The Goodyear Tire & Rubber Company

Patent Trials and Appeals Board

May 8, 2020

2019004358 (P.T.A.B. May. 8, 2020)

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.
15/163,075 05/24/2016 Francesco SPORTELLI DN2016-003 1861
27280 7590 05/08/2020
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
EXAMINER
PAQUETTE, SEDEF ESRA AYALP
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
05/08/2020 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 FRANCESCO SPORTELLI, GILLES BONNET, and
STEFAN WILMS
____________

Appeal 2019-004358
Application 15/163,075
Technology Center 1700
____________

Before JEFFREY T. SMITH, LILAN REN, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1, 4, 6–8, and 10.2,3 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies The Goodyear Tire & Rubber Company
as the real party in interest. Appeal Brief filed July 24, 2018 (“Appeal Br.”)
at 3.
2 Final Office Action entered July 6, 2018 (“Final Act.”) at 1.
3 Appellant cancelled claim 5 in an amendment filed July 10, 2018.
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CLAIMED SUBJECT MATTER
Appellant claims a tire having an axis of rotation. Appeal Br. 3–4.
Claim 1, the sole pending independent claim, is reproduced below, and
illustrates the subject matter on appeal:
1. A tire having an axis of rotation, the tire comprising:
two inextensible annular bead structures for attachment
to a vehicle rim;
a carcass-like structure having at least one reinforced ply,
the carcass-like structure being wound about the two bead
structures;
a tread disposed radially outward of the carcass-like
structure; and
a shear band structure disposed radially between the
carcass-like structure and the tread, each of the two bead
structures including an apex constructed of a lightweight foam
material, the lightweight foam material having cenospheres and
carbon microspheres.

Appeal Br. 11 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered October 18, 2018 (“Ans.”):4
I. Claims 1, 6, and 7 under 35 U.S.C. § 103 as unpatentable over
Minagawa5 in view of Chen6 and Jalageri;7

4 The Examiner withdrew the rejection of claim 1 under 35 U.S.C. § 112(a)
(Final Act. 3), and the rejection of claims 1, 4–8, and 10 under 35 U.S.C.
§ 112(b) (Final Act. 3–4), in the Answer. Ans. 13.
5 Minagawa, JP 07232519 A, published September 5, 1995.
6 Chen, CN 103012872 A, published April 3, 2013.
7 H.B. Jalageri et al., Experimental Investigations on Mechanical Properties
of Cenosphere/MWCNT Reinforced Polymer Nanocomposites, 5(3C)
American Journal of Materials Science, 101–106 (2015).
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II. Claims 1, 4, 6, and 7 under 35 U.S.C. § 103 as unpatentable
over Zemla8 in view of Grah,9 Chen, and Jalageri; and
III. Claims 8 and 10 under 35 U.S.C. § 103 as unpatentable over
Zemla in view of Grah, Chen, Jalageri, and Paetz-Lauter.10

FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1, 4, 6–8, and 10 under 35 U.S.C. § 103, based on the findings of
fact, conclusions of law, and response to Appellant’s arguments, well-
expressed by the Examiner in the Final Action and the Answer. We add
following for emphasis.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant provides for each issue that Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”).
Rejection I
We first address the Examiner’s rejection of claims 1, 6, and 7 under
35 U.S.C. § 103 as unpatentable over Minagawa in view of Chen and
Jalageri. Appellant presents arguments directed to independent claim 1

