The Goodyear Tire & Rubber Company

Patent Trials and Appeals Board

Jun 30, 2020

2019006767 (P.T.A.B. Jun. 30, 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.
15/665,532 08/01/2017 Sebastien Willy FONTAINE DN2016-007-D01 2803
27280 7590 06/30/2020
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
EXAMINER
STABLEY, MICHAEL R
ART UNIT PAPER NUMBER
3611
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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 SEBASTIEN WILLY FONTAINE,
ARMAND RENÉ GABRIEL LECONTE, FREDERIC NGO,
and CLAUDE ERNEST FELIX BOES
____________

Appeal 2019-006767
Application 15/665,532
Technology Center 3600
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN,
and WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1–11 under 35 U.S.C. § 112(a) for failure to comply with
the enablement requirement. 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(a). Appellant identifies The Goodyear Tire & Rubber
Company as the applicant and real party in interest. Appeal Br. 3.
Appeal 2019-006767
Application 15/665,532
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THE INVENTION
Appellant’s invention relates to motor vehicles. Spec. ¶¶ 1–2.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A support assembly for a vehicle comprising:
at least two spherical tires travelling on a road surface and
rotating relative to the road surface and the vehicle; the tires
having an outer tread layer comprising a material having a first
stiffness when dry and a second stiffness when wet, the first
stiffness being greater than the second stiffness; and
a drive system magnetically driving rotation of the tires
relative to the drive system itself such that no portion of the drive
system physically contacts the tires or the road surface, the drive
system magnetically levitates the vehicle a first predetermined
distance from the tires, at least one of the spherical tires
comprising:
an outer tread layer comprising a filler selected from the
group consisting of carbon black and silica and a copolymer, the
copolymer comprising: a polymeric backbone chain derived
from a monomer comprising at least one conjugated diene
monomer and, optionally, at least one vinyl aromatic monomer;
and polymeric sidechains bonded to the backbone chain, the
sidechains comprising a polymer capable of exhibiting a lower
critical solution temperature (LCST) and, optionally, at least one
additional diene based elastomer.
OPINION
The Examiner considers Appellant’s invention to be non-enabled.
The crux of the Examiner’s findings is repeated, verbatim, below:
With only one drawing related to the drive system
(Figure 1) not being prior art, and only two paragraphs of the
specification ([0081] and [0082]) describing how the drive
system works, the level of experimentation required to figure
out the invention would be considered undue. Namely, how the
drive system magnetically drives the tires without physically
contacting the tires and how at least two such spherical tires
would be able to safely levitate an entire vehicle without being
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Application 15/665,532
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physically connected are not sufficiently described in the
specification to be properly enabled. The current application
uses reference number 1110 to encompass the entire drive
system, without giving much more detail than that in the
specification. Applicant’s admitted prior art US 9,090,214 to
Bernstein, however, uses at least ten reference numbers and
approximately 23 paragraphs in the specification to thoroughly
describe the drive system operates of a single embodiment
(Figure 3). This level of detail provides one having ordinary
skill in the art the proper enablement to be able to understand,
recreate, and use the drive system. It is unclear how the current
invention’s drive system is able to levitate within the tire while
also being able to magnetically drive it without contact, or how
it is able to provide a strong enough levitation force to support a
vehicle the size of a car.
Non-Final Act. 2–3.
Appellant’s argument in traverse extends from page 4 to page 6 of the
Appeal Brief. Appeal Br. 4–6. Approximately one-half of the argument
section is devoted to verbatim repetition of the Examiner’s Final Action. Id.
at 4–5. The actual argument is less than one page in length. Id. at 5–6. The
first paragraph of the argument “submits,” in conclusory fashion, that the
claims are “fully enabled.” Id. at 5. The second paragraph merely cites to
general legal principles in the Manual of Patent Examining Procedure
(MPEP). Id. at 6. The remainder of Appellant’s argument, in its entirety, is
reproduced below.
As shown in Fig. 1, the present invention is directed to a
support assembly (1000) for a vehicle (901) comprising at least
two spherical tires (1010) travelling on a road surface and
rotating relative to the road surface and the vehicle (901); the
tires (1010) having an outer tread layer (1030) comprising a
material having a first stiffness when dry and a second stiffness
when wet, the first stiffness being greater than the second
stiffness (Specification, paragraphs 4, 5, and 81); and a drive
system (1100) magnetically driving rotation of the tires (1010)
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Application 15/665,532
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relative to the drive system (1100) itself such that no portion of
the drive system (1100) physically contacts the tires (1010) or
the road surface, the drive system (1100) magnetically levitates
the vehicle (901) a first predetermined distance from the tires
(1010) (Specification, paragraphs 4, 5, and 81).
Id. at 6. The argument section concludes with a single sentence declaring
that all eleven pending claims are in condition for allowance. Id.
We have reviewed Appellant’s disclosure and agree with the
Examiner’s findings that disclosure of Appellant’s magnetic levitation
systems is limited to Figure 1 and paragraphs 81 and 82 of the Specification.
See Spec. ¶¶ 81, 82, Fig. 1. Element 1120, which is the part of the drive
system that magnetically levitates vehicle 901 from tires 1010, is depicted in
Figure 1 as a black box. Id. Fig. 1. The accompanying description in the
Specification is limited to the following teaching.
Another part 1120 of the drive system 1100 may magnetically
levitate the vehicle 901 the first predetermined distance from
the tires 1010. Either part 1110 or 1120 of the drive
system 1100 may be a magnetically passive component that
responds to variations of a magnetic field. A corresponding
other part 1120 or 1110 of the drive system 1100 may be a
magnetically active component that generates variations in the
magnetic field. Either component 1110, 1120 may itself
generate a constant magnetic field.
Spec. ¶ 81. With respect to the magnetic motive mechanism within
tire 1010, the Specification contains, in its entirety, the following
description.
As shown in FIG. 1, a support assembly 1000 for a
vehicle 901 in accordance with the present invention may
include at least two spherical tires 1010, a drive system 1100
emoting the tires 1010 such that the vehicle 901 may be
transported along a road surface. The vehicle 901 may be a car,
golf cart, motorcycle, military transport, etc. The drive
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Application 15/665,532
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system 110 magnetically levitates the vehicle 901 a first
predetermined distance from the tires 1010 and magnetically
maintains the drive system 110 at a constant orientation relative
to the road surface. A first part 1110 of the drive system 1100
may magnetically levitate itself a second predetermined
distance from an inner surface 1020 of the tires 1010 such that
the part 1110 is entirely enclosed within an interior space 1025
of each tire 1010. . .
The spherical tires 1010 may include several spherical
layers 1030. Some of the layers 1030 may function similarly to
layers of a conventional pneumatic tire, such as the tread, the
belts, the overlay, the carcass, etc. At least one of the
layers 1035 may include a material responsive to a magnetic
field variations such that each of the tires 1010 may be
controllably rotated about a spherical center 1011 of the tires
relative to the vehicle 901, the drive system 1100, and the road
surface.
Id. ¶¶ 81–82.
In contrast to the foregoing abbreviated teaching disclosure regarding
the magnetic levitation systems of the invention, the Specification devotes
copious verbiage to describing a prior art device that is disclosed in
Bernstein (US 9,090,214 B2, iss. July 28, 2015), entitled Magnetically
Coupled Accessory For a Self-Propelled Device (hereinafter “Bernstein”).
See Spec. ¶¶ 17, 41–80, Figs. 3–6. Bernstein is assigned to Orbotix, Inc.
(now known as Sphero, Inc.). Bernstein discloses a toy robot that is
reminiscent of the BB-8 droid that achieved fame in the Stars Wars movie
franchise.2

