APPLICATION OF SCHNEIDER

• Decision Date: 09 August 1973
• Docket Number: Patent Appeal No. 8972.
• Citation: 179 USPQ 46,481 F.2d 1350
• Parties: Application of Abraham SCHNEIDER and Archibald P. Stuart.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

179 USPQ 46, 481 F.2d 1350 (1973)

Application of Abraham SCHNEIDER and Archibald P. Stuart.

Patent Appeal No. 8972.

United States Court of Customs and Patent Appeals.

August 9, 1973.

Barry A. Bisson, Wilmington, Del., attorney of record, for appellants.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Henry W. Tarring, II, Falls Church, Va., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and ALMOND, Senior Judge.

LANE, Judge.

This is an appeal from the decision of the Board of Appeals sustaining § 103 rejections of claims 1-11 of appellants' application¹ entitled "Rubber Containing Acid-Treated Oils and Its Preparation," and refusing to consider claims 12-22 which were submitted by appellants after final rejection, but which were refused entry by the examiner. We reverse in part and remand.

The Subject Matter

The involved subject matter is principally directed to a composition comprising a particular form of mineral oil in conjunction with natural or synthetic rubber, the oil serving to plasticize or extend the rubber. The specification presents the background of the invention as follows:

It is known in the art to employ mineral oil as a plasticizer or extender for rubbery materials including both natural rubber and synthetic rubber such as butadiene polymers and interpolymers, etc., and such oils generally impart highly satisfactory properties to the rubbery material in question. However, rubbery materials plasticized with mineral oil plasticizers of the prior art exhibit a disadvantageous tendency to stain materials adjacent to the rubbery material. Furthermore, in the case of light-colored rubber products, e. g., white sidewall tires for automobiles, footwear, etc. rubbery materials plasticized with prior art mineral oil plasticizers show a disadvantageously poor color stability, particularly upon aging in bright sunlight.

The claimed subject matter is said to be free of the disadvantages of the previous compositions. Claim 1 defines that subject matter as follows:

1. A rubber composition comprising

(1) rubber selected from the group consisting of natural rubber, homopolymers of conjugated diolefins, and copolymers of conjugated diolefins with ethylenically unsaturated monomers, plasticized with

(2) mineral oil which (a) contains 10 to 45 Wt. % of aromatic compounds, and

(b) has compositions within the area ABCD in Figure II of the drawings Fig. 2, reproduced below, which mineral oil has been obtained by

(c) mixing a mineral oil starting material with an acidic reagent comprising anhydrous hydrogen fluoride in amount from 10 to 40 percent by weight of said starting material; thereby to form an acid phase insoluble in said mineral oil and containing components extracted from said starting material, and an oil phase comprising unextracted components of said starting material including 70 to 96% of the aromatics in said starting material and containing dissolved acidic material.

(d) separating said acid phase from said oil phase,

(e) mixing said oil phase with an alkaline reagent to neutralize said dissolved acidic material and form neutralization products, and

(f) separating said neutralization products from said oil phase.

Figure "II," referred to in claim 1, which is labeled "Fig. 2" in the drawings but "II" in the specification, depicts the distribution of carbon atoms in the oil as explained in the specification:

Turning now to Figure II, the coordinates of the diagram are Cp, Ca, and Cn which represent, respectively, percent paraffinic carbon atoms, percent aromatic carbon atoms, and percent naphthenic carbon atoms, as determined by the n-d-M carbon-type analysis disclosed in the book, Aspects of the Constitution of Mineral Oils, by Van Nes and Van Westen (1951) at page 335 et seq., Cp, Ca, and Cn add up to 100% and are approximations of the proportions in the oil of carbon atoms occurring in, respectively, acylic chains, aromatic rings, and saturated ring structures.

Preferred plasticizers according to the invention are those which fall within the area ABCD on the diagram. The treatment of a mineral oil fraction according to the invention to obtain a treated oil falling within the area ABCD has been found to produce exceptionally good plasticizers for synthetic rubber. The treated oil obtained in the subsequent Example II contains about 41 percent paraffinic carbon atoms, about 17 percent aromatic carbon atoms, and about 42 percent naphthenic carbon atoms, and its composition is indicated by the circle located near the A-D line in the area ABCD on the diagram. The composition of the oil prior to extraction lay outside the area ABCD in the region of the diagram to the left of the line AD.

