Ex Parte Fontaine et al

Patent Trial and Appeal Board

Sep 10, 2018

15065959 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/065,959 03/10/2016 Sebastien Willy Fontaine
27280 7590 09/12/2018
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
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.
DN2016-006 5590
EXAMINER
KOTTER, KIP T
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
09/12/2018 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
patents@ good year.com
pair_goodyear@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIEN WILLY FONTAINE,
ARMAND RENE GABRIEL LECONTE, FREDERIC NGO,
and CLAUDE ERNEST FELIX BOES
Appeal2018-001579
Application 15/065,959 1
Technology Center 3600
Before MICHAEL W. KIM, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 1 and 4--7. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, "the real party in interest is The Goodyear Tire &
Rubber Company." Br. 3.
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Application 15/065,959
According to Appellants, the invention relates "to an assembly for
supporting a vehicle while traversing a ground or other surface." Spec. ,r 1.
Below, we reproduce claim 1, which is the only independent claim on
appeal, as illustrative of the appealed claims.
1. A support assembly for a vehicle comprises:
at least two spherical tires travelling on a road surface and
rotating relative to the road surface and the vehicle, the tires
including a plurality of layers, one of the plurality of layers
containing carbon, another of the plurality of layers containing a
magnetic material; and
a drive system magnetically driving rotation of the tires
relative to the drive system itself such that no portion of the drive
system physically contacts the tires or the road surface, the drive
system being disposed within the vehicle.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1 and 4--7 under 35 U.S.C. § 112(a) as failing to comply
with the enablement requirement; and
II. Claims 1 and 4--7 under 35 U.S.C. § 103 as unpatentable over
Letang (US 8,232,699 B2, iss. July 31, 2012) and Appellants'
Figure 4.
ANALYSIS
Re;ection I
As set forth above, the Examiner rejects claims 1 and 4--7 as failing to
comply with the enablement requirement, because, according to the
Examiner, independent claim 1 "contains subject matter [that] was not
described ... in such a way as to enable one skilled in the art ... to make
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Application 15/065,959
and/or use the invention." Final Action 4. More specifically, the Examiner
finds that Appellants' disclosure, including Appellants' Specification and
drawings, "provide no guidance on how to arrange a drive system such that
no portion of the drive system physically contacts the tires," as claimed. Id.
at 5.
It is well settled that a Specification is not enabling if a person of
ordinary skill in the art would be unable to practice the claimed invention
without "undue experimentation." In re Wands, 858 F.2d 731, 737 (Fed.
Cir. 1988). Factors relevant to a determination of whether undue
experimentation would be necessary include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, ( 4) the nature of the invention, ( 5) the state
of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of
the claims.
Id. The initial burden is on the Examiner to set forth "a reasonable
explanation" of why the Examiner believes a person of ordinary skill in the
art, given what the Specification discloses, would be unable to practice the
invention without "undue experimentation." See In re Wright, 999
F.2d 1557, 1561---62 (Fed. Cir. 1993).
In this case, the Examiner makes the following findings:
[Appellants'] [S]pecification fails to provide any direction or
guidance on how [Appellants'] drive system would be arranged,
including components thereof, to allow the "driving rotation of
the tires relative to the drive system" (Wands Factor ([2]); [s Jee
MPEP [§] 2164.0l(a)). Notwithstanding that [Appellants']
Fig[ ure] 1 appears to show at least one unknown component of
the drive system contacting an inner surface of a spherical tire
layer, [Appellants'] [S]pecification fails to provide any direction
or guidance on how the drive system would be arranged,
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Application 15/065,959
including components thereof, so that "no portion of the drive
system physically contacts the tires" (Wands Factor ([2]); [s] ee
MPEP [§] 2164.0l(a)). Moreover, the prior art extensively
described in at least paragraphs [0016--0071] [ of Appellants'
Specification] provide[ s] no guidance on how to arrange a drive
system such that no portion of the drive system physically
contacts the tires (i.e.[,] spherical housing) (Wands Factor ([5]);
