Ex Parte Zimmer et al

Board of Patent Appeals and Interferences

Feb 29, 2008

10024869 (B.P.A.I. Feb. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte RENE JEAN ZIMMER
and CLAUDE ERNEST FELIX BOES
______________

Appeal 2007-4308
Application 10/024,869
Technology Center 1700
_______________

Decided: February 29, 2008
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
THOMAS A. WALTZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 18 in the Office Action mailed
December 30, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2005).
We affirm-in-part the decision of the Primary Examiner.

Appeal 2007-4308
Application 10/024,869
Claim 1 illustrates Appellants’ invention of a tire with at least one
radially outer component having projections, and is representative of the
claims on appeal:
1. A tire having a plurality of radially outer rubber components, the
components defining a radially outer surface (SI) of the tire and being
exposed to fluids having a relative displacement with respect to the rotating
tire, the tire comprising at least one radially outer component having
projections, the projections being defined by first sides (2) and second sides
(2') of unequal length, the first sides (2) having the greater length, delimiting
therebetween an angle α ranging from 5° to 60° and forming at their
intersection an apex (P), which protrudes by a height (h) from the radially
outer surface (SI) from which said first and second sides originate, the
second side (2') forming with the outer surface (SI) an undercut extending
beneath the apex (P), and the height (h) ranging from 0.2 to 100 micrometers
and in more than 75% of the projections, any plane tangent to the first side
(2) of the projection cutting the radially outer surface (SI) at an acute angle.
The Examiner relies upon the evidence in these references (Ans. 4):
Drews (Drews ‘290) 4,180,290 Dec. 25, 1979
Drews (Drews ‘302) 4,284,302 Aug. 18, 1981
Löbert 4,750,693 Jun. 14, 1988
Baker 5,603,796 Feb. 18, 1997
Kemp 5,848,769 Dec. 15, 1998
Fronek 6,253,815 B1 Jul. 3, 2001
Ohsawa US 2001/0032691 A1 Oct. 25, 2001
Tanimoto1 JP 06-040219 A Feb. 15, 1994

1 We refer to the translation of Tanimoto prepared by the USPTO (2007-
001039 November 24, 2006).
2
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Application 10/024,869
Appellants request review of the following grounds of rejection under
35 U.S.C. § 103(a) (Br. 3) which have been advance by the Examiner on
appeal as follows2 (Ans. 3):
Claims 1, 2, 5 through 9, 14, 15, and 18 as unpatentable over Drews ‘302 in
view of Froenk and optionally Drews ‘2903 (Ans. 5);
Claims 15, 16, and 18 as unpatentable over Drews ‘302 in view of Fronek
and optionally Drews ‘290 as applied, and further in view of Kemp (Ans. 9).
Claim 17 as unpatentable over Drews ‘302 in view of Froenk and optionally
Drews ‘290 as applied, and further in view of Tanimoto and Baker (Ans. 9);
and
Claims 1 through 16, and 18 as unpatentable over Ohsawa in view of Löbert
and Drews ‘3024 (Ans. 10).
Appellants argue the claims in the first ground of rejection as a group
and further separately argue claims 2, 5, and 6. Br. 4-9. Appellants argue
the claims in the second ground of rejection as a group and further separately
argue claim 15. Br. 11-12. Appellants argue the claims in the fourth
ground of rejection as a group and further separately argue claims
3 and 4, claim 5, claim 6, claim 7, claim 8, claim 9, claims 10 through 13,
claim 14, claim 15, claim 16 and claim 18. Br. 11-14. Thus, we decide this
appeal based on claims 1, 16, and 17 as representative of the four grounds of

