Ex Parte Sallaz et al

Patent Trial and Appeal Board

Sep 27, 2017

13992426 (P.T.A.B. Sep. 27, 2017)

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.
13/992,426 07/18/2013 Gilles Sallaz 338180-00619 6294
35161 7590 09/27/2017
DICKINSON WRIGHT PLLC
1825 Eye St., NW
Suite 900
WASHINGTON, DC 20006
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
09/27/2017 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 GILLES SALLAZ, AGNÉS DEGEORGES,
ALAIN DOMINGO, and BOPHA GRISIN
____________

Appeal 2017-002901
Application 13/992,4261
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection
under 35 U.S.C. § 103(a) of claims 15‒27 over Kishida2 in view of Kadota,3

1 Appellants identify Compagnie Generale des Etablissements Michelin and
Michelin Recherche et Technique S.A. as the real parties in interest. Appeal
Br. 3.
2 Kishida et al., US 4,510,984, issued April 16, 1985.
3 Kadota, US 4,790,366, issued December 13, 1988.
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and Harikae4 and/or Imamiya,5 and of claim 29 in further view of Ueyoko.6
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
THE INVENTION
The subject matter of the claims on appeal relates to a tire having
radial carcass reinforcement consisting of elements anchored in each of the
tire’s beads by an upturn around a bead wire, which reinforcement is further
reinforced by at least one layer of reinforcing elements having a radially
outer end which is radially on the outside of the upturn. Specification7 filed
June 7, 2013 (“Spec.”), Abstract.
Claim 15—the sole independent claim—is representative.8
15. A tire having a radial carcass reinforcement comprising
at least one layer of reinforcing elements, said tire comprising a
crown reinforcement covered radially with a tread, said tread
being joined to two beads via two sidewalls, at least one layer
of reinforcing elements of the carcass reinforcement being
anchored in each of the beads by an upturn around a bead wire,
said carcass reinforcement upturn being reinforced by at least
one stiffener, the radially outer end of which is radially on the
outside of the end of the upturn, wherein the at least one
stiffener includes at least one non-wrapped metal cord including
a first layer formed of metal and at least one saturated layer
formed of metal surrounding the first layer, the first layer being

4 Harikae et al., JP 2004-36027 A, published February 5, 2004. An English
language abstract is also of record.
5 Imamiya et al., JP 20020363875 A, published December 18, 2002. An
English language abstract is also of record.
6 Ueyoko et al., US 5,772,811, issued June 30, 1998.
7 We cite to the Specification as filed rather than as published.
8 Appellants argue the claims on the basis of claim 15, which we select as
representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv). As provided by this
rule, all other claims stand or fall with claim 15.
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sheathed by a polymer composition, the at least one non-
wrapped metal cord having, in what is called the permeability
test, a flow rate of less than 5 cm3/min and wherein the distance
between the radially outer end of the stiffener and the end of the
carcass reinforcement upturn is less than 5 mm, and
wherein said at least one non-wrapped metal cord of said
at least one stiffener has, in what is called the permeability test,
a flow rate of less than 2 cm3/min.
Appeal Brief filed June 6, 2016 (“Appeal Br.”), Claims Appendix 1.
DISCUSSION9
We have reviewed the grounds of rejection set forth by the Examiner,
Appellants’ arguments and proffered evidence, and the Examiner’s response.
On this record, we are unpersuaded that the Examiner erred reversibly and
we determine that a preponderance of the evidence supports the Examiner’s
conclusion of obviousness for the reasons expressed by the Examiner in the
Final Office Action and the Examiner’s Answer. We add the following.
Prima Facie Obviousness
The Examiner relies on Kishida’s disclosure of a pneumatic tire
comprising a carcass (carcass plies 11) and a stiffener or bead reinforcing
layer (reinforcing strip of steel cords 13), wherein the carcass has an end
radially inward of an end of the stiffener.10 Final Act. 2 (citing Kishida col.
3, ll. 55‒66, Fig. 2); Ans. 2‒3 (citing Kishida col. 3, l. 63 et seq.; Figs. 2, 3);
see also Kishida col. 4, ll. 30‒33 (“Reinforcing strip of steel cords 13 [in
Fig. 3] is provided outwardly adjacent to the turn-ups 11a and extends

