Ex Parte Lelio et al

Patent Trials and Appeals Board

Nov 21, 2014

12309025 - (D) (P.T.A.B. Nov. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE
THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LUCA LELIO1
and Simone Neroni
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Appeal 2013-0048332
Application 12/309,025
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
GEORGE C. BEST, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Luca Lelio and Simone Neroni (“Lelio”) timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection3 of claims 1–5, 10–13,
and 18.4 We have jurisdiction. 35 U.S.C. § 6. We reverse.

1 The real party in interest is listed as Bridgestone Corp. (Appeal Brief,
filed 12 October 2012 (“Br.”), 1.)
2 Heard 4 November 2014. The Official Transcript, which was not
available when this Opinion was entered, will be made of record.
3 Office action mailed 13 April 2012 (“Final Rejection”; cited as “FR”).
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OPINION
A. Introduction5
The subject matter on appeal relates to methods of retreading tires.
Prior art methods are said to require the application of a volatile, potentially
highly polluting cement (Spec. 2, ll. 8–10), resulting in costly storage,
manufacturing, and disposal measures, and providing “a heterogeneous
material interposed between two layers of rubber, [which] may impair
performance of the retreaded tyre” (id. at ll. 10–24). The claimed processes
are said to avoid these and related problems.
Claim 1 is representative of the dispositive issues and reads:
A method of retreading a tyre; the method comprising the
steps of:
[a] removing the worn tread from the tyre;
[d] winding a green-rubber cushion about a carcass of the
tyre while the tyre is supported by a drum;
[e] winding a tread strip about the carcass and on top of
the green-rubber cushion;
[f] curing the carcass complete with the green-rubber
cushion and the tread strip;
[c] heating a radially outermost, crown surface of the
carcass, before the green-rubber cushion is wound about
the carcass, by means of a heating device located close to
the drum; and

4 The Examiner has withdrawn remaining copending claims 4, 12, 13,
and 18, which are not before us.
5 Application 12/309,025, Tyre retreading method and system,
filed 23 June 2009 as the national phase of PCT/EP2007/056916,
filed 6 July 2007, claiming the benefit of an application filed in Italy
on 6 July 2006. We refer to the “ʼ025 Specification,” and cite it as “Spec.”
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[b] blowing, in a direction substantially tangent to the
crown surface, a jet of heated compressed air onto the
crown surface of the carcass
to pre-heat the crown surface of the carcass before
heating the crown surface of the carcass by means of
the heating device.
(Br., Claims App. A–1; some indentation, paragraphing, bracketed letters,
and emphasis added.)
The plain language of the claim requires that the steps of the process
occur in the alphabetical sequence, as labeled.
The Examiner maintains the following grounds of rejection:6, 7
A. Claims 1, 2, 10, and 11 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Daugherty,8 Longo,9 Taylor ʼ008,10 Fesmire,11 Michelson,12
and Kessler.13

6 Examiner’s Answer mailed 14 December 2012 (“Ans.”).
7 A rejection (FR 2) of claims 1, 2, 3, 5, 10, and 11 under
35 U.S.C. § 112(2) has been withdrawn (Ans. 2, 2d para.).
8 Estes M. Daugherty and Steven W. Mory, Method and apparatus for
applying tire tread for a retread tire, U.S. Patent No. 6,758,931 B1 (2004).
9 Trent F. Longo et al., Apparatus for cementless building of retreaded tires,
U.S. Patent No. 5,635,015 (1997).
10 Don A. Taylor, Method of manufacture and retreading of tires, U.S.
Patent No. 4,096,008 (1978).
11 Lloyd W. Fesmire, Cement spraying machine for tires, U.S. Patent
No. 4,407,220 (1983).
12 Manfred G. Michelson, Film cleaning system and method for
photographic film, U.S. Patent No. 5,568,822 (1996).
13 Leonard J. Kessler and Mark Marabito, System and method for
configuring a heat transfer decorating machine for different package
configurations, U.S. Patent No. 6,998,006 B1 (2006).
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A1. Claim 3 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Daugherty, Longo, Taylor ʼ008,
Fesmire, Michelson, Kessler, and Taylor ʼ926.14
A2. Claim 5 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Daugherty, Longo, Taylor ʼ008,
Fesmire, Michelson, Kessler, and Ogawa.15
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Lelio focuses arguments for patentability on the
propriety of Fesmire, Michelson, and Kessler as evidence that it would have
been obvious to blow heated air tangent to the crown surface in order to pre-
heat the crown surface, as required by step [b], before the heating step
recited in step [c]. (Br. 3–4.) Lelio first urges that Fesmire blows unheated
air across the surface of a tire to remove debris before applying a cement
adhesive. (Id. at 4, 3d para.) There would have been no reason, Lelio
argues, to consider the teachings of Kessler regarding using heated cleaning
air to remove debris as well as raising the surface temperature of the articles
prior to moving them to a different location to apply a label to food
packaging, because Kessler is non-analogous art. (Id., para. bridging 4–5.)
More specifically, Lelio argues that because Fesmire uses a cement as an
adhesive, there would have been no reason to use heated air for adhesion.
(Id. at 6, 1st para.) Moreover, according to Lelio, Kessler recommends a