2 The Examiner has withdrawn the following grounds of rejection under
§ 103(a) (Ans. 3):
Claim 3 as unpatentable over Drews ‘302, , and optionally Drews ‘290, in
view of Rethorst; and
Claims 10 through 13, 16 and 18 as unpatentable over Drews ‘302, , and
optionally Drews ‘290, in view of Heinen or Ohsawa.
3 The Examiner has withdrawn this ground of rejection with respect to claim
4. Ans. 3.
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rejection and on the other separately argued claims to the extent argued in
the Brief. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
The issues in this appeal are whether the Examiner has carried the
burden of establishing a prima facie case in each of the grounds of rejection
advanced on appeal.
Independent claim 1 is drawn to a tire defined by certain structure
described by its shape. The terms used in this respect are given their
broadest reasonable interpretation in their ordinary usage in context as they
would be understood by one of ordinary skill in the art, in light of the written
description in the Specification, including the drawings, without reading into
the claim any disclosed limitation or particular embodiment. See, e.g., In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris,
127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22
(Fed. Cir. 1989).
With reference to, e.g., Fig. 1, the tire of claim 1 comprises at least,
among other things, two or more radially outer rubber components that
define a radially outer surface SI, wherein at least one of the radially outer
rubber components has at least 2 projections. The term “radially outer
surface” is defined in the Specification “as following the radially most
exterior surface of the tire bare of any projections according to the
invention.” Spec. ¶ 0012. Thus, a radially outer component that in part
defines the radially outer surface SI is any structure on any most exterior

4 The Examiner has modified this ground of rejection by withdrawing Drews
‘290 and Nakamura (JP 11-059135 A). Ans. 3.
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Application 10/024,869
surface of the tire, including any part of the tread, e.g., dependent claim 10,
or sidewall, e.g., dependent claim 14, and is a structure that can have
projections. Therefore, the radially outer component containing the
projections is the radially outer surface SI at that part of the tire on which it
is located. Thus, we hereinafter refer to the radially outer component and
the radially outer surface SI at any location as the radially outer component
SI for that location.
Each projection of radially outer component SI has long side 2 and
short side 2' that originate from any point on the surface of radially outer
component SI and intersect at apex P, forming an angle α of from 5º to 60º,
and protruding over the surface of radially outer component SI by height h
of from 0.2 to 100 micrometers (µm).
The shape of the surface of long side 2 is limited only by the required
relative orientation of the surfaces of long side 2 and of radially outer
component SI that in more than 75% of the projections, any plane tangent to
any common point on the surface of first side 2, from the point of origination
on radially outer component SI to its highest point at apex P, must cut the
surface of radially outer component SI at an acute angle, that is, at less than
90º.5
The shape of the surface of short side 2' and the surface of radially
outer component SI is limited only by the requirement that the second side 2'
and the surface of radially outer component SI form an “undercut” extending

5 We suggest the Examiner consider whether this relationship is exhibited in
Figs. 2, 3, 7, and 9, wherein the region of apex P is a curved line, in
considering the scope of the claims upon any further prosecution of the
appealed claims subsequent to the disposition of this appeal.
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beneath apex P. As the Examiner points out, the term “undercut” is not
defined in the Specification. Ans. 5. Appellants did not refer to any portion
of the Application in amending the independent claims to include this
limitation. Amendment filed August 16, 2004 at 5. It seems to us the
Specification Figures provide an indication that an “undercut,” that is,
“create an overhang by cutting material away from” as the term is commonly
used,6 is formed by the second side 2' and the surface of radially outer
component SI that extends under apex P. See Spec. Figs., e.g., 1-6 and 8A-
D. However, we find no basis in the language of claim 1 or in the
Specification and the drawings in the Figures on which to read the apparent
stylized structures illustrated in the Figures into the claim as limitations.
See, e.g., Zletz, 893 F.2d at 321-22. Indeed, the illustrations in the Figures
show precise shapes for the second side 2' and the surface of the radially
outer component SI which would not reasonably be expected to be replicated
per se when the rubber tire containing the radially outer component
containing the projections is prepared via a mold, e.g., independent claim 16,
or tape, e.g., independent claim 17. Thus, in giving these terms of claim 1
their broadest reasonable interpretation, we determine the “undercut” is any
space under apex P creating an “overhang” to any extent that is defined in
any manner by any combination of the surfaces of second side 2' and of
radially outer component SI. Therefore, the height h is the height of the
undercut.

