Ex Parte SATO

Board of Patent Appeals and Interferences

Jun 18, 2003

09057383 (B.P.A.I. Jun. 18, 2003)

1 In rendering our decision, we have considered Appellant’s arguments presented in the
Brief, filed April 11, 2002 and the Reply Brief, filed October 21, 2002. We have considered the
Examiner’s position presented in the Answer, mailed August 23, 2002.
2 The Examiner has indicated that claims 6, 13, 14 and 22 to 28 contain allowable subject
matter. Claim 14 has been objected to as being dependent upon a rejected base claim. The
Amendment filed April 11, 2002 has been entered. (Answer, p. 2).
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex Parte HIROSHI SATO
_______________
Appeal No. 2003-0332
Application 09/057,383
_______________
ON BRIEF
_______________
Before GARRIS, OWENS and JEFFREY T. SMITH, Administrative Patent Judge.
JEFFREY T. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Applicant appeals the decision of the Primary Examiner’s refusal to allow
claims 1 to 4, 9 to 11, 16, 17, 19 and 21.1, 2 We have jurisdiction under 35 U.S.C.
§ 134.
Appeal No. 2003-0332
Application 09/057,383
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THE INVENTION
The Appellant’s claimed invention relates to a pneumatic tire that comprises a
first block row and a second block row in which a plurality of blocks projecting from
an outer circumferential of the pneumatic tire are disposed along the tire
circumferential direction. According to Appellant, the invention reduces the noise
associated with the tire’s tread pattern while maintaining dynamic performance.
(Brief, p. 2). Claim 1 which is representative of the invention is reproduced below:
1. A pneumatic tire comprising:
a first block row in which a plurality of blocks projecting from an outer
circumferential of said pneumatic tire are disposed along a tire
circumferential direction; and
a second block row in which a plurality of blocks projecting from the
outer circumference of said pneumatic tire are disposed along the tire
circumferential direction, said second block row being parallel to said
first block row,
wherein a side surface of a leading edge side end portion of each block
of said first block row and said second block row is inclined with
respect to a tire transverse direction such that an angle, which is formed
by the side surface of the leading edge side end portion of each block of
said first block row and a line tangent to a tire leading edge side contour
line of a ground-contact configuration, and an angle, which is formed by
the side surface of the leading edge side end portion of each block of
said second block row and a second tangent line to a tire leading edge
side contour line of the ground-contact configuration, are substantially
equal.
Appeal No. 2003-0332
Application 09/057,383
3 According to the Examiner, the rejection under 35 U.S.C. § 112, second paragraph, has
been withdrawn. (Answer, p. 3).
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As evidence of unpatentability, the Examiner relies on the following
references:
Williams 4,299,264 Nov. 10, 1981
Miller 4,456,046 Jun. 26, 1984
Shiraishi 5,054,530 Oct. 08, 1991
THE REJECTIONS
The Examiner rejected claims 1 to 4, 9 to 11, 16, 17, 19 and 21 under
35 U.S.C. § 102(b) as anticipated by Shiraishi; and claims 1 to 4, 9 to 11, 16, 17, 19
and 21 under 35 U.S.C. § 103 over the combination of Shiraishi, Williams and
Miller.3 (Answer, p. 3).
OPINION
The Appellant submits that for each of the rejections, the claims are grouped
together. (Brief, p. 3). Accordingly, claims 1 to 4, 9 to 11, 16, 17, 19 and 21 will
stand or fall together. We will limit our discussion to claim 1 as representative of the
rejected claims. See 37 CFR § 1.192(c)(7)(2001).
Appeal No. 2003-0332
Application 09/057,383
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The Examiner rejected claims 1 to 4, 9 to 11, 16, 17, 19 and 21 under
35 U.S.C. § 102(b) as anticipated by Shiraishi.
We note that Shiraishi describes a prior art tire that has straight grooves.
Specifically, Shiraishi discloses “[t]he tire of the prior art was prepared with the same
groove area ratio, groove pitch and groove depth as those of the tire of the present
invention. This tire was cut to form in its tread surface: transverse grooves of straight
shape having an angle of 30o on the grounding center line with respect to its
circumferential direction in the running direction of the tire.” (Col. 4, l. 67 to
col. 5, l. 5).
Appellant argues that Shiraishi distinguishes itself from the prior art that uses
straight grooves. (Reply Brief, p. 3). Appellant’s argument is an admission that it
was known in the prior art to form tires that includes grooves of a straight shape. A
tire tread surface with transverse grooves of straight shape having a constant angle of
30o on the grounding center line would meet the requirements of the claimed
invention.
Notwithstanding the above description of the prior art, the Examiner asserts
that Shiraishi discloses a pneumatic tire that renders the claimed invention
unpatentable. Specifically, the Examiner states :
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Application 09/057,383
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With respect to the tire tread, Shiraishi discloses a pneumatic tire
having a directional asymmetric tread comprising rows of blocks
including the middle block rows defined by circumferential grooves
2 and transverse grooves (lug grooves/lateral grooves) G wherein the
block rows are parallel to each other. The blocks, transverse grooves
and circumferential grooves are illustrated in figure 3 (one embodiment
of the invention of Shiraishi). Each block of each row has an side
surface which is inclined with respect to the transverse direction of the
tire (a side surface of a leading edge side portion which is inclined with
respect to a tire transverse direction). This inclined side surface of the
block is defined and formed by an inclined transverse groove. As
illustrated in figure 3, the inclined transverse grooves in the middle
block rows are relatively straight. Hence, the tire of Shiraishi, like the
claimed tire, has rows of blocks including a “first row of blocks” and a
“second row of blocks” wherein each block has a [sic, an] inclined side
surface defined by an inclined transverse groove.
With respect to ground contact configuration (the area of contact
between the tire and the road), Shiraishi teaches that the pneumatic tire
has a grounding surface (a ground contact configuration) wherein
the ground contact configuration has a leading edge F (a tire leading
edge side contour line of a ground contact configuration). The ground
contact configuration including its leading edge F is illustrated in figure
2. Hence, the tire of Shiraishi, like the claimed tire, has a ground
contact configuration having a tire leading edge side contour line.
With respect to the relationship between the tire tread and the
ground contact configuration, Shiraishi describes a constant angle

