Ex Parte Guichon

Patent Trial and Appeal Board

Sep 21, 2017

13511100 (P.T.A.B. Sep. 21, 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.
13/511,100 05/21/2012 Cyril Guichon P50-0332-US-PCT 2179
77432 7590 09/25/2017
HAHN LOESER & PARKS, LLP - MICHELIN
200 Public Square, Suite 2800
Cleveland, OH 44114
EXAMINER
LY, KENDRA
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
PATENTS @ HAHNLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CYRIL GUICHON
Appeal 2017-000779
Application 13/511,1001
Technology Center 1700
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—6, 9, 10, 13—20, and 22—25. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Michelin Recherche et
Technique S.A. and Compagnie Generale des Establissements Michelin.
Appeal Br. 3 (presenting assignment history).
Appeal 2017-000779
Application 13/511,100
STATEMENT OF THE CASE2
Appellant describes the invention as relating to tires configured for
improved snow performance as well as good braking in dry conditions.
Spec. 1,4, 5. Claim 1, reproduced below with emphasis added to certain
key recitations, is illustrative of the claimed subject matter:
1. A tire that has lateral and circumferential directions and an
equatorial plane comprising:
a tread with a circumference and a first and second
plurality of lateral grooves located thereon, wherein the first
plurality is located on an opposite side of the equatorial plane
from the second plurality;
each of the lateral grooves of the first and second
pluralities having a first chamfer found where an edge of the
groove intersects the circumference of the tire along a majority
of a sweep axis of said groove, wherein the chamfer has a flat
inclined surface;
said groove having a predetermined depth and width and
sidewalls having predetermined draft angles, wherein the width
of the groove is in the range of 2 to 4 mm and wherein the
predetermined draft angles of the first and second plurality of
lateral grooves extending closest from the equatorial plane are
less than 10 degrees.
Appeal Br. 19 (Claims App’x).
REJECTIONS AND REFERENCES
On appeal, the Examiner maintains the rejection of claims 1—6, 9, 10,
15—20, and 22—25 under 35 U.S.C. § 103 as unpatentable over Ushikubo,
U.S. Patent No. 5,044,414, Sept. 3, 1991 (“Ushikubo”) in view of optionally
2 In this opinion, we refer to the Final Office Action dated October 23, 2015
(“Final Act.”), the Appeal Brief filed May 23, 2016 (“Appeal Br.”), the
Examiner’s Answer dated August 10, 2016 (“Ans.”), and the Reply Brief
filed October 10, 2016 (“Reply Br.”).
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Application 13/511,100
Williams, US Patent No. 4,299,264, Nov. 10, 1981 (“Williams”) and further
in view of Great Britain Patent No. 1,549,347, Aug. 1, 1979 (“GB347”) or
Shimzu, Japan Patent No. 3-186405, Aug. 14, 1991 (“Shimzu”). Ans. 2.
The Examiner rejects claims 13 and 14 under 35 U.S.C. § 103 as
unpatentable over Ushikubo in view of optionally Williams further in view
of GB347 or Shimzu further in view of Teratani et al., US Patent No.
6,336,487 Bl, Jan. 8, 2002 (“Teratani”). Id. at 5.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellant and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellant’s arguments, we
are not persuaded that Appellant identifies reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellant presents argument with respect to claims 1, 2, 3, and 25 and
does not present any substantively unique arguments as to other claims. See
Appeal Br. 11—18. Appellant does not separately argue the Examiner’s
second obviousness combination. Therefore, consistent with the provisions
of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claims 1, 2,
3, and 25, and all other claims on appeal stand or fall together with claim 1.
The Examiner finds that Ushikubo teaches a tire having a tread
with circumferential and lateral grooves. Ans. 2 (providing citations to
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Application 13/511,100
Ushikubo). The Examiner finds that Ushikubo teaches lateral groves having
a width “equal to or smaller than those of the circumferential groove” and
that Ushikubo teaches an example tire having a circumferential groove with
a width of 10 mm. Id. at 2—3. The Examiner thus finds that Ushikubo
teaches a range of lateral groove widths that includes the claim l’s recited
“range of 2 to 4 mm.” Id. at 7.
The Examiner finds that GB347 and Shimzu teach claim l’s recited
chamfer. Id. at 3. The Examiner concludes that it would have been obvious
to one of ordinary skill in the art to provide the blocks of Ushikubo with
chamfers taught by GB347 or Shimzu in order to obtain the benefits of
chamfers taught by the GB347 and Shimzu references. Id. A preponderance
of the evidence supports the Examiner’s findings and conclusion.
Appellant first argues that the Examiner errs by failing to resolve the
level of ordinary skill in the art. Appeal Br. 11—12. The Examiner,
however, finds that a person of ordinary skill in the art would have been able
to readily understand the teachings of each of the cited prior art references as
evidenced by those references. Ans. 6. Appellant presents no persuasive
argument why the Examiner’s finding as to level of ordinary skill is
erroneous. See Reply Br. 2 (admitting that the Examiner’s finding
“identifies what is included within the level of ordinary skill in the art”).
Appellant’s argument on this point is also not persuasive because, to
succeed on appeal, Appellant must identify harmful error. See, e.g., Shinseki
v. Sanders, 556 U.S. 396, 409-10 (2009) (“[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
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Application 13/511,100
Board of Patent Appeals and Interferences (now, the Patent Trial and Appeal
Board)). Here, Appellant does not identify the appropriate level of skill in
the art and does not argue that Appellant’s claims are not obvious once an
appropriate level of skill is determined. In other words, Appellant offers no
