PIRELLI TYRE S.P.A.

Patent Trials and Appeals Board

Jun 18, 2020

2019004606 (P.T.A.B. Jun. 18, 2020)

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.
15/515,934 03/30/2017 Paola CARACINO P2027-US 3639
72932 7590 06/18/2020
Steinfl + Bruno LLP
155 N. Lake Ave. Ste 700
Pasadena, CA 91101
EXAMINER
DYE, ROBERT C
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
bruno@sbpatlaw.com
mail@sbpatlaw.com
steinfl@sbpatlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAOLA CARACINO, LUCA GIANNINI,
THOMAS HANEL, and ANDREA SCOTTI

Appeal 2019-004606
Application 15/515,934
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–26. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Pirelli
Tyre S.P.A. Appeal Br. 2.
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Application 15/515,934

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Appellant’s invention is directed to a soundproof tire for vehicle
wheels comprising special sound absorbent foams capable of reducing the
noise perceived inside the driver/passenger compartment of vehicles, due to
the attenuation of the cavity noise of the tire itself (Spec. 1: 4-8; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A soundproof tyre for vehicle wheels, comprising:
a sound absorbent material applied at least on one portion
of a radially inner surface of a tyre,
wherein the sound absorbent material comprises a
foamed polyolefin material with closed macrocells
having an average size of at least 1.5 mm according to
ASTM D3576, and
wherein the foamed polyolefin material with
closed macrocells comprises at least one perforation per
10 cm2 of at least one surface of the material itself.

Appellant appeals the following rejections:
1. Claims 1–7, 11–22, and 24–26 are rejected under 35 U.S.C. §
103 as unpatentable over Yukawa (US 2007/0089824 A1,
published Apr. 26, 2007) in view of Subramonian (US
2005/0086823 A1, published Apr. 28, 2005).
2. Claims 8, 10, and 23 are rejected under 35 U.S.C. § 103 as
unpatentable over Yukawa in view of Subramonian and Park
(US 2004/0176484 A1, published Sept. 9, 2004).
3. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
Yukawa in view of Subramonian and Pozzana (WO
2012/156416 A1, published Nov. 22, 2012) or Lowery (US
5,962,107, issued Oct. 5, 1999).
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Regarding rejection (1), Appellant argues the subject matter of claim 1
only (Appeal Br. 6–16). Appellant relies on the same arguments regarding
independent claim 14 and dependent claims 2–7, 11–13, 15–22, and 24–26
as made with regard to independent claim 1 (Appeal Br. 16–17).
Accordingly, these claims will stand or fall with claim 1.
Regarding rejections (2) and (3), Appellant relies on the similar
arguments made with respect to claim 1 (Appeal Br. 17–18). Appellant
argues that the Examiner neither construed claims 8, 9, 10, and 23, nor
assessed the level of skill in the art (Appeal Br. 17 and 18). To address the
arguments regarding these claims, we select claims 8 and 9 as representative.
37 C.F.R. § 41.37(c)(1)(iv).
FINDINGS OF FACT & ANALYSIS
Rejection (1)
The Examiner’s finding and conclusions regarding Yukawa and
Subramonian are located on pages 2 to 3 of the Final Action. The Examiner
finds that Yukawa teaches a tire having a sound absorbent material applied
to the radially inner surface wherein the sound absorbent material may be
either open-celled or closed-cell with a preference for polyethylene sponge
(Final Act. 2). The Examiner finds that Yukawa does not disclose the
average size of the cells or at least one perforation per 10 cm2 of least one
surface of the material (Final Act. 2, 3). The Examiner determines that it
would have been obvious to make Yukawa’s polyethylene foam with an
average cell size of 1.5 mm in light of Subramonian’s teachings of a similar
polyethylene sound absorbing foam for use in automotive applications (Final
Act. 2–3). The Examiner determines that it would have been obvious to
configure Yukawa’s foam with at least one perforation per 10 cm2 since
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Yukawa and Subramonian disclose foam in sheet form and Subramonian
discloses that perforating the foam sheet improves acoustic performance or
removes blowing agent (Final Act. 3).
Appellant argues that the Examiner did not properly construe the
claims (Appeal Br. 7). Appellant contends that the proper standard for claim
construction should be as set forth in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005), which the Patent Office has adopted for inter partes review
proceedings (Appeal Br. 7). We disagree.
The broadest reasonable interpretation in light of the Specification is
the standard applied during patent examination (i.e., pre-issuance of the
claims). See, Manual of Patent Examining Procedure (MPEP) § 2111. In
contrast, patented claims are not given the broadest reasonable interpretation
during a court proceeding involving infringement or validity. Id. Although
the Patent Office changed the claim construction standard for inter partes
review, post-grant review, and the transitional program for covered business
method patents, the broadest reasonable interpretation standard was not
changed for pre-issued claims under patent examination. See, Rule and
Regulations Department of Commerce Patent and Trademark Office, 83 Fed.
Reg. 51340-01 (October 11, 2018) (to be codified at 37 CFR Part 42). The
Examiner applied the proper claim construction standard in this appeal.
Appellant argues that the Examiner failed to define the level of
ordinary skill in the art (Appeal Br. 8). Appellant contends that the
Examiner’s failure to determine the level of skill in the art requires reversal
of the rejection (Appeal Br. 8). Appellant contends that the level of skill in
the art is too low to sustain the Examiner’s obviousness rejection (Appeal
Br. 8). We disagree.
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The Examiner finds that the applied art demonstrates the level of skill
in the art (Ans. 4). Appellant relies on the teaching of Yukawa as a basis to
determine that the level of skill in the art is low (Appeal Br. 8). In other
words, the Examiner and Appellant each relies on the prior art to evince the
level of skill in the art such that a specific finding regarding the level of skill
in the art is not necessary in the obviousness analysis. Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001). We are unpersuaded by Appellant’s
argument.
Regarding claim 1, Appellant argues that the Examiner’s rejection is
flawed because Yukawa and Subramonian do not enable using a foamed
polyolefin material with closed macrocells that comprises at least one
perforation per 10 cm2 of at least one surface of the material itself (Appeal
Br. 9). Appellant contends that the Examiner’s rejection is based upon a
perception that the level of skill is higher than indicated in the applied
references (Appeal Br. 8). Appellant argues that Yukawa does not teach
perforating the foam and a person of ordinary skill in the art would
understand that perforated material that is to be fastened with adhesive tape
may exhibit different adhesive properties than unperforated material (Appeal
Br. 10). Appellant argues that a person of ordinary skill in the art would
understand that the perforations would impact the contact area of the
adhesive tape and affect adhesion of the double-sided tape to the perforated
foam (Appeal Br. 11). Appellant contends that Yukawa and Subramonian
do not enable a person of ordinary skill in the art to make and use the
claimed invention (Appeal Br. 11). Appellant argues that the combination of
Subramonian’s perforations with Yukawa’s foam lacks a reasonable
expectation of success and is based on impermissible hindsight (Appeal
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Br. 12–15). Appellant contends that there is no reasonable expectation that
using Yukawa’s double-sided tape to adhere a perforated foam to the inner
radial surface of a tire would have been successful (Appeal Br. 13).
Appellant argues that Yukawa prefers the use of polyurethane sponge over
polyethylene foam such that using a polyolefin foam in Yukawa is based on
impermissible hindsight (Appeal Br. 15). Appellant argues that
Subramonian does not teach using a perforated foam in a tire (Appeal
Br. 15).
Contrary to Appellant’s argument, the Examiner finds that Yukawa
teaches different types of adhesives and different types of foam materials for
the foam damper (Ans. 4). The Examiner finds that it would have been
within the purview of one of ordinary skill in the art to select appropriate
damper and adhesive materials and to conduct routine testing to determine
whether the adhesive force conditions are appropriate for the double-sided
tape (Appeal Br. 4). The Examiner correctly finds that Yukawa’s disclosure
is not limited to the preferred embodiment (Ans. 4). Indeed, Yukawa
teaches that the noise damper may be made of polyethylene, closed-cell
foam (¶ 63). Yukawa teaches that the adhesive on the double-sided
adhesive tape may be a variety of adhesives (¶¶ 82, 83). In other words,
while there may be some trial-and-error involved in finding the right
combination of adhesive and foam, such experimentation has not been
shown to be beyond the skill of one of ordinary skill in the art.
The Examiner and Appellant agree that Yukawa does not teach
perforating the closed-cell foam, but the Examiner finds that Subramonian
teaches perforated foam improves acoustic performance of thermoplastic
foams (Final Act. 3). Appellant does not dispute that Subramonian teaches
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that adding perforations to the foam produces improved acoustic properties
(Appeal Br. generally). We are unpersuaded by Appellant’s arguments
regarding reasonable expectation of success and impermissible hindsight.
While trial-and-error might be required to make a perforated foam piece
adhere to Yukawa’s inner radial portion of the tire using double-sided tape,
all that is required is reasonable expectation of success. In re O’Farrell, 853
F.2d 894, 903 (Fed. Cir. 1988) (“Obviousness does not require absolute
predictability of success.”). In the present case, although the perforated
foam will have more holes than non-perforated foam, we agree with the
Examiner that the perforated holes will be small and there will be solid
regions between the perforations that the double-sided tape may adhere to
(Ans. 5). The Examiner reasonably finds that Subramonian’s acoustic foam
material is consistent with Yukawa’s disclosure of suitable acoustic foam
materials such that there would have been a reasonable expectation of
success given Subramonian’s disclosed foam material is consistent with
Yukawa’s list of suitable foam materials and Subramonian’s disclosed
advantages (Ans. 6).
Appellant’s argument regarding hindsight is not persuasive. Yukawa
lists several types of acoustic foams that may be suitable, including
closed-cell polyethylene foam (¶ 63). Subramonian discloses acoustic foams
made from low density polyethylene containing perforations to improve
acoustic performance and that are useful in automotive applications (¶¶ 52,
129, 130, 148, 149). Accordingly, the combined teachings of Yukawa and
Subramonian would have suggested using Subramonian’s perforation
technique on Yukawa’s foam to improve acoustic properties. The
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Examiner’s combination is not based on impermissible hindsight, but rather
the teachings of the references.
On this record, we affirm the Examiner’s §103(a) rejection of claims
1–7, 11–22, and 24–26 over Yukawa in view of Subramonian.

