Ex Parte Kleffmann et al

Patent Trial and Appeal Board

Apr 10, 2017

12842235 (P.T.A.B. Apr. 10, 2017)

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.
12/842,235 07/23/2010 JENS KTEFFMANN CON-2009-136 3661
24131 7590 04/12/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
DYE, ROBERT C
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
04/12/2017 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):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS KLEFFMAN, KLAUS PETERS, and
THOMAS BUCHINGER-BARNSTORF1
Appeal 2015-000660
Application 12/842,235
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and CHRISTOPHER L. OGDEN,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 1, 3-19, and 21-23, which are all of
the claims pending in the above-identified application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “Continental Reifen Deutschland
Gmbh of Hannover, Germany, a subsidiary of Continental Aktiengesellschaft of
Hannover, Germany.” Appeal Brief filed May 21, 2014 (“App. Br.”) at 1.
2 Final Action entered March 12, 2014 (“Final Act.”) at 3-14; the Examiner’s
Answer entered August 14, 2014 (“Ans.”) at 1-8.
Appeal 2015-000660
Application 12/842,235
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a pneumatic vehicle tire for
heavy duty, commercial utility vehicles” which “has a tread with at least two
circumferential grooves” running in the circumferential direction and dividing the
tread into circumferential ribs. Spec. 12. Figure 1, which illustrates a partial
perspective view of such pneumatic vehicle tire, is reproduced below:
Fig, 1
Figure 1 shows a tread 1 having four circumferential ribs 2 which are separated
from one another by circumferential grooves 3 having peripheral edges 4 running
around in the circumferential direction. Spec. 136. The maximum depth ti of the
circumferential grooves 3 is between 10 mm and 25 mm. Id. The width of the
circumferential grooves 3 is between 5 mm and 20 mm. Id. These circumferential
grooves 3 may be running in a zigzag form. Spec. 138. “The envelope
symbolized by the auxiliary line h, the periphery of the tread and the flank portions
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5 at the shoulders of the tread 1 enclose a gross volume V . . . Spec. 1 37. “The
groove volume Vr . . . is the sum of the ‘air volumes’ of all the wide
circumferential grooves 3 — determined between the groove boundaries and an
envelope of the periphery of the tread.” Id. “[T]he proportion of the groove
volume Vr in relation to the gross volume V is between 1% and 10%, preferably at
most 7%, and in particular between 1% and 4%.” Id. According to paragraph 2 of
the Specification,
[a] gross tread volume is defined by an envelope running in the tread
parallel to the periphery of the tread and touching the lowest
circumferential groove(s) from the inside radially, together with the
periphery of the tread and flank portions at the shoulders. A groove
volume is defined by all the grooves in the tread.
Details of the appealed subject matter are recited in illustrative claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief (with
disputed limitations in italicized form):
1. A pneumatic vehicle tire for a commercial utility vehicle, comprising:
a tread formed with at least two circumferential grooves running in a
circumferential direction of the tire and dividing said tread into
circumferential ribs, said tread having an outer periphery and, adjacent said
periphery and on either side thereof, shoulders with flank portions;
said tread having a gross tread volume defined between:
an outer envelope located on a surface area of said tread and
traversing all of said grooves formed in said tread; and
an inner envelope running parallel to said outer envelope inside said
tread and touching a radially inner end of a deepest said circumferential
groove and extending to said flank portions;
a volume of all of said grooves formed in said tread together defining
a groove volume; and
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Application 12/842,235
said groove volume in said tread amounting to between 1% and 7% of
said gross tread volume.
App. Br. 13, Claims Appendix.
