Ex Parte Marchini et al

Patent Trial and Appeal Board

Nov 24, 2014

12311432 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/311,432 03/30/2009 Maurizio Marchini 07040.0360 6985
22852 7590 11/24/2014
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
ROGERS, MARTIN K
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
11/24/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MAURIZIO MARCHINI,
FIORENZO MARIANI, and PIERANGELO MISANI
____________

Appeal 2013-004740
Application 12/311,432
Technology Center 1700
____________
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 20–26, 39, and 40 of
Application 12/311,432 under 35 U.S.C. § 103(a) as obvious. Final
Rejection (FR) 3, 9 (Feb. 14, 2012). The Examiner also rejected claim 23
under 35 U.S.C. § 112, ¶ 2 as indefinite. FR 2. Appellants1 seek reversal of
these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
Oral argument in this appeal was held on November 4, 2014.

1 Pirelli Tyre S.p.A. is identified as the real party in interest. (App. Br. 3.)
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2
For the reasons set forth below, we AFFIRM. To preserve
Appellants’ procedural rights, we designate our affirmance of the rejection
of claim 40 as a NEW GROUND OF REJECTION.
BACKGROUND
The ’432 Application describes a process for assembling a pneumatic
tire. Spec. 1. Claim 20 is the only independent claim in the ’432
Application and is reproduced below:
20. A process for producing tyres having a carcass structure
comprising at least two carcass plies, each carcass ply being
associated with at least a pair of annular reinforcing inserts,
comprising the following steps:
i) transferring a first toroidal support to a first
assembling apparatus;
ii) in the first assembling apparatus, sequentially
building on the first toroidal support, a first toroidal carcass ply
and a first pair of annular reinforcing inserts including a first
associating step of associating each of the first pair of annular
reinforcing inserts with a respective radially internal edge of the
first toroidal carcass ply;
iii) transferring the first toroidal support to a second
assembling apparatus;
iv) in the second assembling apparatus, sequentially
building on the first toroidal support, carrying the first toroidal
carcass ply associated with the first pair of annular reinforcing
inserts, a second toroidal carcass ply and a second pair of
annular reinforcing inserts, including a second associating step
of associating each of the second pair of annular reinforcing
inserts with a respective radially internal edge of the second
toroidal carcass ply,
wherein at least one of said first and second associating
steps includes moving the toroidal support within the respective
apparatus from a first position for carcass ply building to a
second position for annular reinforcing insert building;
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v) transferring a second toroidal support to the first
assembling apparatus to build thereon a respective first toroidal
carcass ply associated with a respective first pair of annular
reinforcing inserts, step v) being carried out when the first
toroidal support is processed in the second assembling
apparatus during step iv);
vi) completing the building of the tyre on said first
toroidal support;
vii) repeating steps iv) and vi) on said second toroidal
support; and
viii) moulding and vulcanizing the tyres.
(App. Br. 22–23 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 20–25, 39, and 40 are rejected3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Caretta ’336,4 Appleby,5
Held,6 Chase,7 and Sarker.8 FR 3–9.

2 The Examiner has withdrawn the rejection of claim 23 under 35 U.S.C.
§ 112, ¶ 2. (Ans. 2.)
3 The Examiner’s summary statement of this rejection did not include claims
39 and 40. See FR 3. As we explain in the body of our opinion, the weight
of the evidence is that this was an inadvertent error and that the Examiner
intended to reject claims 39 and 40 as obvious over the combination of
Caretta ’336, Appleby, Held, Chase, and Sarker.
4 US Patent Application Publication 2003/0170336 A1, published September
11, 2003.
5 US Patent No. 4,134,783, issued January 16, 1979.
6 US Patent No. 3,862,871, issued January 28, 1975.
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2. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Caretta ’336, Appleby, Held, Chase, Sarker,
and Caretta ’295.9 FR 9.
DISCUSSION
Rejection 1. The Examiner rejected claims 20–25, 39, and 40 as
obvious over the combination of Caretta ’336, Appleby, Held, Chase, and
Sarker. FR 3. Appellants argue for reversal of this rejection based upon
claim 20’s limitations and do not present separate arguments regarding
claims 21–25. (App. Br. 20.) Appellants argue for reversal of the rejection
of claims 39 and 40 for procedural reasons but do not argue for reversal
based upon the limitations in these dependent claims. (App. Br. 21.)
Accordingly, we begin by considering Appellants’ arguments for reversal of
the rejection of claim 20.
Claim 20. Appellants argue that the rejection of claim 20 should be
reversed because “Caretta et al. ’336, Appleby, Held, Chase, and Sarker
1) fail to address every feature of the claims; 2) teach away from the claimed
invention; and 3) are combined from impermissible hindsight gleaned from
Appellants’ disclosure.” (App. Br. 10.) We address these arguments
seriatim.