which requires that the angle
at one location is equal to the angle

at another location. In particular, Shiraishi teaches that an angle

between the transverse grooves and the leading edge of the grounding
surface is constant at individual eight ones of ten width wise
equidistantly divided sections of the grounding surface excepting the
two side sections. The relationship is indicated in figure 2 which
illustrate[s] angle
at each of [the] sections Z2-Z9 as being equal [to]
each other.
Answer, pp. 4-5 (emphasis original).
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Application 09/057,383
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We also agree with the Examiner that Shiraishi’s invention anticipates the
invention of claim 1.
The subject matter of claim 1 describes the relationship between two block
rows base upon the angle which is formed by the side surface of the leading edge side
end portion of each block of the first and second block rows and the tangent line to
the tire leading edge side contour line of the ground-contact configuration for the
respective block rows. This description does not require the leading edge side end
portion of the block rows to be straight. In fact, the claim only specifies that the
above described angles for each of the block rows are substantially equal to one
another. In another embodiment, the specification discloses that the absolute
difference between the two angles should be
5°. (Specification, p. 8). The variance
in the angle would result from differences in the structure (i.e. shape) of the blocks in
the rows. In other words, the variance in the angle for the block rows could result
from pitch of the leading edge of the block or result from curvature of the leading
edge of the block. During examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification. In re Morris, 127 F.3d
1048, 1053-54, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Appeal No. 2003-0332
Application 09/057,383
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Appellant argues that Shiraishi’s average angle  of the inclined grooves is not
constant, as is the case with
, because the transverse grooves are curved. Thus,
Shiraishi does not anticipate the claimed invention. (Brief, p. 8).
We are not persuaded by Appellant’s argument. As stated above, claim 1 does
not require the grooves to be straight. The claim specifies that the angles for the first
and second block rows are substantially equal. This language allows for some
variance in the angle. Shiraishi discloses the average angle  of the individual
sections for the inclined grooves in the common direction may be set at the constant
angle
and preferably vary by ± 3o. (Col. 3, ll. 46-50).
Appellant argues that claim 1 defines a relationship of angles A and B which is
different from the angle  in Shiraishi. Specifically, “[t]he angle A of one row and
the circumferential direction in a corresponding angle B on the other row in a
circumferential direction are made substantially equal to each other at one pair of
blocks of one pair of the circumferential rows. This means that the angles A and B of
the present invention are not intended to have a substantially constant angle value
such as the value
of Shiraishi throughout the widthwise or transverse direction.”
(Brief, p. 11).
Appeal No. 2003-0332
Application 09/057,383
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The subject matter of claim 1 does not specify a relationship for angles A and
B. In other words, the claimed subject matter does not preclude the angles A and B
from being constant throughout the widthwise or transverse direction.
Appellant argues that “[t]he Examiner’s rejection thus is predicated on taking
these continuous grooves [block rows between circumferential grooves 2] and
considering only a portion of them which, in the Examiner’s view, are relatively
