Ex Parte Fabing et al

Patent Trial and Appeal Board

Aug 3, 2016

12996296 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/996,296 03/22/2011
27799 7590 08/05/2016
Cozen O'Connor
277 Park A venue, 20th floor
NEW YORK, NY 10172
FIRST NAMED INVENTOR
Daniel Fabing
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5460-182PUS 300396.000 6537
EXAMINER
DYE, ROBERT C
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
patentsecretary@cozen.com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL FABING, SEBASTIEN FUGIER, MATTHIEU DURAT,
CYRIL GUICHON, and CLAUDE AUDEBERT 1
Appeal2015-001205
Application 12/996,296
Technology Center 1700
Before BRADLEY R. GARRIS, MARK NAGUMO, and
MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections under 35 U.S.C. § 103(a) (1) of independent claim 1 as
unpatentable over Cantz (US 3,757,841, issued Sept. 11, 1973) in view of
Kuroda (JP 59-096005, published June 2, 1984), Koyama et al. (US
6,003,575, issued Dec. 21, 1999) ("Koyama"), and Kojima (US 4,934,424,
1 Compagnie Generale Des Etablissements Michelin and Michelin
Recherche et Technique S.A. are identified as the real parties in interest.
App. Br. 1.
Appeal2015-001205
Application 12/996,296
issued June 19, 1990); (2) of claim 1 as unpatentable over Ogawa (JP 62-
094402, published Apr. 30, 1987) in view of Cantz, Koyama, and Kojima;
and (3) of dependent claims 2-12 as unpatentable over the preceding
references alone or in combination with additional prior art. We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellants claim a tire for driving on ice comprising a tread, at least
one stud 30 having a part 31 projecting from a tread block 40 with the part
having a minimum cross section Sm, and at least two recesses 201-203
being associated with the at least one stud, wherein for each stud the sum of
the volumes of the recesses is greater than or equal to the product of the
minimum cross section Sm multiplied by 50 (claim 1, Figs. 7-8).
A copy of claim 1, taken from the Claims Appendix of the Appeal
Brief, appears below.
1. A tire for driving on ice, comprising:
a tread having a rolling surface configured to come into contact with
the ground when the tire is rolling along;
at least one substantially cylindrical stud having a longitudinal axis, a
part of the stud projecting from a tread block on the rolling surface, the
intersection between the stud and the plane tangential to the portion of the
rolling surface around the stud forming a contour C, that part of the stud that
projects from the rolling surface having a minimum cross section Sm, Sm
corresponding to the smallest cross section of the said part in any plane
containing the radial direction that passes through the point of intersection
between the longitudinal axis of the stud and the plane tangential to the
portion of the rolling surface around the stud; and
at least two recesses in the tread block, each recess forming, on the
rolling surface, a closed contour G, the recesses being associated with the
stud in that the minimum distance D between the contours C and G is less
than or equal to 1 cm;
wherein, for each stud, the sum of the volumes Vn of the recesses
associated with the stud, expressed in mm3, is greater than or equal to the
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Appeal2015-001205
Application 12/996,296
product of the minimum cross section Sm of that part of the stud that
projects from the tread, expressed in mm2, multiplied by a length of
50mm.
Appellants correctly argue that none of the references applied against
independent claim 1 contains any teaching or suggestion of the relationship
between the volumes of the recesses and the minimum cross section of the
stud as recited in the last clause of the claim (App. Br. 9, 11). Nevertheless,
the Examiner concludes that it would have been obvious to combine various
features of the applied references in such a manner that the resulting tire
would possess the recited relationship.
In the rejection based on Cantz, the Examiner proposes providing the
tread surrounding each stud of Cantz with a plurality of cuts to allow the
stud to tilt thereby reducing road damage as taught by Kuroda and to provide
these cuts ("sipes"2) with the sipe widths taught by Koyama and Kojima for
use on studless tires whereby the resulting tire would include recess volumes
and a stud minimum cross section having the relationship recited in claim 1
