Ex Parte Imhoff et al

Patent Trial and Appeal Board

Nov 27, 2013

12210355 (P.T.A.B. Nov. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SERGE JULIEN AUGUSTE IMHOFF
and YVES DONCKELS
__________

Appeal 2012-004519
Application 12/210,355
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/210,355

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1, 2, 5-8, and 10, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to a pneumatic tire. Representative
claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated
September 29, 2011 (“Br.”).
1. A pneumatic tire comprising:
a carcass reinforced by a carcass ply;
at least one belt ply disposed radially outward of the carcass ply
in a crown portion of the pneumatic tire; and
at least one insert located adjacent the carcass ply in a sidewall
portion of the carcass, the insert providing support for the tire load to
enable the pneumatic tire to operate under extreme conditions,
the carcass ply comprising at least one composite cord having a first
core yarn with a second outer yarn and an outer metallic filament both
wrapped around the first core yarn such that the first core yarn has a
modulus less than a combined modulus of the second outer yarn and
the outer metallic filament,
the second outer yarn being selected from the group consisting
of: aramid, PK, PBO, carbon fiber, glass fiber, and ceramic,
the outer metallic filament being selected from the group
consisting of: Super, Ultra, and Mega tensile steels, titanium, and
aluminum, with a filament diameter in the range of 0.08 mm to
0.41 mm.
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Claims 1, 2, 5-8, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakata1 in view of Imai,2 Donckels,3 and Vanneste.4
The Appellants’ arguments are focused solely on claim 1. Therefore, for
purposes of this appeal, claims 2, 5-8, and 10 stand or fall with the patentability of
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
B. DISCUSSION
The Examiner finds Nakata teaches a tire construction including a composite
cord which comprises a combination of rayon and aramid fibers and a high carbon
steel fine wire. Ans. 4.5 The Examiner finds Nakata is silent with respect to the
specific type of steel. However, the Examiner finds “the claimed types of steel
represent those that are conventionally used in tire cord constructions, as shown for
example by Vanneste (paragraph 52).” Id. at 5-6. The Examiner concludes that
“[o]ne would have found it obvious to use any of the known types of steel absent a
conclusive showing of unexpected results.” Id. at 6.
Referring to the Examiner’s statement that one “‘would have found it
obvious to use any of the known types of steel,’” the Appellants contend the
Examiner’s conclusion of obviousness is based on impermissible hindsight. Br. 5,
9.
We disagree. The Examiner finds:
[T]he cord of Nakata includes an outermost steel wrapping wire or
filament, wherein said filament demonstrates “high strength” and low

1 U.S. 5,436,076, issued July 25, 1995.
2 EP 0 331 501 A2, published September 6, 1989.
3 U.S. 2007/0017620 A1, published January 25, 2007.
4 U.S. 2006/0179813 A1, published August 17, 2006.
5 Examiner’s Answer dated October 19, 2011.
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elongation properties (Column 2, Lines 40+). . . . One of ordinary
skill in the art at the time of the invention would have been motivated
to look at additional tire constructions and determine the type of steel
commonly used where “high strength” is desired. Vanneste is
similarly directed to a tire construction and describes a variety of steel
filaments demonstrating high strength, including super high tensile
filaments and ultra high tensile filaments (Paragraph 52).
Ans. 6-7.
Based on these findings, the Examiner concludes “one would have found it
obvious to select any high strength steel filament commonly used in tire cord
constructions and such includes those detailed by the claimed invention.” Id. at 7.
Thus, it is clear that the Examiner’s conclusion of obviousness is not based on
impermissible hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the claimed
invention was made and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.”).
As for the claimed “composite cord,” the Appellants argue the Examiner
merely states that a composite cord is “‘well recognized’” and “‘extremely well
known.’” Br. 8. The Appellants argue “this is not some rational underpinning to
support the Examiner’s legal conclusion of obviousness under KSR[.]” Id.
We disagree. The Examiner finds Nakata is silent as to the arrangement of
the disclosed composite cord. However, the Examiner explains that “one would
have to determine what arrangement defines a ‘composite cord’ before
manufacturing the cord of Nakata.” Ans. 8. The Examiner relies on Imai as
evidence of the arrangement of a composite cord which is said to be “well known
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and conventional in the tire industry.” Id. Based on these findings, the Examiner
concludes that “[o]ne would have found it obvious to form the composite cord of
Nakata with the conventional arrangement disclosed by Imai[.]” Id. The
Appellants have failed to direct us to any evidence to the contrary.
Finally, the Appellants argue “the result of changing functional components
of the pneumatic tire of Nakata et al., such as the carcass ply structure, on the
performance of that pneumatic tire, cannot be predicted, and is therefore
unpredictable and nonobvious under KSR.” Br. 6. For support, the Appellants
rely on a table which is said to show the “interrelationships between tire
performance and tire components.” Id. at 7. The Appellants explain these
interrelationships as follows:
[T]he carcass ply structure affects the other components of a
pneumatic tire (e.g., carcass affects apex, belt, overlay, tread, etc.),
leading to a number of components interrelating and interacting in
such a way as to affect a group of functional properties (noise,
handling, durability, rolling resistance, comfort, high speed
performance, and total mass), resulting in a completely unpredictable
and complex composite. Thus, changing even one component can
lead to directly improving or degrading as many as . . . ten functional
characteristics, as well as altering the interaction between that one
component and as many as four other structural components.
Id. at 7-8.
The Appellants further contend that “[o]nly through extensive
experimentation has the carcass ply structure of claim 1 been revealed as an
excellent, unexpected, and unpredictable option for a pneumatic tire.” Id. at 8.
It is unclear on this record whether the Appellants are relying on the table to
establish unpredictability or unexpected results. Nonetheless, the table and the
conclusions drawn therefrom amount to nothing more than attorney argument. See
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In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (“Argument in the brief does not
take the place of evidence in the record.”). The Appellants do not identify the
source of the table, the nature of the “extensive experimentation,” and/or the data
used to create the table. In sum, the record is devoid of any factual evidence
establishing that one of ordinary skill in the art would have considered the
interrelationships between tire performance and tire components “unpredictable”
or “unexpected.”
For the reasons set forth above, the weight of the evidence supports the
Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejection is
sustained.
C. DECISION
The decision of the Examiner is affirmed.
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

Cdc