straight given the depiction in Figure 3. (Reply Brief, p. 3).
Appellant’s argument is not persuasive. The subject matter of claim 1
describes the invention by describing the characteristics of two block rows and not the
entire tread design. Moreover, the claimed invention does not preclude curved
groves. (See above).
After reviewing the totality of the evidence before us, including consideration
of Appellant’s arguments, it is our determination that Shiraishi describes subject
matter that anticipates the subject matter of claim 1. See In re Schreiber, 44 USPQ2d
1429, 1433 (Fed. Cir. 1997). (“To anticipated a claim, a prior art reference must
disclose every limitation of the claimed invention, either explicitly or inherently.”)
The Examiner also rejected the subject matter of claims 1 to 4, 9 to 11, 16, 17,
19 and 21 under 35 U.S.C. § 103 over the combination of Shiraishi, Williams and
Miller. The Examiner added the Miller and Williams references to establish that a
Appeal No. 2003-0332
Application 09/057,383
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person of ordinary skill in the art would have recognized the suitability using linear
transverse grooves in a pneumatic tread design.
The Examiner states:
Shiraishi ‘prefers’ curved transverse grooves. However: The use of the
conventional linear transverse grooves for the one block row and the
other block row of Shiraishi is suggested by the prior art since (1)
Shiraishi (directed to a directional tire tread having excellent water
repellency) recognizes that variance from the constant angle alpha is
permitted (e.g. within ±5 degrees) and (2) linear transverse grooves
whose inclination angle changes from row to row is well known in the
tire art as evidenced by Williams (directed to a directional tire tread
having improved wet drainage and noise reduction) and Miller (directed
to a directional tire tread for evacuating water from the footprint/ground
contact configuration).
[Answer, p. 8].

We agree with the Examiner. Shiraishi’s admitted prior art, Miller and
Williams indicate that even if Shiraishi’s grooves must be curved, the curvature can
be minimal, such that the angles are substantially equal as required by the Appellant’s
claim. Therefore, it would have been obvious to a person of ordinary skill in the art to
determine suitable minimal degrees of curvature through no more than routine
experimentation. Discovery of the optimum or workable range through routine
experimentation does not impart patentability unless the results in the critical range
are unexpectedly good. See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 809, 10
USPQ2d 1843, 1847 (Fed. Cir. 1989); In re Geisler, 116 F.3d 1465, 1470, 43
Appeal No. 2003-0332
Application 09/057,383
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USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d 454, 456, 105 USPQ
233, 235 (CCPA 1955).
Upon careful review of the entire record including the respective positions
advanced by Appellant and the Examiner, we find that the Examiner has carried his
burden of establishing a prima facie case of obviousness and that this prima facie
case has not been effectively rebutted by Appellant. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468,
1471-1472, 223 USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we will sustain
the Examiner’s rejection.
CONCLUSION
The rejections of claims 1 to 4, 9 to 11, 16, 17, 19 and 21 under 35 U.S.C.
§ 102(b) as anticipated by Shiraishi; and claims 1 to 4, 9 to 11, 16, 17, 19 and 21
under 35 U.S.C. § 103 over the combination of Shiraishi, Williams and Miller are
affirmed.
Appeal No. 2003-0332
Application 09/057,383
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
JTS/kis
Appeal No. 2003-0332
Application 09/057,383
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SUGHRUE, MION, ZINN, MACPEAK & SEAS
2100 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20037-3202