6 See, e.g., undercut, The American Heritage Dictionary of The English
Language 1875 (4th ed., Boston, Houghton Mifflin Company, 2000).
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Independent claim 16 is drawn to a mold for manufacturing a rubber
tire wherein the mold comprises surfaces imparting at least two radially
outer rubber components having at least 2 projections defined in the same
terms used in claim 1. Independent claim 17 is drawn to a process of
making a rubber tire with a tape providing projections protruding from the
surface thereof wherein the tape is adhered to the radially outer rubber
component of a rubber tire and the projections are defined in the same and
similar terms used in claim 1.
We now turn to the grounds of rejection based on Drews ‘302 as the
primary reference. We find Drews ‘302 would have disclosed to one of
ordinary skill in this art an exterior surface of, e.g., an automobile or land
vehicle including the sidewalls of its tires, that is formed with a series of
adjacent wave-shaped grooves or flutes which increase propulsion efficiency
by reducing opposing forces acting on the vehicle, that is, by reducing drag.
Drews ‘302, e.g., Abstract, col. 1, ll. 6-10 and 11-27, col. 3, ll. 44-50, and
Fig. 1. This person would have recognized that the term “flute” is used in
context in its common, architectural sense of “[a] long, usually rounded
groove incised as a decorative motif on the shaft of a column.”7 Drews ‘302
illustrates in, e.g., Fig. 4, a vehicle surface with a series of similar individual
flutes 9 which include a depression or trough 16 that “progressively moves
and curves upwardly and rearwardly to a sharp crest 17 merging with the
next trough.” Drews ‘302 col. 4, ll. 13-27. The series of flutes can be
molded. Id., e.g., 52-54. Drews ‘302 discloses that “the tires 11 may be

7 See, e.g., flute, The American Heritage Dictionary of The English
Language 678.
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advantageously formed with similarly treated sidewalls,” which tires
“formed of molded rubber may be constructed with the desired configuration
integrally molded into the sidewalls, as shown for example in FIGS. 5 and
6.” Id., col. 5, ll. 12-17. In the embodiment illustrated in Fig. 5, the sidewall
“is shown with a plurality of radially directed flutes 21 which extend
substantially radially of the wheel axle.” Id., col. 5, ll. 18-21. Drews ‘302
discloses that “the same surface treatment [shown in FIGS. 1-4] may be
applied to any article moving through a field [sic, fluid],” such as air. Id.,
col. 5, l. 53 to col. 6, l. 4. Drews ‘302 discloses a further modification of the
tire sidewall in Figs. 7 and 8, in which “[a]s the wheel rotates the finger
members 28 [sic, 23] tend to deflect backwardly generally forming a curved,
wave-shaped portion, and in combination define the fluted portion.” Id., col.
6, ll. 34-49.
We agree with the Examiner that one of ordinary skill in this art
would have observed from Fig. 4 that adjoining flutes 9 form an apex at
sharp crest 17, wherein the side of the first flute 9 forming the first part of
sharp crest 17 is longer than the side of the second flute 9 forming the
second part of the crest; the sides of the flutes 9 forming at sharp crest 17 a
small acute angle; the sharp crest 17 protrudes over the layer containing the
flutes 9, which layer is the radially outer surface of the tire at that location
and is the layer from which the sides of the first and second flutes 9
originate; and the side of the second flute 9 and the layer containing the
flutes 9 form an undercut extending under the apex at sharp crest 17. Ans. 5.
We further agree with the Examiner that this person would have further
observed from Fig 4 that any tangent from a point on the side of the first
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flute 9 forming the first part of the apex at crest 17 would cut the layer
containing the flutes 9 at an acute angle. Ans. 6.
Drews ‘302 discloses “a surface with generally wave-shaped flutes
provide an improved surface for reducing of the opposing forces on the
vehicle” with “relatively minute flute surfaces.”8 Drews ‘302, col. 3, l. 53
to col. 4, l. 4. Drews ‘302 discloses “flutes 9 . . . successively directs the air
upwardly and thus acts as minute screen generators which minimize the
build-up of impact pressures and establish a minimal resistance to the
movement of the vehicle.” Id., col. 4, ll. 29-34. Drews ‘302 discloses with
respect to Figs. 1-4 that “it is contemplated that very minute depths would be
used” which in “practical implementation” “may be even significantly
smaller [than 1/16 to ⅛ inch] and in some cases may advantageously be
microscopic.” Id., col. 5, ll. 30-39, and col. 8, ll. 28-36. We find “1/16 to ⅛
inch” is 1587.5 to 3175 µm. Drews ‘302 discloses that “size is not
considered critical, but will normally be as small as practical to produce the
desired interaction.” Id., col. 8, ll. 36-38.
In addition to molded fluted wall structures, including rubber tires
with the structures integrally molded into the sidewall (see above p. 7),
Drews ‘302 discloses that the fluted structures can be “formed in any desired
manner” but are “advantageously formed and applied as a separate foil-like
cover member which is laminated to or otherwise secured to the vehicle by
an adhesive,” wherein the “foil-like cover member may have the flutes 9 . . .

8 In these respects, Drews ‘302 refers to “the inventors [sic] copending
application” which is S.N. 798,417, filed May 16, 1977, that matured into
Drews ‘290. See Drews ‘302 col. 1, ll. 11-18.
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Application 10/024,869
integrally formed with a continuous base sheet 37 adapted to be adhesively
secured.” Drews ‘302 col. 5, ll. 40-52.
We find Fronek would have disclosed to one of ordinary skill in this
art an article for reducing drag caused by, among other things, air flowing
over the surface of a motor vehicle, wherein the article has “a series of
essentially peaks and valleys, although a variety of wave forms within the
description are possible so long as they reduce the drag caused by” air
flowing over the surface of the vehicle to which the article is attached.
Froenk, e.g., Abstract, col. 1, ll. 5-7, and col. 2, ll. 24-29. Fronek illustrates
the article in, among others, Fig. 2 in which outer patterned layer 11 has a
series of peaks and valleys triangular in shape and can be about 5 to 250
microns, that is, micrometers, thick. Id. col. 4, ll. 40-42. Fronek discloses
that while “optimum dimensions are somewhat dependent upon the speed”
of the vehicle and the range of 5 to 250 µm is “useful,” “[t]he dimensions of
the peaks and valleys are not critical to the invention, provided that whatever
patterned surface is employed, it provides the desired reduction in drag.” Id.
col. 6, ll. 26-49. Fronek employs a microscope to examine the structure of
layer 11 of exemplary embodiments. Id., e.g., col. 10, ll. 37-40.
We find that Kemp would have disclosed to one of ordinary skill in
this art lettering on the sidewall of a tire as illustrated in Fig. 6, wherein the
lettering is formed from substantially asymmetric striae 157, 159
projections, as illustrated in Figs. 6-8, which can have a depth of
approximately 0.25 mm, that is, 250 µm, and provide illumination of the
lettering. The tire is prepared by molding. Kemp, e.g., Abstract, col. 2,
1l. 25-35, col. 5, l. 61 to col. 6, l. 36, and col. 10. ll. 24-35.
10
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A discussion of Drews ‘290, Tanimoto, and Baker is not necessary to
our decision with respect to the first three grounds of rejection9. See, e.g., In
re Jones, 958 F.2d 347, 349 (Fed. Cir. 1992); In re Kronig, 539 F.2d 1300,
1302-04 (CCPA 1976).
With respect to the first three grounds of rejection, we determine the
combined teachings of the basic combination of Drew ‘302 and Fronek, the
scope of which we determined above, provide convincing evidence
supporting the Examiner’s case that the claimed invention encompassed by
claims 1, 16, and 17, as we interpreted these claims above, would have been
prima facie obvious to one of ordinary skill in the tire manufacturing arts
familiar with the formation of structures on the sidewalls of tires. We
determine that one of ordinary skill in this art would have reasonably
inferred from the teachings of Drews ‘302 that the arrangement of flutes
illustrated in Fig. 4 thereof can be used on the sidewall of a rubber tire.10
See above pp. 7-8. We found that one of ordinary skill in the art would have
observed in the arrangement of flutes 9 in Fig. 4 of Drews ‘302 certain
structural features (see above p. 8), and determine that these structural

9 We have not considered Ohsawa and Löbert with the prior art applied to
claim 1 in the first ground of rejection because these references are cited by
the Examiner in this respect but are not included in the statement of this
ground of rejection. Thus, reliance thereon for this ground of rejection is
impermissible. See In re Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970); cf.
Ex parte Raske, 28 USPQ2d 1304, 1304-05 (BPAI 1993).
10 It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826 (CCPA
11
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features meet almost all of the limitations of claim 1. The exception is the
limitation that apex P, formed from first side 2 and second side 2', protrudes
over the surface of radially outer component SI, from which the first and
second sides originate, by height h of from 0.2 to 100 µm, which is the
height of the undercut thus formed. In this respect, we found that the layer
containing the flutes 9 is the radially outer surface of the tire at that location,
and is the layer from which first and second sides originate and which in
conjunction with the side of the second flute 9, forms an undercut under
sharp crest 17. See above p. 8.
We determine that while Drews ‘302 does not disclose the dimensions
of the structural features of the arrangement of flutes illustrated in Fig. 4
thereof, or for any other structural features, the reference teaches that the
size of the structures can be readily determined with respect to the desired
effect of the structures on drag reduction and may be microscopic. See
above pp. 8-9. Fronek also discloses that the size of drag reducing structures
is determined based on the desired effect and that a series of peaks and
valleys having a height within the range of 5 to 250 microns will reduce
drag. We thus determine that one of ordinary skill in this art would have
recognized the dimensions of structural features used to reduce drag is a
result effective variable and, therefore, would have determined the workable
or optimum dimensions for any of the structural features of the surfaces
taught by Drews ‘302 including the height that sharp crest 17 protrudes over
the layer containing the flutes 9. See, e.g., In re Boesch,

1968), presuming skill on the part of this person. In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985).
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617 F.2d 272, 275-76, (CCPA 1980) (the prior art would have suggested the
experimentation necessary to achieve the claimed compositions as discovery
of an optimum value of a result effective variable in a known process is
ordinarily within the skill of the art); In re Aller, 220 F.2d 454, 456-58
(CCPA 1955). (it is not inventive to discover by routine experimentation
optimum or workable ranges for general conditions disclosed in the prior
art).
We further determine that one of ordinary skill in the art would have
employed the structural features of Fig. 4 of Drews ‘302 in preparing a mold
to manufacture a rubber tire, as specified in claim 16, or to prepare a tape
that can be adhered to a rubber tire, as specified in claim 17. See above
pp. 7-8 and 9. The mold and the tape as claimed specify the same and
similar structural features specified in claim 1 as interpreted above. In this
respect, we determine that one of ordinary skill in this art would have
reasonably inferred that the “foil-like cover member” described by Drews
‘302 (see above p. 9) can be applied in the form of a tape.
Accordingly, we are of the opinion that prima facie one of ordinary
skill in this art routinely following the combined teachings of Drews ‘302
and Fronek would have reasonably arrived at the claimed invention
encompassed by claims 1, 16, and 17, including all the limitations thereof
arranged as required therein, without resort to Appellants’ Specification.
See, e.g., KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007) (“if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
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beyond his or her skill”); In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006);
In re Keller, 642 F.2d 413, 425, (CCPA 1981); Sovish, 769 F.2d at 743 (skill
is presumed on the part of one of ordinary skill in the art).
We are not convinced otherwise by the contentions advanced by
Appellants in again considering the record as a whole with respect to the
first three grounds of rejection in light thereof. Appellants do not support
their contention that Drews ‘302 would not have disclosed the projections
required by claim 1 on the sidewall of a tire with reference to the teachings
of Drews ‘302, other than the disclosed dimensions of “fluted projections
that are in the range of about 1/16 to 1/8 in., which may be significantly
smaller or ‘microscopic.’” Br. 6. Appellants contend, in this respect, that
“[f]lutes of this magnitude are decidedly different from the protrusion
dimensions” claimed, arguing that the general language in Drews ‘302 that
the flutes may be “microscopic” is in the context of streamlining the external
surface of an automobile to reduce drag, and there is no teaching therein to
reduce the disclosed range of 1/16 to 1/8 inches to the claimed range of 0.2
to 100 µm “for a purpose unrelated to the problems that the Drews
disclosure is intended to address.” Br. 6. Appellants argue the projections
of the claimed invention “address the problem of providing channels for
water evacuation from radially outward tire surfaces that do not create
structural traps for dirt and debris,” and the 1/16 to 1/8 inch “sizing of the
Drews channels would create dirt traps for collecting debris.” Br. 7; see also
7-8. Appellants further contend that Drews ‘302 does not make clear the
lower limits that would “be ‘practical to produce the desired interaction,’” or
what is meant by “microscopic.” Br. 7.
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We cannot agree with Appellants’ contentions. We are of the view
one of ordinary skill in the art would find in Drews ‘302 ample direction to
use the flute arrangement of Fig. 4 with structural feature dimensions which
provide the desired effect, including microscopic dimensions, for the part of
the automobile where the structure is used, including the sidewall of a tire.
Indeed, the disclosure in Drews ‘302 that microscopic dimensions will work
would have led one of ordinary skill in the art to use structural dimensions
smaller than 1/16 inch in the reasonable expectation of successfully reducing
drag. We are reinforced in our view by Fronek which makes clear that drag
reducing structures can have a height within the claimed height range. Thus,
we cannot agree that the claimed height range patentably distinguishes over
Drews ‘302 because Appellants’ reason for selecting the claimed range is
not that taught by the references. See, e.g., In re Kronig, 539 F.2d 1300,
1304 (CCPA 1976) (“[I]t is sufficient here that [the reference] clearly
suggests doing what appellants have done.”); see also In re Kemps, 97 F.3d
1427, 1429-30 (Fed. Cir, 1996) (citing In re Dillon, 919 F.2d 688, 693 (Fed.
Cir. 1990) (en banc)).
Appellants contend Drews ‘302 teaches in Fig. 4
a concave flute side in which at least a portion of the second
side to its surface of origin does not form an undercut extending
beneath the apex (P). Such portions of the Drew [sic] flutes
extend beyond an apex formed between a longer and shorter
flute side. Clearly second side portions in Drews extending
beyond the apex of the flute to a surface of origin equivalent to
surface SI of the claimed invention do not form an undercut that
lies beneath the apex as required in independent claims 1 and
16.
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Br. 8. Appellants further contend the surface of the flute arrangement in Fig.
4 of Drews ‘302 that corresponds to the “surface SI” in the claims would
have a “terminal point (P)” at that part of trough 16 of each flute 9 where the
second side of a first sharp crest 17 and the first side of a second sharp crest
17 originate out of the surface of the layer having the flute arrangement, as