The Examiner maintains, and Appellants request review of, the following
grounds3 of rejection:
1. Claims 1, 5-7, 15, and 18 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Riches (US 3,556,190 issued Jan. 19, 1971),
3 With respect to Rejections 1, 2, 5, and 6, Appellants only focus on claim 1 and do
not present any separate arguments against the other rejected claims. App. Br. 4-
12. Therefore, for at least those four rejections on this appeal, we limit our
discussion to claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 12/842,235
Ravenhall (US 3,534,798 issued Oct. 20, 1970), Campbell (US 2,756,797 issued
Jul. 31, 1956), and Overman (US 2,265,543 issued Dec. 9, 1941);
2. Claims 1, 6, and 18 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Matsuda (US 4,884, 606 issued Dec. 5, 1989);
3. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Matsuda and Campana (US 5,795,415 issued Aug. 18, 1998);
4. Claims 3, 4, and 10-14 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Matsuda and Buchinger4 (DE 10 2007 016 929 A1
published Oct. 9, 2008);
5. Claims 1, 3, 6, 18, and 21-23 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Overman and Ravenhall;
6. Claims 1, 3-8, and 21-23 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Campbell, Campana, and Adam (US 5,211,781
issued May 18, 1993);
7. Claims 9 and 16 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Campbell, Campana, and Takigawa (US 4,332,286 issued
Jun. 1, 1982);
8. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Campbell, Campana, Takigawa, and Tread Design Guide (Tread
Design Guide, Bennet Garfield Publication (1968)); and
9. Claims 9, 15-17, and 19 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Campbell, Campana, and Suzuki (US
2007/0284026 A1 published Dec. 13, 2007). Final Act. 3-14; App. Br. 4-5.
4 The Examiner’s reference to DE 10 2007 016 929 A1 (Buchinger) is to the
machine English translation of record.
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DISCUSSION
Upon consideration of the evidence relied upon by the Examiner and
Appellants in light of each of Appellants’ contentions, we find that Appellants
have not adequately explained or identified reversible error in the Examiner’s
determination that the applied prior art would have rendered the subject matter
recited in claims 1, 3-19, and 21-23 obvious within the meaning of 35 U.S.C.
§ 103(a). 35 C.F.R. § 41.37(c)(l)(iv) (2012); In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (explaining that even if the examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of reversible
error because it has long been the Board’s practice to require an appellant to
identify or adequately explain the alleged error in the examiner’s rejections).
Accordingly, we sustain the Examiner’s § 103(a) rejections of the above claims
substantially for the reasons set forth in the Final Action and the Answer. We add
the following primarily for emphasis and completeness.
1. Claims E 5-7, 15, and 18 under 35 U.S.C. $ 103(a) based on Riches,
Ravenhalf Campbell, and Overman
Appellants do not dispute the Examiner’s finding that Riches discloses a
9x20 tire having a tread with a plurality of circumferential grooves 1 (e.g., zig-zag
grooves) fifty-thousands of an inch wide (1.27 mm wide) and approximately half
an inch deep (13 mm deep) running in a circumferential direction and dividing the
tread into circumferential ribs 2. Compare Final Act. 3, with App. Br. 8-9; see
also Riches, col. 1,1. 59- col. 2,1. 35. Nor do Appellants dispute the Examiner’s
finding that Riches’ 9x20 tire, as explained by Ravenhall, has a tread width of 6.72
inches (171 mm) and Riches’ 9x20 tire having such tread width has a groove
volume of 1.4% of the gross tread volume per each circumferential zig-zag groove
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in the tread. Compare Final Act. 3, with App. Br. 8-95; see also Ravenhall, col. 1,
11. 53-57 and col. 2,11. 10-15.
Although the Examiner acknowledges that Riches illustrates 6
circumferential grooves in the tread of its tire corresponding to the groove volume
of about 8.4% of the gross tread volume (1.4% x 6 grooves = 8.4%), the Examiner
finds, and Appellants do not dispute, that Riches’ disclosure “is not limited to a tire
having only 6 grooves” and includes a tire having a plurality of grooves which are
also inclusive of 2 to 5 grooves. Compare Final Act. 3^4, with App. Br. 8-9. The
Examiner also finds, and Appellants do not dispute, that “Overman and Campbell
both teach that one can vary the number of ribs/grooves in a tread according [ly]
based on the purpose of the tire (Overman, pg 1, left col, lines 7-15; Campbell, col
2, lines 20-25).” Compare Final Act. 4, with App. Br. 8-9.
Under these circumstances, we find no reversible error in the Examiner’s
determination that one of ordinary skill in the art would have had an apparent
reason to use 2 to 5 circumferential grooves (those corresponding to the recited
groove volume percentage based on the gross tread volume) in the tread of Riches’
tire, with a reasonable expectation of successfully obtaining a tire having good
drainage in worn and unworn conditions and a low rate of tread wear. See, e.g.,
Riches, col. 1,11. 50-58.
Appellants first contend that the Examiner’s § 103(a) rejection is based on
an arbitrary combination of individual element from four prior art references. App.