14 Don A. Taylor, Method and apparatus for bonding treads to tires, U.S.
Patent No. 4,149,926 (1979).
15 Yuichiro Ogawa, Method and apparatus for producing tires, U.S. Patent
No. 6,328,836 (2001).
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lower temperature than the minimum 50°C taught by the ʼ025 Specification
to be necessary to obtain sufficiently strong adhesion. (Id. at 6, 2d full para.)
Finally, Lelio urges that the use of heated air, as taught by Kessler, would
change the principle of operation of Fesmire.
Lelio argues further that Fesmire and Kessler are non-analogous art
relative to all the other references. (Br. 5–6, and 7–9, respectively.)
Because non-analogous art may not be considered in any reasonable
assessment of obviousness, it raises an attractive defense for proponents of
patentability of a claim.
Whether prior art is analogous is a fact question. In re Clay, 966 F.2d
656, 658 (Fed. Cir. 1992). In Clay, the court noted that two criteria had
evolved: art is analogous if it is in the “same field of endeavor, regardless of
the problem addressed” (id. at 659), and, if, not within the field of the
inventor’s endeavor, if “the reference still is reasonably pertinent to the
particular problem with which the inventor is involved” (id.). In general,
these criteria mean that the narrower the inventor’s field of the endeavor and
the lower the level of ordinary skill in the art, the less prior art will be
available for consideration.
Under these criteria, the status of prior art as analogous or non-
analogous depends on the definition of the field[s] of the endeavor.
Evaluation of the second criterion, whether a prior art reference is
reasonably pertinent to the particular concerns of the inventor, often turns on
the knowledge, resources, and abilities of the hypothetical person[s] having
ordinary skill in the art[s] relevant to that endeavor. The analysis is further
complicated when the rejection relies on a finding of motivation for
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combining the teachings of references that is not the same as the motivation
of the inventor(s). In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). In such
cases, focusing on the field of endeavor identified by the appellant-inventor,
rather than on the knowledge and level of skill of the hypothetical person
having ordinary skill in the art who is contemplating modifications as
suggested by the Examiner, may exclude, artificially, relevant evidence of
obviousness. Because analysis of the level of skill and weighing evidence
pro and con regarding motivation are integral to the conclusion of
obviousness vel non, the more such factors are important to the non-
analogous art determination, the less helpful that determination may be to
the ultimate question of nonobviousness.
Lelio’s arguments regarding Fesmire as non-analogous art are not
persuasive because the scope of relevant art encompasses at least all
processes of retreading tires. Indeed, it would be hard to exclude art relating
to virtually any aspect of making any tire suitable for retreading. In this
regard, because Daugherty, Long, and Taylor ʼ008 are concerned, at least in
part, with retreading tires without the use of adhesives, the ordinary tire
worker would be remiss not to be aware of the issues arising from the use of
adhesives. More to the point, Lelio has not explained why a person
retreading tires without the use of adhesives would not have found Fesmire’s
teachings regarding cleaning the detreaded tire with jets of air (and
Michelson’s related teachings) relevant to the cementless processes
recommended by the other references.
On the other hand, it would be difficult to argue that Kessler is in the
same field of endeavor as tire retreading, and the Examiner does not so try.
Rather, the Examiner finds that Kessler is concerned, at least in part, with
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methods of heating substrates and applied layers to improve bonding of one
to the other. Again, we find on its face that Lelio’s characterization of the
problem solved by the inventor as being limited to cementless retreading
“using heat[ed] air with a temperature between 50-75°C for optimal
adhesion” far too narrow. We are therefore not persuaded that the teachings
of Kessler cannot be considered as evidence of obviousness. However, we
still have to consider whether the Examiner erred—as Lelio argues at least
implicitly throughout—in giving dispositive weight to Kessler’s teachings.
Kessler relates to a heat transfer decorating machine (Kessler, title),
which can transfer labels from a web-like carrier to articles that may be
chilled or filled, using a combination of heat and pressure (id. at col. 2,
ll. 1-9.) Lelio urges that Kessler is especially concerned with labelling food
packaging articles. (Br., para. bridging 4–5, citing Kessler, col. 23, ll. 3–8,
18–24, and Figs. 7–8; see also Kessler, col. 13, ll. 50–67.) The differences
between the substrates of concern to Kessler (e.g., glass or plastic
containers) and the other prior art, as well as to the inventors (tire carcasses),
and the layers to be adhered to the substrates (light weight heat-transferrable
decals versus massive green rubber cushions and tire treads) are
considerable. So too are the conditions under which the articles in Kessler
are moved through the jets of hot air (quickly, briefly) compared to the
conditions under which the tires are to be heated. (Reply16 7–9.)
Lelio’s arguments regarding Kessler’s teachings have some force
considered in isolation with Fesmire alone. However, as the Examiner
points out, these arguments do not address the Examiner’s findings (FR 3–4)

