Ex Parte Volk et al

Patent Trials and Appeals Board

Feb 21, 2019

14020438 - (D) (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/020,438 09/06/2013 Heiner Volk
47988 7590 02/21/2019
Walter Ottesen, P.A.
POBOX4026
GAITHERSBURG, MD 20885-4026
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P201 l-025 6243
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
02/21/2019 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 WEBER 1
Appeal2018-004104
Application 14/020,43 8
Technology Center 1700
Before BRADLEY R. GARRIS, MARK NAGUMO, and JANEE.
INGLESE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections under 35 U.S.C. § 103(a) of sole independent claim 1 as
unpatentable over Iida/Takasugi2 (EP 1 016 555 A2 published July 5, 2000)
1 Appellant is the Applicant, Continental Reifen Deutschland GmbH, which
is identified as the real party in interest (Appeal Br. 2).
2 Because this reference is referred to as "Iida" by Appellant and as
"Takasugi" by the Examiner, we will refer to the reference as
"Iida/Takasugi."
Appeal2018-004104
Application 14/020,438
in view of Boileau (US 3,406,733 issued October 22, 1968) and/or Dudek
(US 4,044,811 issued August 30, 1977) and of dependent claims 2-9 and
11-13 as unpatentable over these references alone or in combination with an
additional prior art reference. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellant claims a pneumatic vehicle tire comprising, inter alia, a
tread base 6 having a central segment 6a and two lateral segments 6b,
wherein the two lateral segments are made from a rubber compound having
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.
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.
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Appeal2018-004104
Application 14/020,438
The subject rejection of claim 1 corresponds to a prior rejection
except that the subject rejection proposes a lower modulus for the lateral
segments of Iida/Takasugi than the central segment as claimed whereas the
prior rejection proposed a greater modulus. In our Decision ( dated August
2, 2017), we did not sustain the prior rejection because the Examiner's
proposed modification would have resulted in a greater modulus rather than
the lower modulus required by claim 1 (Dec. 3--4).
In the subject rejection, the Examiner incorrectly finds that
Iida/Takasugi teaches a center tread base "demonstrating higher modulus"
than the shoulder/lateral segments which is contradicted by the immediately
subsequent and correct finding that "the reference fails to compare the
dynamic modulus of respective tread portions" (Non-final Action (dated
August 31, 2017) 3). The prior rejection included this same incorrect and
contradicted finding, which we identified in our prior Decision (Dec. 2-3).
The Examiner does not provide the appeal record with any reason why the
subject rejection re-presents a finding that is identified as erroneous in our
prior Decision.
The Examiner states that "rubber compositions demonstrating
superior hardness properties generally demonstrate superior modulus
properties" (Non-final Action 3 (italics added)). The Examiner also states
that "[Iida/Takasugi's] shoulder base tread 4b2 can have a hardness as low
as JIS 50 and center base tread 4b 1 can have a hardness as large as JIS 80
(Abstract) ... [which] further suggests the presence of the shoulder base
tread having significantly inferior or smaller mechanical properties, such as
modulus" (id. at 4). The Examiner concludes without embellishment that,
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Appeal2018-004104
Application 14/020,438
"[a]s such, one of ordinary skill in the art at the time of the invention would
have found it obvious to form [Iida/Takasugi's] respective shoulder base
treads with a smaller modulus than said central base tread" (id.).
Regarding the Examiner's above first-quoted statement, Appellant
correctly points out that, "if the [superior] modulus properties are only
generally present [ when superior hardness properties are present,] there must
be cases in which rubber compositions do not have superior modulus
properties [even] if the hardness properties are superior" (Appeal Br. 18-
19). In light of this point, Appellant argues "[Iida/Takasugi], even when
considered in combination with the evidentiary disclosures of Boileau and
Dudek et al., does not disclose or suggest [the lower modulus requirement]
... recited in independent claim 1" (id. at 19).
We agree with Appellant. The Examiner's above quoted obviousness
conclusion is merely a conclusory statement that lacks articulated reasoning
with rational underpinning supported by evidence as to why one with
ordinary skill in this art would have formed Iida/Takasugi's shoulder/lateral
segments with a smaller modulus than the central segment. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness") cited with approval in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007).
At most, the Examiner has established only that providing
Iida/Takasugi's shoulder/lateral segments with a lower hardness than the
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Appeal2018-004104
Application 14/020,438
central segment would generally, but not necessarily and inevitably, result in
a lower modulus as claimed. However, such a result is inadequate to
establish a prima facie case of inherency as explained in our prior Decision
(Dec. 4). See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195-
96 (Fed. Cir. 2014) ("[I]n order to rely on inherency to establish the
existence of a claim limitation in the prior art in an obviousness analysis-
the limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art.").
For the above-stated reasons, we do not sustain the Examiner's§ 103
rejections of independent claim 1 and dependent claims 2-9 and 11-13.
The decision of the Examiner is reversed.
REVERSED
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