Br. 8. However, Appellants do not explain why the combination of the teachings
discussed supra is arbitrary. App. Br. 8-9. A close examination of the Examiner’s
§ 103(a) rejection shows that Riches, as explained by Ravenhall, teaches or would
5 Appellants do not show, much less argue, that the Examiner’s calculation of the
groove volume is incorrect. App. Br. 8-9.
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have suggested all of the recited features—including the number of circumferential
grooves corresponding, in total tread groove volume percentage, to the recited
groove volume percentage based on the gross tread volume—as being suitable for
forming its tire having good drainage in worn and unworn conditions and a low
rate of tread wear. Moreover, the Examiner finds, and Appellants do not dispute,
that Overman and Campbell also teach that the number of ribs/grooves used is a
result effective variable, i.e., affects the purpose of tire. In re Applied Materials,
Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a
property is affected by the variable is sufficient to find the variable result-
effective.”); In re Boesch, 617 F.2d 272, 276 (CCPA 1980)(“[D]iscovery of an
optimum value of a result effective variable ... is ordinarily within the skill of the
art.”)
Appellants also appear to contend that the applied prior art references are not
combinable because they do not discusses Appellants’ “main object of this
invention: to effectively lower the rolling resistance.” App. Br. 9. However,
Riches and Overman, like Appellants, are also concerned with “the abrasion and
life expectancy of the tire” or “a high degree long wear.” Compare App. Br. 7,
with Riches, col. 1,11. 50-58 and Overman, col. 1,11. 16-18. Moreover,
“motivation [or reason] to modify a prior art reference to arrive at the claimed
invention need not be the same motivation that the patentee had.” Alcon Research,
Ltd. v ApotexInc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (citing KSRInt7 Co. v.
Teleflex, Inc., 550 U.S. 398, 406, 420 (2007) (stating that it is error to look “only to
the problem the patentee was trying to solve”)). “As long as some [reason,]
motivation or suggestion to combine the references is provided by the prior art
taken as a whole, the law does not require that the reference be combined for the
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reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed.
Cir. 1992).
Finally, Appellants do not argue that the claimed invention unexpectedly
lowers the rolling resistance relative to the closest prior art, Riches. App. Br. 8-9.
Nor do Appellants proffer a comparison between the claimed invention and the
closest prior art to demonstrate that the claimed invention imparts unexpected
results relative to the closest prior art. Id.', see also In re Freeman, 474 F.2d 1318,
1324 (CCPA 1973) (to show unexpected results, applicant must establish: “(1) that
there actually is a difference between the results obtained through the claimed
invention and those of the [closest] prior art,. . . and (2) that the difference actually
obtained would not have been expected by one skilled in the art at the time of
invention”) (citation omitted); In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed.
Cir. 1991) (“[RJesult must be shown to be unexpected compared with the closest
prior art.”)
Accordingly, we affirm the Examiner’s decision rejecting claims 1, 5-7, 15,
and 18 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of
Riches, Ravenhall, Campbell, and Overman.
2. Claims 1, 6, and 18 under 35 U.S.C. $103(a) based on Matsuda
Appellants do not question that “Matsuda teaches a pneumatic tire
comprising two [straight or zig-zag] circumferential grooves which divide the tread
into ribs (see Fig. 1).” Compare Final Act. 5, with App. Br. 9-10. Nor do
Appellants question that Matsuda’s tread has the recited gross tread volume, outer
periphery, and shoulders with a flank portions. Compare Final Act. 5-6, with App.
Br. 9-10.
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Thus, the dispositive question raised here is this: Would Matsuda have
suggested the groove volume in the tread amounting to between 1% and 7% of the
gross tread volume within the meaning of 35 U.S.C. §103(a)? On this record, we
answer this question in the affirmative.
As acknowledged by Appellants, Matsuda teaches that “the width of the
circumferential groove is about 3 to 8% of the tread width as measured between
the opposed groove walls in a direction perpendicular to the groove wall[s].”6
App. Br. 9 citing Matsuda, col. 3,11. 8-11. The Examiner takes official notice, and
Appellants do not challenge, that “[gjroove width is conventionally measured at
the groove opening/tread surface.” Compare Ans. 4, with App. Br. 9-10.7 Nor do
Appellants question the Examiner’s finding that “it is common sense that the width
is measured perpendicular to the groove walls [perpendicular to the circumferential
groove] in the groove extension [widening] direction.” Compare Ans. 4, with App.
