Ex Parte LOSEY

Patent Trial and Appeal Board

Nov 30, 2018

14870916 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/870,916 09/30/2015 Robert Allen LOSEY
27280 7590 12/04/2018
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.
DN2015-014 1023
EXAMINER
PAQUETTE, SEDEF ESRA A Y ALP
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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 ROBERT ALLEN LOSEY
Appeal 2018-001569
Application 14/870,916
Technology Center 1700
Before DONNA M. PRAISS, MONTE T. SQUIRE, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1 and 6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision, we refer to the Specification filed September 30, 2015, as
amended, ("Spec."), the Final Office Action appealed from dated June 5,
2017 ("Final Act."), the Appeal Brief filed June 6, 2017 ("Appeal Br."), and
the Examiner's Answer dated August 10, 2017 ("Ans.").
2 Appellant is Applicant, The Goodyear Tire & Rubber Company, which is
also the real party in interest. Appeal Br. 3.
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Application 14/870,916
STATEMENT OF THE CASE
The subject matter on appeal relates to an air maintenance and tire
pumping assembly. Spec. ,r 1. In particular, the tire assembly includes
an air tube [] positioned within the sidewall groove in contacting
engagement with the groove sidewalls, the air tube having an
axial air passageway resiliently transfiguring segment by
segment between an expanded sectional configuration and an at
least a partially collapsed sectional configuration responsive to
respective segment by segment engagement by the straight
groove sidewalls against the air tube when adjacent the rolling
tire footprint.
Id. at i-f4. Claims 1 and 6, reproduced below, are illustrative of the claimed
subject matter:
1. A tire assembly comprising:
a cured tire having a tire cavity and first and second
sidewalls extending respectively from first and second tire bead
regions to a tire tread region, the first sidewall having at least one
bending region operatively bending within a rolling tire footprint
and a sidewall groove cut into the cured tire and defined by
straight sidewalls and a semicircular bottom positioned within
the bending region of the first tire sidewall, the sidewall groove
deforming, segment by segment, between a non-deformed state
and a deformed, constricted state in response to the deformation
of the bending region when adjacent the tire footprint of the
rolling and loaded cured tire.
6. A method of assembling an air maintenance tire
comprising the steps of:
providing a cured tire having a tire cavity and first and
second sidewalls extending respectively from first and second
tire bead regions to a tire tread region, the first sidewall having
at least one bending region operatively bending within a rolling
tire footprint;
laser cutting a sidewall groove into an axially outer
external surface of the first sidewall of the cured tire, the sidewall
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groove having straight sidewalls and a semicircular bottom
positioned within the bending region of the first tire sidewall; and
deforming the sidewall groove, segment by segment,
between a non-deformed state and a deformed, constricted state
in response to the deformation of the bending region when
adjacent the rolling tire footprint of the loaded cured tire.
Appeal Br. 8 (Claims App'x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claim 1 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Delgado 3 and Ishida. 4 Final Act. 3.
B. Claim 6 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Delgado and Wiler. 5 Id. at 4.
Appellant seeks our review of Rejections A and B. Appeal Br. 4--7.
Appellant argues claims 1 and 6, which we address below.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
3 Andres Ignacio Delgado, US 8,381,784 B2, issued February 26, 2013
("Delgado").
4 Ishida et al., US 2007/0169869 Al, published July 26, 2007 ("Ishida").
5 Wiler et al., US 5,478,426, issued December 26, 1995 ("Wiler").
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the alleged error in the examiner's rejections .... ")). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies reversible error in the Examiner's
rejections. Thus, we affirm the Examiner's rejections for the reasons
expressed in the Final Office Action and the Answer. We add the following.
Rejection A- Obviousness (claim 1)
The Examiner rejects claim 1 as obvious over Delgado in view of
Ishida. Final Act. 3. The Examiner finds that Delgado teaches nearly all of
the elements of claim 1 except for a sidewall groove cut into the sidewall of
the cured tire. Id. The Examiner, however, finds that Ishida teaches a tire
where the inner surface of the sidewall includes an annular groove where
"[t]he groove may be formed by cutting after vulcanization/curing of the
tire." Id. at 4. The Examiner reasons that because "Ishida is merely being
used to teach a functional equivalent means of forming a groove into a
rubber sidewall of a tire," and, thus, concludes that including a sidewall
groove cut into the sidewall of the cured tire would have been obvious to
one of ordinary skill in the art at the time of the invention. Ans. 5.