Claims 2-7 are composition claims which depend from claim 1. Claim 10 is somewhat broader than claim 1, and claim 11 depends from claim 10. Claims 10 and 11 do not have the limitations appearing in subparagraphs (2)(c), (2)(d), (2)(e) and (2)(f) of claim 1.

Claims 8 and 9 are method claims. Claim 9 is dependent on claim 8, and claim 8 reads as follows:

8. Process for preparing rubber compositions which comprises admixing a rubber selected from the group consisting of natural rubber, homopolymers of conjugated diolefins, and copolymers of conjugated diolefins with ethylenically unsaturated monomers, with mineral oil having at least 10 Wt. aromatic compounds which has been obtained by

(a) mixing a mineral oil starting material with an acidic reagent comprising anhydrous hydrogen fluoride in amount from 10 to 40 percent by weight of said starting material; thereby to form an acid phase insoluble in said mineral oil and containing components extracted from said starting material, and an oil phase comprising unextracted components of said starting material and containing dissolved acidic material,

(b) separating said acid phase from said oil phase,

(c) mixing said oil phase with an alkaline reagent to neutralize said dissolved acidic material and form neutralization products, and

(d) separating said neutralization products from said oil phase.

Rejection of Claims 1-7 and 10-11

The prior art patents relied upon by the examiner were:

                Evering et al
                  (Evering)                 2,449,463      Sept. 14, 1948
                Boggs et al. (Boggs)        2,778,807      Jan. 22, 1957
                                                           (filed May 26, 1953)
                

The examiner rejected claims 1-7 and 9-11 under 35 U.S.C. § 103 as obvious from Boggs in view of Evering. Boggs discloses that oil extended synthetic rubber compositions were known in the art and teaches an improvement in such compositions by the use of extender oils derived from naphthenic crudes in which a substantial portion of the aromatic compounds has been selectively removed. Boggs specifically discloses suitable mineral oils to contain up to 50-55% aromatics, but preferably less than 40-45% aromatics. Boggs teaches that "the extender oils * * * may be obtained by any of the methods known to the art." To illustrate, Boggs states that the oil may be obtained as a product of the extraction of a naphthenic crude oil fraction with "phenol, SO2, furfural and other polar extracts or by absorption methods."

Evering discloses the refinement of hydrocarbons by using hydrogen fluoride (HF). It is taught that HF refining selectively removes certain hydrocarbon components of the hydrocarbon material, e. g. polycyclic aromatics, as well as impurities such as oxygen, sulfur and nitrogen compounds. Evering notes that the refined hydrocarbon product "may be subjected to such further treatment as the circumstances warrant, e. g., washing with water, caustic solutions, contacting or percolation with clays or other refining adsorbents, treatment with bauxite in the vapor phase, etc."

The examiner found that the principal difference between Boggs and the claimed subject matter is the failure of Boggs to teach the use of an oil prepared by hydrogen fluoride refining as defined in the compositions claims. However, since Boggs teaches that the oils may be obtained by any known method, the examiner considered it obvious to use the HF refining method taught by Evering as the source of the Boggs oil. The examiner concluded that the claimed subject matter as a whole would have been obvious from Boggs and Evering. The board agreed, and the solicitor urges the correctness of the Patent Office position.

Appellants contend that the claimed compositions would not have been obvious from the two patent disclosures and that even if it were deemed to be prima facie obvious, the record provides a sufficient showing of unexpected, improved results to rebut the prima facie case. The Patent Office takes the position that the asserted evidence is not sufficient to establish nonobviousness.

Appellants also contend that Boggs is not available as a reference against the claims, an issue dealt with below. The board agreed with appellants as to claim 9, but concluded that Boggs is available as to claims 1-7 and 10-11.

We have reviewed the record as well as the arguments advanced in the briefs and at oral hearing, and we conclude that if Boggs is available as a reference, claims 1-7 and 10-11 are properly held, on this record, to be unpatentable under § 103 over Boggs in view of Evering.

We think that the claimed subject matter is prima facie obvious from Boggs and Evering. By that we mean that viewing only the references and the claimed subject matter, and not considering any evidence of unexpected results, it would appear that the references could be combined as proposed by the examiner and that the conclusion that the claimed subject matter would have been obvious is reasonable. See In re Lintner, 458 F.2d 1013, 1016, 59 CCPA ___, ___ (1972). Boggs clearly indicates the importance of removing the aromatics in an oil to an extent commensurate with the requirements of the appealed claims and is indifferent to the technique used to achieve that result. Evering discloses a...