Ex Parte Lettieri et al

Patent Trial and Appeal Board

Oct 17, 2016

12870898 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/870,898 08/30/2010 Joseph Carmine Lettieri
27280 7590 10/19/2016
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DN2010-104 1779
EXAMINER
BELLINGER, JASON R
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
10/19/2016 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):
kathleen.swisher@goodyear.com
patents@ good year.com
pair_goodyear@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH CARMINE LETTIERI,
JAMES ALFRED BENZING II, CHENG-HSIUNG LIN,
JOSEPH ALAN INCA VO, and ROBERT BRUCE COLEMAN
Appeal2014-009060
Application 12/870,898
Technology Center 3600
Before LYNNE H. BROWNE, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph Carmine Lettieri et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the rejection of claims 1, 2, and 4-7 under 35 U.S.C. § 103(a) as
unpatentable over Gerome (US 1,412,682, iss. Apr. 11, 1922), Midgley (US
762,740, iss. June 14, 1904), and Chung (US 4,071,279, iss. Jan. 31, 1978). 1
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Claims 3, 8, and 9 are canceled. Appeal Br. 8-9.
Appeal2014-009060
Application 12/870,898
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A composite material comprising a plurality of springs
forming a structure embedded within polyurethane, each spring
being interwoven with at least one other spring thereby forming
an entirely polyurethane-coated structure,
the composite material forming a toroidal carcass
structure extending about an entire circumference of a
non-pneumatic tire, each spring including a first end
portion, a second end portion, and an arching middle
portion interconnecting the first end portion and the
second end portion, each first end portion being secured to
a first annular bead and each second portion being secured
to a second annular bead, the first and second annular
beads both being seated to a wheel rim such that the
toroidal carcass structure is secured to the wheel rim.
DISCUSSION
Claims L 2; 6; and 7
Appellants argue claims 1, 2, 6, and 7 together. See Br. 4--7. We
select claim 1 as the illustrative claim, and claims 2, 6, and 7 stand or fall
with claim 1.
The Examiner finds that "Gerome shows a tire having springs 4
embedded within the toroidal structure of a tire." Final Act. 2. The
Examiner determines that "Gerome does not show the springs being an
interwoven plurality of elliptical springs." Id. The Examiner further finds
that "Midgley teaches the use of a tire that includes an interwoven plurality
of elliptical springs 1 embedded within a polymer (namely rubber) 12. The
ends of the springs 1 are secured to beads 10 of the tire, which are seated on
a wheel rim." Id. at 2-3. Based on these findings, the Examiner reasons that
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Application 12/870,898
"it would have been obvious to one of ordinary skill in the art at the time of
the invention to form the springs of Gerome in the manner taught by
Midgley as a substitute equivalent spring arrangement, dependent upon the
desired resiliency and load-bearing capabilities of the tire." Id. at 3.
In addition, the Examiner determines that "Gerome as modified by
Midgley does not disclose the specific type and size of the metal springs."
Id. The Examiner further reasons that it would have been obvious "to form
the springs of Gerome as modified by Midgley from any metal having
chemical and physical characteristics suitable for the intended use, which in
this case is to reinforce and provide load supporting capability for a tire."
Id. Then, the Examiner determines that "Gerome as modified by Midgley
does not disclose the polymer of the tire being polyurethane." Id. Next, the
Examiner finds that "Chung teaches the use of a non-pneumatic tire 2
formed from polyurethane." Id. Based on this finding, the Examiner
reasons that it would have been obvious "to form the tire of Gerome as
modified by Midgley from polyurethane, as a substitute equivalent polymer,
dependent upon the desired chemical and physical characteristics of the
tire." Id.
Appellants contend that "applying the spring structure of Midgley to
the tire of Gerome would lead one of ordinary skill in the art to a structure of
interwoven springs extending circumferentially through the tread and
sidewalls of the tire."2 Appeal Br. 6. Based on this contention, Appellants
argue that "a tire taught by Gerome in view of Midgley would not disclose
2 Appellants do not identify where Midgley describes its helices (i.e.,
interwoven springs) as extending circumferentially through the tread and the
sidewalls of the tire. Nor is it readily apparent that Midgley's helices extend
in this manner.
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Application 12/870,898
each first end portion of each spring secured to a first annular bead and each
second portion of each spring secured to a second annular bead, as recited in
claim 1." Id.
Responding to this argument, the Examiner finds that "[t]he first and
second ends of the interwoven springs of Midgley are secured in respective
beads 10 of the tire." Ans. 4. The Examiner is correct. Midgley describes
"a section of woven-wire fabric to form the tire-body." Midgley 1:50-51.
Midgley's tire body is shown, for example, in Figure 8. Midgley's helices 1
