Justine, Carole et al.

Patent Trials and Appeals Board

Dec 26, 2019

14808682 - (D) (P.T.A.B. Dec. 26, 2019)

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.
14/808,682 07/24/2015 Carole Justine 2013P70010WOUS01 2096
137541 7590 12/26/2019
Continental
Intellectual Property
Jaedekamp, 30
Hannover, 30419
GERMANY
EXAMINER
SCHWARTZ, PHILIP N
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
12/26/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
david.cate@continental.com
greg.adams@continental-corporation.com
hannover.patente@conti.de
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex Parte JUSTINE CAROLE, JOERN KRUEGER, GUENTER WAHL,
and THOMAS KRAMER
____________________

Appeal 2019-003922
Application 14/808,682
Technology Center 1700
____________________

Before GRACE KARAFFA OBERMANN, MONTÉ T. SQUIRE, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In our Decision we refer to the Specification filed July 24, 2015, as
amended, (“Spec.”), the Final Office Action appealed from dated May 30,
2018 (“Final”), the Appeal Brief filed October 29, 2018 (“Appeal Br.”), the
Examiner’s Answer dated March 13, 2019 (“Ans.”), and the Reply Brief
filed April 24, 2019 (“Reply”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Continental
Reifen Deutschland GmbH. Appeal Br. 2.
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STATEMENT OF THE CASE
The subject matter on appeal relates to “a rubberized reinforcement
ply for articles made of an elastomeric material, preferably for vehicle tires,
wherein the reinforcement ply comprises a multiplicity of mutually
spaced-apart strength members in a parallel arrangement, wherein every
strength member includes at least one twisted viscose multifilament yarn.”
Spec. 1; see also Appeal Br. 4 (“The claimed subject matter is directed at an
elastic material comprising rubberized twisted viscous multifilament yarns
. . . .”). According to the Specification, the problem solved by the instant
disclosure is to provide “a reinforcement ply . . . [that] has been made and
treated in an environmentally friendly manner” where the physical properties
of the reinforcement ply are “in an optimum range for application in the
industrial rubber product or pneumatic vehicle tire.” Spec. 5. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
l. A rubberized reinforcement ply for articles made of an
elastomeric material, the reinforcement ply comprising:
a multiplicity of mutually spaced-apart strength members
in a parallel arrangement,
wherein every strength member includes at least one
twisted viscose multifilament yarn,
wherein the at least one twisted viscose multifilament yarn
is conditioned in a DIN EN ISO 139–1:2005 standard
atmosphere,
wherein the at least one twisted viscose multifilament yarn
has a crystallinity in the range from 15% to 40%, and
wherein the at least one twisted viscose multifilament yarn
has a yarn linear density in the range of ≥ 150 dtex to < 1100 dtex
and a tenacity in the range of ≥ 45 cN/tex to ≤ 55 cN/tex.

Appeal Br. 34 (Claims App.).
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REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1–7 and 12–19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Zimmerer3 in view of
Kwon4, and optionally Meraldi.5 Final Act. 3.

B. Claims 1–4, 6, 7, and 12–19 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Zimmerer in view of
Kim6, and optionally Meraldi. Id. at 5.

C. Claims 8–10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zimmerer in view of Kwon, and
optionally Meraldi or Zimmerer in view of Kim and
optionally Meraldi, and further in view of Boiocchi.7 Id.
at 7.

D. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Zimmerer in view of Kwon, Boiocchi
and optionally Meraldi, or Zimmerer in view of Kim,
Boiocchi and optionally Meraldi and further in view of
Almonacil.8

Appellant seeks our review of Rejections A–D. Appeal Br. 10–11.
Appellant presents separate argument for Rejections A and B and claims 1

3 Zimmerer, et al., US 2013/0171450 A1, published July 4, 2013
(“Zimmerer”).
4 Kwon et al., US 2010/0174060 A1, published July 8, 2010 (“Kwon”).
5 Meraldi et al., US 6,261,689 B1, issued July 17, 2001 (“Meraldi”).
6 Kim et al., US 6,361,862 B1, issued March 26, 2002 (“Kim”).
7 Boiocchi et al., US 6,257,291 B1, issued July 10, 2001 (“Boiocchi”).
8 Almonacil et al., US 2006/0237113 A1, published October 26, 2006
(“Almonacil”).
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and 18. See generally id. Therefore, consistent with the provisions of 37
C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to Rejections A and
B as well as claims 1 and 18; all other claims stand or fall together with
claims 1 and 18.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in the Examiner’s
rejections. Thus, we affirm the Examiner’s rejections, based on the
Examiner’s fact-finding and for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Rejection A – Obviousness (claims 1–7 and 12–19)
The Examiner rejects claims 1–7 and 12–19 as obvious over the
combination of Zimmerer in view of Kwon and optionally Meraldi. Final
Act. 3.
1. Claim 1
The Examiner finds that Zimmerer teaches “a carcass fabric for car
tires . . , [that includes] using a multifilament twisted yarn comprising
cellulosic cords, for example viscose, where the yarn has an overall linear
density of 30 to 20000 dtex and a tenacity of preferably higher than 35
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cN/tex.” Id. at 3. The Examiner finds that “[i]t is extremely well-known
and conventional to create such a fabric by mutually spacing apart the cords
in a parallel arrangement and rubberizing them.” Id. The Examiner further
finds that Kwon similarly teaches a cellulose fiber cord for a tire that has a
crystallinity of 32% or more. Id. According to the Examiner, the
crystallinity taught by Kwon was a known crystallinity value and therefore
would have been obvious at the time of the invention, and there has been no
showing of criticality in the claimed range. Id. And, the Examiner finds that
Meraldi describes “preconditioning cellulose yarns for use in a tire by
storing the yarns for at least 24 hours in a standard atmosphere according to
European Standard DIN EN 20139.” Id. The Examiner reasons that one
skilled in the art would have reason to precondition the yarn “in order to
stabilize the degree of moisture of the yarn at a natural equilibrium level of
less than 15% by weight of dry fiber.” Id. at 3–4.
Appellant argues that claim 1 requires a viscose multifilament yarn
and that “Zimmerer et al. says nothing more about the disclosed yarn other
than that it is simply some kind of cellulose.” Appeal Br. 13–14. Appellant
explains that Kwon “may disclose various crystallinity ranges and other
physical parameters of yarns, [but] these are only with respect to lyocell
fibers, not viscose fibers.” Id. at 15. Thus, Appellant asserts that Zimmerer
“fails to disclose or suggest use of only viscose as the type of fiber to be
included in the strength members of the claimed reinforcement ply” and
Kwon, relating only to lyocell fibers, “has no bearing on the disclosure of
Zimmerer.” Id. (emphasis added); see also Reply Br. 4 (“Appellant’s
independent claim 1, . . . requires that ‘every strength member consist of
twisted viscose multifilament yarn.’” (emphasis added)). Appellant
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contends that, because no reference “disclose[s] or suggest[s] a viscose
multifilament yarn possessing the claimed properties,” no prima facie case
of obviousness has been shown. Id. at 17. Appellant further contends that
the Examiner’s findings regarding lack of criticality improperly shift the
burden to Appellant so establish nonobviousness. Id. Appellant also
contends that the data provided in Tables 1, 2, 3, and 4 detail the surprising
results achieved through the instant disclosure. Id. at 18.
In the Answer, the Examiner finds that “[t]here is no requirement . . .
that Zimmerer disclose that only viscose can be used as the type of fiber in
the strength members of the claimed reinforcement ply.” Ans. 3.
Furthermore, the Examiner explains that because “lyocell and viscose fibers
are cellulosic fibers, i.e., the fibers are different species of the same genus,”
on skilled in the art at the time of invention “would look to crystallinity
teachings of a related fiber[s] in the absence of teachings of that specific
fiber, and would be motivated to use the same or similar crystallinity
values.” Id. The Examiner also explains that Appellant’s evidence of
unexpected results is not commensurate in scope with the instant claims and
therefore fails to distinguish the claims from the prior art. Id. at 4.
On this record, we find a preponderance of the evidence and sound
technical reasoning support the Examiner’s findings and conclusions, and
that Appellant has not shown reversible error in the Examiner’s rejection.
Claim 1 requires, inter alia, a multiplicity of strength members where “every
strength member includes at least one twisted viscose multifilament yarn.”
Appeal Br. 34 (Claims App.). The Specification explains that the strength
members may include more than one yarn. Spec. 9 (“It is advantageous
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when the strength member is a textile cord consisting of at least two
mutually folded viscose filament yarns.”); see also id. at 15 (same).
Therefore, consistent with the Examiner’s findings (see e.g., Ans. 3),
