Ex Parte Donckels et al

Patent Trial and Appeal Board

Sep 30, 2014

12115585 (P.T.A.B. Sep. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte YVES DONCKELS and
SERGE JULIEN AUGUSTE IMHOFF
________________

Appeal 2013-000256
Application 12/115,585
Technology Center 1700
________________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–13 and 15–18. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a pneumatic radial runflat tire. Claim 1 is
illustrative:
1. A pneumatic radial runflat tire comprising:
a pair of parallel annular beads;
Appeal 2013-000256
Application 12/115,585

2
a carcass ply structure comprising a polyester fabric with a cord
construction of 2200 dtex/2 8.5/8.5 tpi with a cord density of between 16 and
28 epi;
a belt reinforcement structure disposed radially outward of the carcass
ply structure in a crown area of the tire;
a tread disposed radially outward of the belt reinforcement structure;
and
a pair of sidewalls comprising part of the carcass ply structure, the
pair of sidewalls being disposed between the tread and the pair of parallel
annular beads.

The References
Imhoff US 2004/0261928 A1 Dec. 30, 2004
Kwon US 2006/0180261 A1 Aug. 17, 2006
The Rejections
Claims 1–13 and 15–18 stand rejected under 35 U.S.C. § 103 over
Imhoff in view of Kwon or over Kwon in view of Imhoff.
OPINION
We affirm the rejections.
The Appellants argue only the sole independent claim, i.e., claim 1
(Br. 4). We therefore limit our discussion to that claim. Claims 2–13
and 15–18 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
Imhoff discloses a runflat tire comprising a ply (70) reinforced with
polyester cords (¶ 40). The “polyester cords are desirable for use in runflat
tires because of their good properties and relatively low cost” (¶ 52) and
“may be made from any polyester fiber suitable for use in a tire as is known
in the art” (¶ 55).
Appeal 2013-000256
Application 12/115,585

3
Kwon discloses “a high strength polyethylene naphthalate fiber useful
for the production of tire cords having excellent dimensional stability and
high strength” (¶ 11). “[T]he polyethylene naphthalate tire cord is produced
to a twist number of 250 (cabling)/250 (plying) TPM to 500 (cabling)/500
(plying) TPM [6.35 (cabling)/6.35 (plying) tpi to 12.7 (cabling)/12.7
(plying) tpi]” (¶ 35) and “has a total denier of 2,000 d-8,000 d” (¶ 42) and a
reinforcement density of “preferably 15-35 EPI.” Id.
The Appellants argue that “the result of using a construction of a
polyester cord, as in Kwon, in the carcass of Imhoff, cannot be predicted,
and is therefore unpredictable and nonobvious under KSR” (Br. 6).1
“Obviousness does not require absolute predictability of success . . . .
For obviousness under § 103, all that is required is a reasonable expectation
of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988).
Imhoff’s disclosure that the polyester cord “may be made from any polyester
fiber suitable for use in a tire as is known in the art” (¶ 55) would have
provided one of ordinary skill in the art with a reasonable expectation of
success in using, as Imhoff’s polyester cord, Kwon’s polyester cord which is
“useful for the production of tire cords” (¶ 11). Kwon’s disclosure that the
polyester cord has “excellent dimensional stability and high strength”, id.,
would have provided one of ordinary skill in the art with an apparent reason
or suggestion to use Kwon’s polyester cord as Imhoff’s polyester cord. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); In re Vaeck, 947
F.2d 488, 493 (Fed. Cir. 1991).

1 The Appellants’ reliance upon several publications (Br. 6–7) is improper
because the Appellants have not established that those publications are of
record.
Appeal 2013-000256
Application 12/115,585

4
The Appellants argue that their polyester cord provides unexpected
results (Br. 8).
That argument is not well taken because the Appellants have not set
forth a side-by-side comparison of the claimed invention with the closest
prior art which is commensurate in scope with the claims and provided
evidence that the results would have been unexpected by one of ordinary
skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Accordingly, we are not persuaded of reversible error in the
rejections.
DECISION/ORDER
The rejections of claims 1–13 and 15–18 under 35 U.S.C. § 103 over
Imhoff in view of Kwon and over Kwon in view of Imhoff are affirmed.
It is ordered that the Examiner’s decision is affirmed.
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

cdc