Ex Parte Morgan et al

Patent Trial and Appeal Board

Jun 7, 2018

14114726 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/114,726 10/29/2013
77432 7590 06/11/2018
HAHN LOESER & PARKS, LLP - MICHELIN
200 Public Square, Suite 2800
Cleveland, OH 44114
FIRST NAMED INVENTOR
David Scott Morgan
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.
PS0-0401-US-PCT 3092
EXAMINER
DYE, ROBERT C
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
PA TENTS@HAHNLA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SCOTT MORGAN 1
and Eric A. J. Berger
Appeal2017-008973
Application 14/114,726
Technology Center 1700
Before BEYERL YA. FRANKLIN, MARK NAGUMO, and
RAEL YNN P. GUEST, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Michelin ("Morgan") timely appeals under 35 U.S.C. § 134(a) from
the Final Rejection2 of all pending claims 1-15. We have jurisdiction.
1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as Compagnie
Generale des Etablissements Michelin (France); and Michelin Recherche et
Technique S.A. (Switzerland), (collectively, "Michelin"). (Appeal Brief,
filed 10 January 2017 ("Br."), 3.)
2 Office Action mailed 25 April 2016 ("Final Rejection"; cited as "FR").
Appeal2017-008973
Application 14/114,726
35 U.S.C. § 6. We affirm, but designate our affirmance a new ground of
rejection pursuant to our authority under 37 C.F.R. § 41.50(b).
OPINION
A. Introduction 3
The subject matter on appeal relates to tire treads that are said to
maintain hydroplaning performance and snow traction while improving
rolling resistance. (Spec. 1 [0001].) A sectional view of the radial-lateral
("R-L") plane of a tread according to the invention is illustrated in
Figure 11, below.
20
t1V1 t"V$; t;,..• t .... t} fJ h ~-.l,f
~ Jo;io. '
{"Fig[ ure] 11 is a sectional view along a lateral plane of a tread showing multiple split
bridges that are positioned at different radial heights of the tire." (Spec. 5 [0027].)}
Circumferential grooves 264 and lateral grooves 24, which has depth Dg,
define tread blocks 22 on tire 20. (Id. at 2 [0006].) One or more
3 Application 14/114,726, Tire with tread having bridged areas with split
contact faces within a lateral groove, filed 29 October 2013, as the national
stage under 35 U.S.C. § 371 of PCT/USl 1/34431on29 April 2011. We
refer to the "'726 Specification," which we cite as "Spec."
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 14/114,726
"split bridges" project from the lateral surface of the wall of a tread block
that defines lateral groove 24. (Id.) The split bridges are positioned such
that the upper surface of a bridge is a distance Dt below the top 32 of the
tread, and the bottom surface of that bridge is a distance Db above the
bottom of lateral groove 24. (Id.) In particular, Dt and Dg are constrained
by the requirements that
10% < Dt!Dg < 40%, and
15% < Db/Dg < 50%
(id.). Put another way, the top of the bridge can be no less than 0.1 Dg and
no more than 0.4 Dg below the top of the tread. Similarly, the bottom of the
bridge can be no less than 0.15 Dg and no more than 0.4 Dg above the
bottom of lateral groove 24.
This arrangement is said to ensure that an open channel 34 below the
bridging is present to allow "for water to pass through the lateral groove
throughout the life of the tire." (Id. at 6, i-f 34.) As a result, according to the
Specification, "hydroplaning performance is not deleteriously affected" (id.)
by the presence of the bridge, which does reduce the available volume in the
lateral grooves to channel water through the tread.
The bridges are called "split" because they terminate in faces S1
and S2 such that there is a gap G between opposing bridges that may project
from the opposing wall of the lateral groove. (Id. at 8, ,-i 39.) Because the
split bridges do not link adjacent tread blocks 22 across the lateral groove,
one block is said to be free to move away from the next block "as the tread
block rolls into and out of contact with the ground, thus deformation due to
bending [of the bridge] can be minimized." (Id. at 6, ,-i 35.) This is said to
allow the rolling resistance of the tread to be minimized. (Id.) Furthermore,
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Appeal2017-008973
Application 14/114,726
the gap G is sufficiently small so that it can be closed quickly so tread
blocks 22 "will not deform significantly due to compressive and shear forces
when it is in the contact patch [with the ground]." (Id.) This is also said to
reduce the rolling resistance of the tire. (Id.)
The widths of the blocks along the lateral surface of the tread blocks
are constrained such that the total width, Wtot of the blocks is in the range of
30 to 80% of the total width, Wh of the lateral groove surface.