8 Zemla et al., US 2017/0361664 A1, published December 21, 2017.
9 Grah, US 2004/0187996 A1, published September 30, 2004.
10 Paetz-Lauter et al., US 9,174,363 B2, published November 3, 2015.
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only, to which we accordingly limit our discussion. Appeal Br. 4–6; 37
C.F.R. § 41.37(c)(1)(iv).
Appellant argues that Minagawa, Chen, and Jalageri, when considered
separately or in combination, do not disclose, and would not have suggested,
a tire as recited in claim 1. Appeal Br. 4–5. Appellant argues that the
Examiner does not provide a factual basis or rational underpinning to
support the conclusion that it would have been obvious to modify
Minagawa’s rubber foam composition to include carbon microspheres and
carbon nanotubes as taught by Chen, and cenospheres as taught by Jalageri.
Appeal Br. 5–6. Appellant asserts that the Examiner relies solely on
hindsight judgment due to “significant factual deficiencies contained in the
cited references.” Id.
The Examiner provides reasoning having rational underpinning
grounded in sound factual findings to support the Examiner’s conclusion of
obviousness, contrary to Appellant’s arguments. In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417–18 (2007) (explaining that there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness).
Specifically, the Examiner finds that Minagawa discloses a tire
comprising two inextensible annular bead parts (bead structures) for
attachment to a vehicle rim, a carcass (carcass-like structure) wound about
the two bead parts that includes at least one reinforced ply, a tread disposed
radially outward of the carcass, and a belt layer (shear band structure)
disposed radially between the carcass and the tread. Final Act. 4–5 (citing
Minagawa Fig. 1); see also Minagawa ¶ 13. The Examiner finds that
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Minagawa discloses that the two bead parts include at least one apex
constructed of a lightweight rubber foam material. Final Act. 5 (citing
Minagawa ¶¶ 9, 17; Figs. 1, 2, and 3); see also Minagawa ¶¶ 6, 9, 11, 12, 13,
23.
The Examiner finds that Minagawa “does not expressly disclose the
composition of the rubber foam used in the bead apex.” Final Act. 5. The
Examiner finds, however, that Chen teaches a wear-resistant rubber
composite material widely used in tire rubbers that comprises carbon
microspheres and carbon nanotubes, which together provide improved wear
resistance and improved abrasion resistance relative to a conventional
carbon black/rubber system. Final Act. 5 (citing Chen ¶ 4). The Examiner
finds that Chen discloses that carbon microspheres and carbon nanotubes
synergize to yield high-performance rubber composites having enhanced
life, improved high and low temperature resistance, and improved high load
resistance. Final Act. 5 (citing Chen ¶¶ 4, 5).
In view of these disclosures in Chen, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art before the
effective filing date of the present application to add carbon microspheres
and carbon nanotubes as disclosed in Chen to the rubber foam disposed in
the bead portion of Minagawa’s tire, to improve the wear resistance and
abrasion resistance of the rubber foam, enhance the foam’s life, improve the
foam’s high and low temperature resistance, and improve the foam’s high
load resistance, as disclosed in Chen. Final Act. 5–6; Ans. 14.
The Examiner finds that Jalageri discloses that cenospheres possess a
unique combination of spherical shape, high compression, low specific
gravity, good thermal and acoustical insulation properties, and inertness to
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acids and alkalis. Final Act. 6 (citing Jalageri p. 101). The Examiner finds
that Jalageri discloses that carbon nanotubes have exceptionally high
material properties, including strength, stiffness, and toughness, which are
very close to the theoretical limits. Final Act. 6 (citing Jalageri p. 102). The
Examiner finds that Jalageri discloses that including both cenospheres and
carbon nanotubes in polymeric composites imparts the advantages of both
materials to the composites, including enhanced flexural strength and
modulus, increased tensile strength, enhanced modulus rupture and modulus
of elasticity, and high tensile, bending, and impact strength. Final Act. 6
(citing Jalageri pp. 102, 104, 105).
In view of these disclosures in Jalageri, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify
Minagawa’s rubber foam to include cenospheres as disclosed in Jalageri, in
