Carole Justine et al.

Patent Trials and Appeals Board

Mar 2, 2020

14854877 - (D) (P.T.A.B. Mar. 2, 2020)

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.
14/854,877 09/15/2015 Carole Justine 2013P70028WOUS 9656
137541 7590 03/02/2020
Continental
Intellectual Property
Jaedekamp, 30
Hannover, 30419
GERMANY
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
david.cate@continental.com
greg.adams@continental-corporation.com
hannover.patente@conti.de
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAROLE JUSTINE,
THOMAS KRAMER, and GUENTER WAHL
Appeal 2019-002894
Application 14/854,877
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.
HOUSEL, 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 1–5, 7, 8, and 12–21. We have
jurisdiction under 35 U.S.C. § 6(b).

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 Continental Reifen
Deutschland GmbH. Appeal Brief (“Appeal Br.”) filed November 5, 2018,
p. 2.
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Application 14/854,877

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We AFFIRM.2
CLAIMED SUBJECT MATTER
The claims are directed to a rubberized reinforcement ply. Spec. 1:13.
Appellant discloses that the invention is directed to a rubberized
reinforcement ply for articles made of an elastomeric material, preferably for
vehicle tires. Id. at 1:13–15. The reinforcement ply comprises a multiplicity
of mutually spaced-apart, parallel strength members (hybrid cords)
composed of at least two multifilament yarns twisted together, the first yarn
being a viscose multifilament yarn and the second yarn being a nonmetallic
yarn made from a material different from the first yarn. Id. at 1:15–22.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A rubberized reinforcement ply, the reinforcement ply
comprising:
a multiplicity of mutually spaced-apart strength members
in a parallel arrangement,
wherein the strength members are hybrid cords composed
of at least two multifilament yarns twisted with one another,
wherein the at least two multifilament yarns comprise a first
multifilament yarn being a viscose multifilament yarn and a
second multifilament yarn being a nonmetallic multifilament
yarn that is composed of a material different from the first
multifilament yarn,
wherein the first multifilament yarn after conditioning in
a DIN EN ISO 139-1:2005 standard atmosphere has a yarn
linear density < 1100 dtex and a tenacity of ≥ 45 cN/tex,

2 Our Decision additionally refers to the Specification (“Spec.”) filed
September 15, 2015, the Final Office Action (“Final Act.”) dated March 1,
2018, the Examiner’s Answer (“Ans.”) dated January 15, 2019, and the
Reply Brief (“Reply Br.”) filed February 25, 2019.
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wherein the hybrid cord has a cord linear density ≤ 3000
dtex, and
wherein:
the first multifilament yarn is a rayon multifilament yarn
and the second multifilament yarn is a PA66 multifilament
yarn, the construction of the hybrid cord being rayon 780xl +
PA66 700xl, or
the first multifilament yarn is a rayon multifilament yarn
and the second multifilament yarn is an aramid multifilament
yarn, the construction of the hybrid cord being rayon 620xl +
aramid 550xl.
Appeal Br. 36 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Winter US 3,693,689 Sept. 26, 1972
Kim et al. (“Kim”) US 6,361,862 B1 Mar. 26, 2002
Fritsch et al. (“Fritsch”) US 6,601,378 B1 Aug. 5, 2003
Mitarai et al. (“Mitarai”) US 8,002,006 B2 Aug. 23, 2011
Rampana et al.
(“Rampana”)
WO 2012/069955 A1 May 31, 2012
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103:
1. Claims 1–5, 7, 8, and 13–20 as unpatentable over Rampana in
view of Kim and/or Winter; and
2. Claims 1–5, 7, 8, and 12–21 as unpatentable over Mitarai in
view of Winter and Fritsch.
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OPINION
After review of the Examiner’s and Appellant’s opposing positions
and the appeal record before us, we determine that Appellant’s arguments
are insufficient to identify reversible error in the Examiner’s obviousness
rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly,
we affirm the stated rejections for the reasons set forth in the Appeal and
Reply Briefs. We offer the following for emphasis only.
Rejection 1
Appellant does not argue the dependent claims separately from claim
1. Compare Appeal Br. 13–24 and 24–34. In accordance with 37 C.F.R.
§ 41.37(c)(1)(iv), dependent claims 2–5, 7, 8, and 13–20 stand or fall with
claim 1, which we select as representative in our opinion below.
The Examiner rejects claims 1–5, 7, 8, and 13–20 under 35 U.S.C.
§ 103 as unpatentable over Rampana in view of Kim and/or Winter.
Specifically, the Examiner finds that Rampana teaches a rubberized
reinforcement ply comprising a plurality of hybrid or composite cords, each
comprising at least one viscose cellulose yarn (e.g., rayon) and at least one
nylon yarn (e.g., nylon 663). Final Act. 2, 3. In addition, the Examiner finds
that Rampana teaches that the rayon and nylon yarns may have linear
densities, respectively, between about 1,000–2,800 dtex, and between about
600–2,400 dtex yarn, whereas the hybrid cord may have an overall linear
density between about 1,200–7,000 dtex, or more preferably 2160–3840
dtex. Id. However, the Examiner finds that Rampana fails to disclose the
tenacity of the rayon yarn. Id. For this feature, the Examiner finds that Kim

