Ex Parte Zelin et al

Board of Patent Appeals and Interferences

Jan 12, 2010

11183511 (B.P.A.I. Jan. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL GREGORY ZELIN,
ITALO MARZIALE SINOPOLI, and
THOMAS WALTER STARINSHAK
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Appeal 2009-003110
Application 11/183,511
Technology Center 1700
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Decided: January 12, 2010
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Before CHUNG K. PAK, TERRY J. OWENS, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-003110
Application 11/183,511

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A. Introduction1
Michael Gregory Zelin, Italo Marziale Sinopoli, and Thomas Walter
Starinshak (“Zelin”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection2 of claims 1 and 3-16.3 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
The subject matter on appeal relates to a pneumatic tire having at least
one ply reinforced with filaments having both a diameter in a certain range
and a minimum tensile strength.
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. A pneumatic tire comprising
a carcass,
a tread disposed outward of the carcass, and
a belt structure that is interposed between the tread and
the carcass, the belt structure comprising
multiple reinforcing plies wherein at least one ply
is reinforced with metallic cords, the cords being
comprised of filaments, the tire characterized by

1 Application 11/183,511, Pneumatic Tire with Large Filament Cords,
filed 18 July 2005. The specification is referred to as the
“511 Specification,” and is cited as “Spec.” The real party in interest is
listed as The Goodyear Tire & Rubber Company. (Appeal Brief, filed
30 June 2008 (“Br.”), 3.)
2 Office action mailed 11 December 2007 (“Final Rejection”; cited
as “FR”).
3 Claim 18 has been withdrawn from consideration and is not before us.
(FR, cover sheet.)
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Application 11/183,511

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at least one filament forming the cord
having a diameter (D) ranging
from 0.50 to 0.65 mm and
having a tensile strength of at least
-2000D+4400 MPa, wherein D is the
filament diameter in mm.
(Claims App., Br. 9; paragraphing and indentation added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 1, 3, 6, and 8-11 stand rejected under
35 U.S.C. § 103(a) in view of Yokohama.5
B. Claim 4 stands rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Yokohama and
Poque.6
C. Claims 5, 7, and 12-16 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Yokohama and Kim.7
Zelin raises three objections to the Examiner’s rejection of claim 1
based on Yokohama. Inasmuch as Zelin asserts no other basis for the
patentability of any of the other rejected claims, all claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii). First, Zelin argues that although the