Appellant first argues that the groove of Ishida is positioned on
sidewall reinforcing rubber 9 and not on sidewall 3. As a result, "cutting a
groove into the inside of a cured tire, as shown in Ishida, would also cut
innerliner (12)." Appeal Br. 4. (citing Ishida ,r 46 and Figs. 1, 5, and 12).
Appellant's arguments do not persuade us of reversible error by the
Examiner. The Examiner does not rely on Ishida to teach placing a groove
in a sidewall or the position of the groove on the sidewall of the tire. See
Final Act. 3--4. Rather, the Examiner relies on Ishida to teach a known
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alternative to provide a groove in the sidewall of a tire, i.e., cutting after the
tire is cured. Id.; see also Ans. 6 ("the placement of the groove as shown in
Ishida is irrelevant to the modification proposed of Delgado."). Further, as
the Examiner states, "Ishida shows an intact inner liner ... even with the
proposed cutting method being conducted on an inner side of the tire." Id.
Next, Appellant argues that the Examiner has not met the burden of
establishing a prima facie case of obviousness because neither Delgado nor
Ishida "separately []or together, disclose or suggest a tire assembly as recited
in claim 1." Appeal Br. 5.
Appellant's argument in this regard does not persuade us of reversible
error because it is conclusory and Appellant does not provide an adequate
explanation to support it. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). Appellant does not specifically address or identify error in the
Examiner's findings nor does Appellant refer to factual evidence of record.
Attorney argument does not take the place of factual evidence required to
rebut a prima facie case of obviousness. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997).
Appellant further contends that the Examiner has identified no reason
to modify Delgado in view of Ishida and "merely states that it would have
been obvious ... for preventing cracks and stress concentrations." Appeal
Br. 5. As a result, Appellant asserts that any such modification is the result
of "hindsight judgment." Id.
We do not find Appellant's hindsight argument persuasive because the
Examiner's reasons for combining the teachings of Delgado and Ishida are
supported by the prior art disclosures themselves. See, e.g., Sensonics, Inc.
v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) ("The invention
must be viewed not after the blueprint has been drawn by the inventor, but as
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it would have been perceived in the state of the art that existed at the time
the invention was made.") (citing Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1138 (Fed. Cir. 1985)). Contrary to what Appellant argues, the
Examiner also provides a reasonable basis and identifies a preponderance of
the evidence in the record to evince why one of ordinary skill would have
combined the teachings of the references to arrive at the claimed invention.
KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007).
As the Examiner explains, "one of ordinary skill in the art would find
it obvious that the analogous groove making taught by Ishida may produce a
cut-out groove in a cured tire sidewall that is capable of encapsulating and
holding an air tube as well." Final Act. 4; Ans. 5---6. Ishida explains that the
groove may be molded or cut after vulcanization of the tire. Compare Ishida
,r 71 with ,r 72. As such, a person of ordinary skill in the art would have
recognized that both configurations are suitable alternatives for one
another-i.e., cutting a groove as opposed to molding the groove. Express
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious. In re Fout, 675 F.2d 297, 301 (C.C.P.A.
1982); In re Siebentritt, 54 CCPA 1083, 372 F.2d 566, 568 (C.C.P.A. 1967).
Thus, we discern no error in the Examiner's findings and conclusions.
Moreover, Appellant does not identify any knowledge relied upon by the
Examiner that was gleaned only from Appellant's disclosure and beyond the
level of skill in the art at the time of the invention. In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
Appellant further asserts that "modifying the apparatus of Delgado by
the teachings of Ishida cannot be predicted, and is therefore unpredictable
and nonobvious under KSR." Appeal Br. 5. And, Appellant contends that
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the Examiner's rationale contradicts the requirement that predictability must
be shown. Appeal Br. 5---6.
Appellant's argument does not reveal reversible error in the
Examiner's analysis and factual findings in this regard. As the Examiner
explains, "Ishida merely shows the functional equivalence of cutting a
groove into a tire sidewall and molding it." Ans. 7. The Examiner reasons
that because the "operational characteristics" of the Delgado tire would
remain the same, it is expected that cutting the groove would yield expected
results. Id. Appellant does not adequately explain or provide any reason to
suggest that merely cutting the sidewall groove as opposed to molding it into
the raw tire would be unpredictable or lack a reasonable expectation of
success. KSR, 550 U.S. at 417 ("If a person of ordinary skill can implement
a predictable variation [ of a known work], § 103 likely bars its
patentability. ").
