Ex Parte Palinkas et al

Patent Trial and Appeal Board

Apr 21, 2015

12266181 (P.T.A.B. Apr. 21, 2015)

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.
12/266,181 11/06/2008 Richard L. Palinkas 2008P019.US 3591
7590 04/22/2015
PATENT ADMINISTRATOR
CHEMTURA CORPORATION
199 Benson Road
Middlebury, CT 06749
EXAMINER
BELLINGER, JASON R
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
04/22/2015 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 RICHARD L. PALINKAS, GEORGE H. NYBAKKEN,
IAN LASKOWITZ, and CHRISTOPHER J. MAUPIN
____________________

Appeal 2013-005283
Application 12/266,181
Technology Center 3600
____________________

Before EDWARD A. BROWN, LISA M. GUIJT, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Richard L. Palinkas et al. (“Appellants”) seek our review under 35
U.S.C. § 134 of the final rejection of claims 29, 30, 37, 38, and 42–53. Ans.
3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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Application 12/266,181

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CLAIMED SUBJECT MATTER
Appellants’ invention is directed to non-pneumatic tires. See Spec. 1,
para. 1. Claims 29 and 30 are independent, and claim 29 is reproduced
below.
29. A non-pneumatic tire comprising:
opposing, annular side portions;
a first radial region comprising side cavities on said
opposing annular side portions that are circumferentially
staggered with respect to laterally opposing side cavities,
wherein said cavities extend substantially across a radial length
of the first radial region; and
a second radial region comprising laterally extending
tread grooves that are circumferentially offset relative to the
cavities,
wherein the first radial region is formed of a first
polyurethane material having a Shore A hardness of 70A to
95A, and the second radial region is formed of a second
polyurethane material having a Shore A/D hardness of 85A to
60D that is at least 2A greater than the first radial region, and
wherein said side cavities are exclusively confined to
said first radial region and define bar-shaped, radially aligned
ribs therebetween, and said tread grooves are exclusively
confined to said second radial region, and
wherein a length/width ratio of the ribs is at least 2.5, and
a side area of the bar-shaped ribs on each side portion is at least
50% of a combined side area of the ribs and cavities.
Appeal Br. 25, Claims App.

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THE REJECTIONS
(i) Claims 29, 37, 38, 42, 44, 46, 48, 50, and 52 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Black (US 4,294,491, iss.
Oct. 13, 1981), Chandler (US Des. 401,896, iss. Dec. 1, 1998), and Burns
(US Pub. No. 2007/0215259 A1, pub. Sept. 20, 2007). Final Act. 2 (mailed
Oct. 1, 2012).
(ii) Claims 30, 43, 45, 47, 49, 51, and 53 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Black, Chandler, Burns, and further in
view of Panaroni (US 4,855,096, iss. Aug. 8, 1989). Final Act. 6.

ANALYSIS
Rejection (i): Claims 29, 37, 38, 42, 44, 46, 48, 50, and 52
In rejecting independent claim 29, and its dependent claims 37, 38,
42, 44, 46, 48, 50, and 52, the Examiner relies on Black for disclosing, “a
non-pneumatic tire 28 having a first radial region 29 . . . and a second radial
region 31,” as called for in claim 29. Final Act. 2 (citing Black, col. 4, ll.
20–22 and 29–34).
Figure 3 of Black is reproduced below:

Figure 3 depicts Black’s wheel with first annulus 29 and second
annulus 31. Black, col. 3, ll. 1–7, and col. 4, ll. 31–33.
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The Examiner further finds that Black does not disclose the claimed
side cavities or lateral grooves, and relies on Chandler for disclosing, “tread
grooves . . . circumferentially offset relative to the cavities.” Final Act. 4
(citing Chandler, Figs. 5, 7, and 8). The Examiner annotates Figure 5 of
Chandler to illustrate these findings.
Annotated Figure 5 of Chandler is reproduced below:

