Ex Parte Mirto et alDownload PDFPatent Trial and Appeal BoardMay 29, 201512312437 (P.T.A.B. May. 29, 2015) 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. 12/312,437 05/11/2009 Antonio Mirto 07040.0369 4904 22852 7590 06/01/2015 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER ROGERS, MARTIN K ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 06/01/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANTONIO MIRTO, STEFANO SANGIOVANNI, and GUIDO MONTACCHINI ____________ Appeal 2013-008297 Application 12/312,437 Technology Center 1700 ____________ Before MARK NAGUMO, N. WHITNEY WILSON, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 37–42 and 47. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is Pirelli Tire S.p.A. App. Br. 3. Appeal 2013-008297 Application 12/312,437 2 STATEMENT OF THE CASE The claimed subject matter relates to a process for producing tires for vehicle wheels, and more particularly, to a process for producing tires built on a toroidal support. App. Br. 28 (claim 37); Spec. 1. Claims 37, 39, and 41 are representative of the subject matter on appeal and are reproduced below: 37. A process for producing tires for vehicle wheels comprising the steps of: a) building a green tire on a toroidal support in a building line of a tire production plant; b) transferring the green tire and a relevant toroidal support from the building line of the production plant to a first holding unit; c) transferring the green tire and the relevant toroidal support from the first holding unit to a vulcanization line of the production plant; d) molding and vulcanizing the green tire in the vulcanization line of the production plant; e) separating the molded and vulcanized tire from the relevant toroidal support; f) transferring the toroidal support, separated from a relevant tire, from the vulcanization line to the first holding unit; and g) transferring said toroidal support, separated from the relevant tire, from the first holding unit to the building line of the production plant; wherein steps b) and g) are carried out through a first transfer device and steps c) and f) are carried out through a second transfer device different from said first transfer device. Appeal 2013-008297 Application 12/312,437 3 39. The process for producing tires for vehicle wheels according to claim 38 further comprising step: f1) transferring the molded and vulcanized tire and the relevant toroidal support from the vulcanization unit to a mounting/dismounting unit of the vulcanization line through said second transfer device. 41. The process for producing tires for vehicle wheels according to claim 37, wherein step g) of transferring the toroidal support, separated from the relevant tire, from the first holding unit to the building line comprises step; g1) transferring the toroidal support, separated from the relevant tire, from the first holding unit to a cooling unit of the building line through said first transfer device. App. Br. 28–30 (Claims Appendix). The Examiner relies upon the following in rejecting the claims on appeal: Nishimura US 4,773,810 Sept. 27, 1988 Laurent US 6,143,110 Nov. 7, 2000 Carle US 6,223,881 B1 May 1, 2001 Caretta US 2002/0174939 A1 Nov. 28, 2002 Scarzello US 2003/0135972 A1 July 24, 2003 Sieverding US 2005/0133149 A1 June 23, 2005 THE REJECTIONS 1. Claims 37, 38, and 42 are rejected under 35 U.S.C. § 103(a) as unpatentable over Caretta in view of Nishimura and Carle. Final Action 2— 5.2 2 The rejection of claim 43 as unpatentable over Caretta in view of Nishimura and Carle is withdrawn. Ans. 3. Appeal 2013-008297 Application 12/312,437 4 2. Claims 39 and 40 are rejected under 35 U.S.C. § 103(a) as unpatentable over Caretta in view of Nishimura and Carle, as applied to claim 37, and further in view of Scarzello. Id. at 5–7. 3. Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over Caretta in view of Nishimura and Carle, as applied to claim 37, and further in view of Laurent. Id. at 7–8. 4. Claim 47 is rejected under 35 U.S.C. § 103(a) as unpatentable over Caretta in view of Nishimura and Carle, as applied to claim 37, and further in view of Sieverding. Id. at 8–9. ANALYSIS Appellants argue that Carle is not analogous art, that Caretta teaches away from the process of claim 37, and that the cited art does not teach or render obvious certain limitations of claims 37, 39, and 41. App. Br. 8–23. Upon consideration of the evidence presented in this Appeal and each of Appellants’ contentions, we are not persuaded that Appellants identify reversible error, and we determine that a preponderance of evidence supports the Examiner’s conclusion that the appealed claims are unpatentable over the applied prior art. The basis for this conclusion and the reasons Appellants’ arguments fail to reveal error are well expressed by the Examiner in the Answer, which we adopt as our own. The following comments are added for emphasis. Analogous Art We are not persuaded by Appellants’ argument that Carle is non- analogous art. App. Br. 8–11; Reply Br. 2–5. A preponderance of the evidence supports the Examiner’s position that Carle is reasonably pertinent Appeal 2013-008297 Application 12/312,437 5 to the particular problem with which Appellants are concerned. Ans. 4–6; In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). According to Appellants’ Specification, prior art processes required a production plant of considerable size, and one of the objectives of the disclosed process is to reduce the size of the production plant. Spec. 3–4. Carle similarly discloses that a disadvantage of prior art accumulating stations was their very large overall size, and that the disclosed process reduces the space occupied by the accumulating system. Carle 2:13–20, 2:45–50. The evidence supports the Examiner’s conclusion that Carle is reasonably pertinent to one of the problems addressed by Appellants’ claimed invention, namely reducing the size of a production plant. Ans. 5. Appellants contend that the claimed process aims to prevent malfunctions or problems occurring in one section of a production plant, e.g., the vulcanization line, from impacting productivity in other sections of the plant, e.g., the building line. App. Br. 6, 10; see also Spec. 3. The evidence supports the Examiner’s finding that Carle addresses the same concern. Ans. 5. In particular, Carle discloses that the use of an accumulating station allows continuous operation of a production line despite variations in operating rates in different parts of the process, e.g., due to interruptions caused by resupply of materials, maintenance, or jamming. Carle 1:34–53. Appellants are correct that, according to Carle, this problem was addressed by conventional accumulators, and Carle’s disclosed invention addresses additional problems of conventional accumulators. Reply Br. 4; Carle 1:53–2:14 (identifying drawbacks of conventional accumulators). Appellants do not, however, identify error in the Examiner’s conclusion that Carle is reasonably pertinent to the problem of achieving Appeal 2013-008297 Application 12/312,437 6 independence between different parts of a production process, a problem that is addressed by both conventional accumulators and Carle’s improved accumulator. See Carle 2:64–3:5 (disclosed accumulator is arranged between the molding line refrigerator and the mold releasing station, permitting the two lines to be operated independently). Teaching Away We are also not persuaded by Appellants’ argument that Caretta teaches away from the claimed process. App. Br. 11–16; Reply Br. 5–6. A preponderance of the evidence supports the Examiner’s finding that Caretta does not teach away from the use of a holding unit that temporarily stores a small number of intermediate products for purposes of achieving independence between a tire building line and a tire vulcanization line, as taught by Nishimura. Ans. 6–8; Nishimura Abstract, 2:42–53; 3:27–38. Appellants cite paragraphs 18 and 88 of Caretta, App. Br. 15, but we are not persuaded that these paragraphs teach away from the cited teachings of Nishimura. Caretta paragraph 18 teaches operating the tire building and curing (vulcanization) lines at the same rate. Caretta ¶ 18. The Examiner correctly finds that Nishimura likewise teaches operating the tire building and vulcanization lines at the same rate. Ans. 6; Nishimura 3:24–26, 3:29–31 (disclosed process “achieve[s] matching between the flows of green tires on the forming side and on the vulcanizing sideâ€). Accordingly, Caretta does not teach away from adoption of Nishimura’s holding station, which, like Caretta’s process, permits the two lines to operate at the same rate. Appeal 2013-008297 Application 12/312,437 7 Paragraph 88 of Caretta further teaches that, by connecting the tire building line directly to the curing line, the need to accumulate green tires (intermediate products) in storage units between the two lines is advantageously eliminated. Caretta ¶ 88. The Examiner correctly finds, however, that the advantage disclosed by Caretta is reduction or elimination of warehouse costs and deterioration of product quality associated with long term storage of large amounts of intermediate products. Ans. 6–7; Caretta ¶¶ 16, 17. Temporary storage of small quantities of intermediate products, as disclosed by Nishimura, Nishimura Abstract, 3:27–38, is not inconsistent with Caretta’s teachings. As noted by the Examiner, Ans. 7, Nishimura shares Caretta’s concern regarding saving storage space. Compare Nishimura 2:4–6, 3:56–58, with Caretta ¶¶ 16, 17. Accordingly, Caretta does not teach away from adoption of Nishimura’s holding station, which, like Caretta’s process, does not involve long term storage of large amounts of intermediate products. Claim 37 We are not persuaded by Appellants’ argument that the cited references do not teach or render obvious steps e) and f) of claim 37. Appellants argue that none of Caretta, Nishimura, or Carle teaches or renders obvious separating a tire from its toroidal support prior to transferring the toroidal support from a vulcanization line to a holding unit. App. Br. 