9 In this discussion, we refer to the Specification, the Final Office Action
dated January 6, 2016 (“Final Act.”), the Appeal Brief, and the Examiner’s
Answer issued July 20, 2016 (“Ans.”).
10 We reproduce element identifiers without original bolding or emphasis.
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radially outwardly beyond the upper end 11b of the turn-ups.”). The
Examiner finds Kishida’s disclosure of a tire construction in which the
reinforcing strip 13 extends beyond the carcass turn-up end, without a limit
to how far it extends beyond the turn-up, reasonably teaches or suggests
distances ranging from just over zero to greater values in light of Kadota’s
disclosure of the common relationship between carcass turn-up ends and
ends of bead reinforcing layers (Final Act. 2 (citing Kadota Abstract)) and,
more particularly, in light of its teaching that stiffeners have a height h that
is simply greater than the carcass turn-up height H (Ans. 3 (citing Kadota
Abstract)).11 The Examiner determines that the recited range of less than 5
mm is prima facie obvious on the basis of the encompassing range
reasonably disclosed by Kishida in light of Kadota. Final Act. 2; Ans. 3.
The Examiner relies on Harikae and/or Imamiya for their disclosures
relating to non-wrapped metal cords for use in reinforcing tires that include
inner core filaments sheathed with an unvulcanized rubber layer, which lies
intermediate between the inner core filaments and a further outer layer of
metal filaments. Final Act. 3; Ans. 4; Harikae Abstract, Fig. 1c (depicting
elastomer composite steel cord 10 formed of core strands 12, outer layer
strands 13, and non-vulcanized rubber 14); Imamiya Abstract, Figs. 1‒4
(depicting elastomer composite cord formed by twisting steel filaments after
covering at least one with unvulcanized rubber to form a core and twisting a

