Ex Parte Papin et al

Board of Patent Appeals and Interferences

Oct 28, 2011

11191816 (B.P.A.I. Oct. 28, 2011)

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.
11/191,816 07/28/2005 Bernard Papin MIC-125 (P50-0187) 7848
34043 7590 10/28/2011
DORITY & MANNING, PA & MICHELIN NORTH AMERICA, INC
P O BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
THROWER, LARRY W
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
10/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BERNARD PAPIN, THEOPHILE HENRY
LOUCHART, and WILLIAM GIBBS PIKE
____________________

Appeal 2011-002343
Application 11/191,816
Technology Center 1700
____________________

Before STEPHEN C. SIU, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002343
Application 11/191,816

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
21-38. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
The claims are directed to an apparatus and method for loading a tread
press. (Spec. [0001].)
Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. A method of loading a tread press, the tread press having a
top mold element and a bottom mold element, the tread press
defining a longitudinal direction, the steps comprising:
providing at least one tread band for molding with the
tread press;
providing at least one support that is initially located at a
position that is not between the top and bottom mold elements;
contacting the tread band with the at least one support;
pulling the tread band between the top and bottom mold
elements and along the longitudinal direction while suspending
the tread band over the bottom mold element in a manner that
inhibits permanent stretching of the tread band;
moving the support along the longitudinal direction and
into a position between the top and bottom mold elements while
using the support to assist in suspending the tread band over the
bottom mold element;
stopping the movement of the tread band; and
removing the support along the longitudinal direction and
out of the position between top and bottom mold elements
while keeping the tread band between the top and bottom mold
elements.

Appeal 2011-002343
Application 11/191,816

3
(Appeal Brief, Claims Appendix1 28-29.)

THE REJECTION
The Examiner rejected claims 21-38 under 35 U.S.C. § 103(a) as
obvious over Applicants’ admitted prior art in paragraphs [0002] and [0003]
of the Specification (“APA”) in view of Porter (US 3,413,174, issued
November 26, 1968). (Examiner’s Answer, dated August 10, 2010, “Ans.”
3-8.)

ISSUE
The Examiner found that APA discloses the method recited in
representative claim 21, with the exception of, inter alia, “moving the
support along the longitudinal direction and into a position between the top
and bottom mold elements.” However, the Examiner found that Porter
discloses moving a support along the longitudinal direction and into a
position adjacent the upper-end portion of a tire drum. (Ans. 4.)
The Examiner determined that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to have modified
the prior art method of loading a tread press with the conveying and
suspension apparatus of Porter, because such apparatus selectively and
accurately positions the bands to any desired location, such as over, between
or above as one of ordinary skill would readily recognize.” (Ans. 5.)
Appellants contend that APA in view of Porter fails to disclose
moving the support into a position between the top and bottom mold

1 Appeal Brief filed April 23, 2010, hereinafter “App. Br.” and "Claims
App’x," respectively.
Appeal 2011-002343
Application 11/191,816

4
elements. (App. Br. 5, 8.) Appellants argue that “Porter merely discloses
that the conveyor unit may be positioned “closely adjacent” to the tire drum
11 such that the tread stock 12 may then be withdrawn from the conveyor
unit. (App. Br. 8.) Appellants also contend that Porter fails to disclose
positioning its conveyor over, between, or above the tire drum. (App. Br.
11.)
Therefore, the dispositive issue on appeal is:
Whether APA in view of Porter would have rendered obvious, to a
person of ordinary skill in the art, the step of “moving the support along the
longitudinal direction and into a position between the top and bottom mold
elements”?

PRINCIPLES OF LAW
The examiner bears the initial burden of factually supporting any
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). The key to supporting any prima facie case 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 Int’l 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. “‘[R]ejections 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.’” KSR, 550
U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Appeal 2011-002343
Application 11/191,816

5

ANALYSIS
We agree with Appellants that the Examiner has failed to establish a
prima facie case of obviousness. Specifically, the Examiner has not shown
that APA in view of Porter renders obvious the step of “moving the support .
. . into a position between the top and bottom mold elements,” as recited in
claim 21.
The Examiner relies on Porter’s disclosure of a conveyor apparatus
containing an upper conveyor unit that moves toward a tire drum to
conclude that the above noted limitation would have been obvious to one of
ordinary skill in the art. (Ans. 10; see also Porter, col. 3, ll. 12-14; col. 4, ll.
3-10.) In doing so, the Examiner’s position appears to be that Porter’s
disclosure that the upper conveyor unit is moved to a position closely
adjacent to the upper end portion of a tire drum would provide a reason to
modify APA to allow for a conveyor unit to extend to Appellants’ claimed
position between the top and bottom mold elements. (Ans. 10.)
However, the Examiner fails to provide sufficient rational
underpinning as to how moving the upper conveyor unit “closely adjacent”
to the drum would render obvious moving a support into a position between
top and bottom mold elements. The Examiner has not adequately explained
why one of ordinary skill in the art would have recognized that such options
would have been available or desirable. In this regard, we note that the
Examiner does not identify a top mold element in Porter. Thus, although the
rejection is based on a combination of APA and Porter, there still must be a
reason with sufficient rational underpinning to support a conclusion of
Appeal 2011-002343
Application 11/191,816

6
obviousness. We agree with Appellants, that on this record, the Examiner
has not met this burden.
As such, the Examiner has failed to establish a prima facie case of
obviousness with respect to claim 21. For similar reasons, the Examiner has
failed to establish a prima facie case of obviousness with respect to
independent claims 28 and 29, and the remaining dependent claims, which
require similar steps.

CONCLUSION
Appellants have demonstrated that the Examiner did not sufficiently
establish that APA in view of Porter would have rendered obvious the step of
“moving the support along the longitudinal direction and into a position
between the top and bottom mold elements,” as recited in claim 21.

DECISION
We reverse the Examiner’s rejection of claims 21-38 under 35 U.S.C.
§ 103(a).

REVERSED