Ex Parte Bondu

Patent Trial and Appeal Board

Jan 31, 2017

13515260 (P.T.A.B. Jan. 31, 2017)

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.
13/515,260 08/14/2012 Lucien Bondu 5460-414PUS - 322511.000 1462
27799 7590
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
patentsecretary @ cozen. com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCIEN BONDU1
Appeal 2016-001248
Application 13/515,260
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s maintained final rejection of claims 1—6.2 We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the Real Parties in Interest are Compagnie
Generale des Etablissements Michelin and Michelin Recherche et Technique
S.A. Appeal Brief filed June 15, 2015 (“App. Br.”), 1.
2 Final Office Action entered October 14, 2014 (“Final Act.”), 2.
Appeal 2016-001248
Application 13/515,260
CLAIMED SUBJECT MATTER
Appellant’s claimed invention is generally directed to a tire. Spec.
Abstract. Claim 1, the sole independent claim on appeal, is illustrative:
1. A tire adapted to come in contact with a rim having two
at least partially circular rim flanges for a heavy vehicle of the
civil engineering type, comprising:
two beads configured to come into contact with the rim;
and
a carcass reinforcement comprising at least one carcass
reinforcement layer including metal reinforcing elements coated
in a coating polymer material, said at least one carcass
reinforcement layer comprising a main portion of carcass
reinforcement which, in each bead, is wound from the inside
towards the outside of the tire, around a bead wire core to form
a turned-back portion of carcass reinforcement,
wherein each of said two beads comprises a protection
element extending a sidewall radially inwards and a filling
element which is axially on the inside of said protection
element and of said sidewall and axially on the outside of said
turned-back portion of carcass reinforcement,
wherein said protection element and said filling element
respectively comprise at least a protection polymer material and
a filling polymer material,
wherein said filling polymer material having an elastic
modulus at 10% elongation that is less than the elastic modulus
at 10% elongation of said coating polymer material,
wherein a transition element, made of a transition
polymer material, is in contact, via its axially internal face, with
said coating polymer material of the axially external face of
said turned-back portion of carcass reinforcement and, via its
axially external face, with said filling polymer material, and
wherein the elastic modulus at 10% elongation of said
transition polymer material is somewhere between the
respective elastic moduli at 10% elongation of said coating
polymer material and of said filling polymer material.
App. Br. A-l, Claims Appendix.
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Appeal 2016-001248
Application 13/515,260
REJECTION
The Examiner maintains the final rejection of claims 1—6 under
35 U.S.C. § 103(a) as obvious over Yamamoto et al. (JP 10076822 A, issued
March 24, 1998) (“Yamamoto”)3 in view of Grosch et al. (US 4,227,563,
issued October 14, 1980) (“Grosch”).4
DISCUSSION
Having reviewed the Examiner’s rejection in light of arguments
advanced by Appellant in the Appeal Brief, Appellant has not established
that the Examiner errs reversibly in concluding that claims 1—6 are
unpatentable for obviousness. We add the following for emphasis.
Appellant argues claims 1—6 as a group on the basis of claim 1, to
which we limit our discussion. App. Br. 5—8.
The Examiner finds that Yamamoto discloses a heavy duty, pneumatic
tire comprising a carcass ply layer 2,5 an elastomer protecting member A
(corresponding to the filling element comprising a filling polymer material
recited in claim 1), an elastomer layer B (corresponding to the transition
element made of a transition polymer material recited in claim 1), and a
chafer or abrasion rubber layer 7. Final Act. 2; Yamamoto Abstract; || 11—
12; Fig. 1. The Examiner finds de facto that the carcass ply layer comprises
a coating rubber. Final. Act. 3. The Examiner finds that the elastomer
protecting member A is made of a low modulus material having excellent
3 Appellant does not contest the Examiner’s reliance on an English
translation of Yamamoto.
4 Examiner’s Answer entered August 26, 2015 (“Ans.”).
5 Reference numerals and letters used in the discussion of Yamamoto refer
to Figure 1 of Yamamoto.