demonstrated in the annotated Fig. 4 of Drews ‘302 submitted as Exhibit A.
Br. Evidence Appendix. According to Appellants, “[a] plane T1 tangent at
the terminal point (P) of a first side (2) will not cut a radially outer surface
(S1) at an acute angle” as claimed. Br. 8.
We have reconsidered our findings with respect to the observations
that one of ordinary skill in this art would have made from the structure of
the flute arrangement illustrated in Fig. 4 of Drews ‘302 in light of
Appellants’ contentions but remain convinced that our findings are
supported by Fig. 4. See above p. 8. We further cannot agree with
Appellants’ contention with respect to a plane tangent at “terminal point
(P).” Indeed, applying Appellants’ analysis to the structure shown in
Specification Fig. 1, the corresponding terminal point P is that point at
which first side 2 originates from radially outer surface SI, and a plane
tangent at that point would have the same zero inclination with respect to
radially outer surface SI as does plane tangent T1 in Exhibit A. In this
respect, claim 1 specifies “any plane tangent to the first side (2),” that is, at
any point on the first side and thus, not at the point of origination of that
side.
Appellants contend that the combination of Fronek with Drews ‘302
does not overcome the deficiencies of Drews ‘302 because Fronek “ lacks
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the projections meeting the limitations of the claims.” Br. 9. Appellants
further contend the claimed invention achieves unexpected results because
“neither reference individually or in combination can accomplish the stated
objectives of the invention.” Br. 9. We disagree with both contentions.
Fronek does not have to disclose the claimed projections or those of Drews
‘302 in order for the Examiner to combine these references. See, e.g.,
Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Furthermore, a showing of unexpected results must be based on evidence
with respect to the thrust of the ground of rejection and not on the properties
of the claimed articles as argued by counsel. See, e.g., In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that unexpected results
must be established by factual evidence.”); In re Burckel, 592 F.2d 1175,
1179-80 (CCPA 1979) (the claimed subject matter must be compared with
the closest prior art in a manner which addresses the thrust of the rejection);
Hoch, 428 F.2d at 1343-44 (evidence must provide an actual comparison of
the properties of the claimed invention with the disclosure of the reference).
With respect to dependent claim 2, delimiting claim 1 with respect to
the acute angle formed by a plane tangent to first side 2 and outer surface SI,
we are no more persuaded here by Appellants’ contentions with respect to
the angle formed by plane tangent line T1 in Exhibit A than before. See
above pp. 15-16.
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We further cannot agree with Appellants’ contentions with respect to
dependent claim 5 which delimits claim 1 by requiring at least two non-
parallel neighboring projections oriented laterally such that longitudinal
central axes thereof projected on surface SI define a non-zero angle β of
from -15° to +15º. According to Appellants, “[r]ows of neighboring
projections in Drews’ Fig. 5 are oriented such that their longitudinal axis are
parallel, not at the claimed angle,” and Fig. 5 of Drews ‘302 can be
compared with Specification Fig. 7. Br. 9. The Examiner finds “the radical
alignment of Drews 302’s projections as shown in figure 5 cause
neighboring projections to be non-parallel and define with each other a very
small acute angle.” Ans. 8 and 26. We agree with the Examiner’s findings
with respect to Fig. 5 of Drews ‘302, which we find compares with
Specification Fig. 9.
We further find that Appellants’ do not support their contentions that
the references do not teach projections having the structure required by
dependent claim 6 (Br. 9) and the Examiner establishes that Drews ‘302 in
fact shows structure falling in this claim. Ans. 8 and 26.
With respect to the second ground of rejection, the Examiner relies on
Drews ‘302 in combination with Kemp to hold it would have been prima
facie obvious to modify the arrangement of flutes on the sidewall of a tire
shown by Drews ‘302 as taught by Kemp in the reasonable expectation of
forming lettering in view of Kemp’s teaching of forming lettering from
striae projections on the sidewall of a tire. Ans. 9. Appellants rely on
contentions we considered above, and further advances contentions with
respect to Kemp and Ohsawa. Br. 11-12. Ohsawa is not relied on in this
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Application 10/024,869
ground of rejection. We determined that claims 1, 16, and 17 would have
been prima facie obvious over the combined teachings of Drews ‘302 and
Fronek. With respect to claim 16, we are not persuaded otherwise by
Appellants’ contention with respect to Kemp. Indeed, Appellants have not
identified any teaching in Kemp which would have led one of ordinary skill
away from combining the teachings of Drews ‘302 and Fronek, or from
combining the teachings of Kemp therewith. Br. 11-12. That Kemp does
not disclose the claimed projections or those of Drews ‘302 (Br. 12) does
not, without more, convince us that these references cannot be combined.
See, e.g., Keller, 642 F.2d at 425.
With respect to the third ground of rejection, we determined that
claims 1, 16, and 17 would have been prima facie obvious over the
combined teachings of Drews ‘302 and Fronek. With respect to claim 17,
Appellants rely on contentions we considered above in this respect. Br. 12.
Appellants’ further contentions involve Tanimoto and Baker which we do
not consider necessary to support the Examiner’s position.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Drews ‘302, Fronek, and Drews ‘290 alone in the
first ground of rejection, as further combined with Kemp in the second