Br. 9-10.8 Nor do Appellants question the Examiner’s finding that “Fig. la [of
Matsuda] illustrates the circumferential grooves as having a bottom with reduced
width (about half the top width in Fig. la).” Compare Final Act. 5, with App. Br.
9-10. In other word, there is no dispute that Matsuda teaches each circumferential
groove having a groove volume somewhere between 3% and 1.5% to somewhere
6 The article “the” in reference to “groove wall” refers to the earlier mentioned
opposed groove walls defining the circumferential groove. Moreover, the term
“width” of the circumferential groove indicates the spaced distance between the
two opposing groove walls in a widening direction perpendicular to the opposing
groove walls (circumferential groove running in a circumferential direction).
7 No Reply Brief was filed in response to the Examiner’s official notice that
“[g]roove width is conventionally measured at the groove opening/tread surface.”
8 No Reply Brief was filed in response to the Examiner’s finding that “it is
common sense that the width is measured perpendicular to the groove walls
[perpendicular to the circumferential groove] in the groove extension [widening]
direction.”
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Application 12/842,235
between 8% and 4% of the gross tread volume (when the width of the
circumferential groove is about 3% to 8% as measured at the groove opening/tread
surface, the width of the circumferential groove below the groove opening,
including the bottom, of the groove is below 3% or below 8% because the bottom
has a reduced width).9 According to column 1, lines 10—16 and column 2, lines
25—30, of Matsuda, “at least two circumferential grooves having such
characteristics can contribute to improve wet performance of the tire.”
Under these circumstances, we find no reversible error in the Examiner’s
determination that Matsuda would have led one of ordinary skill in the art to form
a tire having two circumferential grooves with each having a groove volume
somewhere between 3% and 1.5% to somewhere between 8% and 4% of the gross
tread volume, inclusive of the total groove volume of approximately 6% of the
gross tread volume, as recited in claim 1, with a reasonable expectation of
successfully improving the tire’s wet performance. See In re Peterson, 315 F.3d
1325, 1329-30 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and
our predecessor court have consistently held that even a slight overlap in range
establishes aprima facie case of obviousness.”)
On this record, Appellants do not argue that the claimed invention imparts
unexpected results relative to the closest prior art. App. Br. 9-10. Nor do
9 Even were we to adopt the literal meaning of the language used in Matsuda,
without limiting it to illustrative Figure la, we find that Matsuda broadly teaches
the spacing distance between the groove walls defining a circumferential groove
(the width of the circumferential groove from the opening on the surface to the
bottom) constitutes anywhere from 3 to 8% of the tread width. In other words,
Matsuda teaches that a circumferential groove having a groove volume from 3% to
8% of the gross tread volume as being suitable for its tire having improved wet
performance.
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Application 12/842,235
Appellants proffer factual evidence to demonstrate that the claimed invention
imparts unexpected results relative to the closest prior art. Id.
Accordingly, we affirm the Examiner’s decision rejecting claims 1, 6, and
18 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Matsuda.
3. Claim 4 under 35 U.S.C. $ 103(a) based on Matsuda and Campana
Appellants repeat the same argument that Matsuda does not teach or suggest
using a tire having a “groove volume in said tread amounting to between 1 % and
7% of said gross tread volume” as recited in claim 1. App. Br. 10. Appellants also
argue that Campana does not remedy such deficiency in Matsuda. Id. However, as
indicated supra, we find no reversible error in the Examiner’s determination that
Matsuda would have led one of ordinary skill in the art to form a tire having two
circumferential grooves with each having a groove volume somewhere between
3% and 1.5% to somewhere between 8% and 4% of the gross tread volume,
inclusive of the total groove volume of approximately 6% of the gross tread
volume, as recited in claim 1, with a reasonable expectation of successfully
improving the tire’s wet performance.
Accordingly, we affirm the Examiner’s decision rejecting claim 4 under 35
U.S.C. § 103(a) as unpatentable over the combined disclosures of Matsuda and
Campana.
4. Claims 3, 4, and 10-14 under 35 U.S.C. $ 103(a) based on Matsuda and
Buchinger
The Examiner relies upon the same disclosure of Matsuda discussed above.