4 Examiner’s Answer mailed 7 August 2008. (“Ans.”).
5 Yokohama Rubber Co., Ltd., Pneumatic Radial Tyre, JP 9-52503 (1997)
(Derwent Abstract), cited below as “Hotta.” As neither the Examiner nor
Zelin appear to have relied on the translations provided with the Brief and
with the Examiner’s Answer, we rely solely on the Derwent Abstract.
6 Dionysius J. Poque and Manfred Gerresheim, Pneumatic Vehicle Tire,
U.S. Patent 4,724,881 (1988).
7 Dong Kwang Kim and Amit Prakash, Tires with High Strength
Reinforcement, U.S. Patent 6,247,514 B1 (2001).
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Examiner finds that Yokohama describes a tire comprised of a filament
having a diameter of 0.6 mm and a tensile strength of at least 2,844 MPa,
Yokohama “does not disclose a filament with a tensile strength being at least
-2000D + 4400 Mpa.” (Br. 5.) Zelin appears to argue, via rhetorical
questions, that the Examiner has not provided an adequate rationale
supporting the argument that selecting a fiber having a tensile strength and
diameter required by claim 1 would have been obvious in view of the
teachings of Yokohama. (Id. at 5-6.) Second, Zelin argues that Yokohama
does not disclose fibers having both the required diameter and the required
tensile strength. (Id. at 6, 2d full para.) Zelin argues further that even if
Yokohama did describe one such filament, the rejection would fail because
the Examiner has ignored or misconstrued the breadth of the “relationship of
ranges” recited in the claim. (Id.) Finally, Zelin argues that Yokohama fails
to disclose filaments having a diameter in the range of 0.60 to 0.65 mm, so
“part of the range and that part’s relationship to tensile strength has been
ignored by the Examiner.” (Id., penultimate para.)
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 511 Specification
1. The 511 Specification teaches that belt plies of passenger vehicle tires
perform multiple functions, including limiting tire growth, and contributing
to tire strength, desirable foot print shape, stiffness, tread wear, and puncture
resistance. (Spec. 1, ¶ [0002].)
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2. The 511 Specification states further that “cords used to form the belt
plies have conventionally been formed from filaments having a diameter in
the range of 0.10 to 0.45 mm” to optimize belt ply thickness and strength.
(Spec. 1, ¶ [0002].)
3. In the words of the 511 Specification, “[w]ith the advent of steel
filaments of greater tensile strength for given diameters, the industry has
looked at various ways of using the greater tensile strength wires for
reinforcement plies.” (Spec. 1, ¶ [0003].)
4. The 511 Specification provides definitions of “High Tensile Strength
Steel (HT),” Super Tensile Strength Steel (ST),” “Ultra Tensile Strength
Steel (UT),” and “Mega Tensile Strength Steel (MT).” (Spec. 2, ¶ [0010].)
5. Super Tensile Strength Steel is said to be characterized by the
equation TS = 4050-2000D, where D is the filament diameter. (Spec. 2,
¶ [0010].)
6. Ultra Tensile Strength Steel is said to be characterized by the equation
TS = 4400-2000D, where D is the filament diameter. (Spec. 2, ¶ [0010].)
7. Mega Tensile Strength Steel is said to be characterized by the
equation TS = 4900-2000D, where D is the filament diameter. (Spec. 2,
¶ [0010].)
8. The 511 Specification does not teach the compositions or methods of
making filaments having the required diameter and tensile strength from the
various strength steels, nor is a source of such filaments identified.
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Yokohama
9. The Derwent Abstract of Yokohama describes a pneumatic radial tire
having a belt layer formed with brass-plated steel cords made with a steel
wire having a diameter of 0.1 to 0.6 mm and a tensile strength of more
than 290 kg per mm2.
C. Discussion
As the Appellant, Zelin bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d
977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness”) (citation and internal quote omitted). Arguments
not timely presented have been waived. 37 C.F.R. § 41.37(c)(1)(vii), second
sentence.
Zelin does not dispute the Examiner’s findings that Yokohama
describes a pneumatic tire having the required structural features, other than
the filaments. Nor does Zelin dispute the Examiner’s determination that a
tensile strength of 290 kg/mm2 is about 2844 MPa. Accordingly, we accept
these facts as conceded.
Rather, Zelin argues that the Examiner failed to establish prima facie
obviousness because Yokohama “does not disclose a filament with a tensile
strength being at least -2000D + 4400 Mpa.” (Br. 5.) Although Yokohama
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may not have specifically mentioned such a filament,8 as explained infra, we
are not persuaded that Zelin, by pointing out the lack of this specific
teaching, has demonstrated harmful error in the Examiner’s rejection.
Zelin argues further that the Examiner has not articulated a rational
underpinning in support of the legal determination of obviousness. (Br. 5.)
We find this objection, as far as it goes, difficult to understand. We
understand the Examiner to have argued, albeit somewhat tersely, that it
would have been obvious to a person having ordinary skill in the art to
follow Yokohama’s express invitation to make tires using steel wires having
a diameter of up to 0.6 mm and a tensile strength greater than 2844 MPa.
On the present record, such a person would have had a reasonable
expectation of successfully employing known higher tensile strength steels
in tire cords based on the teachings of Yokohama. Zelin’s own
511 Specification indicates that such known steel filaments include filaments
made from Ultra Tensile Strength Steel and Mega Tensile Strength Steel.
(Spec. 2, ¶ [0010].) Because both UT and MT filaments of appropriate
diameter, i.e., from 0.50 to 0.60 mm, would meet the criteria specified by
Yohohama, and would also result in tires covered by claim 1, the claimed
invention would have been prima facie obvious.
It is well settled, as stated by our reviewing court, that “[i]n order to
render a claimed apparatus or method obvious, the prior art must enable one
skilled in the art to make and use the apparatus or method.” Beckman

8 If Yokohama did disclose the use of such a filament in the described tyres,
the rejection would presumably have been under § 102(b), for anticipation,
rather than obviousness.
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Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.
Cir. 1989), citing In re Payne, 606 F.2d 303, 314 (CCPA 1979). Zelin,
however, has not argued, much less proved, that steel filaments having
diameters and tensile strengths in the recited range were not known to the
art. Had Zelin shown that the artisan, prior to Zelin’s filing date, was unable
to make or obtain such filaments, it would have been necessary to reverse
the Examiner’s rejection. However, not only did Zelin not argue that the
critical filaments were unknown, Zelin’s own 511 Specification indicates
that such filaments were in fact commercially available or readily prepared
by those skilled in the art.
Obviousness is a legal conclusion based on factual findings. What
may be obvious at a given time, based on an open-ended description of a
range of a property such as tensile strength, is limited by what is enabled at
that time. Both the Examiner and Appellants would be well-advised to pay
attention—and to call attention—to facts in the record that support all
arguments for and against patentability.
On the present record, we conclude that Zelin has not shown harmful
error in the Examiner’s failure to dot every “i” in a formal statement of the
rejection.
Zelin’s second and third arguments are without merit. It is elementary
patent law that a claim that encompasses any subject matter that was known
or that would have been obvious at the time the invention was made is not
patentable.
As noted supra, all claims fall with claim 1.
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D. Order
We AFFIRM the rejection of claims 1, 3, 6, and 8-11 under
35 U.S.C. § 103(a) in view of Yokohama.
We AFFIRM the rejection of claim 4 under 35 U.S.C. § 103(a) in
view of the combined teachings of Yokohama and Poque.
We AFFIRM the rejection of claims 5, 7, and 12-16 under
35 U.S.C. § 103(a) in view of the combined teachings of Yokohama and
Kim.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

PL Initial:
sld

THE GOODYEAR TIRE & RUBBER COMPANY
INTELLECTUAL PROPERTY DEPARTMENT 823
1144 EAST MARKET STREET
AKRON, OH 44316-0001