3 Nylon 66 and “PA66,” used in this application, are the same material.
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teaches a rayon having a tenacity as high as 7 gf/de (or about 62 cN/tex) that
is suitable for tire cords. Id. at 2–3. Similarly, the Examiner finds that Winter
teaches rayon having a tenacity of at least 4.5 gf/de (or about 40 cN/tex) also
suitable for tire cords. Id. at 3. Given the hybrid cord’s linear density and the
preferred linear density ranges for each of the rayon and nylon yarns, the
Examiner determines that it would have been obvious to one of ordinary
skill in the art to have formed Rampana’s hybrid cord, with linear densities
and tenacity as recited in claim 1, absent a persuasive showing of
unexpected results. Id.
Appellant first argues that Rampana, Kim, and Winter fail to teach
either of the specifically recited hybrid cord constructions, i.e., 1) rayon
780x1 and nylon 66 700x1, or 2) rayon 620x1 and aramid 550x1, recited in
claim 1. Appeal Br. 15–19. Appellant contends that the Examiner simply
concludes that these constructions would have been obvious rather than
pointing to support for the disclosure of these combinations of hybrid cord
content and construction. Id. at 15–16. Moreover, Appellant contends that
Rampana is more limited than the Examiner finds, relying on known,
traditional reinforcement members having legacy yarns that are much
different in construction. Id. at 16. Appellant also urges that Rampana is
directed to high or ultra-high performance tires for larger, bulkier, heavier
vehicles requiring larger tires and larger, stronger plies that are thicker. Id. at
17. According to Appellant, Rampana may disclose a few hybrid cords and
various large ranges of cord linear density and tenacities, but such disclosure
is not sufficient to support obviousness of the specifically recited hybrid
cord constructions. Id. at 18.
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Appellant’s argument is not persuasive of reversible error because it
fails to address the obviousness rejection of the two specifically recited
hybrid cord constructions over Rampana in view of Kim and Winter. There
is no dispute that Rampana fails to specifically recite either of these two
hybrid cord constructions. See Ans. 3. However, as the Examiner indicates,
the rejection before us is based on obviousness which necessitates that we
consider not just Rampana’s specifically recited embodiments, but also those
reasonably suggested to the ordinary artisan by the entirety of Rampana’s
disclosure. In this case, Rampana specifically teaches rayon/nylon 66 hybrid
cord constructions, but fails to teach the recited number of filaments in these
yarns. Rampana also teaches preferred linear densities for both the rayon and
nylon 66 yarns, as well as for a hybrid cord made from these yarns.
Based on these values, the Examiner concluded that it would have
been obvious to form rayon and nylon 66 yarns, and a hybrid cord from
these yarns, within Rampana’s preferred linear densities. Doing so would
yield a number of acceptable yarns and hybrid cords having a variety of
filament numbers, all of which are within the scope of Rampana’s
disclosure. And each would have been obvious to one of ordinary skill in the
art, absent unexpected results for any particular combination. Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ʼ813
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.”); see also, In re Susi,
440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the
disclosure of the prior art was “huge, but it undeniably include[d] at least
some of the compounds recited in appellant’s generic claims and [was] of a
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class of chemicals to be used for the same purpose as appellant's additives”);
In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (“Where a skilled artisan
merely pursues ‘known options’ from a ‘finite number of identified,
predictable solutions,’ obviousness under § 103 arises.” (quoting KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)).
Here, the Examiner’s identification of a reason to select the particular
yarns and hybrid cords from the genus was sufficient to shift the burden to
Appellant, i.e., demonstrated unexpected results. In this regard, Appellant
argues that the Examiner erred by requiring Appellant to first show
unexpected results, rather than establishing a prima facie case of
obviousness in the first place. Appeal Br. 19–20. We disagree. The
Examiner carries the initial burden of establishing a prima facie case of
obviousness. In this case, the Examiner did so by establishing that the
ordinary artisan would have found a wide range of rayon/nylon 66 yarns and
hybrid cords obvious including the two specifically recited hybrid cords. In
noting that Appellant has not established that these specifically recited
hybrid cords have unexpected results, the Examiner merely reaffirms their
obviousness and is not requiring unexpected results. Thus, we agree with the
Examiner that absent a showing of unexpected results for the two
specifically recited hybrid cord constructions, these two constructions would
have been obvious to one of ordinary skill in the art based on the
combination of Rampana, Kim, and Winter.
Appellant next argues that the prior art fails to identify the problem
Appellant faced in the marketplace and, therefore, could not disclose
