The Goodyear Tire & Rubber Company

Patent Trials and Appeals Board

May 24, 2021

2020006728 (P.T.A.B. May. 24, 2021)

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.
15/689,240 08/29/2017 Joseph Louis AULL GYP2017-048 9161
27280 7590 05/24/2021
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
EXAMINER
FERNSTROM, KURT
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
05/24/2021 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
pair_goodyear@firsttofile.com
patents@goodyear.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH LOUIS AULL, PAUL BRYAN MAXWELL, and
JONATHAN JAMES SHONDEL

Appeal 2020-006728
Application 15/689,240
Technology Center 3700

Before CARL M. DEFRANCO, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. See Appeal Br. 1, 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Goodyear
Tire & Rubber Company. Appeal Br. 1.
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Application 15/689,240

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CLAIMED SUBJECT MATTER
The application is titled “Modular Display System” and describes a
“modular display system for displaying pneumatic tire treads.” Spec. at
(Title), (Field of the Invention). Claims 1, 6, and 11 are independent. See
Appeal Br. 6–9 (Claims App.). Below, we reproduce claim 1, with emphasis
added to a particular limitation addressed in this Decision:
1. A tread pattern display system for new tread patterns,
the system comprising:
a first upper sidewall part;
a second upper sidewall part;
a first tread shoulder part;
a second tread shoulder part; and
a middle tread part, the first upper sidewall part
removably attached to the first tread shoulder part by a
plurality of projections extending from the first upper sidewall
part to corresponding recesses in the first tread shoulder part.
Id. at 6 (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Merzweiler US 3,864,860 Feb. 11, 1975
Palinkas US 2009/0211677 A1 Aug. 27, 2009
Johnson US 9,700,165 B2 July 11, 2017

REJECTION
The Examiner rejects claims 1–17 under 35 U.S.C. § 103 as
unpatentable over Palinkas, Merzweiler, and Johnson. Final Act. 2.

