Ex Parte Daghini et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201611920349 (P.T.A.B. Feb. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111920,349 12/11/2008 Guido Daghini 22852 7590 02/18/2016 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK A VENUE, NW WASHINGTON, DC 20001-4413 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. 05999.0006 4978 EXAMINER PATEL, VISHAL I ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 02/18/2016 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): regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUIDO DAGHINI, CELINE ALMONACIL, STEFANO BIZZI, and ALESSANDRO SUSA 1 Appeal2014-002412 Application 11/920,349 Technology Center 1700 Before CHUNG K. PAK, PETERF. KRATZ, 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 from the Examiner's final rejection of claims 27, 30-36, 39, and 50-53. We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. BACKGROUND Appellants' invention relates to tires for motor vehicles with an improved bead core. Spec. 1, 11. 6-7. 1 Appellants identify Pirelli Tyre S.p.A. as the Real Party in Interest. App. Br. 3. Appeal2014-002412 Application 11/920,349 Claim 27-the sole independent claim-is illustrative: 27. A tire for a motor vehicle, comprising: a carcass structure comprising at least one carcass ply, said carcass structure comprising a crown portion and two axially opposite side portions terminating in beads for mounting the tire on a rim; a tread band; and a belt structure interposed between said carcass structure and said tread band, wherein each bead comprises a bead core, wherein said bead core comprises a bead core strip element comprising a plurality of axially adjacent elongated elements embedded in an elastomeric material, the plurality of axially adjacent elongated elements including: at least one first elongated element comprising at least one metal wire; and at least one second elongated element comprising at least one carbon fiber axially adjacent to said at least one first elongated element comprising at least one metal wire. App. Br. 15 (Claims Appendix) (emphasis added). THE REJECTIONS The following rejections under 35 U.S.C. § 103(a) are maintained: I. claims 27, 30-36, and 53 as obvious over Hu et al. (US 6,44 7 ,905 B 1, issued September 10, 2002) ("Hu") and Orjela et al. (US 4,823,857, issued April 25, 1989) ("Orjela"); II. claim 39 as obvious over Hu, Orjela, and Niwa et al. (US 2005/0145320 Al, published July 7, 2005) ("Niwa"); III. claim 50 over Hu, Orjela, and Kabe et al. (US 4,691,752, issued September 8, 1987) ("Kabe"); and 2 Appeal2014-002412 Application 11/920,349 IV. claims 51 and 52 over Hu, Orjela, and Okuda et al. (US 5,307,853, issued May 3, 1994) ("Okuda"). DISCUSSION2 Upon consideration of the evidence and opposing contentions of the Appellants and the Examiner, we are unpersuaded of reversible error in the Examiner's decision concluding that at the time of the invention, one of ordinary skill in the art, armed with knowledge of the cited prior art, would have been led to the claimed subject matter. We add the following. Rejection I The Examiner finds Hu teaches a tire for a motor vehicle comprising, inter alia, a bead core 65 formed of a plurality of bead wire encapsulated and adhered by rubber composition. Ans. 2 (citing Hu Fig. 1; col. 3, 11. 56- 65; col. 4, 11. 1-5). The Examiner concedes Hu is silent as to the bead core comprising "a plurality of axially adjacent elongated elements including metal wire and carbon fiber." Ans. 2-3. The Examiner finds Orjela teaches a bead member (core) comprised of radially superposed layers (strip elements) formed of fibers (elongated elements) embedded in a polymeric matrix. Ans. 3 (citing Or:jela Fig. 1, col. 1, 1. 61 to col. 2, 1. 14). The Examiner finds Orjela teaches the fibers (elongated elements) 15 of the composite are axially adjacent to each other. Ans. 3; Orjela Fig. 1; Ans. 7-8 (citing Fig. 1). The Examiner finds Orjela teaches that "[a]ny suitable fiber may be employed ... [including] carbon 2 We refer to the Final Office Action (mailed June 27, 2012), the Advisory Action (mailed January 18, 2013), the Appeal Brief (filed July 29, 2013), the Examiner's Answer (mailed October 16, 2013), and the Reply Brief (filed December 16, 2013). 3 Appeal2014-002412 Application 11/920,349 fibers, ... and metallic fibers." Ans. 3 (citing Fig. 1, col. 1, 1. 61 to col. 2, 1. 14). The Examiner further finds "Orjela explicitly teaches the use of metal wire and carbon fibers within bead core strip[s]" and determines "[t]he metal wire and carbon fibers are axially adjacently [sic] to each other as cited in Fig. 1 above." Ans. 8. Having considered the record, we find the Examiner has found de facto that Orjela's Figure 1 discloses a composite in which fibers 15 are axial to one another and that Orjela teaches the fibers 15 can be metal wire and can be carbon fiber, and that by including these fibers that Orjela explicitly teaches can be included in the layers in a singular layer, the axial arrangement of metal wire and carbon fibers set forth in the claims would be provided for as suggested by Orjela. As to including both metal and carbon fibers within a layer, the Examiner further finds that Orjela "teaches an engineer may wish to tune the physical properties of a bead member by using different fibers and/or matrix materials in the various layer [sic, layers] of [sic, the] composite." Ans. 3 (quoting Orjela col. 3, 11. 