the strength member need not be formed exclusively of viscose yarn. As the
Examiner finds (Final Act. 3), Zimmerer describes a multifilament twisted
yarn comprising cellulosic cords that may include viscose, acetates, and
lyocell. Zimmerer ¶¶ 2, 6, 14. Zimmerer further states that the yarn “in
twisted or untwisted state, . . . can be processed, for example, together with
viscose filament yarn, nylon 6 and/or nylon 66 to form a cord,” thereby
meeting the “at least one twisted viscose multifilament yarn” as claimed.
Zimmerer ¶ 18. And, while Kwon does not show a viscose yarn having the
claimed crystallinity, Kwon does stress the importance of excellent
crystalline properties and that a degree of crystallinity of 32% or more
achieves desirable results. Kwon ¶¶ 10, 14–19. Appellant does not dispute
the Examiner’s finding (Ans. 3) that the skilled artisan at the time would
have reason to use the same or similar crystallinity values and would “would
look to crystallinity teachings of a related fiber[s] in the absence of teachings
of that specific fiber.” See generally Reply Br. Therefore, we adopt the
Examiner’s findings as fact. Cf. In re Kunzmann, 326 F.2d 424, 425 n.3
(CCPA 1964) (a finding not shown by the Appellant to be erroneous may be
accepted as fact).
Lastly, Appellant’s alleged evidence of unexpected results, as the
Examiner finds (Ans. 4), is not commensurate in scope with the claims
because the only crystallinity percentages disclosed are isolated to a small
range of 26.5% and 26.1% and do not extend more broadly across the scope
of claim 1, i.e., a 15–40% crystallinity. See Spec. 12 (Table 1, examples 3
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and 6). Appellant incorrectly asserts that “claim 1 does not recite endpoints
of 15% and 42% [sic] for crystallinity [but rather,] [c]laim 1 recites
endpoints of 24% and 30% for crystallinity.” Reply Br. 5; but see Appeal
Br. 34 (reciting “a crystallinity in the range from 15% to 40%).
Accordingly, Appellant’s arguments do not identify error in the
Examiner’s rejection and we sustain the Rejection of claim 1 and its
dependent claims.
2. Claim 18
Claim 18 is a product by process claim to prepare the reinforcement
ply of claim 1 that includes the following steps:
providing coniferous or deciduous pulps;
admixing viscose with an amine ethoxylate modifier in a
concentration ranging of from 0.01 to 1.0 wt% based on viscose;
spinning the admixed viscose in a spinneret die to create
spin viscose thread, wherein the die has a hole diameter <100
μm, wherein the speed of spinning speed at a first takeup roll is
less than 50 m/min;
transporting the spun viscose thread from the spinneret die
into a coagulation bath via a coagulation bath current in a
direction of fiber takeoff, wherein the coagulation bath
comprises sulfuric acid in an amount of greater than 15 g/liter,
and wherein the coagulation bath temperature is more than 30°
C and less than 100° C;
adding sodium sulfate and zinc sulfate to the coagulation
bath in a concentration of 25 to 250 g/liter coagulation bath;
transporting the yarn from the coagulation bath to the fixing bath,
wherein the fixing bath comprises sulfuric acid in a concentration
ranging of from 20 to 120 g/liter fixing bath;
stretching the spun yarn to more than 175%; and
conditioning the yarn in a DIN EN ISO 139-1:2005
standard atmosphere that has a temperature of 20° C and relative
humidity of 65%,
wherein the yarn is prepared in a two-step process, and
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wherein the yarn is spun and wound up in a first step and
the wound-up yarn is unwound and washed in a second step.
Appeal Br. 37–38 (Claims App.). The Examiner finds “that the construction
of Zimmerer (combined) set out above is the same product as that of
applicant, and it is the product of a product-by-process claim that is
examined.” Final Act. 7. The Examiner stresses that “merely adding
process limitations does not render the claim patentable.” Ans. 4.
Appellant asserts that no reference details the process of making a
multifilament yarn that is claimed in claim 18. Appeal Br. 19. Appellant
argues that it is due to the “differences in the process the claimed possesses
unique chemical and physical properties.” Id. Appellant contends that “the
Examiner misses the point, in that . . . the process steps recited in claim 18
are the steps that give the product its non-obvious properties, i.e., the
properties of a reinforcement member consisting of only viscose
multifilament yarn.” Reply Br. 6.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. As a general rule, “the patentability of a
product does not depend on its method of production. [And,] [i]f the product
in a product-by-process claim is the same as or obvious from a product of
the prior art, the claim is unpatentable even though the prior product was
made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985). If, however, the process steps of the product-by-process claim result
in a product that is structurally or functionally different from that disclosed
in the prior art, then the claims are not unpatentable. Greenliant Systems,
Inc. v. Xiocor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012). But, “the burden
is upon the applicants to come forward with evidence establishing an
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unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). Thus, the
patentability of a claim to a product does not necessarily rest on the method