(Final Action 3---6). More specifically, the Examiner concludes that it would
have been obvious to provide the cuts for reducing tread rigidity surrounding
the stud as taught by Kuroda with the sipe widths taught by Koyama and
Kojima for studless tires in view of Kojima's teaching that sipes reduce
tread rigidity (id. at 4--5).
2 The Specification defines "sipe" as a "narrow incision, typically between
0.3 and 1.5 mm wide, as compared with a groove whose width generally
exceeds 2 mm." (Spec. i-f 48.) [The term comes from John F. Sipe, Elastic
Tire and Method of Making Same, U.S. Patent No. 1,452,099 (April 17,
1923), which teaches improving the cushioning, gripping and tractive
qualities of a tire by providing uniformly spaced transverse incisions or cuts,
now called "sipes" into the tread.]
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Appeal2015-001205
Application 12/996,296
The deficiency of this specific conclusion is that the lowered rigidity
desired by Kuroda performs a function distinct from the function performed
by the lowered rigidity taught by Kojima. As the Examiner seems to
appreciate (Final Action 3), Kuroda's cuts in the tread perform the function
of locally lessening the rigidity of the tread surrounding the stud so that the
stud is allowed to tilt thereby reducing road damage (Kuroda 5). On the
other hand, however, the sipes described by Kojima perform the function of
lowering block rigidity "to improve the adherence characteristics to ground
and further to increase the block edge effect or ground holding effect based
upon the circumferential ridge lines extending in the tire rotating direction of
the block" (Kojima col. 1, 11. 27-31 ). The Examiner fails to provide
evidence or rationale for the proposition that sipe widths adequate for
lowering block rigidity in order, for example, to improve the adherence
characteristics to ground as taught by Kojima also would be adequate to
perform the function of Kuroda's cuts, namely, lessening the rigidity of the
tread surrounding the stud so that the stud is allowed to tilt in the manner
desired by Kuroda.
For this reason, we agree with Appellants that the Examiner has failed
to establish a prima facie case of obviousness for combining the teachings of
Cantz, Kuroda, Koyama, and Kojima as proposed in the rejection (App. Br.
9). The record before us reflects that the Examiner's obviousness
conclusion is based on impermissible hindsight. Therefore, we do not
sustain the§ 103 rejections based on Cantz.
As for the rejections based on Ogawa, the Examiner concludes that it
would have been obvious to provide the studs of Ogawa with the dimensions
taught by Cantz, to provide the sipes in the claimed vicinity of Ogawa's
studs with widths and depths taught by Koyama and Kojima for studless
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Appeal2015-001205
Application 12/996,296
tires, and to provide these sipes with a length of at least 17 mm as shown in
Figure 1 of Ogawa thereby obtaining a tire having the recess volumes and
stud minimum cross section relationship defined by claim 1 (Final Action 7-
10).
Regarding Ogawa's sipes having a length of at least 17 mm, we
emphasize that the Examiner merely states that "the sipes are shown to be
very long (see Fig. 1)" (Final Action 9) and that "[a] person having ordinary
skill in the art would readily recognize the sipe pattern of Ogawa suggests
the sipes in the vicinity of the stud have a total length of more than 17mm"
(id. at 9-10). The Examiner proffers no evidence in support of these
statements. Further, the Examiner provides no evidence that sipes were
known in the prior art to have the widths and depths taught by Koyama and
Kojima in combination with the at least 17 mm length said to be shown by
Ogawa.
For these reasons, the record again reflects that the Examiner's above
obviousness conclusion is based on impermissible hindsight rather than the
teachings of the applied references. As a consequence, we again agree with
Appellants that the Examiner has failed to establish a prima facie case of
obviousness for combining Ogawa, Cantz, Koyama, and Kojima in the
manner proposed (App. Br. 11 ). It follows that we also do not sustain the
§ 103 rejections based on Ogawa.
The decision of the Examiner is reversed.
REVERSED
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