10-12). The Examiner concludes it would have been obvious to one of ordinary skill in the art at the time of the invention "to comprise bead core strip element of metal wire and carbon fiber and arrange them in desired manner to fine tune the physical properties of a bead member" and to use the bead member in a tire for the benefit of "a bead member which is rigid while being flexible enough to allow the tire to be distorted." Ans. 3 (citing Orjele col. 1, 11. 6-13). The critical issue, as highlighted by Appellants' arguments, is whether the Examiner has provided a sufficient basis for the axial arrangement of an 4 Appeal2014-002412 Application 11/920,349 elongated element comprising metal wire and an elongated element comprising a carbon fiber to establish a prima facie case, that is, to include a metal wire and a carbon fiber in the same layer. Appellants first argue that Orjela only discloses layers having homogeneous fibers and expressly teaches against having multiple types of fibers within the same layer. App. Br. 11 (citing Orjela col. 1, 11. 65-68, claims 6, 15); Reply Br. 3--4. Grounded on this premise, Appellants argue the Examiner errs in finding Orjela discloses or suggests any single layer having both a metal wire and a carbon fiber, thereby providing the recited axially oriented elongated element comprising metal wire and elongated element comprising a carbon fiber. App. Br. 10-11 (citing Final Act. 3, 11. 5-12). Appellants rely on carbon fibers and metallic fibers only being specified in the context of groupings as alternatives of the homogenous fiber to be included in each layer. App. Br. 11. We do not find these arguments persuasive because Orjela explicitly teaches "[a ]ny suitable fiber may be employed" (col. 1, 1. 65) in the "composite[ s] of fibers 15 embedded in a nonmetallic matrix material 16" (col. 1, 11. 63-65) and it reasonably follows that unless otherwise indicated a suitable fiber need not be the same as all other fibers. In their arguments, Appellants direct us to what Orjela identifies as preferred, namely, that the fibers be selected from particular groups in the alternative. App. Br. 11; Reply Br. 3--4. As to what fibers are suitable, Orjela identifies both carbon fibers and metallic fibers as suitable in the further disclosure of what groups are preferred (col. 1, 11. 65-68). Regarding Appellants' contention the Examiner erred in stating "Orjela explicitly teaches the use of metal wire and carbon fibers within [a] 5 Appeal2014-002412 Application 11/920,349 bead core strip [(layer)]. The metal wire and carbon fibers are axially adjacent[] to each other as cited in Fig. 1 above" (Reply Br. 4), we do not find any harmful error where Orjela discloses that each layer "comprises a composite of fibers 15 ... [where] [a ]ny suitable fiber may be employed" (Orjela col. 1, 11. 63-65) and fibers identified as suitable include both metal wire and carbon fibers (Orjela col. 1, 11. 67-68). As to Appellants' argument that "each of the fibers 15 referred to in figure 1 of Oljela are described and shown as being homogenous" (Reply Br. 4, citing Orjela col. 1, 11. 65-68), we find it unpersuasive for the reasons set forth above or, with respect to the fibers 15 being shown as homogenous in Figure 1, to be waived. 3 7 C.F .R. § 41.41(b)(2)(2012). It is well established that in evaluating references "it is proper to take into account not only the specific teachings of the references but also the inferences that one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826 (CCPA 1968). Having done so, we find Orjela teaches layers having multiple types of fibers 15 in a matrix material 16 to form layers, including suggesting the use of axial adjacent carbon fibers and metal fibers in the same layer. It follows, therefore, that we find the argument that Orjela teaches away from the claimed invention unpersuasive. See, e.g., DyStar Textilfarben Gmbh & Co. Deutschland KG v. CH Patrick Co., 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."). Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). "A reference does not teach away ... if it merely expresses a general preference for an alternative invention but 6 Appeal2014-002412 Application 11/920,349 does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). As we find the cited disclosure from Orjela merely setting forth preferred embodiments, there is no teaching away from the claimed invention. Further, with respect to what Orjela would disclose to one of ordinary skill in the art at the time of the invention, we note Okuda---cited in the Examiner's rejection of claims 51 and 52 (Rejection IV) for the ratio of metal material to carbon fiber (Ans. 6-7}--discloses a tire bead 3 formed of aramid cords 31 and steel cords 32 axially oriented to one another (Okuda Fig. 5, col. 48-51). Still further, we also note that Okuda discloses the tire bead 3 depicted in its Figure 5 can be formed by rolling a layer in "which aramid cords 31 that alternate coextensively with steel cords 32 are aligned and rolled about themselves" as depicted in Figure 6 (Figs. 56, col. 4, 11. 