The Examiner acknowledges that Matsuda does not specifically discuss the
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specific dimension of its circumferential groove or a groove having projecting
pyramidal portions. Final Act. 7.
However, the Examiner finds, and Appellants do not dispute, that
“Buchinger, directed towards a tire with circumferential grooves, teaches grooves
having a widths of 10-20 mm and a depth of 8-30 mm ([0017]) wherein the grove
flanks are provided with a plurality of pyramidal projections ([0006-0007]) for the
purpose of increasing profile durability, reducing resonance, and improving stone
ejection ([0007-0008]).” Compare Final Act. 7 with App. Br. 10; compare also
Buchinger ]fl[ 7-8, with Spec. ]fl[ 36-38. The Examiner further finds, and
Appellants do not dispute, that “Buchinger teaches that the pyramidal portions can
occupy a substantial portion of the groove volume (the base can be 25% of the
groove opening and the tip height can be up to 80% of the tread depth PT([0017,
0020]).” Compare Final Act. 7-8, with App. Br. 10; compare also Buchinger ||
17 and 20, with Spec. H 38 and 41. In fact, Buchinger illustrates circumferential
grooves having the same designs as those illustrated in Appellants’ drawing.
Compare Buchinger Figs. 1—4, with Appellants’ Figs. 1—4.10
Based on these fact findings, the Examiner concludes that the collective
teachings of Matsuda and Buchinger would have led one of ordinary skill in the art
to form the circumferential grooves taught by Buchinger in Matsuda’s tire having a
groove volume of approximately 6%, with a reasonable expectation of successfully
increasing profile durability, reducing resonance, and improving stone ejection.
10 In the event of further prosecution, the Examiner is advised to obtain the full,
non-machine, English translation of Buchinger to determine whether it alone, or
together with other prior art, would have rendered the claimed subject matter
obvious within the meaning of 35 U.S.C. § 103(a).
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Rather than focusing on the teachings of Buchinger or on the combined
teachings of Matsuda and Buchinger, Appellants repeat the same arguments that
Matsuda does not teach or suggest “a groove volume of 1% to 7%, as claimed, nor
any considerations dealing with the reduction of the rolling resistance.” App. Br.
10. Thus, based on the same reasons stated supra, we do not find Appellants’
argument persuasive of reversible error in the Examiner’s § 103(a) rejection of
claims 3, 4, and 10-14 as unpatentable over the collective teachings of Matsuda
and Buchinger.
Accordingly, we affirm the Examiner’s decision rejecting claims 3, 4, and
10-14 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of
Matsuda and Buchinger.
5. Claims E 3, 6, 8, and 21-23 under 35 U.S.C. $ 103(a) based on Overman
and Ravenhall
Appellants do not dispute the Examiner’s finding that
Overman discloses ... a tire having a plurality of circumferentially
extending ribs divided by circumferential grooves 10 having
an opening width of 6/32 of an inch (4.8 mm) and filled with a
protuberance of 5/32 of an inch width and leaving a 1/32 inch spacing
(0.8 mm) (pg 2, lines 13-27). Overman further teaches in [the]
embodiment of Fig. 3 and 4, the use of web members 12 which further
fill the groove cavity (pg 2, lines 35-45). Regarding the volume of the
grooves, Fig. 4 shows the webbing as occupying about half the depth
of the groove, assuming a groove depth D, an opening width of 6/32in
(4.8mm), and a web member 12 with a height of D/2 and a spacing of
about 1/32 inch (0.8mm) on each side, the groove volume of each
groove would be about (C is tread circumference):
[4.8mm * D/2 + 0.8mm *2 * D/2] * C = 3.2 mm * D * C
This [calculation] ignores the protuberance which occupies
even greater groove volume than the web member—thus the groove
volume is less than 3.2 mm *D *C.”
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Compare Final Act. 8, with App. Br. 11. Nor do Appellants dispute the
Examiner’s finding that Ravenhall teaches a conventional vehicle tire (11-20 inch
tire) as having a tread width of 7.65 inches (about 194 mm). Compare Final Act.
