Ex Parte Cesarini et al

Board of Patent Appeals and Interferences

Feb 10, 2009

10679357 (B.P.A.I. Feb. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICCARDO CESARINI
and GIANFRANCO COLOMBO
____________

Appeal 2008-5792
Application 10/679,357
Technology Center 1700
____________

Decided:1 February 11, 2009
____________

Before TERRY J. OWENS, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge, dissenting in part.

Opinion for the Board filed by HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5792
Application 10/679,357

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 39-62 and 111-158. We have jurisdiction under 35
U.S.C. § 6(b). 2
We AFFIRM.

BACKGROUND
The invention relates to a tire tread design. Claim 111 is illustrative:
111. A tire for a vehicle, comprising:

a carcass structure;

a belt structure coaxially associated to the carcass structure; and

a tread coaxially extending around the belt structure;

wherein the tire comprises a curvature ratio not greater than 0.1,

wherein the carcass structure comprises a central crown portion
and two sidewalls,

wherein each sidewall ends in a bead for anchoring the tire to a
rim of a wheel,

wherein the tread comprises an equatorial zone and two
shoulder zones,

wherein the equatorial zone extends on both sides of an
equatorial plane of the tire,

wherein the two shoulder zones are disposed in axially-opposed
positions with respect to the equatorial zone,

2 An oral hearing was held in this case on January 13, 2009.
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wherein the tread further comprises a plurality of transversal
grooves,

wherein each transversal groove comprises an equatorial groove
portion in the equatorial zone and a shoulder groove portion in
one of the shoulder zones,

wherein the equatorial groove portion of each transversal
groove has a uniform width;

wherein the transversal grooves are circumferentially
distributed in groups alternately extending from the axially-
opposed shoulder zones,

wherein the groups of transversal grooves define a plurality of
substantially-continuous tread portions in the equatorial zone,

wherein each substantially-continuous tread portion ends at an
equatorial groove portion of a same transversal groove of an
axially-opposed group of transversal grooves,

wherein each of the transversal grooves ends at a predetermined
distance from the equatorial groove portion of a longest
transversal groove of the axially-opposed group of transversal
grooves so that all of the transversal grooves end within the
equatorial zone, and

wherein each substantially-continuous tread portion comprises
a width wider than an adjacent transversal groove; and

wherein the substantially-continuous tread portions extend from
said axially-opposed shoulder zones towards the equatorial
plane of the tire to form a structurally stiff grid of elastomeric
material portions fitted in with one another.

The Examiner relies upon the following prior art references in
the rejections of the appealed claims:
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Hargraves US 1,996,418 April 2, 1935
Hoover US 2,011,552 Aug. 13, 1935
Sommer US 2,104,532 Jan. 04, 1938
Madec US 4,446,902 May 08, 1984

Kuhr GB 2 224 472 A May 09, 1990
(hereinafter GB 472)
Akiyama JP 04-0154408 May 27, 1992
(as translated; hereinafter JP 408)
Himuro EP 0 565 270 A1 Oct. 13, 1993
Himuro JP 06-247109 Sept. 06, 1994
(as translated; hereinafter JP 109)
Guspodin EP 0 722 851 A1 July 24, 1996

Admitted Prior Art Specification page 3, lines 1-7
(hereinafter AAPA)

The Examiner has made the following rejections under 35 U.S.C.
§ 103(a):
(a) claims 135-141, 146, 149, 152, and 153 as being unpatentable over
Hoover in view of Madec;
(b) claims 39-53, 55-58, 61, 62, 111-125, 127-130, 133-149, 151-154,
and 157-158 as being unpatentable over JP 408 in view of GB 472, JP 109,
AAPA, and optionally Sommer;
(c) claims 60, 132, and 156 as being unpatentable over the
combination of JP 408, GB 472, JP 109, AAPA, optionally Sommer, and
Guspodin;
(d) claims 39-53, 55-58, 111-125, 127-130, 135-149, and 151-154, as
being unpatentable over Sommer in view of GB 472, AAPA and optionally
at least one of Hargraves and Japan ‘109;
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(e) Claims 54, 126, and 150 as being unpatentable over the
combination of Sommer, GB 472, AAPA and optionally at least one of
Hargraves and Japan ‘109, and Hirumo; and
(f) Claims 59-62, 131-134 and 155-158 as being unpatentable over the
combination of Sommer, GB 472, AAPA and optionally at least one of
Hargraves and Japan ‘109, and Guspodin.
FIRST ISSUE ON APPEAL
The 103 Rejection based on Hoover
Appellants do not argue any of the claims subject to this ground of
rejection separately with any reasonable specificity (App. Br. 40-41). We
therefore select independent claim 135 to represent this issue on appeal3.
The only argument Appellants present to rebut this obviousness
rejection is that Hoover does not meet one of the claimed limitations.
Specifically, Appellants contend that Figure 1 of Hoover shows that
each plurality of transversal grooves defines three ribs (i.e. “tread portions”)
versus the two ribs as relied upon by the Examiner, and that one of these
three ribs does not meet the claimed “each . . . tread portion ends at . . . a
same transversal groove” as recited in claim 135 (App. Br. 40, 41, Claims
Appendix p. xvi; Reply Br. 4-5)
The Examiner contends that Hoover describes a tire tread as claimed,
and that each plurality of transversal grooves defines two ribs that each end
at the same transversal groove.
The first issue on appeal arising from the contentions of Appellants
and the Examiner are whether the Appellants have shown that the Examiner

3 See copy of claim 135 in the Claims Appendix of Appellants’ Brief.
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reversibly erred in rejecting claim 135 because Hoover does describe that
each tread portion ends at “a same transversal groove of an axially opposed-
group of transversal grooves” as recited in claim 135.
We answer this question in the negative.

PRINCIPLES OF LAW
Claim Construction
During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although claims are to be
interpreted in light of the specification, limitations from the specification are
not to be read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184-85
(Fed. Cir. 1993); see also, e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir.
1989). An applicant seeking a narrower construction must either show why
the broader construction is unreasonable or amend the claim to expressly
state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir.
1997).
It is well established that the transitional term “comprising” is
inclusive or open-ended and does not exclude any additional, unrecited
elements. See Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir.
2004).
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact are presented in further sections of
this opinion, including the analysis sections.
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1. Claim 135 recites that the groups of grooves “define” a plurality of
tread portions (see claim 135, Claims Appendix p. xvi).
2. The plain meaning of the word “define” encompasses “to determine
or fix the boundaries or extent of” and “to make clear the outline or form
of”4.
3. Figure 1 of Hoover is reproduced below (as marked up by the
Examiner):

4. Figure 1 of Hoover as marked up by the Examiner shows that a
plurality of grooves of Hoover (i.e., two grooves) determine or make clear
the outline of a plurality of tread portions (i.e., two ribs labeled A1, A2, or
B1, B2, or C1, C2).
5. Claim 135 is directed to a tire “comprising” the recited elements
and also repeatedly uses the word “comprises” throughout the body of the
claim.

4 “Define”, The Random House College Dictionary 348 (1973).