48- 61 ). While not relied on by the Examiner in Rejection I, nor necessary to sustain the rejection, Okuda's disclosure-indicating what was known in the art-further evidences that one skilled in the art would reasonably be expected to draw from Orjela the teaching or suggestion of suitable fibers of different composition arranged axially to one another in the same layer. Appellants also argue that the Examiner erred because following Orjela's teachings to modify the layers of Orjela would result in layers of homogenous composition in which all axially adjacent fibers were the same. App. Br. 11-12 (citing Final Act. 3, 11. 8-11; Orjela col. 3, 11. 11-14). Appellants argue that the cited portion of Orjela goes only to what variations may be made within one layer relative to another layer such that, even if 7 Appeal2014-002412 Application 11/920,349 modified, the carbon fibers and metal wires would be positioned in different layers. Reply Br. 4-5 (citing Orjela col. 3, 11. 11-27). Appellants contend the Examiner has erred in too broadly interpreting Orjela as teaching the use of metal wire and carbon fiber within a layer. Reply Br. 4. We do not find Appellants' arguments persuasive because they are grounded on Orjela disclosure being limited to homogenous layers-where we find the disclosure, including inferences to be drawn therefrom, is not so limited-and because the arguments fail to squarely address the Examiner's determination that it would have been obvious to one of ordinary skill in the art at the time of the invention to have included different fibers, including metal wire and carbon fibers, in the same layer as the combination would provide desired strength and flexibility. Ans. 3, 8-9. It is settled that a proper conclusion of obviousness need not rely on an explicit teaching, suggestion, or motivation found in a reference. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Furthermore, Appellants' arguments fail to show the Examiner erred reversibly where in making an obviousness determination, one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. Appellants also argue that the rejection is improper based on the Examiner appearing to have "chosen to ignore the portion of Orjela that teaches away from the claimed invention" (App. Br. 12) in stating that "Orjela [sic] disclosure of information within the claims and specification is irrelevant" (Advisory Action 2, 11. 15-16). We are not persuaded of harmful error because the record indicates that portions of Orjela' s disclosure cited by Appellants as supporting their position (col. 1, 11. 65-68; col. 3, 11. 11-14; Fig. 1) were not ignored by the 8 Appeal2014-002412 Application 11/920,349 Examiner; rather, these disclosures were identified by the Examiner as having been considered (Ans. 3, 8). Hence, Appellants fail to meet their procedural burden of establishing substantive harm based on the noted wording utilized in the Advisory Action. See, e.g., Shinseki v. Sanders, 556 U.S. 396, 409-10 (2009) ("Lower court cases make clear that courts have correlated review of ordinary administrative proceedings to appellate review of civil cases in this respect ... [T]he party seeking reversal normally must explain why the erroneous ruling caused harm.") (citations omitted). See also In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (discussing the role of harmless error in appeals from decisions of the Board of Patent Appeals and Interferences (now, the Patent Trial and Appeal Board)). For the reasons above, we are unpersuaded of harmful error in the Examiner's determination and, accordingly, we sustain Rejection I. Re} ections II-IV Claims 39 and 50-52 stand rejected over Hu and Orjela in combination with additional references. Appellants rely on the ultimate dependency of these claims from independent claim 27 and the arguments as to Rejection I. App. Br. 12-13. Appellants further contend the additional references do not cure the deficiencies of Hu and Orjela. App. Br. 12-13. Because we are unpersuaded of reversible error in Rejection I, Appellants' reliance on the arguments as to Rejection I applied to claim 27 is unavailing. Furthermore, Okuda's disclosure of axially-oriented steel and aramid cords in a bead, noted above, undercuts Appellants' argument it does not cure the deficiencies of Hu and Orjela where Appellants argue Orjela's disclosure is not open to axially adjacent fibers of differing composition. Accordingly, it follows we also sustain Rejections II-IV. 9 Appeal2014-002412 Application 11/920,349 CONCLUSION The Examiner's rejection of claims 27, 30-36, 39, and 50-53 under 35 U.S.C. § 103(a) is AFFIRMED. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 10 Copy with citationCopy as parenthetical citation