[s]ee MPEP [§] 2164.0l(a)). As such, [Appellants']
[S]pecification, at the time the application was filed, fails to
provide sufficient instruction for one of ordinary skill in the art
to make and use the claimed invention without undue
experimentation.
Answer 2-3.
Although the Examiner indicates that the state of the prior art has been
considered, the Examiner's obviousness rejection ( discussed in more detail
infra) relies on Letang, patented on July 31, 2012, which is almost 4 years
prior to the February 24, 2016, filing date, of provisional application
no. 62/299,165, which is the only earlier-filed application to which
Appellants' application claims priority. See Application Data Sheet 4.
Further, the Examiner expressly finds that "Letang discloses ... a drive
system ... magnetically driving rotation of the tires relative to the drive
system itself ... such that no portion of the drive system physically contacts
the tires ... or the road surface." Answer 3. Thus, from the Examiner's
perspective, the claimed drive system that magnetically drives rotation of
tires relative to the drive system itself such that no portion of the drive
system physically contacts the tires or the road surface was known. The
Examiner does not discuss why undue experimentation would be required
after Letang's disclosure of the claimed drive system approximately four
years before Appellants' filing of their application.
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Application 15/065,959
Thus, based on our review of the record, including the Examiner's
failure to discuss a majority of the Wands factors, and especially the
Examiner's failure to adequately discuss the state of the art and Letang, the
Examiner does not set forth a reasonable explanation of why a person of
ordinary skill in the art would be unable to practice the invention without
undue experimentation. See Br. 4. Therefore, we do not sustain the
enablement rejection.
Re;ection II
Initially, we note that " [ c] laims 4--7 stand or fall with [independent]
claim 1." Br. 4. Thus, we limit the substance of our discussion to claim 1.
The Examiner rejects independent claim 1 based on a combination of
Letang and Appellants' Figure 42 (and its accompanying description in
Appellants' Specification). See, e.g., Answer 3--4. In the rejection, the
Examiner relies on Letang to disclose almost everything recited in claim 1,
including tires each having a plurality of layers, one of the plurality of layers
containing a magnetic material, and the other of the plurality of layers
having a different material. See, e.g., id. According to the Examiner,
"[a]lthough Letang discloses outer shell 28 including a tread layer 29,
Letang fails to expressly disclose the materials of this outer shell or tread
layer. [Appellants'] Fig[ure] 4 ... teaches a tire having an outer layer
(spherical housing 302) that may be formed of a polycarbonate plastic as
described in paragraph [0050]" of Appellants' Specification. Id. at 4.
Although we have carefully reviewed Appellants' four arguments (see
Br. 4--6), Appellants do not persuade us that it is non-obvious "to have
2 Appellants concede that Figure 4 illustrates "prior art." See, e.g., Br. 5
(where Appellants reference Figure 4 as "the admitted prior art.").
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modified the tire of Letang by forming its outer shell or tread layer from a
material that contains carbon (i.e.[,] polycarbonate plastic), such as taught by
[Appellants'] Fig[ure] 4 ... , to achieve predictable and desired physical and
material properties such as good strength and toughness" that are provided
by an outer tire layer formed of a material that contains carbon, and, more
specifically, a polycarbonate-plastic material (Answer 4). Instead, contrary
to Appellants' arguments, it appears that using the tire shown in Appellants'
Figure 4 with components of Letang would be nothing more than the
combination of familiar elements according to known methods, in which the
combination of the component provides predictable results. See KSR Int 'l
Co., v. Teleflex Co., 550 U.S. 398,416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results."). Importantly, Appellants do not
persuade us, based on either evidence or argument, that replacing tread
layer 29 of Letang's tire 28 with a polycarbonate-plastic material provides
unexpected results. Thus, based on the foregoing, we sustain the
obviousness rejection.
DECISION
We REVERSE the Examiner's enablement rejection of claims 1
and 4--7.
We AFFIRM the Examiner's obviousness rejection of claims 1
and 4--7.
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Application 15/065,959
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
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