14020438 (P.T.A.B. Aug. 2, 2017)

Ex Parte Volk et al

Patent Trial and Appeal BoardAug 2, 2017

14020438 (P.T.A.B. Aug. 2, 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. 14/020,438 09/06/2013 Heiner Volk P2011-025 6243 47988 7590 08/02/2017 Walter Ottesen, P.A. PO BOX 4026 GAITHERSBURG, MD 20885-4026 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 08/02/2017 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 HEINER VOLK, REINHARD LUDWIG, and CHRISTIAN WEBER1 ____________ Appeal 2016-007131 Application 14/020,438 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, MARK NAGUMO, and JANE E. INGLESE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s final rejections under 35 U.S.C. § 103(a) of sole independent claim 1 as unpatentable over Takasugi (EP 1 016 555 A2, July 5, 2000)2 in view of Boileau (US 3,406,733, Oct. 22, 1968) and/or Dudek (US 4,044,811, Aug. 30, 1977) and of dependent claims 2–9 and 11–13 as unpatentable over these 1 Continental Reifen Deutschland GmbH is identified as the real party in interest. App. Br. 2. 2 In order to be consistent with the Examiner and Appellants, we refer to this reference as “Takasugi” even though such is the name of the last, rather than the first, listed inventor. Appeal 2016-007131 Application 14/020,438 2 references alone or in combination with an additional prior art reference. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appellants claim a pneumatic vehicle tire comprising a tread base 6 having a central segment 6a and two lateral segments 6b wherein the lateral segments have “a lower dynamic elastic modulus . . . than the central segment” (claim 1, Fig. 1). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. Claim 1. A pneumatic vehicle tire comprising: a radial ply carcass; an at least single-layer belt and a tread, which is comprised in the radial direction of two layers made from different rubber compounds; and, a tread cap and a tread base; wherein the tread base viewed in the axial direction has at least directed radially outwardly, a central segment and two lateral segments; wherein the two lateral segments are made from a rubber compound that has a lower dynamic elastic modulus E' at 55°C according to DIN 53513 (measured at 8% extension) and a lower hysteresis than the central segment of the tread base; and, wherein the rubber compound of the two lateral segments has a filler content of less than 50 phr and the rubber compound of the central segment has a filler content of more than 55 phr. In rejecting claim 1, the Examiner states that: “Takasugi teaches a pneumatic tire construction comprising . . . a center base tread 4b1 [corresponding to the claimed central segment], and a pair of shoulder base treads 4b2 [corresponding to the claimed lateral segments], wherein said center base tread is formed with a composition demonstrating higher modulus . . . compared to said shoulder base treads (Abstract and Paragraph 5)” Appeal 2016-007131 Application 14/020,438 3 (Final Act. 2). The Examiner’s statement reflects that Takasugi’s shoulder base treads have a lower modulus than the center base tread, thereby satisfying the claim 1 requirement that the lateral segments have a lower modulus than the central segment. However, as Appellants indicate (App. Br. 8–9), the Takasugi disclosures cited by the Examiner do not support this statement necessarily or unambiguously. Furthermore, the statement is contradicted by the immediately subsequent finding of the Examiner that “the reference fails to compare the dynamic modulus of [Takasugi’s] respective tread portions [i.e., the dynamic moduli of the shoulder base treads compared to the center base tread]” (id.). This last finding is supported by the cited disclosures of Takasugi. In light of the foregoing, we determine that the above quoted finding is supported by a preponderance of evidence and therefore correct whereas the contradictory statement preceding this finding is not. The Examiner appears to have made this contradictory and erroneous statement improvidently. Regarding Takasugi’s failure to compare the dynamic moduli of the shoulder base treads to the center based tread, the Examiner states “it is extremely well known that modulus and hardness have a positive relationship with one another in that rubber compositions demonstrating superior hardness properties generally demonstrate superior modulus properties” (id. citing Boileau and Dudek as evincing this relationship). The Examiner then states “[a]s such, one of ordinary skill in the art at the time of the invention would have found it obvious to form [Takasugi’s] respective shoulder base treads with a greater modulus than said central [sic, center] base tread” (id. (emphasis added)). Appeal 2016-007131 Application 14/020,438 4 The Examiner’s obviousness conclusion would result in a greater modulus, rather than a lower modulus as claimed, for the shoulder base treads (cf. the claimed lateral segments) relative to the center base tread (cf. the claimed central segment). As a consequence, the conclusion of obviousness expressed by the Examiner fails to establish a prima facie case of unpatentability for independent claim 1.3 To the extent the Examiner believes Takasugi’s shoulder base treads/regions inherently would possess a lower modulus than the center base tread/region, Appellants correctly point out that a prima facie case of inherency has not been established because such a lower modulus is not necessarily and inevitably present as both Appellants and the Examiner agree (App. Br. 9–10, Reply Br. 2–3, Ans. 3–4). For these reasons, we do not sustain the Examiner’s § 103 rejections of claims 1–9 and 11–13. The decision of the Examiner is reversed. REVERSED 3 The Examiner may have meant to conclude that it would have been obvious to form Takasugi’s shoulder base treads/regions with a lower modulus than the center base tread/region in light of Takasugi’s teaching that the former has a lower hardness range than the latter (see, e.g., Abst.). However, our decision must be based on the conclusion actually expressed by the Examiner rather than a conclusion the Examiner may have meant to express. Therefore, this decision will not address whether it would have been obvious to provide Takasugi’s shoulder regions with a lower modulus than the center region as required by claim 1.