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6. Claim 135 does not exclude additional unrecited tread portions that
do not end at the “same transversal groove”.
ANALYSIS
The Appellants only dispute is with the Examiner’s claim
interpretation of claim 135. Appellants contend that each plurality of
grooves of Hoover as relied upon by the Examiner “must necessarily
include” three ribs and not only two ribs as the Examiner contends (Reply
Br. 4-5). Appellants contend that therefore each tread portion does not end
at a same transversal groove as required by claim 135 (id.).
Claim 135 recites that the groups of grooves “define” a plurality of
tread portions (that is, the two ribs of Hoover). There is nothing in the
claim, nor any definition in Appellant’s Specification, that limits the word
“define” in the narrow sense that Appellants urge. A fair reading of the
claim permits the Examiner’s interpretation thereof - that a plurality of
grooves of Hoover (i.e., two grooves as shown by the Examiner) determine
or make clear a plurality of tread portions (i.e., two ribs of Hoover as shown
by the Examiner). The alternating sets of two grooves and two ribs as
delineated by the Examiner encompass the claimed limitations (see, Ans. 4,
5, 27-29). The alternating ribs (i.e., tread portions) delineated by the
Examiner each end at a same transversal groove as required by claim 135.
Appellants arguments regarding the “substantially-continuously tread
portion” in Hoover appears to be inconsistent with what Appellants regard as
“substantially-continuously tread portion” in their own Figure 2. Substantial
continuity is not destroyed by narrow slits, such as longitudinal slits 25-27
(Spec. 19, ll. 25-30), shown in Appellants’ Figure 2, which is reproduced
infra (see Finding of Fact numbered 7). The continuity of the tread portion
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in the equatorial zone above the dotted-dashed line towards the bottom of
Figure 2 with the next “substantially-continuous tread portion” cannot be
disputed. There is no dispute that the tread design shown in Figure 2 is
within the scope of the claimed subject matter on appeal, so the claims must
be broad enough to read on tires according to that Figure. In the same way,
the continuity of tread portion A2 with C1 (as marked by the Examiner in
modified Hoover Figure 1, supra), does not remove Hoover Figure 1 from
the scope of the claimed subject matter. Moreover, the presence of the open
ended transitional phrase “comprising” makes it clear that the tire tread may
includes other tread portions (e.g., some that may be continuous with
“substantially continuous tread portion[s]” that end at a same transversal
groove). Claim 135 also states that the tread “comprises a plurality of
transversal grooves” (emphasis provided), which further emphasizes that
other unrecited grooves may exist in the tire tread, as well as other unrecited
tread portions.
Thus, however the “substantially-continuous tread portion[s]” are
apportioned, the language of the claims is broad enough to read on the
pattern of Hoover Figure 1. Accordingly, the Examiner’s position is
reasonable.
Appellants have therefore not shown that the Examiner erred in
establishing that the tire tread of claim 135 is obvious over the combined
teachings of Hoover and Madec.
SECOND ISSUE ON APPEAL
The 103 Rejection based on JP 408
Appellants do not argue any of the claims separately with any
reasonable specificity, except for independent claims 39, 111, 135 (App. Br.
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18-31).5 We therefore select independent claims 39, 111, and 135 to
represent this issue on appeal.
Appellants contend that the combination of JP 408 with GB 472, JP
109, AAPA, or Sommer does not teach or suggest all the claimed limitations
(App. Br. 18-29). Appellants further contend that the Examiner has failed to
set forth sufficient motivation to combine the teachings of JP 408 with GB
472, JP 109, AAPA, or Sommer, since one would be changing the principle
of operation of JP 408 (App. Br. 29-31; Reply Br. 6-7).
The Examiner contends that the combination of references as
modified does teach or suggest all the claim limitations (see generally Ans.).
The Examiner’s position is that one of ordinary skill would have found it
obvious to “connect the tread portions” of JP 408 (in other words, “omit” the
zig-zag circumferential groove 7 of JP 408) in light of the teachings of GB
472 which would have motivated the artisan to remove all circumferential
grooves in a tire tread design (e.g., Ans. 9-11). The Examiner additionally
cites JP 109 and Sommer as evidence that known similar tire tread designs
“connected” the tread portions (id.).
The second issue on appeal is: Have Appellants shown reversible
error in the Examiner’s determination that a person having ordinary skill in
the art would have found it obvious to arrive at the claimed invention in
view of the applied prior art combination of JP 408 with GB 472, JP 109,
AAPA, or Sommer?
We answer this question in the negative.

5 No features of independent claims 58, 130, and 154, each drawn to a set of
four tires versus a single tire, were separately argued versus their companion
independent claims 39, 111, and 135, each drawn to a single tire.

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ADDITIONAL PRINCIPLES OF LAW
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727
(2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).
Facts relevant to a determination of obviousness include (1) the scope
and content of the prior art, (2) any differences between the claimed
invention and the prior art, (3) the level of skill in the art, and (4) any
relevant objective evidence of obviousness or non-obviousness. KSR, 127 S.
Ct. at 1734; Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740.
The test for obviousness is what the combined teachings of the
references would suggest to those of ordinary skill in the art. In re Young,
927 F.2d 588, 591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA
1981).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
It has been established that "in general, a reference will teach away if
it suggests that the line of development flowing from the reference’s
disclosure is unlikely to be productive of the result sought by the applicant”.
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See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“The degree of teaching
away will of course depend on the particular facts”).
“The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed in the . . . application . . . [M]ere disclosure of alternative designs
does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
The Federal Circuit has stated that “[a]n obviousness determination is
not the result of a rigid formula disassociated from the consideration of the
facts of a case. Indeed, the common sense of those skilled in the art
demonstrates why some combinations would have been obvious where
others would not.” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1161 (Fed. Cir. 2007).
It is well established that while the features of an apparatus claim may
be recited functionally, the apparatus must be distinguished from the prior
art in terms of structure, rather than function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). Where an apparatus is claimed functionally
rather than structurally and the PTO has reason to believe that a functional
limitation is an inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject matter shown to be
in the prior art does not possess the characteristic. Schreiber, 128 F.3d at
1478.

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ADDITIONAL FINDINGS OF FACT
7. Appellants’ Figure 2 is reproduced below:

Figure 2 illustrates inclined alternating transversal grooves (15) and
tread portions (18) of the tire tread. The center line Y-Y is the equatorial
plane (Spec. 17:8-12).
8. JP 408 teaches a high performance tire tread design with alternating
transversal grooves and tread portions (Figs. 1, 2). The tire has good water
drainage, “equivalent to those of a conventional tire” (e.g., bottom of p. 7)
and reduced noise (pp. 6-8).
9. GB 472 describes a tire tread with “steeply orientated herringbone-
like profile” of alternating grooves and ribs (tread portions) such that the
tread portions are continuously interconnected in the central region of the
tire tread (p. 6: 6-30; Fig. 2).
10. GB 472’s tire tread avoids circumferential grooves that are known
in prior art tread designs for water drainage (p. 1:18-34). GB 472 teaches
that their long slanted grooves provide both effective drainage and minimal
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noise as well as other improved properties, including “rolling resistance” (p.
2:6-28).
11. A side by side comparison of Figure 2 of JP 408 and Figure 2 of
GB 472 is reproduced below:

Figure 2 of JP 408 and Figure 2 of GB 472 have been altered by the
Examiner to add the dark markings to fill in the transverse grooves (e.g.,
Ans. 10, 29). The zig-zag groove 7 in the center area of JP 408’s tire tread
has not been filled in.
12. The longest marked groove of each alternating set of grooves of
JP 408 crosses the equatorial plane (i.e., the center plane).
13. JP 109 describes a pneumatic radial tire having low noise and
good water drainage wherein the tread contains alternating inclined
transverse grooves and ribs (tread portions) such that the tread portions on
either side of the tire are continuously interconnected near the central region
of the tire tread (Fig. 1; abstract; pp. 12-13, ¶ [0019]-[0024]).
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14. JP 109 describes that the inclined grooves may form either an
asymmetric array or be arranged so that the equatorial plane is between them
(p. 9, ¶ [0012]). Some of the inclined grooves cross the equatorial plane
(Fig. 1).
15. Sommer describes a tire wherein the tread contains alternating
inclined transverse grooves and ribs (tread portions) such that the tread
portions on either side of the tire are continuously interconnected in the
central region of the tire tread (Fig. 8, 8a). Some of the transverse grooves
cross the equatorial plane (id.).
ANALYSIS
We fully agree with the Examiner’s findings of fact and conclusion of
obviousness based on the teachings of JP 408 with GB 472, JP 109, AAPA,
or Sommer (Ans. 6-16, 29-39, 45-46). We add the following primarily for
emphasis.
Appellants’ contention that the combination of JP 408 with GB 472,
JP 109, AAPA or Sommer does not teach or suggest all the claimed
limitations is unpersuasive (App. Br. 18-29). Appellants are attacking the
obviousness of the combination merely by improperly attacking the
references individually, when the rejection is instead based upon the
combined teachings of the references. The test for obviousness is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.
Appellants conclusion that the combination would not result in the
“structurally stiff grid” of independent claim 111 (App. Br. 26) is not well
taken, since once one connects the tread portions of JP 408 as proposed by
the Examiner (by omitting the zig-zag groove 7 of JP 408), this claim would
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indeed encompass the modified tread design (see, e.g., Ans. 29-30). This is
further supported by the breadth of this claim limitation, as “stiff” is a
relative term. Likewise, contrary to Appellants’ contentions, once one
connects the tread portions of JP 408 as proposed by the Examiner, the
limitations of independent claim 39 and independent claim 135 (e.g., that
“stresses . . . are discharged along the axis”) would also encompass the
modified tread design, as fully explained by the Examiner (e.g., Ans. 14, 15,
36-38).
Appellants further contend that there is no motivation or suggestion to
combine the teachings of the applied references (App. Br. 29-30; Reply Br.
6-7). None of Appellant’s arguments convince us of reversible error in the
Examiner’s conclusion of obviousness.
Appellants main argument is that JP 408’s zig-zag circumferential
groove 7 is essential to its design, and that its removal as proposed by the
Examiner would interfere with the functioning of the tire (App. Br. 29-30).
We disagree.
JP 408’s main focus is eliminating straight longitudinal grooves in a
tire design (p. 3-4). Contrary to Appellants’ contention, JP 408 nowhere
describes that groove 7 is “essential” to its tire design. Appellants have not
cited anything in the prior art references that would discourage or dissuade
one from the path followed by Appellants. Gurley, 27 F. 3d at 553. The
possibility of more than one alternative in the prior art for the specific tire
tread design does not teach away from any of these alternatives because
Appellants have not pointed to anything which criticizes, discredits or
otherwise discourages the solution claimed in the application. Fulton, 391
F.3d at 1201.
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As the Examiner pointed out, the applied prior art as a whole suggests
the desirability of groups of alternately arranged slanted transversal grooves
located within a tire tread. The GB 472, JP 109 and Sommer references
exemplify that, in general, it was well known in the prior art to make these
types of grooves in such a manner that the tread portions between them are
“connected” as discussed in detail by the Examiner (e.g., Ans. 9-10).
Furthermore, as the Examiner pointed out, the directional tread patterns of
JP 408 and GB 472 are both structurally and functionally similar (Ans. 10,
11). Combining the known features of alternating inclined transverse
grooves, as taught in JP 408, with the known feature of inclined transverse
grooves uninterrupted by any circumferential grooves, as taught in GB 472,
would have obtained the predicted and expected result of a tire with good
drainage, low noise, insensitivity to rain grooves and high rolling resistance
(see, e.g., Ans. 35).
JP 408 teaches the desirability of reduced noise and describes that
their tire tread pattern reduces noise (see, e.g., p.7, third para.; “this structure
makes it possible to improve the uniformity of the tire while reducing the
pattern noise”). Similarly, GB 472 describes that the “herringbone-like
profiling” tread design, which is similar to that of JP 408 but without any
center circumferential groove as in JP 408, results in “minimal noise” as
well (p. 2, ll. 15-23). Therefore, one of ordinary skill in the art would have
reasonably expected that eliminating the center groove of JP 408 would still
result in a tire tread of reduced noise. This further supports the obviousness
of the tire tread design required by claim 39, 111 and 135.
Moreover, Appellants’ arguments miss the thrust of the Examiner’s
rejection, i.e., the obviousness of ensuring that the tread portions of JP 408
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are connected as exemplified in each secondary reference. It is well settled
that it is not necessary for a finding of obviousness that all the features of
one reference be bodily incorporated into the invention of another reference.
In re Griver, 354 F.2d 377, 381(CCPA 1966); see also In re Billingsley, 279
F.2d 689, 691 (CCPA 1960) (prima facie obvious to provide grooves as
shown in a tire tread of one prior art reference into the differing specific tire
tread of another prior art reference).
Recently, in KSR Int'l Co. v. Teleflex Inc., the Supreme Court advised
that the analysis in support of a conclusion of obviousness need not seek out
express teachings that are directed to the subject matter of Appellants’ claim
since “the inferences and creative steps that a person of ordinary skill in the
art” would have employed can be considered. KSR, 127 S. Ct. at 1740-41.
One of ordinary skill in the art is “also a person of ordinary creativity, not an
automaton”. KSR, 127 S. Ct. at 1742. Certainly, skill in the art is presumed
and based on the collective teachings of the applied prior art, we find that
one of ordinary skill in the art would have appreciated that connecting the
tread portions in the center of JP 408’s tire would have achieved the
predictable result of ensuring increased stability (e.g., rolling resistance,
non-skid facility and absorption of lateral forces). Id. at 1739, 1740. See
also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (the
expectation of success need only be reasonable, not absolute).
Further, it is well established that it is not necessary that the prior art
suggest the combination to achieve the same advantage or result discovered
by applicant. See, e.g., Kahn, 441 F.3d at 988, (Fed. Cir. 2005) (“In
considering motivation in the obviousness analysis, the problem examined is
not the specific problem solved by the invention but the general problem that
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confronted the inventor before the invention was made”). See also, KSR,
127 S. Ct. at 1742 (“[A]ny need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.”). One of ordinary skill in
the art would have appreciated that one way to ensure a reliable and more
stable tire tread design for JP 408 would have been to interconnect the tread
portions as is well known in similar tire tread designs as exemplified by GB
472, JP 109, and Sommer.
Additionally, Appellants have presented no pertinent evidence of
unexpected results to rebut the Examiner’s prima facie case. It is axiomatic
that the burden rests with Appellants to establish that the results are
unexpected, based on comparisons with the closest prior art, and
commensurate in scope with the claimed subject matter. See, e.g., In re
Kulling, 897 F. 2d 1147, 1149 (Fed. Cir. 1990). We determine that
Appellants have not met this burden. Although Appellants state that
evidence in the Specification shows “unexpected increase in performance of
the claimed tire as compared to conventional tires” (App. Br. 20)6, no
comparison of the invention has been made to the closest prior art; that is, a
tire tread with alternating groups of slanted transversal grooves (such as in
JP 408). Further, the tests results are based on specific configurations of the
transversal groove angles of the front and rear tires (see, e.g., Spec. 21:18-
20), which are not commensurate in scope with the claimed subject matter.