2 https://sphero.com/pages/legacy-products accessed June 17, 2020;
https://en.wikipedia.org/wiki/Sphero accessed June 17, 2020;
techcrunch.com/tag/orbotix accessed June 17, 2020.
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Application 15/665,532
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The Bernstein device features a small hemispherical device that sits
atop a sphere and magnetically levitates above it. See Bernstein, col. 2,
ll. 23–26. Bernstein’s lower spherical housing 302 rotates in a manner that
allows the overall device to be self-propelled. Id. col. 8, ll. 49–63. Such
rotation is achieved via motors 322, 324 that drive wheels 318, 320 in a
more-or-less conventional, electro-mechanical manner. Id. col. 9, l. 39 –
col. 10, l. 36.
Essentially, Appellant is claiming a major leap forward from the
teachings of Bernstein’s toy robot. The structure that is levitated above the
spherical housing or wheel is not merely an external accessory device 330 to
a toy that is substantially smaller than an underlying spherical housing or
tire, but rather constitutes a “vehicle.” Claims App. claim 1. The
Specification describes that vehicle 901 may be a car, golf cart, motorcycle,
or military transport. Spec. ¶ 81. There is no context in the Specification
that would support a conclusion that Appellant is referring to a toy car, a toy
motorcycle, or a toy military transport, etc. See generally Spec.
Furthermore, whereas Bernstein’s toy entails a single spherical housing or
tire, Appellant’s invention contemplates a vehicle with at least 2 spherical
tires. Id. (motorcycle); Claims App. claim 1 (“at least two spherical tires”).
A person of ordinary skill in the art attempting to practice Appellant’s
invention would reasonably expect to be provided with a teaching regarding
how to coordinate the actions and motions of a plurality of spherical tires.
To be enabling, a patent’s specification must “teach those skilled in
the art how to make and use the full scope of the claimed invention without
‘undue experimentation.’” ALZA Corp. v. Andrx Pharms., LLC, 603
F.3d 935, 940 (Fed. Cir. 2010). Factors to be considered in determining
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Application 15/665,532
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whether a disclosure would require undue experimentation include (1) the
quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
It is not necessary to discuss each Wands factor in an enablement rejection.
In re Hillis, 484 F.App’x 491 (Fed. Cir. 2012); MPEP § 2164.04. Rather,
the rejection should focus on those factors, reasons, and evidence that lead to
the conclusion that the specification fails to teach how to make and use the
claimed invention without undue experimentation. Id.
The Examiner finds, correctly, that Appellant’s disclosure provides
little in the way of direction or guidance (Wands factor 2). Non-Final Act. 3.
The Examiner further finds that, at the time of the invention, the state of the
art of magnetically levitated vehicles and drive components was not
sufficiently developed that Appellant could reasonably have omitted detailed
disclosure of such in the Specification (Wands factor 5). Id.; see Streck, Inc.
v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012)
(explaining that a patent need not teach, and preferably omits, what is well
known in the art). The Examiner further finds, and Appellant does not
dispute, that at the time of the invention, there was no prior art even close to
disclosing the concept supporting a vehicle with no physical contact between
the drive system, tires, and vehicle (Wands factors 6 and 7). Id.
The Examiner correctly finds and concludes that Appellant’s claims
are non-enabled. We sustain the Examiner’s Section 112 non-enablement
rejection of claims 1–11.
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Application 15/665,532
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CONCLUSION
Claims
Rejected
§ Basis Affirmed Reversed
1-11 112 Non-Enablement 1-11

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