16–18; Reply Br. 6–8. We find that a preponderance of the evidence supports the Examiner’s conclusion that this feature would have been obvious in view of the combined teachings of Caretta, Nishimura, and Carle. It is undisputed that Carle teaches an accumulator between a mold Appeal 2013-008297 Application 12/312,437 8 filling line and a mold releasing station, where the accumulator temporarily stores both full molds and empty molds. Final Action 4 (citing Carle Fig. 1); Reply Br. 7; Carle 2:21–26; 5:27–30, 8:38–42. Appellants agree that Carle teaches that the molds are separated from the molded products before entering the accumulator. Reply Br. 7. The undisputed teachings of Carle, Nishimura, and Caretta, support the Examiner’s conclusion, Final Action 4; Ans. 8, that the cited art as a whole suggests separating a molded product (a tire), from the mold (a toroidal support) before the mold (toroidal support) is transferred to an accumulator (holding unit) and returned to a mold filling line (tire building line). In other words, the cited art renders obvious separating a tire from its toroidal support prior to transferring the toroidal support from a vulcanization line to a holding unit, as recited in steps e) and f) of claim 37. Claim 39 We are not persuaded by Appellants’ argument that Scarzello is silent as to claim 39’s limitations regarding where a vulcanized tire is removed from a toroidal support (in a mounting/dismounting unit of the vulcanization line) and how the vulcanized tire and toroidal support are transferred to the mounting/dismounting unit (through the second transfer device). App. Br. 19–20. Appellants do not dispute the Examiner’s finding that Nishimura teaches separate transport devices on either side of a buffer (holding station) between a tire building line and vulcanizing units for purposes of achieving independence between the tire building and vulcanizing cycles. Final Action 3 (citing Nishimura Fig. 1, 2:45–53); see Reply Br. 8–9. It is also undisputed that Scarzello teaches removing a toroidal support from a tire Appeal 2013-008297 Application 12/312,437 9 immediately after the tire is vulcanized. Final Action 6; Scarzello ¶¶ 14, 87; see App. Br. 19. When this undisputed teaching of Scarzello is combined with the teachings of Caretta, Nishimura, and Carle, a preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to perform the removal step on the vulcanization side of the buffer (holding unit), so that the removal step is carried out as immediately as possible after vulcanization. Final Action 6; Ans. 9. The same evidence supports the Examiner’s conclusion that it would have been obvious to use a second transfer device on the vulcanization side of the holding unit, as taught by Nishimura, to transfer the tire and toroidal support from the vulcanization unit to a mounting/dismounting unit, as described in claim 39. Final Action 6–7; Ans. 9–10. Claim 41 We are not persuaded by Appellants’ argument that Laurent would have led one of ordinary skill in the art to locate a cooling station on the vulcanization side, rather than the tire building side, of a holding station. App. Br. 22–23. Appellants’ argument is based on the contention, id. at 22, that Laurent incorrectly uses reference numeral “4†instead of “40†when disclosing: “The cooling installation 43 is integrated in the core mounting and dismounting station 4.†Laurent 7:11–13. Appellants’ contention is not supported by Laurent. Reference numeral 4 designates “core station 4,†which includes mounting/dismounting station 40 and cooling station 43. Laurent 6:28–29 (“at the core station 4, a mounting unit 40 assures the assembling and disassembling of the coresâ€); id. at 7:11–13. Cooling station 43 is shown on the same side of mounting/dismounting station 40 as tire Appeal 2013-008297 Application 12/312,437 10 assembly station 2 and on the opposite side from vulcanization station 3. Laurent Figs. 1, 2; 5:24–26. Accordingly, Appellants’ contention is not supported by the evidence and Appellants fail to identify error in the Examiner’s conclusion that it would have been obvious to perform the cooling step on the building line side of the holding unit, as recited in claim 41. Final Action 7–8; Ans. 10. Remaining Claims The Appeal Brief presents no argument sufficient to require us to consider separate patentability of claims 38, 40, 42, or 47. See App. Br. 18, 20, 26. 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.â€); see also, e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art†is not a substantive argument that requires claims be separately addressed). CONCLUSION OF LAW AND DECISION Accordingly, on this record, we are not persuaded that Appellants’ arguments and evidence are sufficient to outweigh the evidence of obviousness relied upon by the Examiner. The decision of the Examiner rejecting claims 37–42 and 47 is affirmed. Appeal 2013-008297 Application 12/312,437 11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (1). AFFIRMED mat Copy with citationCopy as parenthetical citation