Sebastien Willy. Fontaine et al.

Patent Trials and Appeals Board

Aug 1, 2019

15065961 - (D) (P.T.A.B. Aug. 1, 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.
15/065,961 03/10/2016 Sebastien Willy Fontaine DN2016-007 3176
27280 7590 08/01/2019
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
EXAMINER
STABLEY, MICHAEL R
ART UNIT PAPER NUMBER
3611
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
kathleen.swisher@goodyear.com
pair_goodyear@firsttofile.com
patents@goodyear.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SEBASTIEN WILLY FONTAINE,
ARMAND RENÉ GABRIEL LECONTE, FREDERIC NGO,
and CLAUDE ERNEST FELIX BOES1
____________________

Appeal 2018-008469
Application 15/065,961
Technology Center 3600
____________________

Before: ANNETTE R. REIMERS, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
decision rejecting claims 1 and 3–12. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 The Appeal Brief (filed March 12, 2018, hereinafter “Brief” or “Br.”)
indicates that Appellant, The Goodyear Tire & Rubber Company, is the real
party in interest. Br. 3.
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Application 15/065,961
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We affirm.

CLAIMED SUBJECT MATTER
The claims are directed to a spherical tire for a self-propelled vehicle
in which no portion of a drive system physically contacts the tire or the road
surface. Claim 1, reproduced below, is the sole independent claim on
appeal:
1. A support assembly for a vehicle comprises:
at least two spherical tires travelling on a road surface and
rotating relative to the road surf ace and the vehicle;
the tires having an outer tread layer comprising a material
having a first stiffness when dry and a second stiffness when wet,
the first stiffness being greater than the second stiffness; and
a drive system magnetically driving rotation of the tires
relative to the drive system itself such that no portion of the drive
system physically contacts the tires or the road surface, the drive
system magnetically levitates the vehicle a first predetermined
distance from the tires.
Br. 7 (Claims App.).

REJECTION
Claims 1 and 3–12 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement.

REFERENCE CITED BY EXAMINER
Bernstein US 9,090,214 B2 July 28, 2015

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Application 15/065,961
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OPINION
In determining that claims 1 and 3–12 are not enabled, the Examiner
addresses Appellant’s disclosure, certain prior art, the nature of the
invention, and the predictability in the art. See Final Act. 2–4. The
Examiner finds “[i]t is unclear how the current invention’s drive system is
able to levitate within the tire while also being able to magnetically drive it
without contact, or how it is able to provide a strong enough levitation force
to support a vehicle the size of a car.” Id. at 3.
Regarding Appellant’s disclosure, the Examiner finds that only
paragraphs 81 and 82 describe how the invention works. Final Act. 2.
Specifically, the Examiner states, “how the drive system magnetically drives
the tires without physically contacting the tires and how at least two such
spherical tires would be able to safely levitate an entire vehicle without
being physically connected are not sufficiently described in the specification
to be properly enabled.” Id.
The Examiner compares Appellant’s disclosure to that of Bernstein
(US 9,090,214, issued July 28, 2015) and indicates that the disclosure in
Bernstein is approximately 23 paragraphs describing a single embodiment.
Id. at 2–3. Figure 3 of Bernstein corresponds to Appellant’s Figure 4, which
Appellant describes as a “conventional self-propelled device.” Spec. ¶ 3.
Bernstein describes a self-propelled device that includes a spherical housing
and an internal drive system with at least one motor. Bernstein, Abstract. In
contrast to the claimed apparatus, the device in Bernstein engages an interior
surface of the spherical housing in order to make the device move. Id.
As for the level of predictability in the art, the Examiner states,
“[t]here was no prior art even close to disclosing the concept of magnetically
driving and supporting a vehicle with no physically contact between the
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Application 15/065,961
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drive system, tires, and vehicle, and therefore the level of predictability in
the art would have been extremely low.” Final Act. 3.
The Examiner concludes, “based on the evidence regarding each of
the above factors (nature of the invention, state of the prior art, level of
predictability in the art, and amount of direction provided by the inventor),
the specification, at the time the application was filed, would not have taught
one skilled in the art how to make and/or use the full scope of the claimed
invention without undue experimentation.” Id.
The Argument section of Appellant’s Appeal Brief begins by
reproducing, verbatim, the entire statement of the rejection in the Final
Action. Br. 4–5; see also Final Act. 2–3. This is followed by Appellant’s
summary of the statement of the rejection. Br. 5. Next, Appellant quotes
certain portions of MPEP § 2161. Appellant concludes the Argument
section with a paragraph identifying where support for the subject matter
recited in claim 1 can be found, namely, in the Specification in paragraphs 4,
5, and 81 and Figure 1. See Br. 5–6. The last paragraph of Appellant’s
Argument section states, “Consequently, claim 1, as well as claims 3–12
which depend from claim 1, are in condition for allowance.” Br. 6.
The test for compliance with the enablement requirement in 35 U.S.C.
§ 112, first paragraph, is whether the disclosure, as filed, is sufficiently
complete to enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. In re Wands, 858 F.2d
731, 737 (Fed. Cir. 1988) (setting forth eight factors to be considered to
evaluate whether a disclosure would require undue experimentation).
Appellant’s argument is not persuasive because it does not address the
rejection set forth by the Examiner, which is for lack of enabling disclosure,
not for lack of written description support. See Final Act. 2–3. The
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Examiner addresses various Wands factors and explains the particular
structure that is not enabled in independent claim 1. See id. Thus, the
Examiner put Appellant on notice of the reasons why Appellant is not
entitled to a patent on the apparatus recited in claim 1.
Merely pointing out, as Appellant’s Brief does, where the
Specification introduces the claimed elements fails to address these reasons.
Further, we agree with the Examiner that paragraph 81 and Figure 1 are
insufficient to enable a person of ordinary skill in the art to practice the
invention recited in claim 1 without undue experimentation. Paragraph 81
does not include much more information that claim 1 itself does. Paragraphs
4 and 5 of the Specification are even less informative. Figure 1 is merely a
schematic representation providing no information as to how the device
functions other than what is already discussed in paragraph 81, which, as we
note above, is inadequate.
The Examiner finds that the art is relatively unpredictable. Final Act.
3. Appellant does not contest this finding. See Br. 4–6.
The Examiner finds that the prior art does not disclose information
sufficient to fill in the gaps in Appellant’s disclosure so as to enable a person
of ordinary skill in the art to practice the claimed invention without undue
experimentation. Final Act. 3. Appellant does not contest this finding. See
Br. 4–6.
We have considered all of Appellant’s arguments, which amount to a
restatement of the rejection, a summary of the rejection, and a statement
(with citation to the Specification) that the subject matter of claim 1 is
supported, and find them unavailing. Accordingly, we sustain the
Examiner’s rejection of claims 1 and 3–12 as failing to comply with the
enablement requirement.
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DECISION
The Examiner’s rejection of claims 1 and 3–12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED