Ex Parte Volk et al

Patent Trial and Appeal BoardFeb 21, 2019

14020438 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/020,438 09/06/2013 Heiner Volk 47988 7590 02/21/2019 Walter Ottesen, P.A. POBOX4026 GAITHERSBURG, MD 20885-4026 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. P201 l-025 6243 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 02/21/2019 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 HEINER VOLK, REINHARD LUDWIG, and CHRISTIAN WEBER 1 Appeal2018-004104 Application 14/020,43 8 Technology Center 1700 Before BRADLEY R. GARRIS, MARK NAGUMO, and JANEE. INGLESE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellant appeals from the Examiner's rejections under 35 U.S.C. Â§ 103(a) of sole independent claim 1 as unpatentable over Iida/Takasugi2 (EP 1 016 555 A2 published July 5, 2000) 1 Appellant is the Applicant, Continental Reifen Deutschland GmbH, which is identified as the real party in interest (Appeal Br. 2). 2 Because this reference is referred to as "Iida" by Appellant and as "Takasugi" by the Examiner, we will refer to the reference as "Iida/Takasugi." Appeal2018-004104 Application 14/020,438 in view of Boileau (US 3,406,733 issued October 22, 1968) and/or Dudek (US 4,044,811 issued August 30, 1977) and of dependent claims 2-9 and 11-13 as unpatentable over these references alone or in combination with an additional prior art reference. We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appellant claims a pneumatic vehicle tire comprising, inter alia, a tread base 6 having a central segment 6a and two lateral segments 6b, wherein the two lateral segments are made from a rubber compound having a lower dynamic elastic modulus than the central segment ( claim 1, Fig. 1 ). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A pneumatic vehicle tire comprising: a radial ply carcass; an at least single-layer belt and a tread, which is comprised in the radial direction of two layers made from different rubber compounds; and, a tread cap and a tread base; wherein the tread base viewed in the axial direction has at least directed radially outwardly, a central segment and two lateral segments; wherein the two lateral segments are made from a rubber compound that has a lower dynamic elastic modulus E' at 55Â°C according to DIN 53513 (measured at 8% extension) and a lower hysteresis than the central segment of the tread base; and, wherein the rubber compound of the two lateral segments has a filler content of less than 50 phr and the rubber compound of the central segment has a filler content of more than 55 phr. 2 Appeal2018-004104 Application 14/020,438 The subject rejection of claim 1 corresponds to a prior rejection except that the subject rejection proposes a lower modulus for the lateral segments of Iida/Takasugi than the central segment as claimed whereas the prior rejection proposed a greater modulus. In our Decision ( dated August 2, 2017), we did not sustain the prior rejection because the Examiner's proposed modification would have resulted in a greater modulus rather than the lower modulus required by claim 1 (Dec. 3--4). In the subject rejection, the Examiner incorrectly finds that Iida/Takasugi teaches a center tread base "demonstrating higher modulus" than the shoulder/lateral segments which is contradicted by the immediately subsequent and correct finding that "the reference fails to compare the dynamic modulus of respective tread portions" (Non-final Action (dated August 31, 2017) 3). The prior rejection included this same incorrect and contradicted finding, which we identified in our prior Decision (Dec. 2-3). The Examiner does not provide the appeal record with any reason why the subject rejection re-presents a finding that is identified as erroneous in our prior Decision. The Examiner states that "rubber compositions demonstrating superior hardness properties generally demonstrate superior modulus properties" (Non-final Action 3 (italics added)). The Examiner also states that "[Iida/Takasugi's] shoulder base tread 4b2 can have a hardness as low as JIS 50 and center base tread 4b 1 can have a hardness as large as JIS 80 (Abstract) ... [which] further suggests the presence of the shoulder base tread having significantly inferior or smaller mechanical properties, such as modulus" (id. at 4). The Examiner concludes without embellishment that, 3 Appeal2018-004104 Application 14/020,438 "[a]s such, one of ordinary skill in the art at the time of the invention would have found it obvious to form [Iida/Takasugi's] respective shoulder base treads with a smaller modulus than said central base tread" (id.). Regarding the Examiner's above first-quoted statement, Appellant correctly points out that, "if the [superior] modulus properties are only generally present [ when superior hardness properties are present,] there must be cases in which rubber compositions do not have superior modulus properties [even] if the hardness properties are superior" (Appeal Br. 18- 19). In light of this point, Appellant argues "[Iida/Takasugi], even when considered in combination with the evidentiary disclosures of Boileau and Dudek et al., does not disclose or suggest [the lower modulus requirement] ... recited in independent claim 1" (id. at 19). We agree with Appellant. The Examiner's above quoted obviousness conclusion is merely a conclusory statement that lacks articulated reasoning with rational underpinning supported by evidence as to why one with ordinary skill in this art would have formed Iida/Takasugi's shoulder/lateral segments with a smaller modulus than the central segment. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") cited with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). At most, the Examiner has established only that providing Iida/Takasugi's shoulder/lateral segments with a lower hardness than the 4 Appeal2018-004104 Application 14/020,438 central segment would generally, but not necessarily and inevitably, result in a lower modulus as claimed. However, such a result is inadequate to establish a prima facie case of inherency as explained in our prior Decision (Dec. 4). See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195- 96 (Fed. Cir. 2014) ("[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis- the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art."). For the above-stated reasons, we do not sustain the Examiner'sÂ§ 103 rejections of independent claim 1 and dependent claims 2-9 and 11-13. The decision of the Examiner is reversed. REVERSED 5