Vipin Rajan et al.

Patent Trials and Appeals Board

Feb 3, 2020

14981460 - (D) (P.T.A.B. Feb. 3, 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.
14/981,460 12/28/2015 Vipin Rajan 2013P70090WOUS 9197
137541 7590 02/03/2020
Continental
Intellectual Property
Jaedekamp, 30
Hannover, 30419
GERMANY
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
david.cate@continental.com
greg.adams@continental-corporation.com
hannover.patente@conti.de
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIPIN RAJAN, ALEXIS KEATHLEY,1 and
HENDRIK MEYER

Appeal 2019-002485
Application 14/981,460
Technology Center 1700
____________

Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

1 The second Inventor’s last name was corrected to “Gorgun” from
“Keathley” (Application Data Sheet filed March 2, 2016 at 1; Inventors’ 37
C.F.R. § 1.63 Declaration filed March 2, 2016), but the Bibliographic Data
Sheet does not reflect this change. In the event of continued examination,
the Appellant and the Examiner should resolve this discrepancy.
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The Appellant2 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 5–12, and 14–16.3,4 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
I. BACKGROUND
The subject matter on appeal relates to a radial pneumatic vehicle tire
(Specification filed December 28, 2015 (“Spec.”) at 1, ll. 11–19). Figure 1
(annotated), which is illustrative of the claimed subject matter, is reproduced
from the Drawings filed December 28, 2015, as follows:

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, “Continental Reifen Deutschland GmbH”
(Application Data Sheet filed December 28, 2015 at 6). The Appellant and
the named inventors (Vipin Rajan, Alexis Gorgun, and Hendrik Meyer) are
identified as the real parties in interest (Appeal Brief filed November 9, 2018
(“Appeal Br.”) at 2).
3 See Appeal Br. 8–23; Reply Brief filed February 5, 2019 (“Reply Br.”) at
2–5; Final Office Action entered June 13, 2018 (“Final Act.”) at 2–7;
Examiner’s Answer entered December 20, 2018 (“Ans.”) at 3–6.
4 Claim 13 was rejected under 35 U.S.C. § 112(b) in the Final Office Action
(Final Act. 2), but was subsequently canceled (Amendment filed September
10, 2018; Advisory Action entered September 18, 2018; Ans. 3).
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Figure 1 above shows a cross-section through a truck tire’s tread and breaker
belt region in a customary standard construction having a carcass 1 with
steel cords as reinforcements, an air-tight inner layer 2, a multi-ply belt
assembly 3 (with four belt plies 7, 8, 9, and 10, the latter being a protective
ply 10), and a profiled tread 6 (id. at 6, ll. 5–23).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A pneumatic vehicle tire having a radial
configuration, the pneumatic vehicle tire comprising:
a belt assembly having at least three plies including two
working plies and a protective ply arranged radially outwardly
with respect to said two working plies;
wherein:
each of said at least three plies comprises reinforcements;
each of said reinforcements comprises at least one steel
filament;
said reinforcements of each of said plies are arranged
mutually parallel and mutually spaced from each other;
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said steel filaments of said reinforcements of said
protective ply have a filament diameter lying in a range of 0.10
mm to 0.35 mm;
said reinforcements have a reinforcement diameter lying
in a range of 0.20 to 0.85 mm;
said protective ply has a rupture strength lying in a range
of 15 kN/dm to 95 kN/dm;
said reinforcements of said protective ply are arranged in
said protective ply with a density lying in a range of 50 to 120
ends per decimeter;
said reinforcements of said protective ply are steel cords
of twisted together steel filaments; and
said steel filaments of said protective ply have a
construction of 2x0.30, 2+2x0.32, 2+2x0.28, 2x0.15, or 3x0.10.
(Appeal Br. 24 (emphasis added)).
II. REJECTION ON APPEAL5
Claims 1, 5–12, and 14–16 stand rejected under AIA 35 U.S.C. § 103
as unpatentable over Imhoff et al.6 (“Imhoff”).
III. DISCUSSION
1. Grouping of Claims
In the Appeal Brief, the Appellant relies on the same arguments for all
claims on appeal, focusing only on independent claim 1 (Appeal Br. 8–23).
Therefore, we decide this appeal on the basis of claim 1, which we designate

5 As discussed above, claim 13 was also rejected under 35 U.S.C. § 112(b)
in the Final Office Action, but that rejection has been rendered moot because
the claim has been canceled.
6 EP 2 433 814 A1, published March 28, 2012.
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as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv). Claims 5–12 and
14–16 stand or fall with claim 1.7
2. The Examiner’s Position
The Examiner finds that Imhoff describes a tire having most of the
limitations recited in claim 1, including a working belt ply 34
(corresponding to the Appellant’s “protective ply”) formed with steel cords
having a 2x or a 2+2 structure and a filament diameter between 0.08 and
0.35 mm (Final Act. 2–3). Specifically, the Examiner states that “Imhoff
expressly teaches 2+2 and 2x cord structures and teaches a filament diameter
range that fully encompasses the claimed filament diameters [and,
therefore,] one of ordinary skill in the art . . . would have found the claimed
cord constructions obvious in view of the general disclosure of Imhoff” (id.