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Appeal 2016-001248
Application 13/515,260
flexibility, and is designed to provide a cushioning effect between the chafer
and the carcass. Final Act. 2; Ans. 2; Yamamoto 12, 8. The Examiner finds
that Yamamoto discloses that the elastomer layer B (transition element) is
sandwiched between the carcass ply layer 2 and the elastomer protecting
member A (filling element). Final Act. 2; Yamamoto | 8; Fig. 1. The
Examiner finds that Yamamoto discloses that the modulus of the elastomer
layer B (transition element) is greater than the modulus of the elastomer
protecting member A (filling element).6 Final Act. 2; Yamamoto | 8.
The Examiner acknowledges that Yamamoto does not disclose the
modulus of the coating rubber of the carcass ply layer, and relies on Grosch
for suggesting the modulus of this feature. Final Act. 2.
The Examiner relies on Grosch for its disclosure of a heavy duty tire
that comprises a plurality of rubber filler elements (corresponding to the
transition element and filling element recited in claim 1) that combine to
form a cushion element that is positioned axially outward of an inward end
or turnup portion of a carcass, which comprises at least one ply of fabric
reinforced with rubberized steel cord. Final Act. 2; Ans. 3; Grosch col. 2,
11. 34—36, 41—44, 52—56, 64—68; col. 5,11. 14—24. The Examiner finds that
Grosch discloses that the cushion element is softer than the carcass. Final
Act. 2; Grosch col. 2,11. 64—68; claim 3. The Examiner takes official notice
that it was well recognized in the art that rubber compositions demonstrating
6 Yamamoto discloses that the dynamic storage modulus of the elastomer
layer B (transition element) is greater than the dynamic storage modulus of
the elastomer protecting member A (filling element). Appellant does not
dispute the Examiner’s de facto finding that dynamic storage modulus as
disclosed in Yamamoto corresponds to elastic modulus at 10% elongation as
recited in claim 1.
4
Appeal 2016-001248
Application 13/515,260
inferior hardness would be expected to similarly demonstrate inferior
modulus. Ans. 3. Because this finding is reasonable and Appellant does not
challenge it,7 we accept it as fact. See In re Kunzmann, 326 F.2d 424, 425
n.3 (CCPA 1964).
The Examiner determines that one of ordinary skill in the art would
have understood Grosch’s disclosure that the cushion element is softer than
the carcass as referring to a comparison between the hardness of the rubber
material used to form the cushion element and the rubber portion of the
carcass. Ans. 2-4. The Examiner cites to Arimura et al. (US 3,964,533,
issued June 22, 1976) as evidencing that it was understood in the tire
industry that a comparison of the hardness of tire components refers to a
comparison of the hardness of the rubber portions of the components. Ans.
4. However, because the Examiner did not make Arimura of record in the
instant rejection, we do not rely on this reference.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to form Yamamoto’s carcass coating rubber using a
material having a greater modulus and harness than the elastomer layer B
(transition element), which has a greater modulus than the elastomer
protecting member A (filling element), in view of Grosch’s disclosure of a
heavy duty tire in which the carcass is harder than rubber filler elements
(corresponding to the recited transition and filling elements) that form a
cushion element, as recited in claim 1. Final Act. 2-4; Ans. 4.
Appellant argues that the Examiner incorrectly interprets Grosch’s
disclosure of a cushion element that is softer than the carcass as referring to
7 Appellant elected not to file a Reply Brief.
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Application 13/515,260
a comparison between the rubber material of the cushion element and the
filling rubber included in the carcass. App. Br. 6—7. In support of this
argument, Appellant contends that the rigidity of the carcass does not
depend solely on the rigidity of the filling rubber, but is based rather on the
rigidity of all constituent components of the carcass, including fabric and
steel cords, and is also dependent on the way the components are put
together. App. Br. 7.
However, we find no disclosure or discussion in Grosch of the rigidity
of the cushion element. Instead, Grosch discloses two filler elements 84, 86s
that combine to form a soft rubber cushion element having a Shore A
hardness less than that of the carcass. Grosch col. 2,11. 64—68; col. 5,11. 14—
24; col. 7,1. 5; claim 3. Therefore, Appellant’s arguments regarding the
rigidity of carcass and carcass components fail to address the disclosure in
Grosch relied on by the Examiner of a soft rubber cushion element having a
hardness less than that of the carcass. Accordingly, Appellant’s arguments
do not squarely address the Examiner’s determination that one of ordinary
skill in the art would have understood Grosch to disclose that the rubber
material of the carcass is harder than the rubber of the cushion material.
