Ex Parte Zanzig et al

Board of Patent Appeals and Interferences

Jul 20, 2012

11820684 (B.P.A.I. Jul. 20, 2012)

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.
11/820,684 06/20/2007 David John Zanzig DN2002031D01 4195
27280 7590 07/20/2012
THE GOODYEAR TIRE & RUBBER COMPANY
INTELLECTUAL PROPERTY DEPARTMENT 823
1144 EAST MARKET STREET
AKRON, OH 44316-0001
EXAMINER
LIGHTFOOT, ELENA TSOY
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
07/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID JOHN ZANZIG, DAVID ANDREW BENKO, JAMES
JOSEPH NESPO, TERRY JOHN WAIBEL, MICHAEL JULIAN
CRAWFORD, TIMOTHY MICHAEL ROONEY, BINA PATEL BOTTS,
and GEORGE FRANK BALOGH
____________

Appeal 2010-008054
Application 11/820,684
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and LINDA M.
GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 21, 22, and 24-29. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appeal 2010-008054
Application 11/820,684

2
Appellants’ claimed invention is directed to a method of applying a
camouflage pattern to a tire. Claim 21, the sole independent claim on
appeal, is illustrative and is reproduced below:
21. A method of applying a camouflage pattern to a tire,
comprising steps of sequentially applying two or more layers of
liquid comprising at least one elastomer and a colorant, each
layer being applied to all or part of an external tire surface,
wherein the elastomeric coating comprises a hydrogenated
acylonitrile rubber;
drying or curing said two or more layers to form an
elastomeric coating on said external tire surface;
such that a plurality of colored elastomeric regions
disposed on said external tire surface is obtained which
comprises a camouflage pattern of at least two different colors;
wherein each of said colored elastomeric regions is of thickness
between about 0.1 and about 2 microns.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Bagley US 2,088,561 Jul. 27, 1937
Roberts, Jr. US 3,979,547 Sept. 7, 1976
Roberts US 5,314, 741 May 24, 1994
Lehman US 5,972,479 Oct. 26, 1999
Kanenari US 6,397,913 B1 Jun. 4, 2002
Almonacil US 2004/0203304 A1 Oct. 14, 2004
Merten (as translated) DE 19630586 A1 Feb. 5, 1998

Claims 21, 22, and 24-28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Merten in view of Bagley, Lehman, Roberts, and
Almonacil. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Merten in view of Bagley, Lehman, Roberts, Almonacil,
and Roberts, Jr.
Appeal 2010-008054
Application 11/820,684

3
We reverse the stated rejections for substantially the reasons set forth
in the Appeal Brief because the Examiner has not discharged the burden of
presenting a prima facie case of obviousness (App. Br. 4 and 5). In this
regard, "the examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Concerning the obviousness rejection of claims 21, 22, and 24-28, the
Examiner’s proposed combination of references falls short of proffering a
sustainable rationale that supports the asserted obviousness rejection. As
best understood, the Examiner maintains, in essence, that one of ordinary
skill in the art would have been led to modify the process of Merten, wherein
a colored shark skin surface profile is mounted on a tire by stamping or by
adhesive or welding attachment techniques, by employing the liquid tire
cover technique using a latex rubber of Bagley for applying a colored
sidewall, and by further modifying Merten’s modified process by using the
sequential application of two or more layers in light of the multi-layer
camouflage material manufacturing method of Lehman, all while using the
hydrogenated acrylonitrile/butadiene rubber- containing protective coating
material of Roberts albeit at a significant reduction in thickness compared to
the coating thickness taught by Roberts, and while additionally relying on
Almonacil for teaching that acrylonitrile/butadiene rubber is a conventional
rubber used to make tire sidewalls (Ans. 3-7).
While not addressing all of the proposed modifications to Merten’s
process advanced by the Examiner, Appellants contend that the Examiner’s
rejection is untenable because there is no sustainable rationale for the
Examiner’s assertions with respect to the obviousness of using a coating like
Appeal 2010-008054
Application 11/820,684

4
that taught by Roberts in a thickness corresponding to that recited in all of
the appealed claims (0.1 to 2 microns) given that Roberts teaches the coating
is employed at a minimum thickness of about 0.5 mil (about 12.7 microns)
to cover the underling material to be protected thereby (Br. 4 and 5; Roberts;
col. 4, ll. 22-33). In this regard, we note that Roberts teaches that the
coating is useful for protecting an underlying article, such as a tire, from UV
light, ozone, and/or oxygen attack (col. 1, ll. 58-64; col. 4, ll. 7-13).
On this record, we agree with Appellants. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness"), cited with approval in KSR Int'l. Co. v. Teleflex
Inc., 550 U.S. 398, 417-18 (2007). Rejections based on § 103(a) must rest
on a factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
We note that the Examiner’s rebuttal of Appellants’ argument has
little merit. For example, the Examiner speculates that the minimum coating
thickness could be reduced for indoor rubber articles because they would
need less protection (Ans. 11). However, the claimed subject matter and the
primary reference, Merten, are both directed to tires, which articles would be
expected to be subjected to an outdoor environment. In this regard, while it
is generally a matter of obviousness for the skilled artisan to determine the
optimum value within a disclosed range, In re Boesch, 617 F.2d 272, 276
(CCPA 1980), it may not have been obvious for one of ordinary skill in the
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Application 11/820,684

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art to find an optimum value that is significantly outside the range taught by
the prior art. See In re Sebek, 465 F.2d 904, 907 (CCPA 1972).
On this record, we reverse the first stated rejection.
Concerning the Examiner’s separate obviousness rejection of
dependent claim 29, the additionally applied Roberts, Jr. reference does not
cure the aforementioned deficiencies in the first stated rejection.
It follows that the obviousness rejection of claim 29 is not sustained,
on this record.

CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

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