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OPINION
I. Examiner’s Rejection
In rejecting independent claim 1, the Examiner finds that “Palinkas
discloses a system comprising a plurality of portions of a tire . . . [,] which
are capable of being removably assembled together adjacent to each other.”
Final Act. 2 (citing Palinkas ¶¶ 11, 25). The Examiner explains, “[t]hese
portions, when assembled together, suggest the provision of first and second
upper sidewall parts, first and second tread shoulder parts and a middle
tread part.” Id. at 2–3 (emphasis added).
The Examiner acknowledges that “Palinkas does not disclose a
‘display system’ for tire components, wherein the system is not functional as
an operable car wheel.” Id. at 3. To address this shortcoming, the Examiner
finds that “[s]uch display systems are known in the art, as taught for
example by Merzweiler.” Id. (citing Merzweiler, 1:5–10, 1:61–2:3). The
Examiner finds that Merzweiler “discloses a plastic disc 10 configured to
simulate the appearance of a car wheel, of which a tire portion 15 is
selectively mountable for display.” Id. In combining Palinkas with
Merzweiler, the Examiner reasons that a skilled artisan would have
“modif[ied] the teachings of Palinkas by providing a display system of the
car wheel for the purpose of lowering the cost of manufacture and reducing
the weight of the device for handling and shipping.” Id. (citing Merzweiler,
2:1–3).
The Examiner further finds that Palinkas “fails to disclose that the
portions of the tire are assembled together via projections extending from
one part which are configured to be inserted into corresponding recesses on
an adjacent part.” Id. To address this shortcoming, the Examiner relies on
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Johnson and finds that Johnson teaches projections and corresponding
recesses for connecting adjacent parts, and reasons that a skilled artisan
would have “modif[ied] the teachings of Palinkas as viewed in combination
with Merzweiler by providing projections extending from each portion of
the tire and corresponding recesses in adjacent portions, either as an obvious
substitution of one element for another to achieve predictable results . . . or
as an additional means for securely arranging adjacent portions.” Id.
(citations omitted).
II. Analysis
Appellant contends that “none of Palinkas, Merzweiler, and/or
Johnson, not separately nor together, would have disclosed or suggested a
functional tire assembly or method, as recited in [independent] Claims 1, 6,
and 11.” Appeal Br. 4. Appellant argues that “the Examiner has relied
solely upon hindsight judgment.” Id.
We agree.
Independent claim 1 requires a “first upper sidewall part removably
attached to [a] first tread shoulder part.” Appeal Br. 6 (Claims App.). The
Examiner finds that Palinkas teaches or discloses this structure, referring to
Palinkas’s “2-10 portions.” Final Act. 2 (citing Palinkas ¶¶ 11, 25). Upon
reviewing Palinkas, however, we find the Examiner’s position
unsupportable.
Palinkas is titled “Modular Tire Assembly” and discloses a “tire
assembly comprising a plurality of non-pneumatic tires removably disposed
on a single rim.” Palinkas at codes (54), (57). We reproduce Palinkas’s
Figure 1, below:
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Figure 1 “is a perspective view of a tire assembly constructed in accordance
with an embodiment of [Palinkas’s] invention.” Palinkas ¶ 13. In particular,
Figure 1 depicts tire assembly 100 comprising two non-pneumatic tires 102,
104 on rim 110. Id. ¶ 26. Tires 102, 104 are disposed on mounting ring 112
of rim 110. Id. Palinkas further discloses that tires 102, 104 are separated
by gap 120 and a “separate spacer may be employed to laterally separate
tires 102, 104.” Id.
Contrary to the Examiner’s position, we discern nothing in Palinkas
that can reasonably be construed as teaching “a first upper sidewall part . . .
removably attached to [a] first tread shoulder part,” as recited in claim 1.
See Final Act. 2–3 (emphasis added) (“Palinkas discloses a system
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comprising a plurality of portions of a tire which are capable of being
removably assembled together”); see also Appeal Br. 6 (Claims App.).
Although the Examiner refers to “2-10 portions” for satisfying the claimed
structure, we note that Palinkas’s reference of “2-10” merely describes the
number of tires mounted to a single rim. See Final Act 2 (citing Palinkas ¶
11); see Palinkas ¶ 11 (“In some embodiments, the number of tires
removably mounted to a single rim may range from 2 to 10 tires.”).
Notably, Palinkas further discloses that those tires are separated from one
another by a gap. See Palinkas ¶ 26. As such, each of Palinkas’s tires has
sidewall parts, shoulder parts, and a middle part, and Palinkas teaches that
these tire “parts” are permanently attached to one another by mold or
adherence to a band. See, e.g., id. ¶ 54 (“the tires are molded or adhered to
respective bands”).
Stated differently, the claim does not merely recite multiple sidewalls
and shoulders, but also requires a “first upper sidewall part [that is]
removably attached to the first tread shoulder part.” Nothing in Palinkas can
reasonably be construed as a tire with a “first upper sidewall part . . .
removably attached . . . with a first tread shoulder part.” Appeal Br. 6
(Claims App.). The Examiner’s interpretation of the claimed limitation
would presumably find two different tires mounted on a vehicle as satisfying
the claimed limitation, as one tire has a “sidewall part” and the second tire
has a “shoulder part,” and the ability to mount the tires to the vehicle would
satisfy the requirement that the “sidewall part” and the “shoulder part” are
“removably attached” to one another simply because one tire may be
dismounted from the vehicle. Such a construction is unreasonably broad.
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For at least this reason, the Examiner committed reversible error in
rejecting independent claim 1.
Independent claims 6 and 11 recite similar structure. See Appeal Br. 8
(Claims App.) (claim 6 reciting, “the first upper sidewall part removably
attached to the first tread shoulder part . . . .”); see id. at 9 (claim 11 reciting,
“disconnecting the first middle tread part from the first tread shoulder part . .
. .”). The Examiner relies on the same unsupportable finding in rejecting
independent claims 6 and 11. See Final Act. 3–4. For the same reason we
reverse the rejection of independent claim 1, we also reverse the rejection of
independent claims 6 and 11.
Furthermore, claims 2–5, 7–10, and 12–17 depend from independent
claims 1, 6, and 11, respectively (see Appeal Br. 6–9 (Claims App.))2, and
the Examiner’s rejection of the dependent claims inherits the same flawed
finding (see Final Act. 3–4). For this reason, we also reverse the rejection of
dependent claims 2–5, 7–10, and 12–17.

CONCLUSION
We reverse the Examiner’s rejection of claims 1–17 as unpatentable
over Palinkas in view of Merzweiler and Johnson.

2 The listing of claims indicates that claims 7–10 depend from claim 5. See
Appeal Br. 7 (Claims App.). It appears, however, that claims 7–10 depend
from independent claim 6, and the reference to claim 5 was an inadvertent
typographical error. See id. at 2 (“Claims 7-10 stand or fall with Claim 6.”).
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–17 103 Palinkas,
Merzweiler,
Johnson
1–17

REVERSED