11 While “less than 5 mm” recited in claim 15 for “the distance between the
radially outer end of the stiffener and the end of the carcass reinforcement
upturn” would otherwise include zero, the claim further recites that the
“radially outer end of [the stiffener] is radially on the outside of the end of
the upturn” and, thus, supports an interpretation of the claim in which the
distance the stiffener extends beyond the end of the upturn must be non-zero.
Claim 15.
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plurality of steel filaments around this core to be an outer layer such that
unvulcanized rubber fills the space between the inner filaments and the outer
layer of filaments). The Examiner further finds Harikae and Imamiya teach
the manufacture of their two-layered steel cords with inner core filaments
sheathed in unvulcanized rubber layer in order to improve corrosion
resistance and fatigue resistance. Final Act. 3; Harikae Abstract (“The
elastomer composite steel cord has improved fatigue resistance . . . corrosion
produced in center portion of cord is prevented, due to the filling of center
portion with rubber.”); Imamiya Abstract (identifying need to improve
corrosion resistance and fatigue resistance in order to extend the life of the
steel cord and tire as the problem overcome by use of its elastomer
composite cord).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to form the stiffener of
Kishida with the elastomer composite steel cords taught by Harikae and/or
Imamiya to obtain the benefit of improved corrosion resistance and fatigue
resistance. Final Act. 3.
As to the low permeability of the non-wrapped metal cord recited in
claim 15, the Examiner’s relied on combination has, in using the cords of
Harikae and/or Imamiya, two layer cord structures having their inner core
filaments sheathed in rubber that “appear to be extremely similar (if not
identical) to those of the claimed invention.” Final Act. 3; see also Ans. 4‒5
(noting that “said cord constructions include a first or inner filament layer
and a second or outer filament layer, wherein said inner layer is completely
covered or sheathed by a rubber composition in order to eliminate the
presence of voids or gaps . . . [and that] [t]his structure appears to be
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identical to that of the claimed invention”). The Examiner further notes that
“Appellant[s] ha[ve] not identified any unique processing or additional
structural characteristics that result in the claimed permeability . . . [but that]
it appears to directly result from the inclusion of a sheathing layer in a multi-
layered steel cord construction wherein said sheathing layer completely fills
the gaps or voids.” Ans. 4‒5 (emphasis omitted).
Further, the Examiner finds that elimination of voids or channels
through which oxygen or moisture can flow by use of the inventive cord
constructions is identified as a benefit in the Specification, and that this
appears analogous to benefits detailed by Harikae and Imamiya upon using
the same (or extremely similar) cord structures. Final Act. 3; Ans. 5 (citing
Spec. ¶ 34).
Relying on the structural similarity, as well as similarity in benefits
obtained, the Examiner determines that the cords set forth in the relied on
combination would reasonably be expected to meet the recited flow rate[s]
of claim 15. Final Act. 3; Ans. 5.
Appellants proffer arguments as to both contended deficiencies in
Kishida as to the upturn and stiffener and in the combination as to the metal
cord.
As to the upturn and stiffener, Appellants contend that Kishida both
does not suggest a reinforcing strip that extends beyond the carcass turn-up
end by less than 5 mm and does not identify this distance as a result effective
variable. Appeal Br. 5‒7. Appellants argue that the Examiner “fails to
argue any sort of rationale as to why the alleged upturn of Kishida would
correspond to the claimed range” (Appeal Br. 5), but, in doing so, fail to
squarely address the rationale grounded on Figures 2 and 3 and Kishida’s
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disclosure that the upper end of stiffener 13 extends beyond the end of the
upper end of the carcass turn-ups, in light of Kadota’s teaching, reasonably
discloses an encompassing (or overlapping) range that renders the claimed
range of less than 5 mm prima facie obvious. Rather, Appellants contend
that Kishida does not discuss the distance between the upper end of stiffener
13 and the upper end of the turn-up (Appeal Br. 6) and argue that, because
Figure 2 is a drawing without indication to scale or connection to any sort of
metric/unit of measurement, the Examiner’s rejection “does not satisfy the
threshold of proving a prima facie case of obviousness” (Appeal Br. 7).
Appellants’ arguments are not persuasive because they focus on the
absence of disclosure in Kishida alone, and fail to address the rejection as set
forth by the Examiner grounded on Kishida in light of Kadota. Appellants
argue the absence of scale or particular distances in Kishida, which is
immaterial to the rationale and reasoning establishing that Kishida, in light
of Kadota reasonably teaches an encompassing (or overlapping) range. Cf.
In re Keller, 642 F.2d 413, 425 (CCPA) (“The test for obviousness is . . .
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”).
Further, we are apprised of no error because, as properly applied, “the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill would
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also
In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
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therefrom.”). On this record, a preponderance of the evidence supports the
Examiner’s determination that one of ordinary skill in the art would have
appreciated from Kadota and Kishida that the stiffener could extend beyond
the upper end of the carcass to a distance ranging from just over zero to
greater values, including those greater than 5 mm, i.e., an encompassing (or
overlapping) range to the range recited in claim 15.
The argued absence of any teaching in Kishida of this value as a result
effective value is likewise of no import, because an overlapping range, as
relied on in this rejection, is sufficient to establish a prima facie case of
obviousness absent a showing that the particular range is critical. See, e.g.,
In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990) (citations omitted,
emphasis in original) (“The law is replete with cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held that in such a
situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.”); Cf. 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.”).
As to the metal cord, Appellants contend that the record is silent as to
the cords being non-wrapped and that the Examiner has failed to establish a
basis in the relied on combination for the non-wrapped metal cords meeting
the recited flow rates. Appeal Br. 8‒13.
Turning first to the cords being non-wrapped, the Examiner notes that
the relevant cords relied on in the rejection from the Figures in Harikae and