of making that product. Rather, it must be shown that the product itself is
new and nonobvious.
Here, Appellant contends that “the process steps recited in claim 18
impart distinctive structural (physical and chemical) characteristics to the
final product.” Reply Br. 6. However, Appellant does not identify what
structural aspects the process steps of claim 18 provide that render claim 18
nonobvious. See generally id. Because Appellants failed to show that the
process steps used in claims 18 result in an unobvious difference between
the claimed product and the prior art product, we sustain the rejection of
claim 18. Marosi, 710 F.2d at 803.
Rejection B – Obviousness (1–4, 6, 7, and 12–19)
The Examiner rejects claims 1–7 and 12–19 as obvious over the
combination of Zimmerer in view of Kim and optionally Meraldi. Final
Act. 5.
1. Claim 1
The Examiner reasserts the same findings identified above for
Rejection A with respect to Zimmerer and Meraldi. Id. at 5–6. The
Examiner additionally finds that “Kim teaches the use of cellulose fiber for a
tire cord . . . and teaches a cellulose fiber with crystallinity of 14–34%.” Id.
According to the Examiner, the crystallinity taught by Kim was is a known
crystallinity value and therefore would have been obvious at the time of the
invention. Id. at 6.
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In addition to the arguments advanced above for Rejection A,
Appellant further contends that “Kim et al. teaches away from employing
viscose fibers for reinforcement members.” Appeal Br. 27. According to
Appellant, Kim details that viscose fabrics are difficult to manufacture and
use highly toxic materials. Id.
Having determined Appellant’s primary arguments are unpersuasive
of reversible error, as discussed above for Rejection A, we turn to
Appellant’s additional argument that Kim teaches away from using a viscose
yarn. This argument is, likewise unpersuasive of reversible error in the
Examiner’s rejection, because “[a] reference does not teach away . . . if it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)). Various types of teachings may support a finding of
“teaching away,” including known disadvantages in old devices that would
naturally discourage the search for new inventions, teachings leaving the
impression that the product would not have the property sought by the
applicant, and reference combinations that would produce a seemingly
inoperative device. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Here, although Kim contrasts its own invention against viscose rayon
as being an economical, easy, and environmentally friendly alternative, Kim
stresses its similarity to the properties of viscose rayon fibers, we find
nothing that would discourage or lead the skilled artisan to believe viscose
rayon would not work. Compare Kim col. 1:5–30, 5:11–18, 10:49–55 with
id. col. 1:55–58, 3:36–64. Indeed, it would have been clear from the
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teachings of Kim to one of ordinary skill that the properties of viscose rayon
are desirable and Kim seeks to provide an alternative to viscose that
possesses the benefits of viscose—including crystallinity. Id. at col. 1:55–
58, 3:36–64. The fact that Kim may prefer an alternative cellulosic material
than that claimed, without more, does not amount to a teaching away.
DePuy Spine, 567 F.3d at 1327. Therefore, we sustain the Examiner’s
rejection of claim 1 and the claims depending therefrom.
2. Claim 18
Similar to the Examiner’s findings above, with respect to Rejection A,
the Examiner finds “that the construction of Zimmerer (combined) set out
above is the same product as that of applicant, and it is the product of a
product-by-process claim that is examined.” Final Act. 7. Appellant relies
on the same arguments set forth in Rejection A to support non-obviousness
of claim 18 over Rejection B. Appeal Br. 27–28. For the same reasons
discussed above, we sustain the Examiner’s rejection of claim 18.
CONCLUSION
Appellant failed to identify a reversible error in the Examiner’s
rejection of claims 1–7 and 12–19 under 35 U.S.C. § 103(a) as unpatentable
over Zimmerer in view of Kwon, and optionally Meraldi.
Appellant failed to identify a reversible error in the Examiner’s
rejection of claims 1–4, 6, 7, and 12–19 under 35 U.S.C. § 103(a) as
unpatentable over Zimmerer in view of Kim, and optionally Meraldi.
Appellant failed to identify a reversible error in the Examiner’s
rejection of claims 8–10 under 35 U.S.C. § 103(a) as unpatentable over
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Zimmerer in view of Kwon, and optionally Meraldi or Zimmerer in view of
Kim and optionally Meraldi, and further in view of Boiocchi.
Appellant failed to identify a reversible error in the Examiner’s
rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Zimmerer in view of Kwon, Boiocchi and optionally Meraldi, or Zimmerer
in view of Kim, Boiocchi and optionally Meraldi and further in view of
Almonacil.
DECISION
For the above reasons, the Examiner’s rejection of claims 1–19 is
affirmed as summarized below.
Claims
Rejected
35 U.S.C. §

Reference(s)/Basis

Affirmed

Reversed
1–7, 12–19 103(a)

Zimmerer, Kwon, Meraldi 1–7, 12–19
1–4, 6, 7,
12–19
103(a)

Zimmerer, Kim, Meraldi

1–4, 6, 7,
12–19

8–10 103(a)

Zimmerer, Kwon, Meraldi,
Boiocchi or Zimmerer,
Kim, Meraldi, Boiocchi
8–10
11 103(a)

Zimmerer, Kwon, Meraldi,
Boiocchi, Almonacil or
Zimmerer, Kim, Meraldi,
Boiocchi, Almonacil
11
Overall
Outcome
1–19

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).

AFFIRMED