Ex Parte Currie et al

Patent Trial and Appeal Board

Nov 1, 2012

11962337 (P.T.A.B. Nov. 1, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/962,337 12/21/2007 William Dudley Currie DN2007067 7912
27280 7590 11/01/2012
THE GOODYEAR TIRE & RUBBER COMPANY
INTELLECTUAL PROPERTY DEPARTMENT 823
1144 EAST MARKET STREET
AKRON, OH 44316-0001
EXAMINER
RIVERA, JOSHEL
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
11/01/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte WILLIAM DUDLEY CURRIE, DENNIS ALAN LUNDELL,
DAVID ALAN HENTHORNE and MARY BETH DOMBROSKY
______________

Appeal 2011-003481
Application 11/962,337
Technology Center 1700
_______________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
MARK NAGUMO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims 1-9
under 35 U.S.C. § 103(a) over Pizzorno (US 4,160,007), Ogawa (US
6,113,833) and Scarzello (US 6,669,457 B2). Ans. 5; Br. 5. We have
jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2009).
We reverse the decision of the Primary Examiner.
Claims 1 illustrates Appellants’ invention of a tire unloading
apparatus, and is representative of the claims on appeal:
1. A tire unloading apparatus for supporting a cured tire from a
toroidally shaped core body configured to carry the cured tire, the core body
Appeal 2011-003481
Application 11/962,337
2
including a plurality of core segments extending generally radially from a
central core axis, the tire unloading apparatus comprising:
a plurality of tire engaging paddle mechanisms positioned in a spaced
apart circular array defining a cured tire receiving central opening, the cured
tire mounted to a core body; the paddle mechanisms operative to move
between a radially outward tire release position and a radially inward tire
gripping position;
a core segment manipulating apparatus operative to move individual
core segments from a radially outward tire supporting core body position to
a radially inward segment removal position to separate the core segments
from the cured tire; and
wherein the paddle mechanism in the inward tire gripping position
and subsequent to the separation of the core segments from the cured tire,
operatively move in unison as an array to reposition the cured tire.
OPINION
We agree with Appellants that the Examiner erred in determining that
one of ordinary skill in the art would have been led by the combination of
Pizzorno, Ogawa and Scarzello to modify Pizzorno’s apparatus, which does
not have paddles or other support means to grip a cured tire while the cured
tire is separated from a segmented toroidally shaped core body, to include
Ogawa’s segmented toroidally shaped core assembly means 81, in which
supporting segments 83, shaped like paddles, support toroidally shaped body
core segments 12 at assembling station A, motivated by Scazello’s apparatus
in which locking plates 41 lock cured tire 5 mounted on segmented
toroidally shaped support body 1 at dismantling station 40a, thus arriving at
a tire unloading apparatus as specified in representative claim 1 wherein the
tire unloading apparatus has a plurality of tire engaging paddle mechanisms
that move in unison as an array to grip a cured tire mounted on a segmented
toroidally shaped core body in order to reposition the so mounted tire and
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Application 11/962,337
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subsequently release the tire after it has been separated from the segmented
toroidally shaped core body by the core segment manipulating apparatus.
Ans. 5-6, 9-13, citing Pizzorno col.14 l.55 to col.15 l.11, Figs. 3, 14; Ogawa
col.9 ll.39-46, Figs. 10, 11; Scarzello co.8 ll.23-26. Br. 6-10, citing inter alia
Ogawa col.9 ll.21-51, Figs. 7, 10, 11. See also Pizzorno abstract, col. 4 l.64
to col.5 l.32, col.9 ll.44-53, col.11, ll.50-55, col. 13, l.10 to col. 14, l. 33,
Figs. 2, 6, 7, 9, 15, 17; Ogawa col.3, ll.28-51, col.8 ll.10-12, Figs. 1, 7;
Scarzello abstract, col.4 ll.35-45, col.8, ll.18-23, Fig. 1.
We adopt Appellants’ reasoning in the Brief. Br. 6-10. We
emphasize that the Examiner has not adduced scientific reasoning or
evidence establishing that one of ordinary skill in the art would have been
led by the combination of Pizzorno and Ogawa to modify Pizzorno’s
apparatus by using Ogawa’s segmented toroidal core body assembly means
from assembling station A to unload Pizzorno’s cured tire by separating it
from the toroidally shaped core body when Ogawa uses clamping device 77
at disassembling station D to separate the cured tire, and particularly since
the method of operation of Pizzorno and Ogawa are significantly different in
these respects, and Scarzello does not provide the motivation because the
method of operation of Scarzello’s toroidal support body 1 and dismantling
station 40a differs from that of Pizzorno and Ogawa. Thus, as Appellants
point out, the Examiner has relied on impermissible hindsight which still
does not result in the claimed tire unloading apparatus because none of
Pizzorno, Ogawa and Scarzello discloses a plurality of tire engaging paddle
mechanisms which function as required in claim 1. See, e.g., KSR Int'l. Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify
a reason that would have prompted a person of ordinary skill in the relevant
Appeal 2011-003481
Application 11/962,337
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field to combine the elements in the way the claimed new invention does.”);
In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred
when the specific understanding or principal within the knowledge of one of
ordinary skill in the art leading to the modification of the prior art in order to
arrive at appellant’s claimed invention has not been explained); cf. Ex parte
Levengood, 28 USPQ2d 1300, 1301-02 (BPAI 1993) (“At best, the
examiner’s comments regarding obviousness amount to an assertion that one
of ordinary skill in the relevant art would have been able to arrive at
appellant’s invention because he had the necessary skills to carry out the
requisite process steps. This is an inappropriate standard for obviousness.
. . . That which is within the capabilities of one skilled in the art is not
synonymous with obviousness.” (citation omitted)).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claims 1-9 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED