 Ä [10 nm] to 4–5 µm
[4,000–5,000 nm] in length, c. 100 Ä [10 nm] to c. 300 Ä [30 nm] in width
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and c. 50 Ä [5 nm] to c. 100 Ä [10 nm] in thickness” (id. at 443–44).
According to Galan, another prior art document “compared the behaviour of
different sepiolite-filled rubbers with that of kaolin and found the
mechanical properties and ageing characteristics of the sepiolite rubbers to
be similar or better than those of the kaolin-filled products” (id. at 448).
Given these teachings, we are in complete agreement with the
Examiner that a person having ordinary skill in the art would have been
prompted to substitute Mizuno’s kaolin clay filler with Galan’s palygorskite-
sepiolite clay with a reasonable expectation of improving the rubber
composition’s mechanical and aging properties. KSR Int’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.”).
We find no persuasive merit in the Appellant’s argument, based on
Inventor Giannini’s Second Declaration (¶¶ 9–11 (citing Mizuno ¶ 135;
Table 1 (Examples 1, 2, and 4))), that Mizuno does not teach adding clay to
affect mechanical properties but rather to affect processability. Contrary to
the testimony of Inventor Giannini, who is an interested party, but consistent
with the Examiner’s position (Ans. 4–5), Mizuno explicitly teaches that clay
plays a major role in reducing the amount of materials derived from
petroleum resources and making it “possible to prevent degradation in the
processability that occurs when a large amount of silica is used” while
maintaining “superior mechanical strength” (Mizuno ¶¶ 40, 42 (“the
compounding amount [of silica] exceeding 55 parts by mass tends to cause
degradation in the processability”), 47). For instance, in comparing the
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Mooney viscosities reported for the natural rubber/epoxidized natural rubber
compositions of Examples 2 and 4, the Mooney viscosity was 82 when 70
parts by weight of silica was used, whereas the Mooney viscosity was only
74 when only 50 parts of silica and 20 parts clay were used (id. ¶ 117, Table
1). To the extent that the composition containing 20 parts of clay had a
lower Mooney viscosity, such a viscosity may be attributed to a reduction in
the amount of silica, as disclosed elsewhere in Mizuno—not that the
particular clay component affects processability. In any event, Galan
explicitly teaches that fibrous palygorskite-sepiolite clay provides an
improvement in terms of mechanical properties when used as a filler in a
natural rubber composition, as we found above. Therefore, we do not credit
Inventor Giannini’s testimony as persuasively establishing a lack of
motivation to combine Mizuno and Galan. Velander v. Garner, 348 F.3d
1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications
than to subsequent conclusory statements by experts, the Board acted well
within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir.
2010) (The Board has discretion to give more weight to one item of evidence
over another “unless no reasonable trier of fact could have done so”); In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
Board is entitled to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions expressed in the
declarations.”).
With respect to the Appellant’s argument concerning the properties
recited in claim 21 (dynamic modulus E’ value at 70°C and a frequency of
10 Hz of higher than about 8.00 MPa and a static load at 100% elongation
equal to or higher than 5 MPa), Mizuno’s composition containing clay is
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compositionally and structurally similar to the composition recited in claim
21, and, therefore, would be expected to possess similar properties. As the
Examiner has no means to obtain and compare products, the burden of
production was shifted to the Appellant to show otherwise. In re Best, 562
F.2d 1252, 1255 (CCPA 1977).
Here, the Appellant fails to direct us to sufficient evidence that
Mizuno’s compositions would not exhibit comparable dynamic modulus E’
and static load at 100% values. As the Examiner correctly observes (Ans.
6), the specified values may be achieved even without the use of sepiolite
clay (Spec. 23, 26 (Tables 1 and 2, Sample 2)). Moreover, our reviewing
court has stated:
[I]t is not necessary . . . that both a structural similarity between
a claimed and prior art compound (or a key component of a
composition) be shown and that there be a suggestion or
expectation from the prior art that the claimed compound or
composition will have the same or a similar [property] as one
newly discovered by applicant.
In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc).
Lastly, the Appellant’s arguments based on unexpected results are
also unpersuasive. First, as the Examiner correctly points out (Ans. 6), the
Inventors’ premise that the sepiolite clay imparts unexpectedly improved tire
performance, as disclosed in the Specification (Spec. 2, l. 22–3, l. 17), is not
supported by any experimental evidence. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (“‘Mere argument or conclusory statements in the
specification does not suffice.’” (Internal citation omitted)).
Second, none of the experiments in the Specification or the two
Declarations from Inventor Giannini constitute a back-to-back comparison
of the claimed invention against the closest prior art, Mizuno, which shows a
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composition containing 70 parts by weight of natural rubber, 30 parts
epoxidized natural rubber, 50 parts silica, and 20 parts clay (Mizuno ¶ 117,
Table 1, Example 4). In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (“While
we do not intend to slight the alleged improvements, we do not feel it an
unreasonable burden on appellants to require comparative examples relied
on for non-obviousness to be truly comparative. The cause and effect sought
to be proven is lost here in the welter of unfixed variables.”).
Third, the Appellant’s proffered showing is limited in scope to
compositions based on 70 parts by weight natural rubber, 30 parts by weight
polybutadiene rubber, various amounts of carbon black, and sepiolite clay
modified with a quaternary ammonium salt (Spec. 23, Table 1; First Decl.
¶ 12 (Table 3-1); Second Decl. ¶ 14 (Table 4-1)). By contrast, claim 21 is
significantly broader in that it recites any “crosslinked elastomeric material”
of any rubber (elastomer) composition, any “additional reinforcing filler,” a
broad range of elastic dynamic modulus E’ values, and a broad range of
static load at 100% elongation. 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.”). Alternatively, claim 21 should have been
narrowed to be commensurate in scope with the proffered showing. In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Fourth, the improved mechanical properties appear to be expected in
view of Galan’s disclosure that sepiolite clay would provide improved
mechanical properties. “Expected beneficial results are evidence of
obviousness of a claimed invention, just as unexpected beneficial results are
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evidence of unobviousness.” In re Skoll, 523 F.2d 1392, 1397 (CCPA
1975).
Therefore, on balance, we conclude that the preponderance of the
evidence supports the Examiner’s conclusion of obviousness. For the
reasons given above, and those well-stated by the Examiner, we uphold the
Examiner’s rejection.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed New
Ground
21–27,
31, 33–46
103(a) Mizuno, Galan 21–27, 31,
33–46
21–27, 31,
33–46
42, 43 103(a) Mizuno, Galan,
Yoshioka
42, 43 42, 43
Overall
Outcome
21–27, 31,
33–46
21–27, 31,
33–46

V. FINALITY AND RESPONSE
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 Appellant, 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:
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(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 prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED; 37 C.F.R. § 41.50(b)