Ex Parte Sandstrom et al

Patent Trial and Appeal Board

Dec 31, 2014

12327120 (P.T.A.B. Dec. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL HARRY SANDSTROM, GEORGE FRANK BALOGH,
and LEIGHTON RANDOLPH SPADONE
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Appeal 2013-002779
Application 12/327,1201
Technology Center 1700
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Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 2 and 11–13. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM for the reasons given by the Examiner (Examiner’s
Answer entered September 11, 2012 at 3–5). In this case, the Appellants fail
to adequately explain (Br. 5–6) why a person of ordinary skill in the
ordinary skill in the art would not have been enabled to include the

1 According to the Appellants, the Real Party in Interest is The Goodyear
Tire & Rubber Company (Appeal Brief filed May 22, 2012, hereinafter
“Br.,” at 3).
Appeal 2013-002779
Application 12/327,120

2
advantageous diverse carbon blacks of Spadone2 in the uncured insert
described in Balogh,3 especially when Balogh’s teachings indicate wide
flexibility in selecting the heat-activatable blowing agent to be included in
the uncured insert (Balogh ¶ 15). KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (“When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp.”). See also In re Antor Media Corp., 689 F.3d
1282, 1288 (Fed. Cir. 2012) (“[A] prior art printed publication cited by an
examiner is presumptively enabling barring any showing to the contrary by a
patent applicant or patentee.”).
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 2 and
11–13 as unpatentable over Balogh and Spadone 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)(1).
AFFIRMED

lp

2 United States Patent Application Publication 2005/0159535 A1 published
July 21, 2005.
3 United States Patent Application Publication 2006/0289098 A1 published
December 28, 2006.