Ex Parte Thiebaud

Patent Trial and Appeal Board

Apr 27, 2015

11988209 (P.T.A.B. Apr. 27, 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.
11/988,209 01/03/2008 Philippe Thiebaud 338180-00324 4403
35161 7590 04/28/2015
DICKINSON WRIGHT PLLC
1875 Eye Street, NW
Suite 1200
WASHINGTON, DC 20006
EXAMINER
DYE, ROBERT C
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
04/28/2015 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 PHILIPPE THIEBAUD
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Appeal 2013-007480
Application 11/988,209
Technology Center 1700
____________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 10–17 and 19–22 under 35 U.S.C. § 103(a) as being
unpatentable over Tsukagoshi (CA 2,018,565, issued Dec. 9, 1990) in view
of Ohashi (JP2002-046426, with English machine translation, published
Feb. 12, 2002) and Lagnier (US 5,783,002, issued July 21, 1998). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 10, the sole independent claim, is illustrative of the claimed
subject matter:
10. A tire tread comprising a rib extending in the
longitudinal direction of the tread, the rib delimited by axially
spaced grooves of the tread and having axially spaced
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Application 11/988,209
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longitudinal edges at respective said grooves, the rib including
a plurality of incisions each extending from one rib edge to the
other, each incision formed by opposing faces of tread material;
each incision comprising at least three parts, two of the parts
constituting essentially transverse parts oriented at an angle of
at least 60° to the tread's longitudinal direction and opening into
respective said grooves; another of the parts constituting an
essentially longitudinal part forming an average angle of no
more than 10° with the tread's longitudinal direction; each
essentially transverse part being bordered at one of its ends by
an essentially longitudinal part and at another of its ends by one
of a rib edge or an essentially longitudinal part; wherein:
the essentially longitudinal part being devoid of means
for blocking relative movement between the opposing faces
thereof in the thickness direction of the tread and in a direction
transverse to the thickness direction;
each essentially transverse part including, on the
respective opposing faces thereof, a blocking structure for
limiting the amplitude of relative movement between such
walls at least in the thickness direction of the tread, and
comprising at least one undulation, zigzag, or relief elements
engageable with one another, extending in the thickness
direction of the tread;
each essentially transverse part being entirely offset in
the tread’s longitudinal direction from any other essentially
transverse part of the same incision; and
a minimum distance between the essentially transverse
parts of the same incision is between 15% and 35% of the
average distance between successive incisions.
App. Br. 1, Claims App. (emphasis added).
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
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Application 11/988,209
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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) (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)).
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant that the Examiner has not met the
burden in this case. A preponderance of the evidence supports Appellant’s
assertions that the Examiner’s rejection is de facto based on improper
hindsight in proposing to modify the sipes 36 (incisions) of Tsukagoshi’s
Fig.5a so as to exclude any means for blocking relative movement in the
longitudinal part of the incisions and provide blocking structures located in
the transverse parts (relying on Ohashi and Lagnier) and a minimum
distance between essentially transverse parts of the same incision/sipe being
between 15% and 35% of the average distance between successive
incisions/sipes, thus resulting in the tire tread required by claim 10 (App.
Br.; Reply Br., generally).
The Examiner concludes that it would have been obvious to optimize
the relationship/ratio of this distance to the distance K (which is the distance
between adjacent sipes) since Tsukagoshi “does suggest increasing or
decreasing K to control rib rigidity/drainage performance” and the relative
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Application 11/988,209
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sizes depicted in Fig. 5a “would obviously result in a ratio range which
overlaps with the claimed range” (Ans. 10, see also Ans. 11).
A preponderance of the evidence, however, supports Appellant’s
position that the Examiner is amiss in relying upon Fig. 5a of Tsukagoshi to
teach the claimed relationship of “a minimum distance between the
essentially transverse parts of the same incision is between 15% and 35% of
the average distance between successive incisions” (App. Br. 5, 6; Reply Br.
2, 3). As detailed by the Appellant in the Briefs, precedent supports that “no
conclusions can properly be drawn from the not-to-scale drawings of
Tsukagoshi regarding the relationship between the distance between
transverse parts of a single incision and the distance between successive
incisions” (App. Br. 6, see also App. Br. 7 (“nowhere does Tsukagoshi teach
or suggest a relationship between K and the distance between essentially
transverse parts of the same incision”)). “[I]t is well established that patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222
F.3d 951, 956 (Fed. Cir. 2000); In re Olson, 212 F.2d 590, 592 (CCPA
1954) (“Ordinarily drawings which accompany an application for a patent
are merely illustrative of the principles embodied in the alleged invention
claimed therein and do not define the precise proportions of elements relied
upon to endow the claims with patentability.”); see also Nystrom v. Trex
Co., 424 F.3d 1136, 1148‒49 (Fed. Cir. 2005).
Although optimization of a variable known to be result effective is
generally prima facie obvious, as the predecessor to our reviewing court
explained over thirty years ago, “[w]e have found exceptions to this rule [set
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Application 11/988,209
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forth in In re Aller, 220 F.2d 454 (CCPA 1955)] in cases where the results of
optimizing a variable, which was known to be result effective, were
unexpectedly good. . . . This case, in which the parameter optimized was
not recognized to be a result-effective variable, is another exception.” In re
Antonie, 559 F.2d 618, 620 (CCPA 1977). A preponderance of the evidence
supports Appellant’s position that the Examiner has not established that the
relationship required in claim 10 was a known result effective variable.
Accordingly, we agree with Appellant that the Examiner has not
supplied sufficient factual underpinnings for modifying Tsukagoshi, or
optimizing the aforementioned relationship, absent the use of impermissible
hindsight. KSR, 550 U.S. at 421.
Thus, we are constrained to reverse the Examiner’s § 103 rejection on
appeal.
CONCLUSION
In summary, the appealed rejection is reversed.
REVERSED