Ex Parte Sallaz et al

Patent Trial and Appeal Board

Feb 2, 2018

13996191 (P.T.A.B. Feb. 2, 2018)

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.
13/996,191 08/30/2013 Gilles Sallaz 338180-00617 7822
35161 7590 02/05/2018
DICKINSON WRIGHT PLLC
1825 Eye St., NW
Suite 900
WASHINGTON, DC 20006
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
02/05/2018 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 GILLES SALLAZ, AGNÈS DEGEORGES, ALAIN DOMINGO,
AND SÉBASTIEN NOEL
____________

Appeal 2017-000524
Application 13/996,191
Technology Center 1700
____________

Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants1 request our review under 35 U.S.C. § 134 of the
Examiner’s final decision rejecting claims 1–3 and 6–20 under 35 U.S.C. §
103(a) over the combination of Grosch (GB 2,024,119 A, pub. June 28,
1978) and MPT (Mechanics of Pneumatic Tires (U.S. Department of
Transportation, Aug. 1988)), with either one of Harikae (JP 2004-036027 A;

1The Real Parties in Interest are identified as Compagnie Generale des
Etablissements Michelin and Michelin Recherche et Technique S.A.
(Appeal Br. 3).
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Application 13/996,191

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published Feb. 5, 2004; as translated) and Imamiya (JP 2002-363875 A,
published Dec. 18, 2002; as translated), or both.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is illustrative (emphasis added to highlight key
disputed limitations):
1. A tire having a radial carcass reinforcement,
having at least one layer of reinforcing elements, said tire
comprising:
a crown reinforcement,
a tread radially covering the crown reinforcement, said
tread being joined to two beads via two sidewalls,
at least one layer of reinforcing elements of the radial
carcass reinforcement being anchored in each of the beads by
an upturn around a bead wire,
wherein the radial carcass reinforcement upturn is
reinforced by at least one stiffener comprising a layer of
reinforcing elements or stiffener,
wherein at least an end of the radial carcass
reinforcement upturn is separated from the stiffener by a
calendering layer of polymer blend,
wherein the metal cords of at least one layer of the
carcass reinforcement have, in what is called the permeability
test, a flow rate of less than 20 cm3/min and are cords having at
least two layers and wherein at least one inner layer is sheathed
with a layer consisting of a polymer composition,
wherein the reinforcing elements of at least one stiffener
are non-wrapped metal cords with saturated layers, having, in
what is called the permeability test, a flow rate of less than 5
cm3/min,

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wherein the radially inner end of said stiffener is radially
on the inside of the point of the bead wire which is radially
closest to the axis of rotation and wherein the modulus of
elasticity of the polymer blend of the calendering layer of the
carcass reinforcement is less than or equal to 8 MPa.

ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner’s finding that the claimed subject matter is unpatentable within the
meaning of § 103 in view of the applied prior art. Accordingly, we will
sustain the Examiner’s § 103 rejections, for essentially those reasons
expressed in the Answer, including the Examiner’s Response to Argument
section, and we add the following primarily for emphasis.
First, Appellants argue that there are two types of metal cords recited
and none of the references mention “non-wrapped” cords (Appeal Br. 7, 8).
This argument is not persuasive of error in the Examiner’s rejection. As
aptly pointed out by the Examiner, the structure of the non-wrapped cords of
each of Harikae and Imamiya appear to be substantially identical to those as
claimed and disclosed (Ans. 3, 4). Furthermore, Appellants have not pointed
out any error in the Examiner’s determination that there is no apparent
distinction between the claimed metal cords in the carcass reinforcement and
the metal cords of the stiffener, since each have an inner layer that is
“sheathed in a layer consisting of a polymer composition” and an outer layer
with no wrapping (Ans. 4, 5 (pointing out that claim 2 uses the same
language regarding a sheathing layer for the “non-wrapped” cords and that
the claims do not preclude the same cord being in the carcass and stiffener)).
Appellants have not directed our attention to any special definition of the
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disputed phrases/language of claim 1 in the Specification, or to any
persuasive reasoning or credible evidence to establish that the Examiner’s
interpretation of the language in independent claim 1 is unreasonable. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (if the
specification does not provide a definition for claim terms, the broadest
reasonable interpretation consistent with the specification is applied; as
claims may be amended to narrow their scope, “a broad construction during
prosecution creates no unfairness to the applicant or patentee.”).
Appellants’ remaining arguments focus on whether the claim
limitations regarding the air permeability ranges of the metal
cords/reinforcing elements “sheathed with a layer consisting of a polymer
composition” encompasses the Harikae and/or Imamiya steel cord/polymer
structures (App. Br. 8–13). Specifically, Appellants contend that the
Examiner has not shown any “nexus between an alleged similarity in
structure of Harikae and/or Imamiya the concepts of corrosion/fatigue and
the claimed range” (Appeal Br. 11) and that the claimed permeability ranges
“help abate and avoid said fatigue and corrosion” (Appeal Br. 12).
Appellants further argue that the Examiner’s has “provided nothing in the
way of facts that would lead one of ordinary skill in this art to reasonably
expect that, by introducing the cords of Harikae and/or Imamiya, that the
claimed ranges of flow rates would be achieved” (id.). We disagree.
It has been held that when the Examiner establishes a reasonable basis
that the products (or processes) claimed by the applicant and disclosed in the
prior art appear to be the same or substantially similar, the burden is
properly shifted to the applicant to show that they are not. See In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254–56
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(CCPA 1977). Cf. In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004). See
also In Re Dillion, 919 F.2d 688 (Fed. Cir. 1990) (a prima facie case of
obviousness does not require both structural similarity and a suggestion in or
expectation from the prior art that the claimed compound will have the same
or a similar usefulness as the applicant"s newly discovered compound;
exactly what amounts to a prima facie case varies from case to case.)
Here, the Examiner’s determination, that the metal cords/polymer
sheath structures of Harikae and/or Imamiya appear to be the same or
substantially similar to those as claimed and disclosed, is reasonable (e.g.,
Ans. 5; compare, e.g., Spec. Fig. 4 to Harikae Fig. 1c).2 Notably, as pointed
out by the Examiner, Appellants fail to identify any unique processing
conditions or additional structure that affect the recited flow rate (Ans. 5).
Appellants have not provided any persuasive reasoning or credible
evidence to refute the Examiner’s determination that the predictable use of
the known metal cords/polymer sheath structures of Harikae and/or Imamiya
as reinforcement cords in the tire structure of Grosch would have resulted in
a tire having the claimed permeabilities for its respective metal

2 WO 2009/083212 A1, which shares a common assignee to the present
application, was submitted in the IDS filed March 24, 2016. This reference
is further evidence that a non-wrapped metal reinforcement cord for a tire
that appears substantially identical to those claimed and those of, e.g.,
Harikae, have a permeability of less than 2 cm3/min. Furthermore, since it
shares a common assignee, Appellants are presumed to have knowledge of
same as prior art to the present application. Cf. Constant v. Advanced
Micro-Device, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) (An applicant
cannot defeat an obviousness rejection by asserting that the cited references
fail to teach or suggest elements which the applicant has acknowledged are
taught by the prior art); In re Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975).
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cords/polymer sheaths. Attorney’s arguments in a brief cannot take the place
of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellants’ arguments thus do not point out reversible error in the
Examiner’s rejection of claim 1, and a preponderance of the evidence
supports the Examiner’s obviousness determination.
Appellants do not separately argue any of the remaining dependent
claims.
Accordingly, the Examiner’s § 103 rejection is affirmed with respect
to all of the claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED