Ex Parte Kuramori et al

Board of Patent Appeals and Interferences

Oct 31, 2008

10531374 (B.P.A.I. Oct. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AKIRA KURAMORI and MITSURU NAITO
____________

Appeal 2008-4641
Application 10/531,374
Technology Center 3600
____________

Decided: October 31, 2008
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Akira Kuramori et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claim 1. Claims 2 through 6 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

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THE INVENTION
The Appellants’ invention is drawn towards a tire wheel assembly for
enabling run-flat driving including a pneumatic tire 2, a wheel rim 1, and a
run-flat support 3 (¶¶ 1 and 13 and fig. 1). The run-flat support 3 includes a
metallic annular shell 4 having a yield strength of 400 MPa or more (¶¶ 14
and 16) and elastic rings 5 having a JIS-A hardness of 50 to 65 (¶¶ 14 and
24). Furthermore, the annular shell 4 includes a continuous support structure
4a and leg parts 4b (¶ 15 and fig. 2). In use, when the pneumatic tire 2 goes
flat while the vehicle is being driven, the flat pneumatic tire 2 is supported
by the support surface 4a of the shell, thereby enabling run-flat driving of
the vehicle (¶ 20). The run-flat support 3 satisfies the relation of (W2-
W1)/W1 = 0.015-0.100 (¶ 21), where W1is the distance between points 5a
of the run-flat support 3 when the run-flat support 3 is mounted on the wheel
rim 1 (fig. 1) and W2 is the distance between points 5a and of the run-flat
support 3 when the run-flat support 3 is free (not mounted) (fig. 2).

Claim 1, the sole claim in the instant appeal, reads as follows:

1. A tire wheel assembly in which a pneumatic tire is fitted
to a rim of a wheel and a run-flat support is inserted in a
cavity section of the pneumatic tire, the run-flat support
including an annular shell and a pair of left and right
elastic rings, the annular shell having a support surface
projecting to the outer circumferential side and leg parts
extending along both sides of the support surface, and the
elastic rings supporting the leg parts of the annular shell
on the rim,

wherein a relation (W2-W1)/W1 = 0.02 to 0.100 is
satisfied assuming that W1 is an interval between
abutting points where the pair of left and right elastic
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rings abut on the inner surface of the tire when the
pneumatic tire and the run-flat support are mounted on
the rim and W2 is an interval between the abutting points
when the run-flat support is not mounted;

wherein a JIS-A hardness of the elastic rings is 50 to 65;
and

wherein the annular shell is composed of metal with a
yield strength of 400 MPa or more.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Payne US 4,823,854 Apr. 25, 1989
Hellweg US 6,463,974 B1 Oct. 15, 2002
Boiocchi US 7,100,654 B2 Sep. 5, 2006

The Appellants seek review of the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Hellweg in view of Payne
and further in view of Boiocchi.

FINDINGS OF FACT
Hellweg
We make the following findings of fact with respect to Hellweg:
1. Hellweg discloses a vehicle wheel 1 including a pneumatic tire 34, a
center rim 8 (wheel rim), and an emergency running support body 2 (run-flat
support) having a shell-shaped ring body 3 and support elements 4, 5 (col. 8,
ll. 61-67 and fig. 1).
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2. In mounting, the emergency running support body 2 is compressed
and then released within the tire cavity (col. 5, ll. 19-26 and col. 9, ll. 24-38
and fig. 2).
3. The elasticity of the ring-shaped support elements can be adjusted to
necessary requirements for mounting of the run-flat insert (col. 4, ll. 52-57).
4. The shell-shaped ring body 3 is made from steel, aluminum, or
reinforced plastics, which are selected depending on the forces acting under
emergency running conditions (col. 8, ll. 24-30).

Payne
We make the following findings of fact with respect to Payne:
5. Payne discloses a wheel assembly 10 including a pneumatic tire 12, a
rim segment 16, and a safety insert 14 (col. 4, ll. 36-44 and fig. 1).
6. The safety insert 14 is made from steel or aluminum that is selected to
allow the insert 14 to be compressed to fit in the wheel assembly 10 (col. 8,
ll. 51-65).
7. Upon mounting the safety insert 14 within the wheel assembly 10 the
axial width dimension of the insert 14 is reduced from the free-state
dimension of 7.08 inches (W2) to a deflected dimension of 6.96 inches (W1)
(col. 13, ll. 27-55 and fig. 11).
8. When inserting the free-state dimension of 7.08 inches (W2) and the
deflected dimension of 6.96 inches (W1) into the relationship (W2-W1)/W1
the result equals 0.0172.
9. In mounting, the safety insert 14 is compressed and then released
within the tire cavity (col. 8, ll. 55-58).

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Boiocchi
We make the following findings of fact with respect to Boiocchi:
9. Boiocchi discloses a wheel assembly including a pneumatic tire 3, a
rim 2, and a support 1 (col. 7, ll. 4-7 and fig. 1).
10. The support 1 includes an annular body 5 made of spring steel having
a yield strength between 1200 and 1300 N/mm2 (1200-1300 MPa) (col. 7, ll.
60-63).

ISSUES
The issues before us are whether the Appellants have demonstrated
that the Examiner erred in determining that the subject matter of claim 1 is
unpatentable over Hellweg in view of Payne and further in view of Boiocchi.
These issues turn on whether: (1) the combination proposed by the Examiner
renders obvious a tire wheel assembly in which the claimed relationship
(W2-W1)/W1 = 0.02-0.1 is satisfied; (2) whether the combination proposed
by the Examiner discloses a metal annular shell composed of a metal having
a yield strength of 400 MPa or more; and (3) whether the teachings of
Hellweg and Payne are combinable.

OPINION
Issue (1)
With respect to the first issue, the Appellants argue that the proposed
combination by the Examiner fails to disclose the claimed relationship of
(W2-W1)/W1 = 0.02-0.1 because (i) the asserted relationship of (W2-
W1)/W1 in the flat-run insert of Payne is equal to 0.0172 which falls outside
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the claimed range of 0.02-0.1 (App. Br.1 10) and (ii) the structure of the run-
flat safety insert of Payne is so different than the structure of the run-flat
insert of Hellweg that any dimensional relationship taught by the insert of
Payne is irrelevant when applied to the insert of Hellweg (App. Br. 11-12).
With respect to the Appellants’ first point we agree with the
Appellants that the value of the relationship (W2-W1)/W1 of 0.0172, as
taught by Payne, does not fall within the claimed range of 0.02-0.1.
However, we agree with the Examiner that the value of 0.0172 is so close to
the claimed range of 0.02-0.1 that a person of ordinary skill in the art would
have expected the relationship (W2-W1)/W1=0.0172 to have the same
properties as the claimed relationship (W2-W1)/W1=0.02-0.1 (Ans. 8).
When the difference between the claimed invention and the prior art is the
range or value of a particular variable, then a prima facie rejection is
properly established when the difference in range or value is minor. See
Haynes Int'l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993)
(citing Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783
(Fed. Cir. 1985)).2 Furthermore, the claimed range of the relationship (W2-
W1)/W1 was amended during prosecution of the instant application from
0.015-0.1 to 0.02-0.1 (Amendment filed April 2, 2007 at 5). In contrast to
the Specification which discusses the criticality of the end points of the

1 We refer herein to the Appeal Brief (“App. Br.”), filed November 21,
2007, the Reply Brief (“Reply Br.”), filed April 1, 2008, and the Examiner’s
Answer (“Ans.”), mailed January 24, 2008.
2 The Court held as proper a rejection of a claim directed to an alloy
“having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium”
as obvious over a reference disclosing alloys of 0.75% nickel, 0.25%
molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum,
balance titanium.
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originally claimed range, 0.015 and 0.1 (Spec. 7, ll. 13-16), the prosecution
record does not provide us with any indication as to the criticality of the
newly amended end point 0.02. When an applicant seeks to overcome a
prima facie case of obviousness by showing improved performance in a
range that is within or overlaps with a range disclosed in the prior art, the
applicant must “show that the [claimed] range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The
Appellants have not provided such a showing. Therefore, in the absence of
any objective evidence showing the criticality of the end point 0.02, we
agree with the Examiner that “one of ordinary skill in the art would have
expected a run-flat with the relationship (W2-W1)/W1 = 0.0172 as taught by
Payne et al. to have the same properties as a run flat with the claimed
relationship (W2-W1)/W1 = 0.02-0.1” (Ans. 9).
In regard to the Appellants’ second point, at the outset, we note the
similarity between Figure 1 of Hellweg and Figure 1 of Payne. Both
Hellweg and Payne disclose a wheel assembly including a pneumatic tire
and a run-flat insert for allowing run-flat driving (Findings of Fact 1 and 5).
Both Hellweg and Payne disclose mounting the run-flat insert by axially
compressing the run-flat insert at the abutting ends and releasing it within
the tire cavity (Findings of Fact 2 and 9). Both Hellweg and Payne disclose
using a steel or aluminum material to manufacture the run-flat insert
(Findings of Fact 4 and 6). Therefore, in contrast to the Appellants’
contention, we find that both Hellweg and Payne disclose run-flat inserts
having similar structures and functions. However, Hellweg does not
indicate quantitatively the amount of axial compression required to mount
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the run-flat insert. When the run-flat insert of Payne is mounted the axial
width dimension is reduced from the free-state dimension of 7.08 inches
(W2) to a deflected dimension of 6.96 inches (W1) (Finding of Fact 7),
which represents a compression ratio (W2-W1)/W1 of 0.0172 (Finding of
Fact 8). In view of the small difference between the value of the
compression ratio (W2-W1)/W1 of Payne and the claimed range, and the
structural and functional similarities of the run-flat inserts of Hellweg and
Payne, a person of ordinary skill in the art would have readily appreciated
that a ratio (W2-W1)/W1 of 0.0172, as taught by Payne, would likewise
provide a predictable level of axial compression to mount the run-flat insert
of Hellweg. After all, "[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton." KSR Int’l. Co. v. Teleflex Inc., 127
S. Ct. 1727, 1742 (2007).
Lastly, the Appellants argue that “it is improper to import the widths
(mounted and un-mounted) from Payne et al. into the device of Hellweg et
al.” because neither Hellweg nor Payne disclose “that the same materials
were used, or that the materials had the same elasticity, or that the materials
have the same thickness” (App. Br. 12). The run-flat inserts are mounted by
axially compressing the run-flat insert at the abutting ends and releasing it
within the tire cavity (Findings of Fact 2 and 9). When the run-flat insert is
released within the tire cavity an elastic restoring force is produced which
maintains the run-flat insert within the tire cavity. Hence, although
Appellants correctly note the lack of identity of structure between the run-
flat insert of Hellweg and the run-flat insert of Payne, we nonetheless find
that the selection of a suitable insert thickness, a type of material, and a
compression ratio to obtain a desired elastic restoring force involves only
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routine optimization on the part of a person of ordinary skill in the art. This
accords with the general rule that discovery of an optimum value of a result
effective variable (in this case, the optimum elastic restoring force) is
ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276
(CCPA 1980). The similarities in function and structure between the run-
flat inserts of Hellweg and Payne, as discussed above, provide a reasonable
basis for a person of ordinary skill in the art to predict that a compression
ratio in the vicinity of the ratio taught by Payne would achieve a desired
elastic restoring force in the run-flat insert of Hellweg. The Appellants have
not provided any objective evidence that one ordinarily skilled in the art
would not achieve a desired elastic restoring force in the run-flat insert of
Hellweg using a compression ratio within the claimed range. The arguments
of counsel cannot take the place of evidence in the record. In re Schulze,
346 F.2d 600, 602 (CCPA 1965).

