SUMITOMO RUBBER INDUSTRIES, LTD.

Patent Trials and Appeals Board

Mar 17, 2022

2022000595 (P.T.A.B. Mar. 17, 2022)

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. 15/767,911 04/12/2018 Ryo MASHITA 1403-0470PUS1 3281 2292 7590 03/17/2022 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1749 NOTIFICATION DATE DELIVERY MODE 03/17/2022 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RYO MASHITA, HIROYUKI KISHIMOTO, and RYOTA KITAGO ____________ Appeal 2022-000595 Application 15/767,911 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 9-40. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Sumitomo Rubber Industries, Ltd., as the real party in interest. Appeal Br. 1. Appeal 2022-000595 Application 15/767,911 2 CLAIMED SUBJECT MATTER The invention relates to a crosslinked rubber composition suited for use in making a pneumatic tire. Spec. ¶ 1. Claim 10 reads as follows: 10. A crosslinked rubber composition having a volume of the low density region of 35% or more at elongation by an applied stress of 1.5 MPa, a volume of the void portion of 7.5% or less at elongation by an applied stress of 3.0 MPa and a hardness is 65 or more. Appeal Br. (Claims App. 1). Claim 9 recites a pneumatic tire comprising a tread formed from a crosslinked rubber composition as is recited in claim 10. Each remaining claim on appeal depends from claim 9 or 10. REJECTION Claims 9-40 stand rejected under 35 U.S.C. § 103 as unpatentable over US 2016/0237259 A1, published August 18, 2016, (“Hardy”).2 Ans. 3. OPINION Each claim on appeal requires a crosslinked rubber composition having specified properties-namely, low density region volume, void portion volume, and hardness. The Examiner finds “Hardy discloses an exemplary composition that is extremely similar to that taught by Applicant.” Final Act. 3. The Examiner refers generally to Hardy, and does not point to any example composition. Instead, the Examiner concludes all the recited properties are achieved through sufficient kneading time and temperature, regardless of the 2 We note the Examiner’s articulation of the rejection does not address either of claims 17 and 18. See Final Act. 2-5. Appeal 2022-000595 Application 15/767,911 3 particular makeup of the rubber composition. Id. (citing Spec. ¶ 44); see also May 19, 2021 Advisory Action (“Applicant specifically correlates the claimed properties with a specific method (increase in kneading steps or kneading temperatures) independent of the specific rubber composition.”) (citing Spec. ¶ 44). The Examiner finds Hardy discloses kneading a rubber composition up to 15 minutes at a temperature between 60 and 180 degrees Celsius. Final Act. 3. Comparing those values to the kneading and temperature data reported in Table 3 of the Specification, the Examiner concludes “a wide variety of composition[s] taught by Hardy would demonstrate properties in accordance to the claimed invention.” Id. Appellant argues, inter alia, “reproduced Examples of Hardy do not satisfy the volumes of low density region and void portion as presently claimed.” Appeal Br. 14. In support of the argument, Appellant presents a Declaration dated May 12, 2021 (“Decl.”) which includes test results corresponding to Examples 3 and 7 from Hardy, demonstrating that the reproduced materials made in accordance with Hardy’s disclosure did not meet any of the claimed property values. See Decl. 5, Table A. The Declaration further identifies distinctions between Hardy’s materials and those described in the Specification with regard to ingredients, concentrations, kneading time, and processing temperature profiles. Id. at 3. The Examiner does not challenge Appellant’s Declaration evidence. Rather, the Examiner states, “[t]he fact that such an exemplary composition and method of Hardy demonstrates a low density region and void portion outside the claimed invention fails to render the claims non-obvious.” Ans. 3. According to the Examiner, Hardy teaches possibly applying additional mixing stages that may be extended for a longer duration. Id. The Examiner Appeal 2022-000595 Application 15/767,911 4 relies exclusively on paragraph 44 of the Specification as evidence that extended mixing in Hardy necessarily would have achieved the claimed property values. Id. at 5 The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). Here, the Examiner’s ultimate determination of obviousness is premised on the findings that Hardy discloses preparing a rubber material through a process that may include extended kneading time, and that the Specification states that such an extended kneading time necessarily produces the claimed property values irrespective of the compositional makeup. See, e.g., Ans. 5 (“[T]here is a direct correlation between the claimed low density region and the claimed void portion and methods having increased kneading steps or increased kneading times.”) (citing Spec. ¶ 44). However, the relied-upon passage from the Specification merely describes that uniform crosslinking is necessary for achieving the desired low density and void volumes, and that uniform crosslinking can be Appeal 2022-000595 Application 15/767,911 5 impacted by kneading time or kneading steps to achieve a uniform dispersed state of vulcanizing agent and/or accelerator. Spec. ¶ 44. The Examiner does not point to evidence to support a finding that such increased kneading, by itself, would have been sufficient to achieve the recited low density and void volumes. Nor does the Examiner identify evidence that such an increase in kneading would have achieved the necessary uniform dispersion of vulcanizing agent or accelerator; the Examiner does not identify Hardy’s use of vulcanizing agent/accelerator or the kneading stage at which it would have been introduced. Moreover, Appellant’s Declaration evidence of Examples reproduced from Hardy that do not meet any of the recited properties weighs against the Examiner’s inherency finding. For the foregoing reasons, we are persuaded the Examiner has not identified evidence sufficient to support an obviousness determination. Accordingly, the Examiner’s rejection is not sustained. CONCLUSION The Examiner’s decision rejecting claims 9-40 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 9-40 103 Hardy 9-40 REVERSED