We therefore sustain the Examiner's rejection of claim 1 as obvious.
Rejection B- Obviousness (claim 6)
The Examiner rejects claim 6 as obvious over Delgado in view of
Wiler. Final Act. 4. As with claim 1, the Examiner finds that Delgado
teaches nearly all of the elements of claim 1 except for a sidewall groove cut
into the sidewall of the cured tire. Id. The Examiner finds that "Wiler
teaches a method of laser cutting elastomeric products, such as tire
sidewalls." Id. at 5. According to the Examiner, the use of Wiler's laser
"allows for very fine control of the depth of cut attained and for little
thermal diffusion to surrounding areas which eliminates melting, scorching,
or otherwise disfiguring the areas of the sidewall" and permits "various
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configurations [to] be achieved." Id. (citing Wiler col., 4, 11. 4--16 and col. 6,
11. 6-10, 52-54.). Therefore, the Examiner concludes that it would have
been obvious to one of skill in the art to modify the method of Delgado to
include Wiler' s laser cutting "so as to form various configurations at any
desired depth with control, precision, and minimal disfiguring of the
sidewall surface." Id.
Appellant's arguments at page 6 of the Appeal Brief are directed to a
combination including Ishida. However, Ishida is not part of Rejection B
and was referenced in the heading in error. Ans. 7. Accordingly,
Appellant's arguments (first full paragraph, Appeal Br. 6) directed to the
combination of Delgado, Wiler, and Ishida are misplaced and fail to identify
reversible error on the part of the Examiner.
Next Appellant contends (similar to Rejection A) that the Examiner
has not met the burden of establishing a prima facie case of obviousness
because neither Delgado nor Wiler "separately []or together, disclose or
suggest a tire assembly as recited in claim 1." Appeal Br. 5. For the reasons
discussed above for Rejection A, Appellant does not persuade us of
reversible error.
Appellant also asserts that the Examiner has identified no reason to
modify Delgado in view of Wiler and "merely states that it would have been
obvious ... for forming various configurations." Appeal Br. 6-7. As a
result, Appellant asserts that any such modification is the result of "hindsight
judgment." Id.
We also do not find Appellant's hindsight argument persuasive
because the Examiner's reasons for combining the teachings of Delgado and
Wiler are, like the combination of Delgado and Ishida above, supported by
the prior art disclosures themselves. Sensonics, 81 F.3d at 1570 (Fed. Cir.
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1996). Here, as the Examiner explains, using laser cutting techniques of
Wiler allows for greater precision and further that laser cutting "is cheaper,
more cost effective, and reduces the occurrence of flashes and other
markings in the formed grooves." Ans. 8; see also Final Act. 5. As such, a
person of ordinary skill in the art would have been able to ascertain the
advantages of utilizing a precision laser cutting method in the method of
Delgado. Thus, we discern no error in the Examiner's findings and
conclusions. Moreover, Appellant does not identify any knowledge relied
upon by the Examiner that was gleaned only from Appellant's disclosure and
was not within the level of skill in the art at the time of the invention. In re
McLaughlin, 443 F.2d at 1395.
Appellant further argues that "modifying the apparatus of Delgado by
the teachings of ... Wiler cannot be predicted, and is therefore unpredictable
and nonobvious under KSR." Appeal Br. 7. And, Appellant contends that
the Examiner's rationale contradicts the requirement that predictability must
be shown. Id.
Appellant's argument does not reveal reversible error by the
Examiner. As the Examiner explains, "Wiler merely shows that laser cutting
a groove into a tire sidewall is an improved method of forming the groove."
Ans. 8. As the Examiner explains, because the "operational characteristics"
of the Delgado tire would remain the same, it is expected that cutting the
groove would yield expected results. Id. Appellant does not provide any
reason to suggest that laser cutting the sidewall groove as opposed to
molding it into the raw tire would be unpredictable or lacks a reasonable
expectation of success. KSR, 550 U.S. at 417.
We therefore sustain the Examiner's rejection of claim 6 as obvious.
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CONCLUSION
Appellant failed to identify a reversible error in the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Delgado
and Ishida.
Appellant failed to identify a reversible error in the Examiner's
rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Delgado
and Wiler.
DECISION
For the above reasons, the Examiner's rejections of claims 1 and 6 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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