are not shown or described as extending circumferentially though the tread
and sidewalls of the tire. Thus, Appellants' argument is unconvincing.
Appellants further argue that "[i]f the Examiner finds that a prior art
element is a substitute equivalent of another prior art element, the Examiner
should provide an explanation and rationale in the Office Action as to why
the prior art element is an equivalent." Appeal Br. 6 (citing MPEP § 2183).
MPEP § 2183 is directed to findings of equivalence made in the
context of a rejection of claims that invoke 35 U.S.C. § 112, sixth paragraph.
The claim at issue does not invoke Section 112, sixth paragraph.
Accordingly, Appellants argument is inapposite. Moreover, the Examiner
finds that Gerome's springs and Midgley's springs are known equivalents in
the art. See Final Act. 3. The Examiner explains that "[ o ]ne of ordinary
skill in the art would know that the springs of Midgley and Gerome both
perform the same function. Namely, the springs of both Gerome and
Midgley serve to reinforce the body of the tire and provide a specific
resilience to the tire." Ans. 4. Appellants does not present any evidence or
persuasive argument that the Examiner's finding is in error. Accordingly,
Appellants' argument is unconvincing.
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Application 12/870,898
In addition, Appellants contend that "the result of using the spring
structure taught by Midgley in the tire of Gerome cannot be predicted."
Appeal Br. 6. In support of this contention, Appellants argue that the
Examiner states that "the resulting structure depends upon the desired
resiliency and load bearing capabilities of the tire[]." Id. at 6.
Appellants' contention is not well taken. The Examiner did not state
that the structure resulting from the proposed combination "depends upon
the desired resiliency and load bearing capabilities of the tire." Id. Rather,
the Examiner reasoned that it would be obvious to one skilled in the art to
simply substitute one known spring structure for another "depend[ing] upon
the desired resiliency and load-bearing capabilities." Final Act. 3.
Moreover, springs are mechanical devices whose performance
characteristics can be determined by those skilled in the art. Appellants
provide no evidence or persuasive argument that this is not the case or that
the results of the proposed combination are not reasonably predictable.
Absolute predictability that the substitution will be successful is not
required, all that is required is a reasonable expectation of success. See In re
O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988). Accordingly, Appellants
do not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 2, 6, and 7, which fall therewith.
Claim 4
Noting that "Midgley, Specification, Cols. 2-3, lines 90-98 & 1-3
and claims 1-9, discloses concentric helical springs," and that "[s]ince only
circular springs have a single center, only circular springs may be
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Application 12/870,898
concentric, or same centered," Appellants argue that Midgley fails to
disclose springs that are elliptical as required by claim 4. Appeal Br. 7.
Responding to this argument, the Examiner directs our attention to
Midgley's Figure 8, which "clearly shows the springs having an elliptical
shape." Ans. 5. The Examiner further explains that:
the claims do not specify explicitly how the springs are elliptical
(i.e. the claims lack any physical structure that describes whether
the springs have elliptical coils, or the overall shape of the
springs are elliptical, etc.). Therefore, not only does Midgley
show springs having elliptical coils (Figure 8), Midgley also
shows the springs having an elliptical shape overall once
installed in the tire (again Figure 8).
Ans. 5.
Midgley does not discuss whether its helices are circular or elliptical.
See generally, Midgley. Moreover, some of Midgley's coils appear to be
circular, while others appear to the elliptical. See Midgley, Fig. 8. Thus,
there is insufficient evidence to determine if Midgley' s springs are elliptical.
The Examiner does not explain why it would have been obvious to make
Midgley's springs elliptical, nor is it readily apparent why it would have
been obvious to do so. Accordingly, the Examiner's finding is in error.
For this reason, we do not sustain the Examiner's decision rejecting
claim 4.
Claim 5
Appellants argue that "the Office Action, page 3, states that the steel
springs of Gerome and Midgley are somehow equivalent to the polyurethane
spring arrangement of claim 5." Appeal Br. 7. Appellants assert that
polyurethane and steel springs "may react in many different ways under load
from each other and under varying temperatures." Id. (citing Spec. i-f 127).
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Application 12/870,898
However, paragraph 127 of the Specification does not describe the
differences between these springs or indicate that they are not known
equivalents. Thus, Appellants do not apprise us of error.
5.
For these reasons, we sustain the Examiner's decision rejecting claim
DECISION
The Examiner's rejection of claims 1, 2 and 5-7 is AFFIRMED.
The Examiner's rejection of claim 4 is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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