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Imamiya are depicted without a wrapping filament on the outside of the cord
and that these are, accordingly, “properly viewed as ‘non-wrapped’ cords.”
Ans. 4; Harikae, Figs. 1(c), 2(c), 3(c); Imamiya, Figs. 3, 4. These same non-
wrapped cords are those included in the relied on combination including
Harikae and/or Imamiya. See Final Act. 3; Ans. 4‒5. On this record, in the
absence of evidence that the relied-on cords—as depicted—are not in fact
non-wrapped cords, we are apprised of no error. See generally Appeal Br.
Regarding the recited flow rates, Appellants highlight that “[n]one of
the applied references disclose the claimed ranges” (Appeal Br. 10) and that
the Specification explains the permeability test “‘constitutes a simple means
of indirectly measuring the degree of penetration of the cord by a rubber
composition. . . .’” (id. (quoting Spec. ¶ 23)). Relying on arguments that one
of ordinary skill in the art would have understood that the composition of the
rubber would affect permeability, and that the cited prior art fails to specify
the composition, Appellants contend the Examiner has failed to establish a
“nexus between the alleged similarity in structure of Yoshida [sic] and/or
Imamiya with the concepts of corrosion/fatigue and the claimed range is not
found in either the applied art, or the [Examiner’s] rationale.” Appeal Br.
11.
On this record, we are unpersuaded the Examiner erred reversibly
because we are apprised of neither error in the combination, nor in the
determination of the claims as prima facie obvious over the combination.
Obviousness does not require that the references be combined for the
same reasons contemplated by the inventor. In re Beattie, 974 F.2d 1309,
1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
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does not require that the references be combined for the reasons
contemplated by the inventor.”). Appellants proffer no persuasive argument
that the benefit of improved corrosion resistance and fatigue resistance
obtained with the elastomer composite steel cords of Harikae and/or
Imamiya would not have provided the necessary motivation or suggestion
for the combination with Kishida. See generally Appeal Br.
A prima facie case of obviousness can properly be established on
structural similarity between the claimed and prior art products. See, e.g., In
re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical, . . . the PTO
can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.
. . . Whether the rejection is based on ‘inherency’ . . . [or] on ‘prima facie
obviousness’ . . . the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability of manufacture products or to obtain and
compare prior art products.”). On this record, we are not persuaded that the
Examiner erred in finding the non-wrapped metal cord recited in claim 15 to
be substantially identical to the cords of Harikae and/or Imamiya. As to the
composition of the prior art rubber sheathing, claim 15 merely recites
“polymer composition” and, thus, is no basis for the claimed and prior art
products being structurally dis-similar, particularly where rubber
compositions are contemplated. See, e.g., Spec. 38, 43‒46. Appellants’
further arguments grounded on the Examiner failing to set forth a nexus
between the similarity of structure and the claimed range is not persuasive of
reversible error, because prima facie obviousness is properly established on
the basis of the structural similarity itself. Best, 562 F.2d at 1255.
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Proffered Unexpected Results
Appellants maintain that the present record establishes the claimed
invention achieves “unexpected results . . . by the claimed separation of less
than 5 mm between the radially outer end of the stiffener and the end of the
carcass reinforcement upturn.” Appeal Br. 6. Appellants rely on “new and
unexpectedly improved endurance.” Appeal Br. 6 (citing Spec. ¶¶ 119‒
137). Appellants contend an improvement over “a comparative tire with a
distance of greater than 5 mm between the radially outer end of a stiffener
and the end of a carcass reinforcement upturn.” Appeal Br. 6.
Having considered the proffered evidence, we do not find it sufficient
to rebut the prima facie case. It is well established that Appellants bear the
burden of showing that the claimed invention imparts unexpected results. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972). To meet this burden, Appellants must show that
the results actually would have been unexpected, and that the unexpected
results are reasonably commensurate with the scope of protection sought by
the claim on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In
re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080.
As to the results being unexpected, Appellants do not direct us to any
statement in the Specification or elsewhere attesting to the unexpected
nature of the results or to any persuasive evidence that the results would
have been unexpected at the time of the invention. See generally Appeal Br.
The contentions of “unexpected results” and of “new and unexpectedly
improved endurance” are not sufficient to bear Appellants' burden. See, e.g.,
Geisler, 116 F.3d at 1471 (“Geisler made no such assertion [that results were
unexpected] in his application. Nor did Geisler submit any such statement
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through other evidentiary submissions, such as an affidavit or declaration
under Rule 132 . . . Instead, the only reference to unexpected results was a
statement by Geisler's counsel . . . that Geisler's results were ‘surprising.’”).
As to the results being commensurate with the claims, Appellants fail
to sufficiently explain how, or if, the tests performed comparing “tires
according to the invention” to “first reference tires R1” and “second
reference tires R2” establishes unexpected results over the breadth of the
claim on appeal. The distance by which the stiffener extends beyond the end
of the upturn for the tires according to the invention is not specified—except
that it is “according to the claims”—and there is but a single value, i.e., 9.2
mm, outside the recited range. Spec. ¶¶ 120‒121. Further, there is no
explanation how the limited testing of “tires according to the invention” is
reasonably commensurate with the breadth of independent claim 15 as it
recites “a polymer composition” without further limitation.
For these reasons, Appellants have not shown evidence of unexpected
results commensurate with the scope of claim 15. See In re Harris, 409 F.3d
1339, 1343 (Fed. Cir. 2005) (holding that the applicant must show
unexpected results covering the scope of the claimed range or narrow the
claims).
On balance, the evidence of record weighs most heavily in favor of
the Examiner’s conclusion of obviousness of claim 15. Claims 16‒27 and
29 have not been separately argued and therefore fall with claim 15.
DECISION
The Examiner’s decision rejecting claims 15‒27 and 29 is
AFFIRMED.
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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)(iv).

AFFIRMED