16 Reply Brief filed 14 February 2013 (“Reply”).
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regarding Daugherty, which teaches applying, without cement, a cushion
gum and a tire tread to a buffed, skived tire casing; Longo, which teaches
heating the applied cushion gum to improve adhesion; and Taylor ʼ008,
which teaches heating to improve the adhesion of the applied gum layer.
The Examiner finds, and Lelio does not dispute, that given these teachings,
the routineer “would have found it obvious to use a heater which raises the
temperature of the surface of the carcass to which the gum will be applied
(as disclosed by Taylor).” (FR 4, last sentence.) It is in this context that the
Examiner turns to Fesmire, which describes a tire-rebuilding process in
which debris from the tread-removal steps is removed by blowing air across
the surface of a tire. (Id. at 5, 1st and 2d paras.)17 Finally, the Examiner
finds that Kessler teaches using a jet of hot air “to both remove debris and
contribute to the overall heating for the bonding operation.” (Id. at 6, last
para.)18
Section 103 mandates that the conclusion of obviousness account for
the “differences between the subject matter sought to be patented and the
prior art.” The generalized teachings that tire carcasses and layers to be
applied to tire carcasses become tacky upon heating, though provocative, do
not by themselves suffice to account for the differences between Kessler and
the art of tire retreading. On the present record, we conclude that the
Examiner has not come forward with sufficient evidence-based argument to

17 The Examiner relies on Michelson as evidence that directing the jet of air
tangentially was known and would have been obvious. Lelio does not
dispute this aspect of the Examiner’s rejection.
18 The Examiner, erroneously but harmlessly, makes this finding regarding
claim 9 as presented in the amendment filed 30 September 2011, rather than
regarding claim 1 as amended immediately prior to the Final Rejection.
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explain satisfactorily why, based on Kessler, it would have been obvious to
use jets of hot air to pre-heat the carcasses prior to applying the green rubber
cushion as required by claim 1.
The Examiner’s considerations of the remaining dependent claims do
not cure this lack.
C. Order
We reverse the rejection of claims 1–3, 5, 10, and 11.
REVERSED

cdc