7 R.B. Chase, Operations Management, 186-193 (McGraw-Hill) 9th ed.
2000.
8 B.R. Sarker and Y. Xu, Designing multi-product lines: job routing in
cellular manufacturing systems, 32 IIE TRANSACTIONS 219–35 (2000).
9 US Patent No. 6,945,295 B2, issued September 20, 2005.
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First, Appellants argue that the combination of references does not
address the claimed step of moving the toroidal support within the respective
apparatus from a first position for carcass ply building to a second position
for annular reinforcing insert building. (Id. at 10–14.) For the following
reasons, we are not persuaded that the Examiner reversibly erred in
concluding that the combination of references would have suggested this
step to a person of ordinary skill in the art at the time of the invention.
The Examiner found (and Appellants do not contest) that Caretta ’336
describes a process for assembling tires in which a robotic arm transfers a
first toroidal support from a carcass-wrapping apparatus to a bead depositing
apparatus. FR 3 (citing Caretta ’336 ¶¶ 95–96). As the Examiner finds, in
this step, the toroidal support is transferred from a first apparatus to a second
apparatus by means of a third apparatus. FR 4. The Examiner, however,
concluded that it would have been obvious to an ordinarily-skilled artisan to
combine these three devices10 into a single apparatus. Id. (citing
Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969);
Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1979)). The Examiner relied upon
Held and Appleby as providing evidence that the combination of separate
devices into a single apparatus was known to increase the efficiency of the
production process. Id. at 4–5 (citing Held col. 2, ll. 15–21; Appleby Fig. 3;
col. 9, l. 67–col. 10, l. 8).
Appellants argue that Anderson’s-Black Rock and Sakraida do not
apply to the ’432 Application. (App. Br. 11.) Instead, they argue that the

10 The Examiner appears to use the terms “apparatus” and “device”
interchangeably.
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claimed process is patentably distinct from the prior art because it results in
novel and unanticipated results. (Id. at 11–14 (citing U.S. Philips Corp. v.
Nat’l Micronetics Inc., 550 F.2d 716, 723-24 (2d Cir. 1977)).) Appellants
assert that the claimed process results in “the new function of simultaneously
building a carcass ply and annular reinforcing inserts on two tyres, at the
same time, and the new function of omitting a time[-]consuming
‘backtracking’ step through an assembly line.” (Id. at 12.)
We are not persuaded by Appellants’ argument. First, the claimed
step of performing an intra-apparatus transfer of a toroidal support from one
position to another is not responsible for allowing the simultaneous
construction of two tires. As claim 20 makes clear, simultaneous
construction of two tires is permitted by the provision of two assembling
apparatus in the assembly line:
v) transferring a second toroidal support to the first
assembling apparatus to build thereon a respective first toroidal
carcass ply associated with a respective first pair of annular
reinforcing inserts, step v) being carried out when the first
toroidal support is processed in the second assembling
apparatus during step iv);
(App. Br. 22 (emphasis added).)
Second, the Examiner has established by a preponderance of the
evidence, that a routineer would have expected that the “backtracking” of
the first toroidal support between Caretta ’336’s separate carcass ply
building and annular reinforcing insert building machines would cause a
bottleneck in the process, and that the bottleneck would be eliminated by the
provision of a second pair of such machines. FR 5–6 (citing Chase and
Sarker).
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Third, we are unpersuaded by Appellants’ unsupported assertion that a
routineer would not have had a reasonable expectation of success in creating
a single apparatus for carcass ply building and annular reinforcing insert
building.11 (Reply Br. 4–5.) In part, this is because the Specification does
not define the term “apparatus.” In the absence of such definition, the two
devices could be “integrated” into a single apparatus by attaching one to the
other to fix the relative positions of the two “subassemblies.” There is no
evidence of record indicating that the level of ordinary skill is so low that
such an apparatus would have required undue experimentation to achieve.
As for more complicated apparatuses, Appellants have not described the
degree of integration needed to transform the combination of a carcass ply
building apparatus and a separate annular reinforcing insert building
apparatus into a single, combined apparatus. Nor have Appellants explained
why such efforts would have required undue experimentation by the
routineer.
Second, Appellants argue that Caretta ’336, Appleby, and Held,
individually and in various combinations, teach away from the claimed
invention.12 (App. Br. 14–18.) We are not persuaded by these arguments.
In particular, Appellants’ arguments concerning the differences
between the construction processes described in Caretta ’336 and Appleby