8-9, with App. Br. 11; Ravenhall, col. 2,11. 10-20. Nor do Appellants dispute the
Examiner’s finding that
applying the groove of Overman to a tire of such size would result in
each groove occupying a volume of less than 1.6% of the gross tread
volume (3.2 mm*F)*C /194 mm*F)*C). With six grooves, the total
groove volume would be about 9.6%; however, Overman states that
the number and size of the ribs and grooves can be substantially
varied (pg 1, right col, lines 7-15). Configuring the tire [tread] with 2-
4 grooves would result in volumes of less than 7% or less than 4%.
Compare Final Act. 9, with App. Br. 11.
Appellants contend that one of ordinary skill in the art would not have been
led to employ the grooves of Overman to the conventional vehicle tire having a
tread width of 194 mm taught by Ravenhall. App. Br. 11. Appellants also contend
that Ravenhall “teaches away from the modification proffered by the Examiner.”
Id. We are not persuaded by these contentions.
As correctly found by the Examiner, “Overman teaches width, depth and
shape for circumferential grooves” to configure its tread design. Final Act. 18; see
also Overman, p. 2, left col., 11. 13-46. The tread designed with such
circumferential grooves, according to page 1, left col., lines 1-54, of Overman,
provides a tire with a high degree of long wear, good traction, and resistance to
skidding. The tire referred to by Overman is inclusive of the conventional vehicle
tire having a tread width of 194 mm taught by Ravenhall. Overman, p. 1, left col.,
11. 1-30.
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As also correctly found by the Examiner, Ravenhall does not teach away
from using Overman’s advantageous tread design configured with circumferential
grooves having the width, depth, and shape taught by Overman. Final Act. 18.
Ravenhall, like Overman, discloses using ribbed tread designs on its conventional
tires with their corresponding tread widths. Id. Although Ravenhall mentions
these conventional tires have ribbed tread designs formed with circumferential
grooves having a particular width and a bulbous base as argued by Appellants, the
Examiner takes the official notice, and Appellants do not challenge, that “[t]hese
[conventional] tires are commonly used for [sic., with] a variety of tread patterns
and are not specific to the groove and groove width of Ravenhall.” Compare Final
Act. 18, with App. Br. 11. On this record, Appellants do not point to any teaching
in Ravenhall, which criticizes, discredits, or otherwise discourages using the
advantageous tire tread design having the recited circumferential grooves taught by
Overman in conventional tires. App. Br. 11; see also DyStar Textilfarben Gmbh &
Co. Deutschland KG v. C.H. Patrick Col., 464 F.3d 1356, 1364 (Fed. Cir. 2006)
(“We will not read into a reference a teaching away from a process where no such
language exists.”); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“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.”).
Under these circumstances, we find no reversible error in the Examiner’s
determination that the collective teachings of Overman and Ravenhall would have
led one of ordinary skill in the art to employ the circumferential grooves taught by
Overman to form an advantageous tread design on the conventional vehicle tire
having a tread width of 194 mm taught by Ravenhall to arrive at the claimed tire,
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with a reasonable expectation of successfully improving long wear, traction, and
resistance to skidding.
Accordingly, we affirm the Examiner’s decision rejecting claims 1,3,6, 18,
and 21-23 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures
of Overman and Ravenhall.
6. Claims 1, 3-8, and 21-23 under 35 U.S.C. $ 103(a) based on Campbell,
Campana. and Adam
Appellants do not dispute the Examiner’s finding that
Campbell discloses a plurality of circumferential grooves dividing a
tread into a plurality of ribs. Campbell does not disclose the
total groove volume of the grooves. Campana, directed towards
pneumatic tires having treads with a ribbed pattern defined by a
plurality of circumferential grooves, teaches that circumferential
grooves can have widths of 2 to 15 mm and depths of 11 -18 mm
(col 4, lines 50-57). As for the tread volume, ribbed tread patterns are
conventionally used in heavy load/truck tires which typically have
tread widths of about 200 mm or more. For example, Campana
teaches a tire size of 315/80R22.5" (col 4, lines 45-49) which
Adam teaches has a tread width of about 240 mm (col 4, lines 24-25).
It is also noted that Campbell states that while five ribs are shown, it
is understood that a tread pattern can be formed with any number of
tread ribs (col 2, lines 20-27).
Compare Final Act. 11, with App. Br. 12. Rather, Appellants contend that
Campbell describes a tire tread with a plurality of
circumferential grooves having improved resistance to groove
cracking due to a special design of the side walls of the grooves.
Concerning Campana we refer to the above explanations. Adam is
not pertinent with regard to the claimed invention.
