Ex Parte Mathonet et al

Patent Trial and Appeal Board

May 11, 2017

13231526 (P.T.A.B. May. 11, 2017)

United States Patent and Trademark Office
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.
13/231,526 09/13/2011 Vincent Benoit Mathonet DN2011-109 4237
27280 7590 05/15/2017
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
EXAMINER
MAKI, STEVEN D
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
05/15/2017 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 @ goodyear.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 VINCENT BENOIT MATHONET, PHILIPPE JOSEPH AUGUST
MULLER, and LAURENT LUIGI DOMENICO COLANTONIO
Appeal 2016-003895
Application 13/231,526
Technology Center 1700
Before MARK NAGUMO, WESLEY B. DERRICK, and
JANE E. INGLESE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision maintaining rejections of claims 9 and 15-23 under 35 U.S.C.
§ 103(a) as obvious over cited prior art. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM-IN-PART.
THE INVENTION
The subject matter of the claims on appeal relates vehicle wheel tires
having symmetrical five rib tread construction with adjacent tread ribs
Appeal 2016-003895
Application 13/231,526
separated by circumferential grooves with the grooves between a central rib
and adjacent intermediate ribs being greater in width than the grooves
between the intermediate ribs and the outermost, shoulder ribs. Spec.
Abstract.
The independent claims standing rejected are reproduced below:
9. A vehicle wheel tire comprising:
a symmetrical tire tread having five circumferential ribs,
the ribs comprising center rib, first and second intermediate ribs
on opposite lateral sides of the center rib and separated from the
center rib respectively by first and second intermediate straight
sided circumferential grooves, and first and second shoulder
ribs on opposite axially outward sides respectively of the first
and second intermediate ribs and separated from respective
intermediate ribs by first and second circular circumferential
shoulder grooves;
the intermediate grooves having a substantially
equivalent axial width along respective circular circumferential
paths wider than a substantially equivalent constant axial width
of the shoulder grooves and the center rib having an axial width
wider than a substantially equivalent axial widths of the
intermediate ribs and the shoulder ribs',
wherein the axial width of the center rib is within a range
of 19 to 20 percent of a total tread axial width.
15. A tire tread comprising a center rib, first and second
intermediate ribs on opposite lateral sides of the center rib and
separated from the center rib respectively by first and second
intermediate circumferential grooves, and first and second
shoulder ribs on opposite axially outward sides respectively of
the first and second intermediate ribs and separated from
respective intermediate ribs by first and second circumferential
shoulder grooves; the intermediate grooves each having an axial
width wider than an axial width of the shoulder grooves, and
the center rib having an axial width wider than a respective
axial width of the intermediate ribs and the shoulder ribs,
wherein the central rib has an axial width within a range of 18
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to 21 percent of the total tread axial width, the axial widths of
the intermediate ribs are each within a range of 10 to 15
percent of the total tread axial width, the shoulder ribs have
respective axial widths each within a range of 17 to 21 percent
of the total tread axial width, the intermediate grooves have
respective axial widths each within a range of 4 to 9 percent of
the total tread axial width, and the axial widths of the shoulder
grooves are each within a range of 2 to 4 percent of the total
tread axial width.
Appeal Br. (Claims Appendix) 12-13 (emphasis added).
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claim 9 over Kuroki1 in view of Maruoka,2 GB 729,3
and Japan '215.4
2. Claims 15-23 over Kuroki in view of Maruoka, GB 729,
Japan '215, and Japan '004.5
DISCUSSION6
Having considered the Examiner’s rejections in light of Appellants’
arguments, we are persuaded that the Examiner has failed to meet the
1 Kuroki et al., US 2005/0016656 Al, published January 27, 2005.
2 Maruoka et al., US 2005/0000613 Al, published January 6, 2005.
3 Ghilardi, GB 2 038 729 A, published July 30, 1980.
4 Mitsuyoshi, JP 405246215A, published September 24, 1993; the Examiner
relies on an English language translation, which use is not contested.
5 Takahashi, JP 402114004A, published April 26, 1990; the Examiner relies
on an English language translation, which use is not contested.
6 We refer to the Specification filed September 13, 2013 (“Spec.”), the Final
Office Action issued January 21, 2015 (“Final Act.”), the Appeal Brief filed
May 26, 2015 (“Appeal Br.”), and the Examiner’s Answer issued October
27,2015 (“Ans.”).
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Office’s burden of establishing the unpatentability of claims 15-23, but are
not persuaded of reversible error in the Examiner’s rejection of claim 9.
Accordingly, we affirm the rejection of claim 9 (Rejection 1) and
reverse the rejection of claims 15-23 (Rejection 2).
Rejection 1 (claim 9)
Our analysis begins with determining the meaning of the claims. Key
Pharms. v. Hereon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). We
give claim terms the broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art. In
re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). In doing so, we turn
first to the claims themselves. See, e.g., Rapoport v. Dement, 254 F.3d
1053, 1059 (Fed. Cir. 2001).