Appellant’s solution. Appeal Br. 20–23. Appellant contends that the recited
hybrid cord constructions were specifically selected due to their desired
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thicknesses. Id. at 20. Appellant also contends that the invention was
motivated by a desire to find thin reinforcing members that are eco-friendly
and have physical properties roughly equivalent to traditional reinforcement
members. Id. at 21. Appellant attempts to contrast this objective from
Rampana by asserting that Rampana is directed to increasing performance
and comfort in high or ultra-high performance vehicle tires. Id. at 22.
Appellant urges that these are two fundamentally different problems leading
to two fundamentally different solutions. Id. at 23.
This argument is not persuasive of reversible error because Appellant
has not directed our attention to any evidence supporting the assertion that
Appellant’s and Rampana’s purposes are fundamentally different leading to
fundamentally different solutions. Indeed, Rampana specifically teaches
rayon/nylon 66 hybrid cord constructions similar to those recited in claim 1.
Rampana 19:8–20:33. In addition, neither Appellant’s motivation nor
purpose controls the determination as to whether the claimed invention
would have been obvious. KSR., 550 U.S. at 419–20 (“In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.”); see also, In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990), cert. denied, 500 US
904 (1991).
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1, and dependent claims 2–5, 7, 8, and 13–20, over the combination of
Rampana, Kim, and Winter.
Rejection 2
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Appellant does not argue the dependent claims separately from claim
1. Compare Appeal Br. 13–24, with id. at 24–34. In accordance with 37
C.F.R. § 41.37(c)(1)(iv), dependent claims 2–5, 7, 8, and 12–21 stand or fall
with claim 1, which we select as representative in our opinion below.
The Examiner rejects claims 1–5, 7, 8, and 12–21 under 35 U.S.C.
§ 103 as unpatentable over Mitarai in view of Winter and Fritsch.
Specifically, the Examiner finds that Mitarai teaches a rubberized reinforced
ply comprising aramid, nylon, polyester, rayon, and combinations thereof.
Final Act. 5. The Examiner determines that combinations of the listed
polymers correspond to hybrid reinforcing cords. Id. Given the limited
number of possible combinations, the Examiner concludes that it would have
been obvious to form hybrid cords with rayon and nylon or aramid. Id.
However, the Examiner acknowledges that Mitarai fails to teach the
specifically recited yarn constructions and tenacity. Id.
The Examiner finds that Winter teaches rayon having a tenacity of at
least 4.5 gf/de (or about 40 cN/tex) suitable for tire cords. Id. The Examiner
finds that Fritsch teaches conventional linear densities associated with yarns
also used in hybrid tire cords. The Examiner concludes that it would have
been obvious to have used rayon as taught in Winter in Mitarai’s hybrid cord
construction with the linear densities recited in Fritsch because Winter and
Fritsch teach the same materials and use as Mitarai, absent a persuasive
showing of unexpected results. Id. at 5–6.
Appellant raises substantially the same arguments against this
rejection as Rejection 1, with the exception that Appellant asserts that
Mitarai’s different purpose is runflat tires and that Mitarai fails to disclose
nylon 66. Compare Appeal Br. 13–24, with id. at 24–34. As indicated above,
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Appellant has not directed our attention to any evidence supporting the
assertion that Appellant’s and Mitarai’s purposes are fundamentally different
leading to fundamentally different solutions. Indeed, Mitarai teaches four
polymers (aramid, nylon, polyester, and rayon) may be used alone or in
combination to make cords for a rubberized reinforcement ply. Mitarai 3:1–
11.
As to the use of nylon 66, we note that Fritsch teaches a variety of
polyamide yarns useful in tire cord construction including aramid and nylon
66. Fritsch 5:31–36. Thus, because these materials fall within the general
materials listed in Mitarai for the same purpose, their use in Mitarai’s hybrid
cord constructions would have been obvious. In re Fout, 675 F.2d 297, 301
(CCPA 1982) (explaining that an express teaching need not be present in the
art to support the substitution of one element for another element used for
the same purpose) Further, the substitution of one known element for
another is obvious when the combination yields no more than a predictable
result, as here (i.e., using aramid or nylon 66 yarns in Mitarai’s hybrid
cords). KSR, 550 U.S. at 416.
Accordingly, for the same reasons given above with regard to
Rejection 1, we sustain the Examiner’s obviousness rejection of claims 1–5,
7, 8, and 12–21 over the combination of Mitarai, Winter, and Fritsch.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner’s Answer, the decision of the
Examiner rejecting claims 1–5, 7, 8, and 12–21 under 35 U.S.C. § 103 is
affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Basis/Reference(s) Affirmed Reversed
1–5, 7, 8,
13–20
103 Rampana, Kim,
Winter
1–5, 7, 8,
13–20

1–5, 7, 8,
12–21
103 Mitarai, Winter,
Fritsch
1–5, 7, 8,
12–21

Overall
Outcome
1–5, 7, 8,
12–21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED