Ex Parte Speyer et al

Board of Patent Appeals and Interferences

Jul 17, 2012

11501126 (B.P.A.I. Jul. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AL SPEYER, EDWARD KEITH SHRIEVE,
FRANCIS J. BYRNE, and ANTON H. GEORGE
____________

Appeal 2010-010834
Application 11/501,126
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and BEVERLY A.
FRANKLIN, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 34 through 37 and 39 through 41.1 Claims 18, 19, 22,
and 29 through 33, the other claims pending in the above-identified

1 See Appeal Brief (“App. Br.”) filed April 19, 2010, 1 and 3; Examiner’s
Answer (“Ans.”) filed May 14, 2010, 2; and Reply Brief (“Reply Br.”) filed
July 14, 2010, i and 1.
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application, stand withdrawn from consideration by the Examiner. We have
jurisdiction over the appealed subject matter pursuant to 35 U.S.C. § 6.

STATEMENT OF THE CASE
The subject matter on appeal is directed to “[a] method of providing
race-specific information to an audience during a race of vehicles along a
track” via mounting a “tire having information-bearing indicia provided on
at least one sidewall of the tire” onto a vehicle. (See, e.g., claim 34.)
According to paragraphs 0018 to 0022 at pages 4 and 5 of the Specification,
the race-specific information includes unlimited indicia or markings, such as
colored indicia, a solid annular ring, arcuate segments, letters, numerals,
characters, shapes, ornamental designs, decorative patterns, trademarks,
logos, or any combination thereof. (See particularly Spec. 4-5, para. 0019.)
Applying such information onto tires is said to be accomplished by various
known techniques described at paragraph 0025, page 6, of the Specification.
This appealed subject matter relates to what was acknowledged to be
a well-known practice in the tire industry, i.e., using indicia or color indicia
on the side wall of tires to convey information and/or to enhance their
appearance and marketability. In particular, Appellants acknowledge at
page 1, paragraphs 0001 and 0002, of the Specification that:
For many years, tire manufacturers have placed indicia
(i.e., letters, numerals, characters, symbols, trademarks or
similar designations and descriptions) upon the sidewalls
of tires for informational and identification purposes. For
example, such indicia may take a variety of forms and convey
information relative to the tire manufacturer, the brand name of
the tire, the tire size, its construction and load limits, the quality
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grade thereof, sizes, mounting instructions, safety warnings, as
well as the place and date of its manufacture.
Moreover, tires having decorative sidewalls, including
color, are well known and can enhance the appearance and,
thus, the marketability of the tires. For example, tires
having a colored annular ring that extends around the sidewall
of the tire (e.g., "white wall" tires) are known in the art and are
used for decorative purposes. [(Emphasis added.)]

Details of the appealed subject matter are recited in representative
claim 34 which is reproduced below:
34. A method of providing race-specific information to an audience
during a race of vehicles along a track, the method comprising:

mounting a tire onto a vehicle entered in the race, the tire having
information-bearing indicia provided on at least one sidewall of the tire,
wherein the information-bearing indicia comprises a solid annular ring that
extends around the entire circumference of the tire and that indicates a
characteristic of a driver in a vehicle racing series;

placing the vehicle in a stopped position on the track to expose the at
least one sidewall of the tire to the audience thereby permitting the audience
to visibly detect the solid annular ring when the vehicle is stopped; and

driving the vehicle along the track to expose the at least one sidewall
of the tire to the audience thereby permitting the audience to visibly detect
the solid annular ring when the vehicle is moving.

Appellants seek review of the Examiner’s rejection of claims 34
through 37 and 39 through 412 under 35 U.S.C. § 103(a) as unpatentable

2 Appellants have presented substantive arguments drawn to claim 34 only.
(See App. Br. 9-21 and Reply Br. 3-7.) Therefore, for purposes of this
appeal, we select claim 34 and decide the propriety of the Examiner’s
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over the disclosures of GB 2,381,367 A issued to John Smith on April 30,
2003 (hereinafter referred to as “Smith”). (See App. Br. 8 and Reply Br. 2.)
In support of patentability of the claimed subject matter, Appellants
rely upon the following evidence (App. Br. 27):
1. A Rule 132 Declaration executed by Terry Angstadt on
September 1, 2009 (hereinafter referred to as the “Angstadt
Declaration”);

2. A Rule 132 Declaration executed by Jack Arute on August 29,
2009 (hereinafter referred to as the “Arute Declaration”);

3. A Rule 132 Declaration executed by Robbie Buhl on October 7,
2009 (hereinafter referred to as the “Buhl Declaration”);

4. A Rule 132 Declaration executed by Sarah Fisher on August
29, 2009 (hereinafter referred to as the “Fisher Declaration”);

5. A Rule 132 Declaration executed by Brian Gordon on October
7, 2009 (hereinafter referred to as the “Gordon Declaration”);

6. A Rule 132 Declaration executed by Matthew Mullen on
September 1, 2009 (hereinafter referred to as the “Mullen
Declaration”);

7. A Rule 132 Declaration executed by Al Speyer on October 9,
2009 (hereinafter referred to as the “Speyer Declaration”); and

8. A Rule 132 Declaration executed by Justin Wilson on August
29, 2009 (hereinafter referred to as the “Wilson Declaration”).

§ 103(a) rejection based on this claim alone consistent with 37 C.F.R.
§ 41.37(c)(1)(vii).

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DISCUSSION
Appellants do not dispute the Examiner’s finding that Smith teaches
the claimed method of using a tire having on at least one sidewall race-
specific information-bearing indicia to provide such information to an
audience during a race of vehicles along a track, except for the indicia being
a solid annular ring that extends around the entire circumference of the tire
and that indicates a characteristic of a driver. (Compare Ans. 3-4 with App.
Br. 9-11 and Reply Br. 3-4.)
Thus, the first critical question is: Has the Examiner reversibly erred
in determining that the use of such indicia or marking on a sidewall of a tire
does not impart patentability to the claimed method or would have been
obvious to one of ordinary skill in the art in light of the teachings of Smith.
On this record, we answer this question in the negative.
As is apparent from pages 1 through 7 of the Specification, the indicia
in question is used for ornamental, instructional information and/or
advertisement purposes and is not functionally related to the tire. As such,
we concur with the Examiner that the use of such indicia, as opposed to
other printed matters, does not impart patentability to the claimed method.
Cf. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004), citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983) (“As the Gulack court pointed out,
‘[w]here the printed matter is not functionally related to the substrate, the
printed matter will not distinguish the invention from the prior art in terms of
patentability.’”); In re Seid, 161 F.2d 229, 231 (CCPA 1947) (“Those
matters, as the board properly held, relate to ornamentation only and have no
mechanical function whatsoever. They cannot, therefore, properly be relied
on here, as the appealed claims are not directed to a design but are structural
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claims.”) To do otherwise is to allow continued patenting of any known
products or processes, including a known process for applying printed
matters, e.g., information, onto a known tire, indefinitely upon including any
new printed matters, such as new instructions, new ornamentations or any
other new information which are unrelated to the function of a substrate. Cf.
Ngai, 367 F.3d at 1339 (“If we were to adopt Ngai’s position, anyone could
continue patenting a product [or a process] indefinitely provided that they
add a new instruction sheet to the product.”)
To the extent that such printed matter is entitled to some patentable
weight, we concur with the Examiner’s determination at pages 4 and 5 of the
Answer that one of ordinary skill in the art would have been led to employ
various informational indicia, including a solid annular ring extending
around the entire circumference of the tire, which, according to claim 34 is
indicative of a characteristic of a driver, on at least one sidewall of the tire
taught by Smith, with a reasonable expectation of successfully improving the
appearance and marketability of the tire and/or successfully using such a
ring symbol for informational purposes. While some specific embodiments
of Smith may be directed to forming or printing a plurality of markings on a
sidewall of a tire that could produce an indicium, such as a letter, a numeral,
logo, picture, pictorial representation or the like, upon rotating the tire at a
particular angular velocity as argued by Appellants, the broader embodiment
of Smith is drawn to employing various informational marks, especially
those which are legible to observers during the rotation of a tire. (See pp. 1-
2.) Smith also teaches that these marks can be designed from a solid annular
strip formed of a different color rubber than the rest of the sidewall of a tire.
(See p. 10.) According to Appellants, such different colored solid annular
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strips, by themselves, were also known to be used as decorative indicia on a
sidewall of a tire to improve the appearance and marketability of the tire at
the time of the invention as indicated supra. Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.”); In re
Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The admitted prior art in
applicant’s Specification may be used in determining the patentability of a
claimed invention.) On this record, Appellants have not shown that the solid
annular ring on at least one sidewall of a tire is not legible to observers
during the rotation of the tire.
“[W]here the prior art gives reason or motivation to make the claimed
[invention] . . . the burden (and opportunity) then falls on an applicant to
rebut that prima facie case. Such rebuttal or argument can consist of . . . any
other argument or presentation of evidence that is pertinent.” In re Dillon,
919 F.2d 688, 692-93 (Fed. Cir. 1990) (internal citations omitted) (en banc).
According to Appellants, the Declarations of record demonstrate that the
claimed subject matter produced commercial success, thereby rebutting any
prima facie case of obviousness established by the Examiner. (See App. Br.
11-21.)
Thus, the second critical question is: Have Appellants demonstrated
that on balance, the secondary evidence relied upon by Appellants outweighs
the evidence of obviousness proffered by the Examiner? On this record, we
answer this question in the negative.
As correctly found by the Examiner at pages 5 and 6 of the Answer,
the asserted commercial success is based on printed matter, such as a colored
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annular ring, that does not distinguish the invention from the prior art in
terms of patentability. Moreover, as acknowledged by Appellants at page 1
of the Specification, the use of such colored annular ring on a sidewall of a
tire was known at the time of the invention. Thus, the asserted commercial
success is not sufficient to overcome the prima facie case of obviousness
established by the Examiner. Ormco Corp. v. Align Tech. Inc., 463 F.3d
1299, 1312 (Fed. Cir. 2006) (“[I]f the feature that creates the commercial
success was known in the prior art, the success is not pertinent.”); Tokai
Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If
commercial success is due to an element in the prior art, no nexus exists.”)
Also, Appellants have not provided sufficient evidence to show
commercial success. The Federal Circuit has observed that “the PTO lacks
the means or resources to gather evidence which supports or refutes the
applicant’s assertion that the sales constitute commercial success.” In re
Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996) (citing Ex parte Remark,
15 USPQ2d 1498, 1503 (BPAI 1990).) “Consequently,” the court
continued, “the PTO must rely upon the applicant to provide hard evidence
of commercial success.” Huang, 100 F.3d at 139-40 (emphasis added).
Sales figures alone are generally inadequate because “[w]ithout further
economic evidence . . . it would be improper to infer that the reported sales
represent a substantial share of any definable market.”) Id., quoting Cable
Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27 (Fed. Cir.
1985). Yet, Appellants acknowledge at page 12 of the Appeal Brief, there is
no hard evidence or proof to show an improvement in the market share,
much less sales, of the claimed tires. In fact, the Speyer Declaration states
that “Firestone has had 100% market share of the IRL racing tires both
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before and after the introduction of the colored rings.” (See para. 13.) The
remaining Declarations of record discuss the aesthetic or decorative values
of the annular ring, which was admittedly known in the art to enhance the
appearance and marketability of a tire as discussed supra. (Compare Spec. 1
with App. Br. 14-21.)
While Appellants rely on Buildex Inc. v. Kason Indus., Inc., 665
F.Supp. 1021 (E.D.N.Y. 1987) to show that no improvement in the sales or
market share of the claimed tires is needed to establish commercial success,
Buildex Inc. is not relevant to the facts of this case. First, Huang discussed
supra indicates that the evidentiary requirement before the USPTO is
different than the one before a district court, as in Buildex Inc., due to the Ex
parte nature of the prosecution of a patent application. Secondly, as
indicated by the Speyer Declaration, “Firestone has had 100% market share
of the IRL racing tires both before and after the introduction of the colored
rings” and leases the tires to each IRL team at a reduced rate in exchange for
advertisement and publicity (See paras. 12 and 13.) Unlike Buildex Inc.,
there is no indication that the colored rings resulted in exclusive sales to the
IRL.
Further, Appellants have not provided sufficient evidence to show that
the asserted commercial success is due to the merits of the claimed
invention. J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571
(Fed. Cir. 1997). In other words, Appellants have not shown that any
asserted commercial success is due to the colored annular rings on at least
one sidewall of a tire. As indicated supra, the Speyer Declaration states that
“Firestone has had 100% market share of the IRL racing tires both before
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and after the introduction of the colored rings” and leases the tires to each
IRL team at a reduced rate in exchange for advertisement and publicity.
These facts indicate that any asserted commercial success could be due to
some other unclaimed factors, such as a reduced lease cost or the quality or
composition of the tires.
Accordingly, based on the record established on appeal, including due
consideration of the arguments and evidence advanced by the Examiner and
Appellants, we determine that the preponderance of evidence weighs most
heavily in favor of obviousness within the meaning of 35 U.S.C. § 103(a).
See also Leapfrog Enters., Inc., v. Fischer-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (concluding that evidence of secondary considerations was
insufficient to overcome this strong showing of primary considerations that
rendered the claims at issue invalid).

ORDER
Upon consideration of the record, and for the reasons given, it is:
ORDERED that the decision of the Examiner to reject claims 34
through 37 and 39 through 41 under 35 U.S.C. § 103(a) as unpatentable over
the disclosures of Smith is AFFIRMED; and,
FURTHER ORDERED that 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).
AFFIRMED

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