7 In the Appeal Brief, the Appellant argues that “the Examiner . . . does not
point to any specific disclosure or suggestion in Imhoff . . . leading one of
ordinary skill in the art to particularly select the very specifically claimed
species recited in any of the dependent claims” (Appeal Br. 16). That is
incorrect (see Final Act. 3–6), and, in any event, such a skeletal argument is
not an argument for separate patentability. See 37 C.F.R. § 41.37(c)(1)(iv).
In the Reply Brief (Reply Br. 3), the Appellant states that the Examiner’s
Answer includes a table (Ans. 5) that indicates Imhoff teaches only 2x and
2+2 cord constructions. On that premise, the Appellant argues that, if this
finding is correct, “at least dependent claim 12, directed to a 3x0.10 cord
construction [would] not [have been] obvious in view of Imhoff” (Reply Br.
3). The Appellant’s premise, however, is incorrect. The table in the Answer
merely lists the two types of cord constructions disclosed in Imhoff that are
also recited in claim 1, as previously indicated in the Final Office Action
(Final Act. 3). Contrary to the Appellant’s suggestion, the Examiner does
not indicate in the chart that Imhoff’s disclosure would have been
understood by a person having ordinary skill in the art to be limited to these
two constructions. The findings summarized in the chart are not new, and,
therefore, the Appellant’s argument directed to claim 12 is untimely and
need not be considered. See 37 C.F.R. § 41.41(b)(2).
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at 3). The Examiner further finds that “Imhoff is silent with respect to (a)
the rupture strength of said steel cords and (b) the cord density or loading in
the protective ply” (id.). Regarding the rupture strength, the Examiner finds
that “one of ordinary skill in the art . . . would have expected the steel cords
of Imhoff to demonstrate the claimed rupture strength since the type of steel,
the steel cord construction, and the filament diameters taught by Imhoff are
substantially the same as those encompassed by . . . the claimed invention”
(id.). Regarding the cord density, the Examiner finds that “the claimed
densities are consistent with those that are conventionally used in a wide
variety of tire components, including tire belt plies” and that “Imhoff
mentions a cord density between 8 and 20 ends per inch (Paragraph 56) and
such significantly overlaps with the broad range of the claimed invention”
(id. at 3–4).
3. The Appellant’s Contentions
The Appellant’s principal contention is that, in contrast to the “very
specific species of construction” for the protective ply’s steel filaments
recited in claim 1 (“2x0.30, 2+2x0.32, 2+2x0.28, 2x0.15, or 3x0.10”),
“Imhoff . . . only discloses a very generic and very broad genus of cord
diameters and combinations” (Appeal Br. 14–15; see also id. at 15–19). The
Appellant also argues that the claimed invention provides a unique solution
to an unappreciated problem because “[t]he higher cord density of the
claimed invention results in a protective ply that is more protective since the
higher cord density forms a more effective grid protecting the inner working
plies from penetrating objects” and “the lower diameter of the cord added to
the protective ply means that the ply itself is thinner and therefore less
elastomer material is needed to produce such tires” (id. at 20). According to
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the Appellant, the problem with which Imhoff is concerned is different from
that disclosed for the claimed invention (id. at 21).
4. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Imhoff’s Figure 2 (annotated) is reproduced, as follows:

Imhoff’s Figure 2 above shows a partial cross-section of a pneumatic tire
including, inter alia, four layers of belts that may include steel reinforcing
cords 28, 30, 32, and 34, wherein the cords 36 (shown in Fig. 3) have
diameters in the range of 0.08 mm to 0.35 mm and may have a construction
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of, e.g., 2x or 2+2 (Imhoff ¶¶ 54, 58, 59). In addition, Imhoff teaches that
Ultra Tensile Strength (UT) steel reinforcing cords arranged so as to have
15–35 ends per 2.54 cm or 8–20 ends per 2.54 cm may be used (id. ¶¶ 30,
32), which the Examiner finds as overlapping or encompassing the densities
recited in claim 1 (Ans. 4; Final Act. 3–4).
Given the teachings found in Imhoff, we discern no reversible error in
the Examiner’s determination that the prior art genuses or ranges would have
rendered obvious the four specific diameters (0.30, 0.32, 0.28, or 0.15) for
the 2x or 2+2x constructions that are recited in claim 1, or the density range
recited in claim 1. Specifically, with respect to the four 2x and 2+2x species
with four discrete diameters recited in claim 1, the selection of any of the
four diameters would have been obvious in view of Imhoff’s disclosure that
the diameters may be 0.08 mm to 0.35 because the four diameters specified
in claim 1 falls within a relatively narrow prior art range (or genus). Cf. In
re Petering, 301 F.2d 676, 681 (CCPA 1962) (“[O]ne skilled in this art
would, on reading the Karrer patent, at once envisage each member of this
limited class, even though this skilled person might not at once define in his
mind the formal boundaries of the class as we have done here.”). As for the
density, the Examiner finds that the prior art densities encompass or overlap
the range recited in claim 1, and that finding has not been refuted. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.”).
Turning to the Appellant’s argument that the claimed invention is
directed to providing a unique solution to an unappreciated problem (Appeal
Br. 20), we observe at the outset that the argument is merely an unsupported
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allegation because the Appellant fails to direct us to evidence that a person
having ordinary skill in the art would not have appreciated the problem
and/or the solution. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(“‘Mere argument or conclusory statements in the specification does not
suffice.’” (Internal citation omitted)).
Moreover, the case law does not require the prior art’s motivation or
reason to arrive at the Appellant’s claimed subject matter to be the same as
that of the Appellant. KSR Int’l Co. Teleflex Inc., 550 U.S. 398, 420 (2007)
(“The first error of the Court of Appeals in this case was to foreclose [an
obviousness] reasoning by holding that . . . patent examiners should look
only to the problem the patentee was trying to solve.”). “Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the [prior art] can provide a reason for
combining the elements in the manner claimed.” Id. See also In re Kemps,
97 F.3d 1427, 1430 (Fed. Cir. 1996) (the motivation or reason in the prior art
need not be the same as that of the inventor).
For these reasons, and those given by the Examiner, we uphold the
Examiner’s rejection as maintained against claim 1, as well as claims 5–12
and 14–16 falling therewith.

IV. CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–12, 14–16 103 Imhoff 1, 5–12,
14–16

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED