Robert Bosch GmbH

Patent Trials and Appeals Board

Aug 30, 2021

2020004471 (P.T.A.B. Aug. 30, 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.
15/405,561 01/13/2017 Marin Steenackkers 022862-2661-US01 7447
34044 7590 08/30/2021
MICHAEL BEST & FRIEDRICH LLP (Bosch)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
PENNY, TABATHA L
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
08/30/2021 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARIN STEENACKKERS and NICOLAAS GOTZEN
____________

Appeal 2020-004471
Application 15/405,561
Technology Center 1700
____________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4–7, and 9–14.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Robert Bosch GmbH as the real party
in interest. Appeal Brief, filed October 25, 2019 (“Br.”) 3.
2 Final Office Action, mailed June 5, 2019 (“Final Act.”).
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Application 15/405,561

2
STATEMENT OF THE CASE
Background
The subject matter on appeal relates to a process for solvent-free
coating of rubber items. Specification, filed January 13, 2017 (“Spec.”) ¶ 1.
The Specification describes rubber items made using such a process as
having a reduced coefficient of friction. Id. ¶ 2. The Specification explains
that a previous process for coating rubber items had multiple stages and was
lengthy. Id. ¶ 3. The coating made using the previous process also had a
tendency to delaminate from the rubber. Id.
The Specification discloses a process for producing a coated rubber
item that includes providing a semifinished product composed of a rubber
composition, coating the semifinished product with a solvent-free coating
composition comprising at least one monomer amenable to free-radical
polymerization, and crosslinking the rubber composition and polymerizing
the coating composition to provide a coated rubber item. Id. ¶ 5. The
Specification states that the process allows vulcanization of the rubber and
polymerization of the coating composition to be carried out in a single step,
which reduces the time and cost to produce a rubber item. Id. ¶ 42.
According to the Specification, the resulting coated rubber has improved
properties, is resistant to breakaway or delamination, and has a large number
of covalent bonds between the surface coating and the rubber. Id. ¶ 43. The
Specification also explains that no drying of the coating layer occurs prior to
polymerization because the process is solvent-free. Id. ¶ 42.
Of the appealed claims, claims 1 and 9 are independent. We
reproduce below claim 1, which is representative of the subject matter on
appeal.
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1. A process for the production of a coated rubber item,
comprising the following steps:
(i) providing a semifinished product having a main shape
of a rubber item to be coated, wherein the semifinished product
is composed of a rubber composition comprising at least one
rubber and at least one crosslinking agent;
(ii) coating the semifinished product with a solvent-free
coating composition comprising at least one monomer
amenable to free-radical polymerization, a friction reducing
additive and optionally at least one thermal initiator, and
(iii) crosslinking of the rubber composition and
polymerization of the solvent-free coating composition, to give
a coated rubber item;
characterized in that the boiling point of the at least one
monomer amenable to free-radical polymerization is ≥ 150°C
and the crosslinking of the rubber composition takes place at
the same time as the polymerization of the coating composition.
Br. 10 (Claims App’x).
The References
Yves DE 102010003139 A1 Sept. 29, 20113
Mizote US 2008/0016644 A1 Jan. 24, 2008
George GB 1,120,803 July 24, 1968

3 Yves was published in German. The Examiner refers to specific
paragraphs of Yves in the rejection. Final Act. 2–4. These citations appear
to refer to a machine-prepared English translation obtained from the
European Patent Office’s website. The Examiner appears to have provided
the machine-prepared translation with the Non-Final Office Action dated
December 12, 2018. Our further citations to Yves will refer to the machine-
prepared translation, unless stated otherwise.
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The Rejection
The Examiner maintains the following rejection on appeal:
Claims 1, 2, 4–7, and 9–144 under 35 U.S.C. § 103 as unpatentable
over the combination of Yves, Mizote, and George. Final Act. 2–4.
OPINION
For claims 1 and 9,5 the Examiner finds that Yves discloses a process
of producing a coated rubber item (i.e., a wiper blade) by providing a
semifinished product that includes rubber and peroxide additives, coating the
semifinished product with a thermosetting lubricious coating that includes a
polymerizable monomer and graphite, and crosslinking the rubber
composition and polymerizing the coating composition at the same time to
provide a coated rubber item. Final Act. 2. The Examiner finds that Yves
does not explicitly disclose that the polymerizable monomer has a boiling
point above 150°C and is amendable to free-radical polymerization. Id. at 2.
The Examiner finds that Mizote teaches a friction reducing coating for a
wiper blade that includes a monomer for polymerization having a boiling
point above 150°C and is amenable to free-radical polymerization,
specifically dodecyl acrylate. Id. at 2–3. The Examiner concludes that it
would have been obvious to modify Yves’s coating to include Mizote’s
monomer because the monomer was known as useful in a friction reduction
wiper blade and because one of ordinary skill in the art would have had a

4 The Examiner states that claims 1–7 and 9–14 are rejected. Final Act. 2.
However, only claims 1, 2, 4–7, and 9–14 were pending at the time of the
Final Action, as the Office Action Summary states. Id. at 1.
5 The Examiner first sets forth a rejection for claim 9. Id. at 2–3. For the
rejection of claim 1, the Examiner cites the rejection of claim 9 and makes
additional findings and conclusions discussed herein for claim 1’s additional
limitations. Id. at 3–4.
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reasonable expectation of success of predictably achieving Yves’s coating
with Mizote’s monomer. Id. at 3.
The Examiner further finds that the combination of Yves and Mizote
does not explicitly disclose a thermal initiator for the coating composition,
as claim 9 requires.6 Id. The Examiner finds George discloses similar
coatings for rubber wiper blades that use radiation or a thermal initiator for
polymerization. Id. The Examiner concludes it would have been obvious to
modify Yves’s coating composition, as modified in view of Mizote, to
include a thermal initiator because it was a component used to cure a
polymeric wiper coating and because one of ordinary skill in the art would
have had a reasonable expectation of achieving Yves’s coating with
George’s thermal initiator. Id.
In addition, with regard to claim 1, the Examiner finds that the
combination of Yves and Mizote does not explicitly teach the absence of a
solvent. Id. The Examiner finds George teaches varying time, temperature,
diluents, etc., depending on the particular elastomeric compound being used.
Id. The Examiner also finds that George teaches solvent-free embodiments.
Id. The Examiner concludes it would have been obvious to vary time,
temperature, and the diluents of Yves’s coating composition, as modified in
view of Mizote, and in view of George’s embodiments without a solvent
because this was a known method of achieving a desirable friction reduction
coating on a wiper blade and one of ordinary skill in the art would have had
a reasonable expectation of success in achieving the coating via variations of
process parameters. Id. at 3–4.

6 A thermal initiator is optional in claim 1.
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Appellant asserts that George’s solvent-free examples do not include
any friction reducing additives and George does not teach or suggest that its
methods “are amenable to compositions including a friction reducing
additive,” as the limitation “coating the semifinished product with a solvent-
free coating composition comprising at least one monomer amenable to free-
radical polymerization [and] a friction reducing additive” requires. Br. 7.
Appellant contends that one of ordinary skill in the art would not have
modified George’s teachings to use a solvent-free coating composition that
includes a friction reducing additive. Id.
Appellant further argues that Yves’s monomers are applied to a
rubber via a graft polymerization process. Id. at 7–8. Appellant also
contends that Mizote does not teach or suggest that its monomers can be
used in a composition including a friction reducing additive. Id. at 8. And
Appellant asserts that Mizote: (1) “focuses on ‘a surface modified by being
subjected to irradiation treatment that generates radical active sites in the
blade rubber and polymerization for graft polymerization starting from a
generated radical active site,’” (2) uses surface modification instead of
coating, and (3) does not disclose a thermosetting resin as a wiper blade
coating, but instead discloses irradiating a surface to generate radical active
species for polymerization. Id. (quoting Mizote Abstract). In view of this,
Appellant argues there would have been “no technical reason for a skilled
person to implement the monomer of [Mizote] (such as dodecyl acrylate)
into a thermosetting resin as disclosed in [Yves] because [Mizote] discloses
a completely different wiper blade and procedure.” Id.
Appellant’s arguments are persuasive. Yves discloses polymerizing
the monomers of its coating composition via heat from a silicone bath. Yves
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¶¶ 17–19. Yves discloses that immersion in the bath can simultaneously
vulcanize its rubber material and cure its thermosetting coating. Id. ¶ 21.
Yves also discloses that its thermosetting coating can include graphite. Id.
¶ 48. Appellant’s Specification describes graphite as a friction-reducing
additive. Spec. ¶ 24. As noted above, the Examiner finds that Yves does
not teach the use of a monomer that is amenable to free-radical
polymerization, as claims 1 and 9 require. Final Act. 2.
Mizote teaches modifying a rubber surface by exciting the rubber
(e.g., via an irradiation treatment) to generate radical active sites and graft-
polymerizing a monomer (e.g., dodecyl acrylate) to the rubber surface.
Mizote ¶¶ 33, 48–49, 53. Appellant’s Specification states that a monomer
having an acrylate group as at least one functional group is an example of a
monomer that is amenable to free-radical polymerization. Spec. ¶ 20.
Therefore, Mizote’s dodecyl acrylate material appears to be a monomer that
is amenable to free-radical polymerization, as claims 1 and 9 require.
The Examiner concludes it would have been obvious to modify Yves
to include Mizote’s monomer. Final Act. 3. In response to Appellant’s
arguments, the Examiner finds that “[g]rafting of the dodecyl acrylate to the
rubber surface during polymerization as taught in [Mizote] would have been
a recognized advantage for achieving connection of the coating by a person
having ordinary skill in the art.” Ans. 5. This indicates that the Examiner’s
proposed modification is to modify Yves’s process to use Mizote’s dodecyl
acrylate material. The Examiner does not find that Mizote discloses using a
friction reducing additive in the coating, such as graphite. As a result, it
would have been necessary to modify Mizote’s material to include a friction
reducing additive, such as Yves’s graphite. The Examiner, however, does
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not sufficiently explain why such a modification would have been obvious to
one of ordinary skill in the art.
As a further response to Appellant’s arguments, the Examiner finds
that Mizote suggests grafting dodecyl acrylate with a rubber surface, which
suggests resistance to delamination, and Yves teaches friction reducing
additives. Ans. 3–4. This finding does not explain how the combination of
Yves, Mizote, and George would include a friction reducing additive, such
as Yves’s graphite, if the Examiner is relying on Mizote’s dodecyl acrylate
for the claimed monomer that is amenable to free-radical polymerization.
The Examiner also finds that “the cited art recognizes a number of
known polymerization methods which are interchangeable including
radiation polymerization and thermal initiator/heat polymerization in
[George] as well as heated bath polymerization and hot air polymerization in
[Yves].” Id. at 5. The Examiner, however, does not provide any citations to
the asserted references to support this finding.
Even if the Examiner is correct,7 George discloses that the usual
approach to reducing friction of elastomeric materials is to include a
lubricating material, such as graphite, but that this approach “leads to
disappointing results, mainly because sufficient additive to sustain the
lubricant function causes serious loss of the desired physical properties” and
“[t]ear and tensile strengths and elasticity are seriously reduced.” George
1:60–77. George further describes three methods of producing elastomeric
material that do not add lubricating material (i.e., friction reducers) and

7 George teaches using either irradiation or a thermal initiator with heat to
induce polymerization. George 2:56–73. George also describes an example
that uses butyl acrylate (i.e., a material with acrylate as at least one
functional group) as a grafting material. Id. at 3:83–98.
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discloses that products treated via these methods “have lubricity properties
which approach that of Teflon with the basic elasticity and flexibility
characteristics virtually unchanged.” Id. at 3:4–47, 4:19–47, 5:33–62, 6:69–
75. Thus, George teaches a method for producing elastomeric materials that
exclude friction reducers. Mizote also describes its product, which does not
include a friction reducing additive, as suppressing friction. Mizote ¶ 20.
Although the Examiner cites George for its disclosures regarding a
thermal initiator and solvent-free coating compositions, George also
provides the above-described teachings that are relevant to whether one of
ordinary skill in the art would have modified Yves in view of Mizote to use
Mizote’s material with a friction reducing additive. Given George’s and
Mizote’s process that suppress friction without a friction-reducing additive,
the Examiner does not sufficiently explain why it would have been obvious
to modify Yves in view of Mizote and George so a coating composition
includes Mizote’s dodecyl acrylate as the claimed monomer that is amenable
to free-radical polymerization and also has a friction reducing additive, as
claims 1 and 9 require.
For these reasons, Appellant’s arguments identify a reversible error in
the Examiner’s rejections of claims 1 and 9. The Examiner’s remaining
findings and conclusions with regard to claims 2, 4–7, and 10–14 do not
remedy this deficiency.
Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 4–7,
and 9–14 under § 103 over the combination of Yves, Mizote, and George.
CONCLUSION
The Examiner’s rejection of claims 1, 2, 4–7, and 9–14 under
35 U.S.C. § 103 is reversed.
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In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 4–7,
9–14
103 Yves, Mizote,
George
1, 2, 4–7,
9–14

REVERSED