ground of rejection, and as further combined with Tanimoto, and Baker in
the third ground of rejection, with Appellants’ countervailing evidence of
and argument for nonobviousness and conclude that the claimed invention
encompassed by appealed claims 1, 2, 5 through 9, 14 through 16, and 18
would have been obvious as a matter of law under 35 U.S.C. § 103(a).
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Application 10/024,869
Turning now to the fourth ground of rejection of claims 1 and 16 over
the combined teachings Ohsawa, Löbert and Drews ‘302, we find Ohsawa
would have disclosed to one of ordinary skill in this art a tire in which riblets
20 of smaller grooves 22 are formed individually on side and bottom walls
of each circumferential groove 14 and each transverse groove 16. Ohsawa,
e.g., ¶¶ 0014 and 0130 and Fig. 2. The individual grooves 22 can have a
triangular, rectangular, trapezoidal, semicircular or other sectional shape that
“have the effect to reduce the resistance to the waste flow.” Ohsawa, ¶
0164. The individual grooves 22 can be symmetrical, e.g., an isosceles
triangle sectional shape or sinusoidal sectional shape. Ohsawa, e.g., ¶¶
0131-0134, 0164, and 0167-0180, and Figs. 3, 9, and 11-13. The individual
grooves 22 can be asymmetrical, e.g., triangular sectional shape with
unequal legs which can be stepped. Ohsawa, e.g., ¶¶ 0203-0209 and 0250,
and Figs. 15 and 26. Ohsawa does not disclose riblets 20 in which any of
the grooves 22 are undercut.
We find Löbert would have disclosed to one of ordinary skill in this
art a “device wherein the surface of a body in flowing medium is provided
with an asymmetrical microstructure in the form of grooved profiles whose
dimensions do not substantially exceed the average free travel length of the
molecules of the medium or the average free travel length of the fluid
particles in a turbulent boundary area.” Löbert col. 1, ll. 48-54; see also,
e.g., Abstract, col. 2, ll. 18-51, and Fig. 6. “The concept of the asymmetrical
microstructure of the vehicle surface is fully effective then only if the depth
of the grooves does not exceed the average free travel length of the air
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Application 10/024,869
molecules,” as illustrated with subgrooves 11 of asymmetrical
microstructure 10 in Figs. 4a-c and 5a-c, including
Figs. 4b and 5b which illustrates grooves with undercut flanks. Löbert col.
5, l. 54 to col. 6, l. 3. The asymmetrical microstructures can be used “in
those areas of aircraft where there is involved either a thin boundary layer
with high friction coefficients or high local velocities.” Löbert col. 6,
ll. 4-30. The asymmetrical structure can be used in waterborne vehicles.
Löbert col. 6, ll. 53-56.
We have considered Drews ‘302. See above pp. 7-9.
The issue in this ground of rejection is whether one of ordinary skill in
the art would have modified Ohsawa’s triangular sectional grooves 22 in
circumferential grooves 14 and transverse grooves 16 of the tire tread to
have an undercut as such taught by Löbert on the surface of a air- or
waterborne vehicle and/or by Drews ‘302 on the sidewall of a tire. Ans. 12-
13 and 32-33; Br. 12-13. We agree with Appellants that Ohsawa’s
disclosure of asymmetrical grooves 22 would have suggested asymmetrical
triangular and other sectional shapes to one of ordinary skill in this art, but
not undercut triangular shapes. We further agree with Appellants that the
Examiner has failed to establish that one of ordinary skill in the art would
have found in the combined teachings of Ohsawa, Löbert, and Drews ‘302
any suggestion to use the undercut triangular sectional structures shown in
Löbert, and Drews ‘302 in the circumferential and transverse grooves of
Ohsawa’s tire tread. Indeed, both Löbert and Drews ‘302 disclose the use of
undercut triangular structures in a surface that is in contact solely with
flowing air and/or water medium, wherein the surface does not further
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Application 10/024,869
impinge another surface with concurrent deformation as does Ohsawa’s tire
tread.
In the absence of a showing of fact or a scientific explanation
establishing that one of ordinary skill in this art would have modified
Ohsawa’s triangular sectional grooves 22 by forming an undercut in one side
thereof as shown by Löbert and/or Drews ‘302 and would have done so with
a reasonable expectation of success, we determine that the Examiner has not
established a prima facie case of obviousness. See, e.g., In re Dow Chem.
Co., 837 F.2d 469, 473 (Fed. Cir. 1988) (“The consistent criterion for
determination of obviousness is whether the prior art would have suggested
to one of ordinary skill in the art whether the prior art would have suggested
to one of ordinary skill in the art that [the claimed process] should be carried
out and would have a reasonable likelihood of success viewed in light of the
prior art. Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.” (citations
omitted)); see also KSR, 127 S. Ct. at 1741 (“it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does”):
Kahn, 441 F.3d at 988 (“[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.”).
Accordingly, we reverse the ground of rejection claims 1 through 16
and 18 as unpatentable over the combined teachings of Ohsawa, Löbert, and
Drews ‘302 under 35 U.S.C. § 103(a).
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Application 10/024,869
In summary we have affirmed the grounds of rejection of claims 1, 2,
5 through 9 and 14 through 18 based on Drews ‘302 and Fronek and have
reversed the ground of rejection of claims 1 through 16 and 18 based on
Ohsawa.
The Primary Examiner’s decision is affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART

tc/cam

THE GOODYEAR TIRE & RUBBER COMPANY
INTELLECTUAL PROPERTY
DEPARTMENT 823
1144 EAST MARKET STREET
AKRON, OH 44316-0001
23