11 This argument, which is raised for the first time in the Reply Brief, also is
untimely. See 37 C.F.R. § 41.41(b)(2) (2014) (in force when the Appeal
Brief was filed).
12 Although the Appeal Brief contains a heading that includes Chase and
Sarker in this argument, Appellants do not present substantive argument
regarding these two references. (App. Br. 14–18.)
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do not constitute a teaching away. Similarly, Appellants’ arguments
regarding the technical differences between the tire construction methods of
Caretta ’336 on the one hand and Appleby and Held on the other do not
convince us that the Examiner reversibly erred in finding that the prior art
does not teach away from the claimed invention. See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.”).
Third, Appellants argue that Caretta ’336 and Appleby are derived
from impermissible hindsight. (App. Br. 19–20.) Appellants’ arguments in
this regard amount to a challenge to the Examiner’s conclusion that the
combination of references would have suggested the claimed intra-apparatus
transfer step. For the reasons discussed above, we are not persuaded that the
Examiner reversibly erred in reaching this conclusion.
In sum, we affirm the Examiner’s rejection of independent claim 20 as
obvious. We, therefore, also affirm the rejection of claims 21–25.
Claims 39 and 40. Appellants argue that the rejection of these claims
should be reversed because they depend from claim 20. (App. Br. 21.) For
the reasons set forth above, we are not persuaded by this argument.
Appellants also argue that the rejection of these claims should be
reversed because the Examiner failed to state the statutory basis for their
rejection. (Id. at 9.) We are not persuaded by this argument.
The Final Rejection’s summary of Rejection 1 did not mention either
claim 39 or claim 40. FR 3. The Examiner, however, provided the
following explanation of the finding that the prior art described or suggested
the limitation added by claim 39:
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In regards to claim 39, it is the examiner’s position that based
on the disclosure in Caretta ’336 of using guided sliding
members to transport the toroidal supports among different
apparatuses of the tire-building process (Caretta Figure 1: R1),
a skilled artisan would have also found it obvious to use a
guided sliding member to transport toroidal supports within a
single apparatus. In any event, Appleby discloses the use of a
guided sliding member as the intra-apparatus positioning device
between the carcass-building section and the bead-building
section (Appleby Figure 3: 130).
Id. at 8.
Because the body of the rejection provided this discussion, we
conclude that the Examiner’s failure to include claim 39 in the summary
statement of the rejection was an inadvertent error. We also conclude that
this error did not prejudice Appellants because Appellants, who are
represented by counsel, were provided with adequate notice of the basis for
the rejection of claim 39. We note that Appellants have neither identified
any prejudice nor argued that the Examiner’s error was, in fact, prejudicial.
We further note that the Examiner repeated the paragraph discussing
claim 39 in the detailed explanation of the rejection. FR 8–9. Because
claims 39 and 40 contain similar limitations,13 we conclude that the

13 Claims 39 and 40 both address the use of guided sliding supports to move
partially assembled tires within the apparatus. (App. Br. 27.) Claim 39
recites, in relevant part, “wherein the first and second toroidal supports are
moved within each of the first and second assembly apparatuses by guided
sliding members of respective positioning devices to associate the respective
annular reinforcing insert with the respective laid carcass ply radially inner
edge.” (Id. (emphasis added).) Claim 40 recites, in relevant part, “wherein
both the first and second associating steps comprise guidedly sliding the first
toroidal support from the first position where the respective carcass ply is
(Cont’d)
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Examiner intended the second instance of discussion to apply to claim 40
and inadvertently failed to change the claim number after copying the
discussion of claim 39. We conclude that, despite these errors, Appellants
also had adequate notice that claim 40 had been rejected and of the reasons
for that rejection. In an abundance of caution, however, we designate our
affirmance of the rejection of claim 40 as a new ground of rejection to
provide Appellants a procedural safeguard.
We, therefore, affirm the rejection of claims 39 and 40.
Rejection 2. Appellants argue that the rejection of claim 26 should be
reversed because claim 26 depends from claim 20 and Caretta ’295 does
cure the alleged deficiencies in the rejection of the parent claim. (App.
Br. 20.) For the reasons discussed above, we are not persuaded that the
Examiner improperly rejected claim 20. We, therefore, also affirm the
rejection of claim 26.
CONCLUSION
For the reasons set forth above, we discern no reversible error in the
Examiner’s rejection of claims 20–26, 39, and 40 under 35 U.S.C. § 103(a).
We, therefore, affirm. As discussed above, our affirmance with respect to
claim 40 is designated as a new ground of rejection.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM

built to the second position where the respective pair of annular reinforcing
inserts are built.” (Id. (emphasis added).)
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THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)

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