As to the axial width of the ribs, claim 9 sets forth a particular range
for the center rib—“of 19 to 20 percent of a total tread axial width”—and
that the center rib’s axial width is “wider than a substantially equivalent
axial widths of the intermediate ribs and the shoulder ribs,” but does not
otherwise limit the widths of the intermediate ribs and the shoulder ribs.
Claim 9. The plain language of this claim, accordingly, only requires that
the center rib is of the specified width and that each of the intermediate ribs
and the shoulder ribs are narrower than the center rib. The plain meaning of
the claim, thus, encompasses a tread pattern where the intermediate ribs have
a width that is the same as or different from the width of shoulder ribs.
Appellant does not direct us to, and we do not discern any basis in the
Specification contrary to the plain meaning, particularly where 128 cited in
the Summary of the Claimed Subject Matter (Appeal Br. 4) merely requires
that the central rib is wider than the intermediate ribs; the further specified
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ranges in which the shoulder rib is wider than the intermediate rib are merely
what is preferred (Spec. 128).
Kuroki discloses a heavy duty tire. The Examiner relies on Kuroki
for, inter alia, its disclosure of a heavy duty pneumatic tire having
symmetrical tread comprising four circumferential grooves separating five
land portions. Ans. 2 (citing Kuroki, Figs. 6-7). The Examiner further
relies on Kuroki for its disclosure of an intermediate groove wider than a
shoulder groove. Ans. 7 (citing Kuroki, Figs. 6-7). The Examiner also
relies on Kuroki for its disclosure that the grooves can be straight (or
zigzag). Ans. 8 (citing Kuroki 141).
Maruoka also discloses a heavy duty tire with tread comprising four
circumferential grooves separating five land portions. The Examiner relies
on Maruoka for its disclosure that the land portions of the tread for heavy
duty tires can be ribs (or block rows) and that the grooves can be straight (or
zigzag). Ans. 5 (citing Mamoka, 37-38, Fig. 2).
GB 729 also discloses a heavy duty tire comprising four grooves
separating five land portions. GB 729, 1,11. 5-9, Fig. 1. The Examiner
relies on GB 729 for its disclosure that the center rib—the center land
portion of the tread pattern—should be wide. GB 729, 2,11. 26-27. The
Examiner further relies on GB 729 for its disclosure that “the intermediate
circumferential grooves should be ‘wide’ and [that] the shoulder
circumferential grooves should be ‘narrow.’” Ans. 7 (citing GB 729, 3,
11. 63-66, Fig. 1); see also GB 729, 2,11. 21-26 (disclosing that the tread
“pattern comprises two wide longitudinal grooves 1 . . . disposed in a central
portion of the tread and two narrower longitudinal grooves 2 . . . disposed
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one [sic, on] either side of the central portion in lateral portions of the
tread.”).
Japan '215 also discloses a tire comprising four grooves separating
five land portions. Japan '215, ^fl[ 23, 42, Fig. 1. The Examiner determines
the disclosed tire is a heavy duty tire. Ans. 6. The Examiner relies on
Japan '215 for its disclosure of a tire in which the axial width of the center
rib is greater than the axial width of each of the intermediate ribs and each of
the shoulder ribs. Ans. 6; Japan '215, Fig. 1. The Examiner further relies on
Japan '215 for disclosing that the center rib should have a width of 18% to
40% of the width of the tread to increase rigidity and improve abrasion
resistance. Ans. 6-7 (citing Japan '215, ^fl[ 24, 43).
The Examiner concludes that one of ordinary skill in the art at the
time of the invention would have been led to the subject matter of claim 9
within the meaning of 35 U.S.C. § 103 because the prior art discloses the use
of a symmetric tread comprising five land patterns (including ribs) separated
by grooves (including straight grooves), and teaches that the center rib is
preferably wider than intermediate ribs and shoulder ribs, that the
intermediate grooves should be wider than the shoulder grooves, and that
preferred widths for the center tread encompass the specific range claimed.
Appellants contend that the Examiner has improperly dissected the
teachings of the cited prior art and, ignoring aspects of the prior art that
teach away from the claimed tread, recombined the various elements by
improper use of hindsight. Appeal Br. 6-10.
Appellants argue that Kuroki and GB '729 both lack support for a
center rib having an axial width within the claimed range, and that the
Examiner has failed to set forth a rationale for their combination,
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particularly from the cited prior art. Appeal Br. 6-7. Appellants emphasize
that Maruoka—cited for its teaching of straight grooves—teaches grooves of
a common axial width. Appeal Br. 7 (citing Maruoka 138). Appellants
similarly emphasize that Japan '215 teaches a tread with zigzag grooves
where the intermediate grooves are narrower than shoulder grooves. Appeal
Br. 7-8. Appellants further contend Japan '215 differs from the “subject
invention” because the subject claimed shoulder ribs are always greater in
width than the width of the intermediate ribs. Appeal Br. 7-8.
Having considered Appellants’ arguments carefully, we find they fail
to address the rejection grounded on the references as explained above and,
further, merely address what is taught by each reference individually rather
than what the combination of references would have suggested or taught to
one of ordinary skill in the art at the time of the invention. In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is . . . what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”). Critically, as to the contended failure of
Kuroki and GB '729 to support a center rib having an axial width within the
claimed range, the argument fails to address the Examiner’s reliance on
Japan '215 for this limitation.