(Id. at 7 [0038].) The size of the split bridges is further constrained by the
requirement that the total lateral surface areas, Stot, is 10 to 40% of the
lateral surface area, Sh, of the tread block. (Id.)
Claim 1 is representative and reads:
A tire tread having
laterally and circumferentially extending grooves that
define tread blocks, at least one of said tread blocks having
a lateral surface that is located within one of said lateral
grooves that has one or more split bridges thereon that
do not make contact with the opposing tread block or
any portion protruding therefrom, wherein:
a ratio of DtlDg. which is the ratio of the distance from
the top of the tread to the top of a bridge to the depth
of the lateral groove, is in the range of 10 to 40%;
a ratio of Db/Dg, which is the ratio of the distance from
the bottom of the lateral groove to the bottom of a
bridge to the depth Dg of the lateral groove, is in the
range of 15 to 50%;
a ratio of the summarized total widths, Wtot, of the one
or more split bridges found along this lateral surface of
this lateral groove to the total width of this lateral
groove surface, Wb, of the tread block is in the range
of 30 to 80%; and
a ratio of the summarized total of the lateral surface
areas, Stat, of the one or more split bridges to the surf
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Appeal2017-008973
Application 14/114,726
ace area, Sb, of the lateral surface of a tread block is in
the range of 10 to 40%.
(Claims App., Br. 18; some indentation and paragraphing added.)
The Examiner maintains the following grounds of rejection5' 6 :
A. Claims 1-3, 7, 8, 10-12, and 15 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Morishita 7 and Kim. 8
Al. Claims 4---6 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Morishita' Kim, and Himura. 9
A2. Claim 9 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Morishita, Kim, and Kutsmichel. 10
A3. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Morishita, Kim,
and Colombo. 11
5 Examiner's Answer mailed 7 April 2017 ("Ans.").
6 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
7 Hisaya Morishita, Pneumatic Tire, JP 06-191231 A (1994). (JPO abstract.)
8 Hyun-Ho Kim, The pneumatic tire with improved performance for wear
and wet, K 10-2007-0002824 (2007). (KPO machine translation.)
9 M. Himura & N. Watanabe, Lightweight radial tire, JP 05-345506 (1993).
10 RudolfKutsmichel, Tires, U.S. Patent No. 3,511,290 (1970).
11 Gianfranco Colombo & Mario Isola, Tyre for motor vehicles, with a wide
tread, particularly for snow-covered ground, U.S. Patent Application
Publication 2004/0112494 Al (2004).
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Application 14/114,726
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Initially, we find that Morgan bases all arguments for patentability on
limitations found in claim 1. All claims therefore stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that Morishita describes a similar tire tread
comprising blocks defined by circumferential and lateral grooves, with split
bridges projecting from the walls of the lateral grooves (FR 2), illustrated in
Morishita Figure 2, reproduced below.
{Morishita Figure 2: a sectional view of the wall of a lateral groove with
split bridges 5 and 6 in a tire tread}
The Examiner finds further that Morishita teaches that these features are
designed to provide both drainage performance and block rigidity, which,
the Examiner points out, are the same functions disclosed for the claimed
tread. (Id. at 3, 11. 4--7.) The Examiner finds further that Morishita
recognizes that the bridges, which improve block rigidity, can adversely
affect the drainage function unless properly sized and disposed in the
groove. (Id. at 8-9, i-f 24.) The Examiner also finds that Figure 2 illustrates
split bridges "with aggregate widths that are less than the width ... [Wb] of
the lateral surface and as having total surface area that is less than half that
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Application 14/114,726
of the lateral surface." (Id. at 11. 8-10.) The Examiner concludes that the
illustration would have suggested dimensions of the split bridges within the
ranges required by the claims. (Id. at 11. 10-12.)
The Examiner finds further that Kim describes similar spit bridges in
which "the distance separating the bridge and the bottom [of the lateral
groove] and tread surfaces is preferably 20-30% and 10-30% of the groove
depth, respectively, in order to improve rainy road performance and wear
life (pgs 3--4)." (Final Act. 3, 11. 12-15.)
The Examiner reasons that,
[b ]ased on the teachings of Morishita and Kim, one skilled in
the art would have been motivated to configure the
dimensions of the protrusions for the purpose of balancing a
reduction in groove volume (and resultant drainage decrease)
while ensuring the protrusions are of sufficient size to
enhance block rigidity.
(Id. at 9, 11. 15-18.) Thus, the Examiner concludes, "it would have been
obvious ... to have configured the projections so as to satisfy the claimed
dimensions." (Id. at 3, 11. 2--4.)