6 Appellants do not refer to this evidence (i.e., the test results in their
Specification) with respect to the alternative § 103 rejections (based on
Hoover or Sommer as the primary reference) in their briefs. However, to the
extent they may rely on these test results, this evidence is inadequate to
show unexpected results for the same reasons given here.
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We have considered Appellant’s other arguments in the Appeal Brief
and Reply Brief, but do not find any of them persuasive.
Thus, we sustain the Examiner’s § 103 rejection of claims 39, 111,
and 135, as well as the claims not separately argued, based on the combined
teachings of JP 408 with GB 472, JP 109, AAPA or Sommer.
With respect to the § 103 rejection of dependent claims 60, 132 and
156, Appellants present no additional arguments other than those relied upon
for independent claims 39, 58, 111, 130, 135, and 1547.
Thus, we also sustain the Examiner’s § 103 rejection of claims 60,
132 and 156.
THIRD ISSUE ON APPEAL
The 103 Rejection based on Sommer
Appellants do not argue any of the claims separately with any
reasonable specificity, except for independent claims 39, 111, 135 (App. Br.
31-40). We therefore select independent claims 39, 111, and 135 to
represent this issue on appeal.
Appellants contend that the combination of Sommer with GB 472,
AAPA, Hargraves, and JP 109 does not teach or suggest all the claimed
limitations; specifically, Sommer does not teach that the longest groove
crosses the equatorial plane as required by claim 39, nor is the grid of
Sommer “structurally stiff” as required by claim 111, nor are stresses
“discharged along the axis” as required by claim 135 (App. Br. 32-37).

