THE GOODYEAR TIRE & RUBBER COMPANY

Patent Trials and Appeals Board

Jul 8, 2020

2019005210 (P.T.A.B. Jul. 8, 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.
14/818,774 08/05/2015 Nihat Ali ISITMAN DN2015-118 8684
27280 7590 07/08/2020
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
EXAMINER
LEE, DORIS L
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
07/08/2020 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):
kathleen.swisher@goodyear.com
pair_goodyear@firsttofile.com
patents@goodyear.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NIHAT ALI ISITMAN, MANUELA POMPEI, and
GEORGES MARCEL VICTOR THIELEN
____________

Appeal 2019-005210
Application 14/818,774
Technology Center 2800
____________

BEFORE KAREN M. HASTINGS, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 3–9, 13–17, and 19 under 35 U.S.C.
§ 103 as unpatentable over the combined prior art of Sandstrom 084
(US 7,019,084 B2, issued March 28, 2006), Houjo (US 2010/0113703 A1,
published May 6, 2010), and Sandstrom 869 (US 2010/0186869 A1,

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). “The Goodyear Tire & Rubber Company” is identified as the real
party in interest (Appeal Br. 3).

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published July 29, 2010), with evidence provided by Blok (US
2004/0069388 A1, published April 15, 2004).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):
1. A pneumatic tire having a tread comprising a vulcanizable
rubber composition comprising, based on 100 parts by weight
of elastomer (phr),
(A) from about 50 to about 90 phr of a solution
polymerized styrene-butadiene rubber having a glass
transition temperature (Tg) ranging from -65 °C
to -55 °C, wherein the solution polymerized styrene-
butadiene rubber is functionalized with an alkoxysilane
group and at least one functional group selected from the
group consisting of primary amines and thiols;
(B) from about 50 to about 10 phr of
polybutadiene having a cis 1,4 content greater than 95
percent and a Tg ranging from -80 to -110 °C;
(C) from 30 to 80 phr of a combination of an oil
and a terpene phenol resin having a Tg greater than
100 °C, wherein the amount of the oil ranges from 5 to
30 phr and the amount of the terpene phenol ranges from
15 to 45 phr; and
(D) from 50 to 160 phr of silica
(Appeal Br. 8 (Claims Appendix)).
Appellant relies upon the same arguments for all of the claims
(Appeal Br. 4–6).

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OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, we determine that Appellant has
not identified reversible error in the Examiner’s rejection (See generally
Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the
Board’s long-held practice of requiring Appellant(s) to identify the alleged
error in the Examiner’s rejection). We sustain the rejection for the reasons
expressed by the Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant does not dispute the Examiner’s findings based on the
applied prior art. Appellant’s arguments are focused on their belief that
there is no reason to use the terpene phenol resin of Houjo’s rubber tire
composition in the rubber tire composition of Sandstrom 084 because the
amount of oil used in Houjo is outside the claimed range of 5 to 50 phr (See
Appeal Br. 5, 6). Appellant also argues that Houjo teaches away from the
claimed invention (Appeal Br. 6).
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the applied prior art as a whole and the inferences that one of
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ordinary skill would have made. Here, as the Examiner aptly points out,
Sandstrom 084 is relied upon to teach an amount of oil that overlaps the
claimed amount (Ans. 4, relying on Sandstrom 084 col. 8, ll. 20–30).
The Examiner merely relied upon Houjo to exemplify that one could
use a terpene to enhance the gripping performance and workability of a
styrene-butadiene rubber tire composition (Ans. 4, relying on Houjo ¶¶ 31,
32).
Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol & Specialty
Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
One of ordinary skill would have readily inferred and appreciated from the
applied prior art as a whole that a terpene phenol resin may be useful in any
styrene-butadiene rubber tire composition. The use of such a component in
the tire composition of Sandstrom 084, e.g., to improve gripping
performance and workability of its rubber tire composition, would have been
within the skill and creativity of one of ordinary skill in the art.
Likewise, Appellant’s argument that Houjo teaches away from use of
its terpene phenol resin because it also teaches that the amount of oil used
therein should preferably be at least 35 parts per mass (Appeal Br. 6) is not
persuasive. Whether the prior art teaches away from the claimed invention
is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It
is well established that a prior art reference must be considered in its
entirety, i.e., as a whole, when determining if it would lead one of ordinary
skill in the art away from the claimed invention. W.L. Gore & Assocs., Inc.
v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). One of ordinary skill
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in the art would have readily appreciated that the terpene phenol resin of
Houjo has advantages for its use in a rubber tire composition irrespective of
the amount of oil used in the rubber tire composition. Cf. In re Susi, 440
F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments.); Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d
1371, 1379–80 (Fed. Cir. 2005) (Even a “statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.”). One of ordinary skill would have
expected the known rubber tire component of a terpene phenol resin
exemplified in Houjo to be a useful component in the known rubber tire
composition of Sandstrom 084 which has an oil component amount within
the claimed range.
On this record, Appellant has not sufficiently explained why the
claimed subject matter is “more than the predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, as well as all claims dependent thereon, noting that Appellant relies
upon the arguments made for claim 1 for all the other claims (See generally
Appeal Br.).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–9,
13–17, 19
103 Sandstrom 084,
Houjo, Sandstrom
869, Blok
1, 3–9,
13–17, 19

TIME PERIOD FOR RESPONSE
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