Ex Parte Mathonet et alDownload PDFPatent Trial and Appeal BoardMay 11, 201713231526 (P.T.A.B. May. 11, 2017) Copy Citation 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 2 Appeal 2016-003895 Application 13/231,526 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.”). 3 Appeal 2016-003895 Application 13/231,526 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 4 Appeal 2016-003895 Application 13/231,526 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 5 Appeal 2016-003895 Application 13/231,526 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, 6 Appeal 2016-003895 Application 13/231,526 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 7 Appeal 2016-003895 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. 8 Appeal 2016-003895 Application 13/231,526 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 9 Appeal 2016-003895 Application 13/231,526 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. 10 Appeal 2016-003895 Application 13/231,526 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 11 Copy with citationCopy as parenthetical citation