7Claims 60, 132 and 156 depend from claims 58, 130, and 154, respectively.
No features of independent claims 58, 130, and 154, each drawn to a set of
four tires versus a single tire, were separately argued versus their companion
independent claims 39, 111 and 135, each drawn to a single tire.
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Appellants further contend that the Examiner has failed to set forth sufficient
motivation to combine these prior art teachings, since Sommer does not
indicate that the tire tread design therein is in need of improvement (App.
Br. 38-40).
The Examiner contends that the combination of references as
modified does teach or suggest all the claim limitations (Ans. 16-23). The
Examiner maintains that the longest groove of Sommer does indeed cross
the equatorial plane (e.g., Ans. 40), and that Appellants’ claim language
regarding “structurally stiff” and “stresses . . . are discharged along the axis”
do not define over the applied prior art.
The third issue on appeal is: Have Appellants shown reversible error
in the Examiner’s determination that a person having ordinary skill in the art
would have found it obvious to arrive at the claimed invention in view of the
applied prior art combination of Sommer with GB 472, AAPA, Hargraves,
and JP 109 because Sommer does not teach or suggest that the longest
groove crosses the equatorial plane, or that the tread forms a “structurally
stiff grid”, or that “stresses are discharged along the axis” of Sommer’s tire?
We answer this question in the negative.

ADDITIONAL FINDINGS OF FACT
15. Sommer describes a tire tread design with slanted (i.e., inclined)
transverse grooves arranged in alternate sets on each side of a tire’s center
plane (i.e., the equatorial plane). (See Fig. 8, 8a).

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17. Fig 8a of Sommer is reproduced below:

Fig 8a show a zig-zag strip 55 of tire tread running with the center
plane of the tire.
18. Sommer states:
The grooves are of different length in such a manner that
in the center plane of the tire a zig zag stripe exists which may
be defined as a rib of small width substantially running parallel
with the center plane of the tire.

(Sommer p. 3, col. 1 , ll. 13-17 ; emphasis provided).
19. One of ordinary skill in the art would have immediately
appreciated from Figures 8, 8a and their description in Sommer that the
longest groove of each set in Sommer may cross the equatorial plane in
order to form the zig-zag strip described therein. Sommer does not
discourage or disparage extending the longest groove past the equatorial
plane.
20. One of ordinary skill in the art would have known that inclined
grooves that cross the equatorial plane are known in similar tire tread
designs (see, e.g., Hargraves which describes a tire tread design wherein
some of the alternating inclined grooves (Fig. 1, 5) from each shoulder cross
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the equatorial plane; see also FF 13, 14 regarding JP 109 which depicts tire
tread designs wherein some of the inclined grooves may cross the equatorial
plane (Fig. 1, 3) and exemplifies an alternative design wherein the inclined
grooves do not cross the equatorial plane (Fig. 2)). 21. Sommer’s tire tread
portions form a “structurally stiff grid” in that Sommer’s tire is designed for
automobiles running on wet as well as dry roads (e.g., p.1, ll. 1-12).
22. Appellants’ Specification does not explicitly define or limit the
“stiffness” for the “structurally stiff grid” of the invention.
23. Appellants’ Specification does not define or quantify the amount
of “stresses imparted to the substantially-continuous tread portions [that] are
discharged along the axis [of the tire]” (claim 135; emphasis provided).
24. It would have been immediately appreciated by one of ordinary
skill in the art that at least some stresses imparted to substantially-continuous
tread portions of Sommer’s tire during tire rolling would be discharged
along the axis of the tire.
25. Appellants have provided no evidence to show that stresses
imparted to the substantially-continuous tread portions of Sommer’s tire
during tire rolling will not be discharged along the axis of the tire.
ADDITIONAL PRINCIPLE OF LAW
It is well established that “[d]rawings are evaluated ‘on the basis of
what they reasonably disclose and suggest to one skilled in the art”. See In
re Aslanian, 590 F.2d 911, 914 (CCPA 1979); see also In re Mraz, 455 F.2d
1069, 1072 (CCPA 1972) (although patent drawings need not be drawn to
scale, this does not mean that relative proportions shown in the drawings
should be disregarded.)