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App. Br. 11. However, Appellants’ mere reference to Campbell’s purpose, their
agreement with the Examiner’s finding relating to Campana,11 and a broad
unexplained conclusory statement relating to relevance of Adam to the claimed
invention12 does not explain reversible error in the Examiner’s § 103(a) rejection
based on the collective teachings of Campbell, Campana, and Adam. As stated by
our reviewing court in In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). “[n]on-Obviousness cannot be established by attacking reference
individually where the rejection is based upon the teachings of a combination of
references.” See also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he test
[for obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
Under these circumstances, we find no reversible error in the Examiner’s
determination that the collective teachings of Campbell, Campana, and Adam
would have led one of ordinary skill in the art to employ at least two
circumferential grooves suggested by Campbell and Campana on Campana’s tire
having a size of 315/80R22.5, which according to Adam, has a tread width of
about 240 mm, to arrive at a tire having the recited groove volume.
Accordingly, we affirm the Examiner’s decision rejecting claims 1, 3-8, and
21-23 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of
Campbell, Campana, and Adam.
11 According to page 10 of the Appeal Brief, “Campana merely discloses a tread
for a tire comprising a plurality of circumferential grooves having a width between
2 mm and 15 mm and a depth in the range of 11 mm to 18 mm.”
12 To the extent that Appellants are arguing that Adam is from nonanalogous art,
we do not agree with such argument because Adam is directed to pneumatic tires
and tire treads for large motor vehicles, which are in the same field of endeavor as
Appellants’ claimed invention. Compare Adam, col. 1,11. 4-6, with Spec. 12.
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7. Claims 9 and 16 under 35 U.S.C. $ 103(a) based on Campbell,
Campana, Adam, and Takigawa
Appellants appear to rely on the same arguments advanced in connection
with the Examiner’s 103(a) rejection of claims 1, 3-8, and 21-23 as unpatentable
over the combined disclosures of Campbell, Campana, and Adam. See App. Br.
12. Appellants do not address the Examiner’s § 103(a) rejection based on the
collective teachings of Campbell, Campana, Adam, and Takigawa. Compare Final
Act. 12, with App. Br. 12. Nor do Appellants address the teachings of Takigawa.
App. Br. 12.
Accordingly, based on the same reasons stated supra, we affirm the
Examiner’s decision rejecting claims 7 and 16 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Campbell, Campana, Adam, and
Takigawa.
8. Claim 17 under 35 U.S.C. $ 103(a) based on Campbell,
Campana, Adam, Takigawa, and Tire Design Guide
Appellants appear to rely on the same arguments advanced in connection
with the Examiner’s 103(a) rejection of claims 1, 3-8, and 21-23 as unpatentable
over the combined disclosures of Campbell, Campana, and Adam. See App. Br.
12. Appellants do not address the Examiner’s § 103(a) rejection based on the
collective teachings of Campbell, Campana, Adam, Takigawa, and Tire Design
Guide. Compare Final Act. 13, with App. Br. 12. Nor do Appellants address the
teachings of Takigawa and Tire Design Guide. App. Br. 12.
Accordingly, based on the same reasons stated supra, we affirm the
Examiner’s decision rejecting claim 17 under 35 U.S.C. § 103(a) as unpatentable
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Application 12/842,235
over the combined disclosures of Campbell, Campana, Adam, Takigawa, and Tire
Design Guide.
9. Claims 9, 15-17, and 19 under 35 U.S.C. $ 103(a) based on Campbell
Campana, Adam, and Suzuki
Appellants appear to rely on the same arguments advanced in connection
with the Examiner’s 103(a) rejection of claims 1, 3-8, and 21-23 as unpatentable
over the combined disclosures of Campbell, Campana, and Adam. See App. Br.
12. Appellants do not address the Examiner’s § 103(a) rejection based on the
collective teachings of Campbell, Campana, Adam, and Suzuki. Compare Final
Act. 13-14, with App. Br. 12. Nor do Appellants address the teachings of Suzuki.
App. Br. 12.
Accordingly, based on the same reasons stated supra, we affirm the
Examiner’s decision rejecting claims 9, 15-17, and 19 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Campbell, Campana, Adam, and
Suzuki.
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 1, 3-
19, and 21-23 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)(l)(iv).
AFFIRMED
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