Issue (2)
With respect to the second issue the Appellants take the position that
because the “annular body of Boiocchi et al. is not equivalent to the annular
shell 3 of Hellweg et al…. one of ordinary skill in the art would not have
used []its material and yield strength[] to modify shell 3 of Hellweg et al.”
(App. Br. 17-18). We disagree. Hellweg specifically teaches a run-flat
support including a shell-shaped ring body 3 that is made from steel,
aluminum, or reinforced plastics, which are selected depending on the forces
acting under emergency running conditions (Finding of Fact 4). Similarly,
Boiocchi discloses a support body having an annular body 5 made of spring
steel having a yield strength between 1200 and 1300 N/mm2 (1200-1300
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MPa) (Findings of Fact 9 and 10). Hence, both Hellweg and Boiocchi
disclose a steel run-flat insert and Boiocchi specifically discloses spring steel
having yield strength between 1200 and 1300 N/mm2 (1200-1300 MPa). A
person of ordinary skill in the art would have been prompted to use the
spring steel of Boiocchi to make the run-flat support of Hellweg because the
run-flat inserts of both Hellweg and Boiocchi are designed for a similar
intended use and as such require similar material characteristics to support a
similar loading.

Issue (3)
Finally, regarding the third issue in this appeal, the Appellants appear
to argue that because the run-flat insert of Payne is used in a wheel assembly
having a segmented rim, the teachings of Payne are not combinable with the
teachings of Hellweg of a wheel assembly having a one-piece rim (App. Br.
19). In other words, the Appellants appear to argue that because Payne
teaches a run-flat support mounted on a segmented rim, the teachings of
Payne are not combinable with the teachings of Hellweg which are drawn to
a one-piece rim. This argument is not persuasive. “When a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” KSR, 127 S.Ct. at 1740. As discussed above, the
Examiner reasons that such a combination would have been obvious to
provide the compression ratio of Payne to the run-flat insert of Hellweg to
obtain a desired compression (elastic restoring force) that prevents the tire
bead from being unseated (Final Rejection, mailed May 15, 2007, at 3). The
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Appellants have not explained why any differences in the one-piece rim and
the segmented rim of Hellweg and Payne, respectively, are of such a nature
as to have dissuaded a person of ordinary skill in the art at the time of
Appellants’ invention from utilizing the compression ratio (W2-W1)/W1 of
0.0172 of Payne to obtain a desired compression (elastic restoring force), as
reasoned by the Examiner. As shown above, both Hellweg and Payne
disclose run-flat inserts having similar structures and functions.
For the foregoing reasons, the Appellants’ arguments do not persuade
us that the Examiner erred in rejecting claim 1 as unpatentable over Hellweg
in view of Payne and further in view of Boiocchi. Accordingly, the rejection
of claim 1 is sustained.

DECISION
The decision of the Examiner to reject claim 1 under 35 U.S.C. §
103(a) as unpatentable over Hellweg in view of Payne and further in view of
Boiocchi 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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