Ex Parte Riva et al

Patent Trial and Appeal BoardSep 20, 2012

10483969 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/483,969 08/23/2004 Guido Riva 07040.0176 2458 22852 7590 09/21/2012 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 09/21/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GUIDO RIVA, GUIDO LUIGI DAGHINI, and CELINE ALMONACIL ____________ Appeal 2011-009002 Application 10/483,969 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, MARK NAGUMO, and DEBORAH KATZ, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 23-29 and 33-44. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appeal 2011-009002 Application 10/483,969 2 Appellants claim a passenger car tire (1) comprising a belt structure (3), the belt structure comprising a pair of belt plies (5, 7), wherein each belt ply comprises a plurality of cords oriented obliquely at an angle of from 10Â° to 30Â° with respect to an equatorial plane of the tire, and the belt structure further comprising a reinforcing layer (10) with reinforcing elements (11) in the form of metal wires having, before insertion in the tire, a sinusoidal deformation comprising a wavelength of 3-9 mm and an amplitude of 0.3- 1.5 mm (independent claims 23, 34, 35, and 39; Figs. 1, 2). Appellants also claim a method of making such a tire (independent claims 42 and 44). Representative claim 23 reads as follows: 23. A passenger car tyre, comprising: a carcass structure; a tread band extending circumferentially around the carcass structure; and a belt structure circumferentially interposed between the carcass structure and the tread band; wherein the carcass structure comprises at least one carcass ply, wherein the at least one carcass ply comprises reinforcing cords oriented substantially in radial planes comprising a rotation axis of the tyre, wherein the belt structure comprises: at least one pair of belt plies; and a reinforcing layer; Appeal 2011-009002 Application 10/483,969 3 wherein the belt plies are radially superimposed on each other, wherein each belt ply comprises a plurality of cords oriented obliquely at an angle of from 10Â° to 30Â° with respect to an equatorial plane of the tyre, wherein the plurality of cords in a given belt ply are parallel to each other, wherein the plurality of cords in the given belt ply cross over those of an adjacent belt ply, wherein the reinforcing layer is radially external to the at least one pair of belt plies, wherein the reinforcing layer comprises reinforcing elements, wherein the reinforcing elements are substantially parallel to each other, wherein the reinforcing elements are substantially parallel to the equatorial plane of the tyre, and wherein the reinforcing elements comprise substantially rectilinear metal wires comprising residual preforming deformations formed by stretching metal wires having, before insertion in the tyre, a sinusoidal deformation comprising a wavelength greater than or equal to 3 mm and less than or equal to 9 mm and an amplitude greater than or equal to 0.3 mm and less than or equal to 1.5 mm. Under 35 U.S.C. Â§ 103(a), the Examiner rejects: Appeal 2011-009002 Application 10/483,969 4 all independent claims (i.e., claims 23, 34, 35, 39, 42, and 44) as unpatentable over Kohno (US 5,271,445, issued Dec. 21, 1993) in view of Shida (US 6,345,658 B1, issued Feb. 12, 2002); and all dependent claims (i.e., the remaining claims on appeal) as unpatentable over these references alone or further in view of other prior art. As an initial matter, we observe that Appellants present arguments concerning the limitations of the independent claims only, of which claim 23 is representative (Br. 18-31). That is, Appellants do not present separate arguments concerning the limitations of the dependent claims including the separately rejected dependent claims (id.). As a consequence, all appealed claims will stand or fall with representative claim 23. It is undisputed that Kohno discloses a passenger car tire comprising a reinforcing layer with wave-shaped reinforcing elements having post- vulcanization ratios of amplitudes-to-wavelengths from 0.005-0.175 (see, e.g., Ans. para. bridging 4-5, Kohno col. 3, ll. 1-16). Kohno is silent regarding the amplitudes and wavelengths of the wave-shaped reinforcing elements before insertion in the tire (i.e., pre-vulcanization). The Examiner concludes that it would have been prima facie obvious for one having ordinary skill in this art to determine the pre-vulcanization amplitudes and wavelengths needed to achieve the post-vulcanization ratios of amplitudes- to-wavelengths desired by Kohno, thereby resulting in the claim 23 values required before insertion in the tire (see, e.g., Ans. para. bridging 4-5). We agree with the Examiner's above obviousness conclusion for the reasons expressed in the Answer and below. Appellants state that they do not understand how Kohno's silence regarding amplitude and wavelength values of the reinforcing elements Appeal 2011-009002 Application 10/483,969 5 before insertion in the tire would have led a person skilled in the art to the claimed values (Br. para. bridging 21-22). In this regard, Appellants argue that Kohno fails to recognize such values as being result-effective and accordingly that it would not have been obvious to optimize such values through routine experimentation (id. at para. bridging 22-23). Appellants' argument is unpersuasive. In this record, it is uncontested that Kohno recognizes that tire wear-life is affected by post-vulcanization amplitudes-to-wavelengths ratios (see, e.g., col. 2, ll. 33-45). Further, Kohno's above noted silence evinces that Kohno regards an artisan to possess the skill needed to determine the pre-insertion amplitudes and wavelengths which are necessary in order to achieve the desired post- vulcanization amplitudes-to-wavelengths ratios. Since these ratios are determined by pre-inserion amplitude and wavelength values, the artisan would likewise have recognized that tire wear-life is affected by the amplitude and wavelength values of the reinforcing elements before insertion in the tire. This recognition supports a finding that such pre- insertion values are result-effective variables. See In re Applied Materials, Inc., No. 2011-1461, 2012 WL 3711586, at *6 (Fed. Cir. Aug. 29, 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."). The Examiner also concludes that it would have been prima facie obvious to replace the single belt ply of Kohno's passenger car tire embodiment with a pair of belt plies in view of Shida and to provide the belt ply cords with the 10Â° to 30Â° angle required by claim 23 (Ans. 5, para. bridging 10-11). Appeal 2011-009002 Application 10/483,969 6 Appellants argue that "Kohno teaches against arranging reinforcing elements at an angle within about 10Â° to 30Â° angle range of independent claim 23, and making such a modification to Kohno would render the tire in Kohno unsatisfactory for its intended purpose by producing premature failure" (Br. para. bridging 25-26; see also id. at 23-25). Appellants' argument is not convincing for the reasons given by the Examiner (Ans. para. bridging 10-11). We emphasize the Examiner's point that the claim 23 angle of 10Â° to 30Â° is known in the prior art to be an effective angle as evinced by Kohno (Fig. 1, col. 2, ll. 1-4) and by Appellants' Specification (6:3-7). For the above stated reasons, we sustain each of the Â§ 103 rejections advanced in this appeal. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED kmm