Ex Parte GuichonDownload PDFPatent Trial and Appeal BoardSep 21, 201713511100 (P.T.A.B. Sep. 21, 2017) Copy Citation 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.”). 2 Appeal 2017-000779 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 3 Appeal 2017-000779 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 4 Appeal 2017-000779 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 5 Appeal 2017-000779 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). 6 Appeal 2017-000779 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 7 Appeal 2017-000779 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 8 Copy with citationCopy as parenthetical citation