Rejections (2) and (3)
Regarding claim 8, Appellant argues that for “these unconstrued
dependent claims directed to specific configurations of Subramonian’s
perforations, the not enabled combination of references would be beyond the
abilities of one having a low level of skill in the pertinent art.” (Appeal
Br. 17). Appellant further argues hindsight in the combination of Park with
Yukawa and Subramonian (Appeal Br. 17). Regarding claim 9, Appellant
argues a person having a low level of skill in the art would not know how to
modify Yukawa with Subramonian and Pozzana or Lowery to enable
Appellant’s claimed invention (Appeal Br. 18). Appellant further argues
impermissible hindsight and the Examiner’s failure to construe claim 9 as
reasons for reversal (Appeal Br. 18). We disagree.
Contrary to Appellant’s arguments, the Examiner has construed the
claim in applying the prior art to the claims (Final Act. 5–7). As noted
above, the applied prior art evinces the level of skill in the art. Appellant has
not shown that the level of skill as shown by the applied prior art would have
been beyond the skill of the art. Appellant does not dispute the Examiner’s
findings regarding what Park, Pozzana, and Lowery each discloses and that
they teach the claim limitations (Appeal Br. 17–18). Similarly, Appellant’s
statement that the combined teachings are based on hindsight does not
address the Examiner’s findings in the Final Action with regard to Park,
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Application 15/515,934

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Pozzana, and Lowery in combination with Yukawa and Subramonian. In
other words, Appellant has not shown reversible error with the Examiner’s
rejections. The preponderance of the evidence favors the Examiner’s
obviousness conclusion. We affirm rejections (2) and (3).

CONCLUSION
In summary:
Claims
Rejected
Basis Prior Art Affirmed Reversed
1–7, 11–22,
24–26
§ 103 Yukawa,
Subramonian
1–7, 11–22,
24–26

8, 10, 23 § 103 Yukawa,
Subramonian,
Park
8, 10, 23
9 § 103 Yukawa,
Subramonian,
Pozzana,
Lowery
9
Overall
Outcome
1–26

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