Annotated Figure 5 depicts Chandler’s “staggered ribs,” “staggered
cavities,” and circumferentially offset “tread grooves,” as the Examiner
finds.
The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art at the time of the invention to provide the tire of
Black with the features taught by Chandler, for the purpose of reducing
weight of the tire and increasing traction.” Final Act. 5 (emphasis added).
The Examiner also finds that “Black as modified by Chandler does
not show the cavities extending substantially across the radial length of the
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first radial region, [or] the ribs between the cavities being bar shaped,” but
finds that Burns discloses, “cavities 35 that extend substantially across the
radial length . . . . [and b]ar shaped, radially aligned ribs 39 [that] define the
cavities 35.” Id. (citing Burns, Fig. 3).
Figure 1 of Burns is reproduced below:

Figure 1 depicts Burn’s tyre 10 with holes 35 and load supporting
walls 39. Burns, para. 36.
The Examiner concludes,
it would have been obvious to . . . form the cavities of Black as
modified by Chandler to extend substantially across the radial
length of a first radial region, with the cavities being defined by
bar shaped radially aligned ribs, as a substitute equivalent
configuration, dependent upon the desired characteristics of the
tire (in this case, to reduce the weight of the tire and/or affect
the resiliency thereof).
Final Act. 5 (emphasis added).
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In contesting the rejection, Appellants argue, inter alia, that the
Examiner has failed to adequately articulate the reasons for combining the
teachings of the applied prior art. See Appeal Br. 24; see also Reply Br. 5.
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citation omitted), cited with
approval in KSR, 550 U.S. at 418.
In the present case, we find Appellants’ argument persuasive. In
particular, the Examiner’s stated rationale for combining Burn’s holes 35
and supporting walls 39 with Black and Chandler—to reduce the weight of
the tire and/or affect the resiliency thereof—insufficiently articulates what
might have prompted a person having ordinary skill in the art to further
modify Black’s wheel 10 or Chandler’s tire to achieve the claimed
invention. See Final Act. 5; see also Ans. 11.
Upon reviewing the cited art, we note that: (1) Black’s invention
relates to “isolat[ing] shock loads . . . which are applied to the wheel from
the bearing structure;” (2) Burns invention relates to “readily fitt[ing a non-
pnuematic tyre] onto a conventional rim designed for pneumatic tyres;” and
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(3) Chandler is a design patent with limited disclosure. Black, col. 1, ll. 16–
18; Burns para. 10; Chandler 1. Absent hindsight, we fail to see why one
having ordinary skill in the art would have been led by the teachings of
Burns or Chandler to modify Black’s wheel 10 in the manner claimed.
Furthermore, the Examiner has not provided any findings that the
prior art recognized a problem with the resiliency or weight of the tires
disclosed in Black or Chandler, thereby supporting the legal conclusion that
it would have been obvious to combine Burns with Black and Chandler to
achieve the result of “reduc[ing] the weight of the tire and/or affect[ing] the
resiliency thereof.” Reply Br. 12. Nor has the Examiner made any finding
that this reason to combine comes from the knowledge of a person of
ordinary skill in the art. In other words, even if Black’s wheel 10 or
Chandler’s tire could have been modified as proposed, the modification is
not obvious where the results emanating from the modification have not
been shown to have been predictable to one of ordinary skill in the art. See
In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Thus, the Examiner’s
reason to combine the references is a conclusory statement of obviousness.
For the forgoing reasons, we do not sustain Rejection (i) of claims 29,
37, 38, 42, 44, 46, 48, 50, and 52 as unpatentable over Black, Chandler, and
Burns.

Rejection (ii) of Claims 30, 43, 45, 47, 49, 51, and 53
Rejection (ii) is based upon the same unsupportable legal conclusions
discussed supra with Rejection (i). See Final Act. 6. In particular, the
Examiner relies on Panaroni for teaching a method of forming a tire by spin
casting; otherwise, Rejection (ii) is based upon the same findings and
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conclusions as Rejection (i). Id. As a result, the Examiner’s application of
Panaroni does not remedy the deficiencies of Black, Chandler, and Burns.
Accordingly, and for the same reasons discuss supra with respect to
Rejection (i), we do not sustain Rejection (ii) of claims 30, 43, 45, 47, 49,
51, and 53 as unpatentable over Black, Chandler, Burns, and Panaroni.

SUMMARY
The Examiner’s decision to reject claims 29, 30, 37, 38, and 42–53 is
reversed.

REVERSED
rvb