As to the contended lack of rationale for combination of the cited
references, Appellants offer no cogent argument that addresses the
Examiner’s detailed position in the Final Office Action and the Answer.
Cf. In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
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Application 13/231,526
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art. Because Lovin did not provide such arguments, the Board did not
err in refusing to separately address claims 2—15, 17—24, and 31—34.”).
Appellants’ contention that the cited references teach away from the
claimed tread is, in effect, grounded on the literal combination of the various
disclosed treads leading to a tire tread contrary to that claimed. This is not a
teaching away. “Under the proper legal standard, a reference will teach
away when it suggests that the developments flowing from its disclosures
are unlikely to produce the objective of the applicant’s invention.” Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). On this
record, we do not find sufficient support for the existence of any teaching
away. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a
reference a teaching away from a process where no such language exists.”).
Further, as to Appellants’ argument as to Japan '215 grounded on it
failing to disclose shoulder ribs of greater width than intermediate ribs, the
argument is without merit because, as explained above, having shoulder ribs
of greater width than intermediate ribs is not required by claim 9. See, e.g.,
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
For these reasons, we are unpersuaded of reversible error in the
Examiner’s rejection of claim 9 and, accordingly, affirm the Examiner’s
rejection of claim 9.
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Rejection 2 (claims 15-23)
As noted by the Examiner, independent claim 15 includes limitations
to particular ranges of widths for not only the center rib, but also the
intermediate grooves, the intermediate ribs, the shoulder grooves, and the
shoulder ribs. Ans. 8, 10.
The Examiner relies on the cited prior art as discussed above, as well
as on Kuroki disclosing shoulder rib widths of 15-30% based on its teaching
that the shoulder groove Gs should be 0.4 to 0.7 times the distance from the
equator C (centerline) to the ground contact edge E of the tread. Ans. 3—4
(citing Kuroki, || 41, 58-72, Figs. 6-7); see also Kuroki || 43, 53.
The Examiner relies on Japan '004 for its disclosure of intermediate
circumferential grooves and shoulder circumferential grooves having widths
of 4-7% and 2-5% of tread width, respectively. Ans. 9 (citing Japan '004,
5-7, Fig. 1). Relying on the teaching of greater width for the intermediate
grooves than for shoulder grooves discussed above in regard to Rejection 1,
the Examiner concludes that one of ordinary skill would have been led to the
use of wider intermediate circumferential grooves of width within the range
of 4-9% than shoulder circumferential grooves of width within the range of
2^1%. Ans. 8-10.
As to the particular ranges of widths for the center rib, the Examiner
relies on the same fact finding and reasoning as to the center rib as in
Rejection 1 discussed above. Ans. 10-12.
As to the particular ranges of widths for the intermediate and shoulder
ribs, the Examiner relies on Kuroki and GB '729 depicting the width of
shoulder ribs being wider than the width of intermediate ribs to conclude
that “the claimed widths of the grooves and the ribs would have been
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obvious and could have been determined without undue experimentation in
light of the above noted guidance provided by the applied prior art.” Ans.
12.
Appellants contend, inter alia, that “the relative and differentiated
ranges for the central, intermediate and shoulder ribs and intermediate and
shoulder grooves specified in claim[] 15... could not... be reconstructed
from the five cited references without improper hindsight.” Appeal Br. 10.
In essence, Appellants contend that the Examiner has failed to articulate a
sufficient basis for selecting widths for the center rib, the intermediate
grooves, the intermediate ribs, the shoulder grooves, and the shoulder ribs
such that the widths of these elements fall meet the limitations of claim 15.
Having carefully considered the record, we find the Examiner’s
articulated reasoning lacking. In particular, there is no demonstration that
selection of width values consistent with the relied on factual findings as to
relative widths and acceptable ranges would necessarily result in a tire tread
pattern with widths falling within the recited ranges. See generally Final
Act.; Ans. Neither is there any determination as to the number of
combinations wholly consistent with the relied on factual findings that
would provide a tread pattern falling within the claims and those that would
not, but rather only an assertion by the Examiner that the ranges would have
been obvious and could have been determined without undue
experimentation. Ans. 12,18. Finally, we discern no articulated basis
sufficient to establish the recited widths as result effective variables, or a
necessary consequence of optimization, so as to lead one skilled in the art to
the claimed invention.
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The rejection as set forth by the Examiner is, thus, effectively
grounded on a determination as to width values that could have been
selected and, if selected, would result in the claimed invention; but this is not
sufficient. Cf. Belden v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015) (“[Ojbviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”).
On this record, we are, accordingly, constrained to reverse the
rejection. In re Warner, 379 F.2d 1011, 1017 (CCPA) (“The Patent Office
has the initial duty of supplying the factual basis for its rejection. It may
not. . . resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.”); see also In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
DECISION
The Examiner’s decision rejecting claim 9 is AFFIRMED, but the
decision rejecting claims 15-23 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.
AFFIRMED-IN-PART
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