Pirelli Tyre, S.p.A.

Patent Trials and Appeals Board

Mar 3, 2020

14536641 - (D) (P.T.A.B. Mar. 3, 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.
14/536,641 11/09/2014 Marco NAHMIAS NANNI 13260.0007-01000 8141
22852 7590 03/03/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO NAHMIAS, LUCA GIANNINI, and
ANGELA LOSTRITTO
Appeal 2019–003591
Application 14/536,641
Technology Center 1700
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
SHELDON M. MCGEE, Administrative Patent Judges.
FRANKLIN, 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 22–42. We have jurisdiction under
35 U.S.C. § 6(b). We heard oral arguments on February 13, 2020. On page
4 of the Appeal Brief, Appellant indicates that the present application is

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Pirelli Tyre S.p.A..
Appeal Br. 4.
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related to U.S. Application No. 14/575,015 (having Appeal No. 2019–
003593).
We AFFIRM. Nevertheless, because our obviousness analysis relies
on new factual findings and reasoning not previously communicated to
the Appellant, we designate our decision as including a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) so as to preserve the procedural
safeguards that must be afforded to the Appellant. See In re Stepan Co., 660
F.3d 1341, 1346 (Fed. Cir. 2011) (“Had the Board labeled its rejection as a
new ground of rejection, Stepan could have reopened prosecution to address
the newly-alleged deficiencies in its Declaration with the examiner.”); In re
Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same
statutory basis and the same prior art references, alone, is insufficient to
avoid making a new ground of rejection when the Board relies on new facts
and rationales not previously raised to the applicant by the examiner.”).

CLAIMED SUBJECT MATTER
Claim 22 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
22. A tire for motorcycle wheels comprising:
a carcass structure comprising at least one carcass layer;
a belt structure applied in a radially outer position with respect to said
carcass structure;
a tread band applied in a radially outer position with respect to
said belt structure;
and
at least one elastomeric material layer arranged between said
carcass structure and said belt structure,
wherein said elastomeric material layer extends over a surface
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substantially corresponding to a development surface of said belt
structure, and
wherein said elastomeric material layer comprises an
elastomeric material that comprises fibres formed of magnesium
and/or aluminium chain silicates, said fibres having nanometric
dimensions.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Asari2 (Derwent abstract
and full translation)
JP 2005-219523 Aug. 18, 2005
Augustin US 2,689,841 Sept. 21, 1954
Santilli US 4,419,273 Dec. 6, 1983
Cassidy GB 1327197 Aug. 15, 1973
Rome US 7,910,511 B2 Mar. 22, 2011
Bergman US 7,649,043 B2 Jan. 19, 2010
Odidi US 9,078,827 B2 July 14, 2015
Pagano US 6,698,483 B2 Mar. 2, 2004

REJECTIONS
1. Claims 22–29, 31–35, and 40–42 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Asari and further in view of Augustin.
2. Claim 30 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Asari and Augustin as applied in claim 29 above and
further in view of Cassidy and/or Santilli and/or Rome .

2 The Examiner refers to this reference as “Asazato” in the record, but we
identify this reference as “Asari” which is the correct name of the inventor
for this reference.
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3. Claims 22–42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bergman and further in view of Augustin and/or Cassidy
and Odidi, and optionally in view of Pagano.
OPINION
Our Decision addresses the claims separately to the extent they are so
argued by Appellant. 37 C.F.R. § 41.37(c)(1)(iv).
Upon consideration of the evidence and each of the respective
positions set forth in the appeal record, we find that the preponderance of
evidence supports the Examiner’s findings and conclusion that the subject
matter of Appellant’s claims is unpatentable over the applied art with regard
to Rejection 3. Accordingly, we affirm Rejection 3. However, we reverse
Rejections 1 and 2.

Rejections 1 and 2
We reverse Rejections 1 and 2 for the same reasons that we reversed
Rejections 1–3 in related U.S. Application No. 14/575,015 (having Appeal
No. 2019–003593). See pages 3–8 of our Decision in Appeal No. 2019–
003593.

Rejection 3
We refer to pages 5–7 of the non-final Office Action dated June 4,
2018 regarding the Examiner’s findings and position for Rejection 3. It is
noted that we have thoroughly considered Appellant’s arguments made in
both the Appeal Brief and in the Reply Brief in making the following
determinations.
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Appellant argues that the Examiner disregards the “for motorcycle”
limitation and that a motorcycle tire has particular features, such as a ratio of
transverse curvature, f/C, typically greater than or equal to 0.20. Appeal Br.
23. In response, the Examiner states that the fact that a motorcycle tire
“typically” has a certain structural feature fails to require that such a feature
is present. Ans. 4. The Examiner also states that the tires of Asari and
Bergman have the capability of being mounted on a motorcycle and thus,
these tires are seen to satisfy the claimed tire construction having an
intended use of being used in a motorcycle application. Id. We agree with
the Examiner’s stated position and are unpersuaded by Appellant’s
arguments in this regard.
On pages 23–24 of the Appeal Brief, Appellants submit that
Bergman’s inclusion of sepiolite is an error in its disclosure. Appellant
refers to ¶¶ 22–23 of the Declaration by Inventor Luca Giannini (hereafter
“the Giannini Declaration”)3. Appeal Br. 25. Appellant also argues that
there is no mention of fibers formed of chain silicates as claimed. We are
unpersuaded by this line of argument. As stated by the Examiner, Bergman
specifically teaches a tire including an elastomeric material layer or gas
barrier layer comprising sepiolite. Ans. 6. The Examiner states that, as
acknowledged by Applicant and affirmed by the disclosure of Rome, for
example, sepiolite is, by its very nature, a fibrous chain silicate. Id. The
Examiner states that the fact that Bergman also teaches the use of layered

3 On page 3 of the Answer, the Examiner notes that the correct copy of this
declaration was filed on January 28, 2019 and this is the copy we use herein
and is the copy that Appellant discusses on page 29–32 of the Appeal Brief.
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silicates, such as montmorillonite, fails to render the claims unobvious. Id.
The Examiner states that Bergman expressly teaches
acomposition comprising sepiolite. Id. We agree.
Appellant also argues that the disclosure of Bergman does not teach or
suggest a barrier layer between the carcass structure and a belt structure.
Appeal Br. 26. We agree with the Examiner’s stated response made on page
6–7 of the Answer. Therein, the Examiner states that Bergman teaches an
exemplary embodiment in which barrier layer 50 is arranged as an inner
most tire component. The Examiner states that, however, Bergman further
teaches that the barrier layer can be arranged in alternate locations, such as
in the middle of the carcass 12. See Bergman, col. 9, ll. 42–44. The
Examiner states that Pagano is applied to evince the conventional
arrangements of similar gas barrier layers and such includes between a
carcass and a belt structure. Pagano, col. 4, ll. 7+. Ans. 7. The Examiner
emphasizes that the desired reduction in air flow within the tire structure is
achieved when the gas barrier layer is positioned in any number of locations,
including that required by the claims. The Examiner states that absent a
conclusive showing of unexpected results, one skilled in the art would have
found it obvious to position the gas barrier layer of Bergman in accordance
to the claimed invention. Ans. 7.
With respect to Odidi, Appellant argues that the disclosure does not
teach or suggest that layer silicates and chain silicates are suitable
equivalents for the purpose of Bergman's compositions. Appeal Br. 27. We
agree with the Examiner’s position on page 7 of the Answer. The Examiner
explains that in light of Appellant’s previous arguments that Bergman erred
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in its disclosure with regard to sepiolite, the Examiner states that Odidi was
cited as evidence that layered silicates and chain silicates are disclosed in the
same applications (Odidi, col. 12, ll. 1+), and that there is nothing in
Bergman that suggests the inclusion of sepiolite was in error. Ans. 7.
As to claims 36–38 and 40–42, Appellant argues that there is no
rationale as to why a person of ordinary skill in the art would apply the
modified Bergman composition to a specific motorcycle tire. Appeal Br.
28. Reply Br. 17. We are unpersuaded by this line of argument for the
reasons presented by the Examiner on pages 7–8 of the Answer. Therein,
the Examiner states that the benefits of reduced gas permeability are
highly desirable in all tire constructions, including motorcycle tires. The
Examiner states that Bergman is broadly directed to various articles that are
designed to hold a gas under pressure, such as tires (Bergman, col. 1, ll. 15+).
The Examiner states that motorcycle tires, in a similar manner to passenger
car tires, construction tires, etc., are designed to hold gas under pressure and
as such, the disclosed benefits are applicable to any tire construction,
including motorcycle tires. With specific respect to claim 40, the Examiner
states that the claimed inclusion of a zero degree layer is well known and
conventional, and that this position has been previously set forth by the
Examiner and remains unchallenged. Ans. 7.
Appellant further refers to the Giannini Declaration as rebuttal
evidence. Appeal Br. 29–32.
In response, on page 8 of the Answer, the Examiner refers to
Examples 7 and 7a, Comparative Example 8, and Table 3 of the declaration,
but such examples or table 3 do not exist in the Giannini Declaration which
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Appellant discuss on pages 29–32 of the Appeal Brief. So, it appears the
Examiner considered the wrong declaration.
Regarding the Giannini Declaration, we note that Appellant can rebut
a prima facie case of obviousness by showing “unexpected results,” i.e.,
showing that the claimed invention possesses a superior property or
advantage that a person of ordinary skill in the art would have found
surprising or unexpected. See In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir.1997) (quoting In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). The
burden is on Appellant to show why the comparative data establishes
unexpected results. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellant has not shown why this comparison is believed to be with the
closest prior art. See In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979).
Furthermore, Appellant must also explain why the showing is commensurate
in scope with the claimed subject matter. See In re Boesch, 617 F.2d 272,
276 (CCPA 1980). In the instant case, Appellant has not adequately done
so. We are thus unpersuaded by the Giannini Declaration and by
Appellant’s discussion of it in the Appeal Brief and Reply Brief.
In view of the above, we affirm Rejection 3. Because it appears the
Examiner did not properly consider Appellant’s proffered evidence of
unexpected results, i.e., the Giannini Declaration, we designate our
affirmance of Rejection 3 as a new ground of rejection.
CONCLUSION
We affirm the Examiner’s decision.

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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Reversed Affirmed New
Ground
22–29,
31–35,
40–42
103 Asari, Augustin 22–29,
31–35,
40–42

30 103 Asari, Augustin,
Cassidy, Santilli,
Rome
30
22–42 103 Bergman,
Augustin, Cassidy,
Odidi, Pagano
22–42 22–42
Overall
Outcome
22–42 22–42

FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:

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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

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

AFFIRMED; 37 C.F.R. § 41.50(b)