In Morgan's view, "it is clear that at least ratios Wtot!Wh and Stot!Sh
are not taught or suggested by the cited prior art" (Br. 12, 11. 1-2), including
Kim (id. at para. bridging 15-16). Morgan urges, primarily, that the
Examiner erred harmfully by relying on Morishita Figure 2, which is not
drawn to scale, and which therefore does not provide evidence of actual
proportions, particularly given the silence of Morishita regarding the
particular sizes of these features. (Br. 13, 11. 7-10.) Moreover, Morgan
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Application 14/114,726
argues, unlike the angularity of grooves depicted in Mraz 12 with "great
particularity," the features shown in Morishita, Figure 2, are not so depicted,
as shown by inconsistencies between the figures, leading to questions
concerning the accuracy of dimensions of features. (Id. at 14--15.)
Morgan does not dispute that the obviousness of the conditions on Dt
and Db is supported by the disclosure of Kim regarding desirable distances
between the tread and the top of the bridge, and the bottom of the groove
and the underside of the bridge. We therefore focus on the arguments
regarding the lateral width of the bridges and the surface areas of the ends of
the bridges. Cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991) ("It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.")
Regarding the lateral width of the split bridges, given that the
combined lateral widths of the split bridges must be between 30% and 80%
of the total lateral width of the tread block, we are not persuaded by
Morgan's arguments that there is a need for "great particularity" of detail in
the drawings in order to suggest this broad limitation. The functions of
block rigidity and road water drainage taught by Morishita, and rainy road
performance and wear life taught by Kim suggest a substantial size for the
bridges relative to the tread blocks, while the need for water access under the
split bridges places constraints against the lateral width becoming so large as
to cover the width of the tread block.
12 In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).
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Application 14/114,726
Moreover, the lateral surface area of the split bridge, Stot, depends on
the lateral width and the thickness (in the radial direction) of the split
bridges. Thus, Stot is not an independent parameter: rather, it depends on the
widths and the thicknesses of the split bridges. The outer bounds of the
thickness of the bridges are suggested by Kim 13,
from (1.0 - 0.2 - 0.1=0.7)Dg to (1.0 - 0.3 - 0.3 = 0.4)Dg.
Coupled with a not unreasonable midrange 14 value of 0.5Wh for the
combined width of wings suggested by Morishita, leads to a range of areas
of
Dividing this estimate of the total lateral area of the split bridges by the
approximate area of the face of the block, DgWh, gives a range of ratios
Stot!Sh from 0.2 to 0.35, which is entirely within the range of 10% to 40%
(0.1 to 0.4) recited in claim 1.
While perhaps a bit terse, the logic underlining the Examiner's
analysis is readily apparent. Moreover, these determinations are not based
solely on dimensions reflected in the figures, but on teachings in the prior art
13 The maximum thickness of the bridge is given by the difference between
the groove depth and the sum of the minimum distance from the tread to the
top of the bridge and the minimum distance from the bottom of the groove to
the underside of the bridge. The minimum thickness of the bridge is given
by the corresponding difference based on the corresponding maximum
differences.
14 The total lateral bridge widths allowed by appealed claim 1 ranges from
0.3Wh to 0.8Wh. The resulting range of lateral areas of the split bridges is:
0.7Dg x 0.8Wb = 0.56 DgWb to 0.4Dg x 0.3Wb = 0.12DgWb.
The resulting ratios Stot!Sh range from 0.12 to 0.56, which overlaps
substantially with the range of 0.10 to 0.40 allowed by claim 1.
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Application 14/114,726
that the skilled artisan would have used to arrive at optimal or workable
dimensions for achieving good block rigidity and road water drainage as
taught by both Morishita and Kim.
Finally, we note that Morgan has not, in the Principal Brief on Appeal
(or in the Reply 15), raised any arguments for patentability based on
unexpected results.
We are not persuaded of harmful error in the appealed rejections,
which we therefore affirm.
Because we have made explicit findings of fact and provided an
analysis, particularly regarding the ratios Stot!Sh, that the Examiner did not,
we designate this affirmance a new ground of rejection in order to provide
Morgan with a full and fair opportunity to respond.
C. Order
It is ORDERED that the rejections of claims 1-15 are affirmed.
This decision contains a new ground of rejection.
37 C.F.R. § 41.52(a)(l) provides that "Appellant may file a single request
for rehearing within two months from the date of the original decision of the
Board." 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
15 Reply Brief filed 7 June 2017 ("Reply").
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Application 14/114,726
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 ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 3 7 C.F .R. § 41. 50(b )( 1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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; 37 C.F.R. § 41.50(b)
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