In addition, Appellant’s arguments do not identify any disclosure in
Grosch, or provide any other evidence, establishing that one of ordinary skill
in the art would have understood Grosch’s disclosure of a soft rubber
cushion element having a Shore A hardness less than that of a carcass to
refer to a comparison between the hardness of the rubber material of the
cushion element and the hardness of all of the components of the carcass,
8 Reference numerals refer to Figure 1 of Grosch.
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Appeal 2016-001248
Application 13/515,260
including the steel cord and fabric. Accordingly, Appellant’s arguments
regarding the rigidity of the carcass disclosed in Grosch are unpersuasive of
reversible error.
Appellant also argues that one of ordinary skill in the art would not
have been motivated to combine elements of Yamamoto’s and Grosch’s
heavy duty tires because Grosch and Yamamoto utilize fundamentally
different approaches and designs. App. Br. 7. Appellant contends that even
if one would have combined elements of Yamamoto’s and Grosch’s heavy
duty tires, the result would have been a cushion element in Yamamoto’s tire
configured like that of Grosch’s tire to include two filler elements 84 and 86
made of the same material, which would not produce a gradual rigidity
gradient as recited in claim 1. App. Br. 8.
However, we agree with the Examiner that the general relationship for
a heavy duty tire disclosed in Grosch of soft rubber filler elements
(corresponding to the recited transition and filling elements) having a shore
A hardness less than that of the carcass would be applicable to the heavy
duty tire disclosed in Yamamoto comprising an elastomer layer B (transition
element) having a dynamic storage modulus greater than that of an elastomer
protecting member A (filling element). Accordingly, we find no error in the
Examiner’s conclusion that the combined disclosures of Yamamoto and
Grosch would have suggested a heavy duty tire in which the modulus of
carcass mbber is greater than the modulus of an elastomer layer B (transition
element), which is greater than the modulus of an elastomer protecting
member A (filling element), as recited in claim 1.
In addition, because claim 1 recites a heavy duty tire that “comprises”
the recited elements, the claim is open a priori to the inclusion of additional,
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Application 13/515,260
un-recited elements. In re Baxter, 656 F.2d 679, 686-87 (CCPA 1981) (“As
long as one of the monomers in the reaction is [the claimed] propylene, any
other monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”) Claim 1 therefore does not
exclude additional components that may be present in a tire based on a
combination of elements disclosed in Yamamoto and Grosch. Moreover,
while claim 1 sets forth that the elastic modulus at 10% elongation of the
transition polymer material is somewhere between the respective elastic
moduli at 10% elongation of the coating polymer material of the carcass and
of the filling polymer material, there is no requirement of any further rigidity
gradient within the transition polymer material as maintained by Appellant.
Appellant’s arguments as to the absence of this gradient therefore lack
persuasive merit because they are based on a limitation that does not appear
in the claims. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Appellant's
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”)
Appellant further argues that Grosch teaches away from the gradual
rigidity gradient recited in claim 1 because Grosch divides its cushion
element into several parts, and each cushion element is made of the same
rubber material. App. Br. 8.
However, Grosch’s disclosure of two filler elements that combine to
form a soft rubber cushion element having a hardness less than the carcass
does not criticize, discredit, or otherwise discourage a heavy duty tire in
which the modulus of the carcass rubber is greater than the modulus of a
first filler element (transition element), which is greater than the modulus of
second filler element (filling element), and Grosch’s disclosures thus do not
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Appeal 2016-001248
Application 13/515,260
teach away from such a heavy duty tire as recited in claim 1. See, e.g.,
DyStar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Col., 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.”); In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[t]he prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed”); In re Gurley, 27
F.3d 551, 552—53 (Fed. Cir. 1994). In addition, as discussed above, claim 1
does not require a gradual rigidity gradient.
Accordingly, Appellant’s arguments do not establish reversible error
in the Examiner’s conclusion that one of ordinary skill in the art reasonably
would have arrived at the tire of claim 1 in view of the combined disclosures
of Yamamoto and Grosch. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir.
2011) (explaining that even if the examiner had failed to make a prima facie
case, it has long been the Board’s practice to require an appellant to identity
the alleged error in the examiner’s rejections). We accordingly sustain the
Examiner’s rejection of claims 1—6 under 35 U.S.C. § 103(a).
DECISION
In view of the foregoing, the Examiner’s rejection of claims 1—6 under
35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
9