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ANALYSIS
We agree with the Examiner’s findings of fact and conclusion of
obviousness based on the teachings of Sommer with GB 472, AAPA,
Hargraves and JP 109 (Ans. 16-21; 39-46). We add the following primarily
for emphasis.
Contrary to Appellants’ contention, we find that Sommer clearly
suggests that the longest groove of each set crosses the equatorial plane (i.e.
the center plane) of the tire, as required by independent claim 39, in order to
form the zig-zag strip described in Sommer. Sommer’s drawings can and
should be considered for everything they reasonably appear to show in the
context of the entire document. We do not agree with Appellants that the
written description of Sommer only supports that the grooves “terminate at
the center plane” (App. Br. 32-33). The description of Sommer that the
“grooves and ribs [run] from the sides to its center plane” (p. 3, ll. 1-3) is
consistent with finding that some of the grooves cross the center plane, when
viewed in light of the further written description that requires a zig zag
stripe/rib “substantially running parallel with the center plane”, as well as
the Figures 8, 8a. Further, the claim language encompasses the longest
groove extending only a minute amount past the center plane. Sommer also
does not in any way discourage or disparage the use of a groove that runs
past the center line to form the zig zag stripe.
However, even assuming arguendo that Sommer’s grooves end at the
center plane as Appellants contend, one of ordinary skill in the art would
have found it prima facie obvious to extend at least the longest groove of
each set of Sommer past the center line to form the zig-zag rib as described
in Sommer. This is supported by other similar tire tread designs cited by the
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Examiner which depict the longer inclined grooves extending past the center
plane (e.g., Hargraves and JP 109).
Appellants’ argument that the grid of Sommer is not “structurally
stiff” as required by claim 111 is not well taken, since “stiff” is a relative
term, and Appellants’ Specification does not define the “stiffness” of the
“structurally stiff grid” of the invention.
While Appellants are free to functionally recite the characteristics of
the features of an apparatus claim, the apparatus must be distinguished from
the prior art in terms of structure, rather than function. See Schreiber, 128
F.3d at 1477. Since the tire tread structure recited in independent claim 135
encompasses the structure of Sommer’s tire, as modified by the additionally
applied prior art, the function of discharging stresses along the axis would
have naturally followed. Appellants provide no evidence or convincing line
of technical reasoning to explain why “stresses” imparted to Sommer’s tire
during tire rolling would not be “discharged along the axis of the tire”, as
required by claim 135.
We agree with the Examiner that the independent claims fail to
require that the transversal grooves of one side of the tire tread end at the
same “predetermined distance from the equatorial groove portion of a
longest transversal groove” of the opposed side of the tire tread (Ans. 19-
20). While the Specification discloses such an embodiment, we must be
careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004). Furthermore, Appellants have had the
opportunity to amend the claims to achieve more precise claim coverage,
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i.e., to limit the claim to each transversal groove ending at the same
predetermined distance from the longest equatorial groove, but did not do so.
See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007) (“Because Icon could have amended its claims to more clearly define
‘stably retain’ and did not do so, it now must submit to the Board’s
interpretation.”).
We therefore find it unnecessary to rely upon Hargraves for this
feature8.
Appellants’ contention that no motivation exists to modify Sommer,
because Sommer does not suggest any need for improvement, is not well
taken. There is no requirement under 35 U.S.C. § 103 that a prior art
reference expressly indicate a need for improvement.
The Examiner explained in detail the rationale for the obviousness
rejection (e.g., Ans. 16-23). Appellants do not dispute the Examiner’s
findings with respect to modifying Sommer to provide the tire construction
(e.g., carcass, sidewalls, beads, belt) of GB 472, nor with respect to
modifying Sommer to provide the admitted prior art curvature ratio, nor with
respect to modifying Sommer to provide grooves with narrower width in the
shoulder groove portion as taught in JP 109. Appellants’ main contentions
are with Sommer per se, and have been addressed above.
We have considered Appellant’s other arguments in the Appeal Brief
and Reply Brief, but do not find any of them persuasive.

8 The Examiner relied upon Hargraves, if needed, for the feature of ending
each transverse groove of Sommer at the same predetermined distance (Ans.
19-20).
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Thus, we sustain the Examiner’s § 103 rejection of claims 39, 111,
and 135 as well as not separately argued claims 40-53, 55-58, 112-125, 127-
130, 136-149, and 151-154, based on the applied prior art.
With respect to the § 103 rejections of dependent claims 54, 126, 150,
and 59-62, 131-134, and 155-158, Appellants present no additional
arguments other than those relied upon for independent claims 39, 58, 111,
130, 135, and 1549.
Thus, we also sustain the Examiner’s § 103 rejections of these claims.
CONCLUSION
First, Appellants have not shown that the Examiner reversibly erred in
rejecting claim 135 as unpatentable over Hoover and Madec because,
Hoover does not describe that each tread portion ends at “a same transversal
groove of an axially opposed-group of transversal grooves” as recited in
claim 135.
Appellants have also not shown that the Examiner reversibly erred in
establishing a prima facie case of obviousness of the claimed invention over
the combined teachings of JP 408 with GB 472, JP 109, AAPA, or Sommer.
Finally, Appellants have not shown that the Examiner reversibly erred
in establishing a prima facie case of obviousness of the claimed invention
over the combined teachings of Sommer, GB 472, AAPA, Hargraves, and JP
109.

9No features of independent claims 58, 130, and 154, each drawn to a set of
four tires versus a single tire, were separately argued versus their companion
independent claims 39, 111 and 135, each drawn to a single tire.
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ORDER
All of the rejections made by the Examiner under 35 U.S.C. § 103(a)
are affirmed.
The Primary Examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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NAGUMO, Administrative Patent Judge, dissenting in part.
While I agree with the conclusions of my colleagues as to the
affirmance of Rejection (a), based on Hoover, and as to Rejections (d)
through (f), based on Sommer, I must, respectfully, dissent from the findings
and conclusions as to Rejections (b) and (c), based on JP 408.
In my view, the critical limitation in Rejections (b) and (c) is:
[X] wherein each substantially-continuous tread portion ends at
an equatorial groove portion of a same transversal groove of an
axially-opposed group of transversal grooves
(Br., Claims App. ix (Claim 111); bracketed labels added.)
JP 408
The overall structure of the tire tread taught by JP 408 is most clearly
shown in Figure 1, which is reproduced below:

{JP 408 Figure 1 is said to show a tire tread structure.}
Comparison with larger-scale JP 408 Figure 2, reproduced supra in
the majority opinion, shows that circumferential groove [7] is the long “zig-
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zag” groove meandering along the center of the tread. Shorter transverse
grooves [4] of the group connect into the longest transverse groove, and the
connection of the longest transverse groove of the group starts a new group.
forming another segment of circumferential groove [7].
The Examiner determined that limitation [X] would have been
obvious in view of the combined teachings of JP 408 and the other
references because it would have been obvious to terminate transverse
grooves [4] before they connect with the longest groove [4] from the
opposing set of transverse grooves. (Ans. 9-10.) The Examiner noted that
this procedure would result in substantially continuous tread portions ending
at a transverse groove, and also would result in the elimination of the
circumferential groove [7]. (Ans. 9.)
In my view, Appellants’ argument that the zig-zag circumferential
groove [7] is critical to the design and function of the JP 408 tire tread
[Br. 29-30] is supported by at least a preponderance of the evidence of
record. JP 408 describes an invention in which circumferential continuous
grooves are described as playing a critical role in the structure and function
of the tire. In addition to providing drainage, the plurality of parallel
continuous grooves are said to define a noise-limiting structure.
In the words of JP 408:
block rows are surrounded by a plurality of parallel continuous
grooves that are extended diagonally from the center region to
the shoulder regions on said tread surface instead of straight
grooves that run in the tire’s circumferential direction; and in
which said block rows . . . cross one another at the center region
in units of 1 or multiple blocks . . .
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(JP 408 4, 2d full para.; emphasis added.) The blocks form cycle pitches
[A], [B], and [C], which, as shown in Figure 1, supra, have different lengths.
According to JP 408, the random alignment in the circumferential direction
of the tire leads to the reduced noise. (Id. at 5, first para.) Moreover, the
groove area ratios of the cycle pitches, and the depths of the multiple
continuous grooves, are said to be the same “in the circumferential cross
section of the tire.” (Id.) In the words of JP 408, “this structure makes it
possible to improve the uniformity of the tire while reducing the pattern
noise.” (JP 408 7, 3d para.)
Neither the Examiner nor my colleagues have shown that the
modifications of the JP 408 tread pattern required to meet the limitations of
Appellants’ claims are consistent with the reasons JP 408 gives for the
properties and function of its tire. Thus, Appellants’ contention (which is
supported by the disclosure of JP 408)—that these features are critical
aspects of the invention taught by JP 408—has not been rebutted. Because
the rejection maintained by the Examiner “destroys” this reference without
providing adequate justification, I conclude that Rejections (b) and (c) must
be REVERSED.

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