Young Gi Lee

Patent Trials and Appeals Board

Feb 1, 2021

2021000109 (P.T.A.B. Feb. 1, 2021)

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.
16/440,395 06/13/2019 Young Gi Lee OYP0028USP 9816
23413 7590 02/01/2021
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
SCHWARTZ, PHILIP N
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
02/01/2021 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOUNG GI LEE
____________

Appeal 2021-000109
Application 16/440,395
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the Applicant/Inventor Young Gi Lee
as the real party in interest. Appeal Br. 3.
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The invention relates to a tire structure that includes an air tube, a core
provided on the air tube, and a tire outer layer provided on the core. Spec.
¶¶ 1, 10. Claim 1 illustrates the invention (formatting added):
1. A tire structure capable of being combined with a rim,
comprising:
a tire outer layer capable of being combined with a rim;
an air tube disposed inside the tire outer layer; and
a core disposed between the tire outer layer and the air
tube, the core being extended to under an upper surface of the
rim,
wherein the core includes a body part and a wing part
extended from the body part,
the body part is positioned above a transverse diameter of
the air tube, and
the wing part is positioned under the transverse diameter
of the air tube and extended to under the upper surface of the
rim,
wherein, when the air tube is inflated, a compression
ratio of thickness for the body part of the core is from 10% to
50% or less,
when the air tube is inflated, a compressed thickness of
the body part includes a length in the range of 70% or less of a
transverse outer diameter of the tire structure,
the core has a shore C hardness of from 20 to 80, and
the core and the tire outer layer have a shore C hardness
ratio of from 0.2 to 1.
Appeal Br. 18 (Claims Appendix).

Appellant appeals the Examiner’s rejection of claims 1–6 under 35
U.S.C. § 103 as unpatentable over Matsunami (JP 3198050 B, published
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August 13, 2001)2 and Lopez (US 2012/0214933 A1, published August 23,
2012). Appeal Br. 5; Final Act. 2.
Appellant relies on the same line of argument to address all claims
under appeal. See generally Appeal Br. Accordingly, we select claim 1 as
representative of the subject matter claimed and decide the appeal based on
the arguments presented for claim 1.

OPINION
After review of the respective positions the Appellant provides in the
Appeal Brief and the Examiner provides in the Final Office Action, we
affirm the Examiner’s prior art rejection of claims 1–6 based essentially on
the Examiner’s fact-finding and reasoning. We add the following for
emphasis.
Independent claim 1
We refer to the Examiner’s Final Office Action for a complete
statement of the Examiner’s rejection of claim 1. Final Act. 2–3.
Appellant does not dispute the Examiner’s specific findings with
respect to Matsunami and Lopez. See generally Appeal Br. Instead,
Appellant contends that one skilled in the art would not have arrived at the
claimed invention because Matsunami and Lopez do not teach or suggest
explicitly the claimed shore C hardness ratio of from 0.2 to 1. Id. at 12.
According to Appellant, the claimed ratio addresses a specific problem

2 The Examiner relies on an English machine translation submitted by
Appellant on June 13, 2019 and entered into the record by the Examiner in
the Non-Final Office Action dated September 26, 2019 for the teachings of
this reference. We also rely on this translation in our discussion of
Matsunami.
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related to reducing debris caused by the wear between the core and the tire
outer layer that can result in a tire-puncture. Id. Appellant contends that the
cited art does not address this problem and, thus, there is no motivation for
one skilled in the art to combine the teachings of the cited art to arrive at the
claimed invention. Id. at 11–13.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness.
The Examiner finds that Matsunami teaches a tire structure that differs
from the claimed invention in that Matsunami does not teach specifically the
shore C hardness of the tire outer layer and the ratio of the hardness of the
core and the tire outer layer. Final Act. 2. The Examiner finds that Lopez
teaches it is known to use a tire outer layer having a shore C hardness of 39–
47, based on the disclosed shore A hardness of 72–803, that improves the
stiffness of the tire without increasing the hysteresis. Final Act. 2–3; Lopez
Table 3, ¶ 6. The Examiner determines that it would have been obvious to
one skilled in the art to modify Matsunami’s tire structure by replacing
Matsunami’s tire outer layer with Lopez’s tire outer layer for the benefit
noted above. Final Act. 3. Based on the respective shore C hardness values
for Matsunami’s core and Lopez’s tire outer layer, the Examiner determines
that one skilled in the art would have necessarily arrived at the claimed shore
C hardness ratio of the core to the tire outer layer. Final Act. 3; see Ans. 3,
5. Thus, the Examiner provides a reasonable basis why a person of ordinary
skill in the art would have combined the teachings of the cited art to arrive at
the claimed invention. In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988)

3 Appellant does not dispute this finding by the Examiner. See generally
Appeal Br.
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(“For obviousness under § 103, all that is required is a reasonable
expectation of success.”).
As the Examiner explains and, to the extent that Appellant in this case
argues that the claimed invention addresses a newly discovered problem, the
prior art need not suggest a combination that addresses the same problem
that the claim addresses. Ans. 4; see In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“In considering motivation in the obviousness analysis, the
problem examined is not the specific problem solved by the invention but
the general problem that confronted the inventor before the invention was
made.”). Moreover, Appellant’s arguments are based on the references not
explicitly disclosing the claimed shore C ratio. See Appeal Br. 12. That is,
Appellant does not contest the Examiner’s reasoning that the tire structure
resulting from the combined teachings of the cited art necessarily results in a
ratio of hardness of the core and the tire outer layer overlapping the claimed
range. Final Act 3; Ans. 3, 5. See Ex parte Obiaya, 227 USPQ 58, 60
(BPAI 1985) (“The fact that appellant has recognized another advantage
which would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the difference would otherwise
have been obvious.”); see also Par Pharm., Inc. v. TWI Pharm, Inc., 773
F.3d 1186, 1195 (Fed. Cir. 2014) (the concept of inherency when applied to
obviousness is present when the limitation at issue is the “‘natural result’” of
the combination of prior art elements); In re Kubin, 561 F.3d 1351, 1357
(Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the . . .
[limitation], [Appellants’] application itself instructs that [the limitation] is
not an additional requirement imposed by the claims on the [claimed
invention], but rather a property necessarily present in [the claimed
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invention].”).
Appellant further argues that combining the teachings of the cited art
as the Examiner proposes would result in changing the principles of
operation of the references because the references are silent with respect to
the claimed ratio. Appeal Br. 13–14.
This argument is also unavailing because, as the Examiner explains,
Appellant has not presented an adequate technical explanation as to how the
operating principle is modified in view of the combined teachings. Ans. 5.
Nor has Appellant directed us to any objective evidence in support of this
argument. Such an argument cannot take the place of evidence. See In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303,
315 (CCPA 1979). Moreover, by replacing Matsunami’s tire outer layer
with Lopez’s tire outer layer, the modified tire structure would still operate
as a tire structure for vehicles.
Appellant contends that the claimed ratio leads to unexpected results.
Appeal Br. 10–11, 14.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
the Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art is an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Appellant must establish the unexpected results with factual
evidence; attorney statements are insufficient to establish unexpected results.
See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a
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showing of unexpected results with evidentiary support must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); see also In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
Appellant directs attention to data in Table 5 in the Specification as
showing unexpected results from the claimed shore C ratio. Appeal Br. 11;
Spec. ¶¶ 131 (Table 5), 132. According to Appellant, Table 5 shows that the
wear of the tire outer layer starts earlier at ratios outside the claimed range of
shore C ratios. Appeal Br. 10; Spec. ¶ 132.
We have considered Appellant’s evidence and agree with the
Examiner’s analysis that the evidence is insufficient to show
nonobviousness. Ans. 5.
Moreover, it is unclear whether the showing that Appellant relies
upon compares the inventive tire structure to the closest prior art
(Matsunami). In addition, Appellant does not point to any portion of the
Specification that acknowledges the inventive tire structures as providing an
unexpected result. Instead, the Specification discloses that “the core and the
tire outer layer may have a shore C hardness ratio of from 0.2 to 1, but may
not be limited thereto.” Spec. ¶ 120 (emphasis added).
Thus, on this record, Appellant has not explained adequately why one
of ordinary skill in the art would have found the evidence relied upon
unexpected or why that evidence is reasonably commensurate in scope with
the claims.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1–6 for
the reasons the Examiner presents and we give above.
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DECISION SUMMARY

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6 103 Matsunami, Lopez 1–6

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