explanation as to why the Examiner’s findings regarding level of ordinary
skill impacts the ultimate patentability determination. Appellant’s argument
therefore fails to identify harm fill error.
Appellant also argues that Ushikubo does not teach “the width of the
groove is in the range of 2 to 4 mm.” Appeal Br. 12. Appellant argues that
Ushikubo’s example having a 10 mm circumferential groove has a 5 mm
lateral groove and that, therefore, Ushikubo may only “be inferred to teach
lateral groove widths between 5 and 10 mm.” Id. at 13. Ushikubo, however,
teaches that the width of the transversal grooves (corresponding to claim 1 ’s
recited “lateral grooves”) “are equal to or smaller than those of the
circumferential grooves 1.” Ushikubo 3:44-46. Ushikubo also teaches 10
mm circumferential grooves as a “TEST EXAMPLE.” Id. at 4:23—25.
Ushikubo’s teachings of a 5 mm transversal grooves does not negate
Ushikubo’s broader teaching of transversal grooves less than the width of
circumferential grooves. Ushikubo’s teachings are not limited to one
preferred embodiment. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)
(“all disclosures of the prior art, including unpreferred embodiments, must
be considered.”).
Ushikubo thus teaches that the circumferential grooves can be any
width greater than zero3 and less than ten millimeters. This range overlaps
3 We agree with Appellant that Ushikubo does not teach having no lateral
grooves at all (i.e., grooves with zero width). Reply Br. 4. Likewise, the
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Application 13/511,100
with claim 1 ’s recitation of widths between 2 and 4 millimeters. See Ans. 6
(“Ushikubo’s disclosure . . . broadly includes the claimed range of 2 and 4
mm”). Because the recited range is entirely encompassed by the range
taught by Ushikubo, prima facie obviousness of the recited range is
established. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“[a]
prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art”); In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (acknowledging that claimed
invention was rendered prima facie obvious by prior art reference whose
disclosed range (50—100 Angstroms) overlapped the claimed range (100-
600 Angstroms)).
Based on unexpected results, Appellant also separately argues for the
patentability of claims 1 and 22 (reciting lateral groove width from 2 to 4
millimeters) (Ans. at 15, 17—18), claims 2 and 25 (reciting width from 2.6 to
3.6 millimeters) {id. at 17—18), and claim 3 (reciting width of
“approximately 3 mm”) {id. at 17). In particular, Appellant relies on the test
described in the Specification at paragraphs 27 and 28 and at Figure 5. Id.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469—70 (Fed. Cir. 1997). The evidence of unexpected results
also must also be reasonably commensurate with the scope of the claims. In
re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (explaining that
applicant may overcome a prima facie case of obviousness by showing
Examiner found that Ushikubo teaches lateral grooves with a width less than
10 mm. Ans. 6. The Examiner did not find that Ushikubo teaches no lateral
grooves at all (i.e., grooves with zero width).
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Application 13/511,100
unexpected results but the showing of unexpected results “must be
commensurate in scope with the claims which the evidence is offered to
support”) (internal quotes and citation omitted). “If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with scope of the claims.” In re
Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). We have carefully
considered Appellant’s evidence and arguments, but the preferred evidence
is ultimately unpersuasive.
In particular, as the Examiner finds, Appellant’s evidence of
unexpected results is not reasonably commensurate with the scope of
Appellant’s claims. Ans. 8—10. With respect to claims 1 and 22, the
Specification states that “there was virtually no improvement” at 4 mm
(Spec. 128), but the scope of these claims encompasses 4 mm width
grooves. Thus, the preponderance of the evidence establishes a lack of
unexpected results over the entire scope of these claims.
With respect to these claims and also with respect to claims 2, 3, and
25, the claims allow for numerous design changes to the recited tire. For
example, claims 1, 2, 3, 22, and 25 all permit any length of lateral groove,
permit a wide variety of chamfer designs, permit any number of lateral
grooves, and permit additional design features (such as circumferential
grooves and tread blocks with or without sipes as depicted, for example, in
the Specification’s Figure 1 depicts). Appellant presents no evidence or
reasoned basis establishing that unexpected results will be present even if
these other variables change. For example, at an extreme case still within
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Application 13/511,100
the scope of the recited claims, Appellant presents no evidence that a lateral
groove with a width of 3 mm will be beneficial if the tire has only four
lateral grooves and each groove is extremely short. Given the breadth of
Appellant’s claims, the preferred evidence is not reasonably commensurate
in scope.
Appellant also argues that the Examiner has not established lateral
groove width as a result effective variable (Appeal Br. 14—15; Reply Br. 5)
and that the Examiner presents no reason for combining teachings of the
Williams reference (Appeal Br. 16—17). The Examiner, however, does not
rely on a result effective variable theory of obviousness (Ans. 7), and
Ushikubo by itself teaches an overlapping range (as explained above) such
that the Williams reference is unnecessary.
Because Appellant does not identify harmful error, we sustain the
Examiner’s rejections.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1-6, 9, 10, 13-20, and 22-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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