addition to carbon microspheres and carbon nanotubes as disclosed in Chen,
to enhance the mechanical properties of the foam. Final Act. 6–7; Ans. 14–
15.
The Examiner thus articulates a reasoned explanation grounded in
thorough and sound factual findings for why one of ordinary skill in the art
would have been led to combine the relied-upon disclosures of the applied
prior art references to arrive at a tire as recited in claim 1. The Examiner’s
rejection, therefore, is not based on improper hindsight reasoning as
Appellant asserts. Appellant’s conclusory arguments fail to identify any
specific error in the Examiner’s factual findings or rationale for the proposed
combination of the applied prior art, and, in particular, do not direct us to
any specific “factual deficiencies” in the applied prior art references.
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Appellant’s arguments are, therefore, unpersuasive of reversible error in the
Examiner’s rejection.
Appellant argues that “the current legal standard for obviousness is
that the ‘combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.’”
Appeal Br. 5–6 (citing KSR, 550 U.S. at 416; MPEP § 2141(I)). Appellant
argues that the result of modifying Minagawa’s tire with the teachings of
Chen and Jalageri as proposed by the Examiner would have been
unpredictable and, therefore, nonobvious under KSR because “a tire is much
more complex and unpredictable than” a combination of familiar elements
according to known methods. Appeal Br. 5–6.
Appellant’s conclusory assertion that modifying Minagawa’s tire in
view of Chen and Jalageri as proposed by the Examiner would have been
unpredictable does not identify any particular error in the Examiner’s factual
findings or reasoning, or the Examiner’s rationale for the proposed
combination. Nor does Appellant provide any objective evidence to show
that one of ordinary skill in the art would not have had a reasonable
expectation of successfully modifying the rubber foam in the bead portion of
Minagawa’s tire in view of the relied-upon discloses of Chen and Jalageri as
proposed by the Examiner. Appellant’s arguments, therefore, do not identify
reversible error in the Examiner’s rejection.
Even if modifying Minagawa’s tire with the teachings of Chen and
Jalageri as proposed by the Examiner would have involved some degree of
unpredictability as Appellant asserts, it is well-settled that, even in
unpredictable arts, “[o]bviousness does not require absolute predictability of
success . . . all that is required is a reasonable expectation of success.” In re
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Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (quoting In
re O’Farrell, 853 F.2d 894, 903‒04 (Fed. Cir. 1988)). The Examiner
provides a sound factual basis for finding that one of ordinary skill in the art
reasonably would have expected that modifying the rubber foam disposed in
the bead portion of Minagawa’s tire to include carbon microspheres and
carbon nanotubes as disclosed in Chen, and to include cenospheres as
disclosed in Jalageri, would improve numerous mechanical properties of
Minagawa’s foam, as discussed above.
Finally, although Appellant asserts that a combination of familiar
elements according to known methods is “the current legal standard for
obviousness,” the Supreme Court indicated in KSR that Graham v. John
Deere Co. of Kansas City, 383 U.S. 1 (1966), sets out an objective analysis
for applying § 103. KSR, 550 U.S. at 406. The Court explained:
“Under § 103, the scope and content of the prior art are . . .
determined; differences between the prior art and the claims at
issue are . . . ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.”
While the sequence of these questions might be reordered
in any particular case, the factors continue to define the inquiry
that controls.
Id. at 406–07 (internal citation omitted) (quoting Graham, 383 U.S. at 17–
18). In the context of discussing Supreme Court precedent on obviousness,
the Court in KSR indicated that a combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. Id. at 416 (citing United States v. Adams, 383
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U.S. 39, 50–52 (1966)). This statement thus describes a particular
circumstance in which a claimed invention is likely to be obvious, rather
than providing “the current legal standard for obviousness” as Appellant
asserts.
We, accordingly, sustain the Examiner’s rejection of claims 1, 6, and
7 under 35 U.S.C. § 103 as unpatentable over Minagawa in view of Chen
and Jalageri.
Rejections II and III
We turn now to the Examiner’s rejection of claims 1, 4, 6, and 7 under
35 U.S.C. § 103 as unpatentable over Zemla in view of Grah, Chen, and
Jalageri (Rejection II), and the Examiner’s rejection of claims 8 and 10
under 35 U.S.C. § 103 as unpatentable over Zemla in view of Grah, Chen,
Jalageri, and Paetz-Lauter (Rejection III). Appellant argues the claims
subject to these rejections together on the basis of claim 1, to which we
accordingly limit our discussion. Appeal Br. 6–9; 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant argues that Zemla, Grah, Chen, and Jalageri, when
considered separately or in combination, do not disclose, and would not have
suggested, a tire as recited in claim 1. Appeal Br. 7–8. Appellant argues
that the Examiner does not provide a factual basis or rational underpinning
to support the conclusion that it would have been obvious to modify Zemla’s
tire to include a shear band structure/belt structure between the tread and the
carcass as disclosed in Grah, and to modify the foam material in the bead
structure of Zemla’s tire to include carbon microspheres and carbon
nanotubes as taught by Chen, and cenospheres as taught by Jalageri. Appeal
Br. 7–9. Appellant asserts that the Examiner relies solely on hindsight
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judgment due to “significant factual deficiencies contained in the cited
references.” Id.
The Examiner provides reasoning having rational underpinning
grounded in sound factual findings to support the Examiner’s conclusion of
obviousness, contrary to Appellant’s arguments. Kahn, 441 F.3d at 988.
Specifically, the Examiner finds that Zemla discloses a tire
comprising two annular bead structures for attachment to a vehicle rim, at
least one reinforcement element having at least one body ply (carcass-like
structure having at least one reinforced ply) that includes a turnup end
disposed around the bead structure (being wound about the two bead
structures), and a tread portion disposed radially outward of the at least one
reinforcement element (carcass-like structure). Final Act. 7–8 (citing Zemla
¶¶ 26, 43, 44; Figs. 1A, 1B, and 2); see also Zemla ¶¶ 41–46.
The Examiner finds that Zemla discloses that each bead structure
includes a cavity that may be partially or completely filled with a material
configured to adjust the properties of the bead structure, such as a foam.
Final Act. 8 (citing Zemla ¶¶ 33, 34; Figs. 1A and 1B). The Examiner finds
that Zemla discloses that the cavity may also be at least partially filled with
spheres that adjust the balance of the tire. Final Act. 8 (citing Zemla ¶ 35;
Fig. 1B). The Examiner finds that Zemla does not disclose that the spheres
may be cenospheres or carbon microspheres. Final Act. 8. The Examiner
finds that Zemla also does not disclose a belt/ shear band structure disposed
radially between the at least one reinforcement element and the tread portion
of Zemla’s tire. Id.
The Examiner finds, however, that Grah discloses a tire that supports
its load solely through structural properties of the tire’s crown, sidewall, and
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bead portions, without support from internal air pressure. Final Act. 8–9
(citing Grah ¶¶ 5, 15). The Examiner finds that Grah’s tire includes
elements similar to those of Zemla’s tire, but Grah’s tire further includes a
reinforced annular band (shear band structure or belt structure). Final Act. 8
(citing Grah ¶¶ 24; Fig. 1). The Examiner finds that Grah discloses that the
reinforced annular band is disposed radially inward of a tread portion and
comprises an elastomeric shear layer. Final Act. 9 (citing Grah ¶ 25). The
Examiner finds that Grah discloses that so forming a solid tire with a
reinforced annular layer comprising a shear layer yields a solid tire that
performs at levels expected from a conventional pneumatic tire. Final Act. 9
(citing Grah ¶¶ 4, 15).
In view of these disclosures in Grah, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify
Zemla’s tire to include a shear band structure/belt structure between the
tread and the carcass for reinforcing the crown portion of Zemla’s tire, to
achieve the same level of performance expected of a conventional pneumatic
tire, as taught by Grah. Final Act. 9; Ans. 19.
The Examiner relies on the disclosures of Chen discussed above, and
concludes that it would have been obvious to one of ordinary skill in the art
to add carbon microspheres and carbon nanotubes as disclosed in Chen to
the foam material disposed in the bead portion of Zemla’s tire to improve the
wear resistance and abrasion resistance of the foam, enhance the foam’s life,
improve the foam’s high and low temperature resistance, and improve the
foam’s high load resistance. Final Act. 9–10. The Examiner also relies on
the disclosures of Jalageri discussed above, and concludes that it would have
been obvious to one of ordinary skill in the art to modify Zemla’s foam to
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include cenospheres as disclosed in Jalageri, in addition to carbon
microspheres and carbon nanotubes as disclosed in Chen, to enhance the
mechanical properties of the foam. Final Act. 10–11.
The Examiner thus articulates a reasoned explanation grounded in
thorough and sound factual findings for why one of ordinary skill in the art
would have been led to combine the relied-upon disclosures of the applied
prior art references to arrive at a tire as recited in claim 1. The Examiner’s
rejection, therefore, is not based on improper hindsight reasoning as
Appellant asserts. Appellant’s conclusory arguments fail to identify any
specific error in the Examiner’s factual findings or rationale for the proposed
combination of the applied prior art, and, in particular, do not identify any
specific “factual deficiencies” in the prior art references. Appellant’s
arguments are, therefore, unpersuasive of reversible error in the Examiner’s
rejection.
Appellant argues that “the current legal standard for obviousness is
that the ‘combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.’”
Appeal Br. 5–6 (citing KSR, 550 U.S. at 416; MPEP § 2141(I)). Appellant
argues that the result of modifying Zemla’s tire with the teachings of Grah,
Chen, and Jalageri as proposed by the Examiner would have been
unpredictable and, therefore, nonobvious under KSR because “a tire is much
more complex and unpredictable than” a combination of familiar elements
according to known methods. Appeal Br. 7–9.
Appellant’s conclusory assertion that modifying Zemla’s tire in view
of Grah, Chen, and Jalageri as proposed by the Examiner would have been
unpredictable does not identify any particular error in the Examiner’s factual
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findings or reasoning, or the Examiner’s rationale for the proposed
combination. Nor does Appellant provide any objective evidence to show
that one of ordinary skill in the art would not have had a reasonable
expectation of successfully modifying Zemla’s tire to include a shear band
structure/belt structure between the tread and the carcass as disclosed in
Grah, and to include carbon microspheres and carbon nanotubes as disclosed
in Chen, and cenospheres as disclosed in Jalageri, in the bead portion of the
tire, as proposed by the Examiner. Appellant’s arguments, therefore, do not
identify reversible error in the Examiner’s rejection.
Similar to the situation discussed above for Rejection I, even if
modifying Zemla’s tire with the teachings of Grah, Chen, and Jalageri as
proposed by the Examiner would have involved some degree of
unpredictability at the time of the effective filing date of the present
application as Appellant asserts, it is well-settled that, even in unpredictable
arts, “[o]bviousness does not require absolute predictability of success . . .
all that is required is a reasonable expectation of success.” Kubin, 561 F.3d
at 1360. The Examiner provides a sound factual basis for finding that one of
ordinary skill in the art reasonably would have expected that modifying
Zemla’s tire to include a shear band structure/belt structure between the
tread and the carcass as disclosed in Grah would reinforce the crown portion
of Zemla’s tire to enhance the tire’s performance, and modifying the rubber
foam disposed in the bead portion of Zemla’s tire to include carbon
microspheres and carbon nanotubes as disclosed in Chen, and to include
cenospheres as disclosed in Jalageri, would improve numerous mechanical
properties of Minagawa’s foam, as disclosed in Chen and Jalageri.
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We, accordingly, sustain the Examiner’s rejection of claims 1, 4, 6,
and 7 under 35 U.S.C. § 103 as unpatentable over Zemla in view of Grah,
Chen, and Jalageri, and the Examiner’s rejection of claims 8 and 10 under 35
U.S.C. § 103 as unpatentable over Zemla in view of Grah, Chen, Jalageri,
and Paetz-Lauter.
CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 7 103 Minagawa, Chen,
Jalageri
1, 6, 7
1, 4, 6, 7 103 Zemla, Grah,
Chen, Jalageri
1, 4, 6, 7
8, 10 103 Zemla, Grah,
Chen, Jalageri,
Paetz-Lauter
8, 10
Overall
Outcome
1, 4, 6–8, 10

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).

AFFIRMED