Appeal No. 1997-2928
Application 08/320,781
reasoning submitted by appellants in their brief (pages 6-15) that the examiner has failed to establish a
prima facie case of obviousness and point out the following for emphasis.
As appellants point out, the examiner has simply not provide a logical reason to combine
Kawaguchi et al. with Kawabata et al. The question raised by the examiner’s position is why one of
ordinary skill in this art would have looked to the teachings of the dynamic storage modulus of each of
the inner and outer tread non-foamed rubber layers taught by Kawabata et al. with respect to improving
the “gripping property against the road surface” for “high speed running” in order to modify the dynamic
modulus of each of the inner foamed rubber and outer non-foamed rubber tread layers of the tire
structure disclosed in Figure 3 of Kawaguchi et al. (see, e.g., pages 7-10, 13-14 and 17-18) wherein
the tires are disclosed to have “significantly improved ‘on-ice/snow capability’” (page 18). Even though
the rubber layers of the tread of the tire of Figure 3 of Kawaguchi et al. could be modified to have the
dynamic storage modulus of each of the inner and outer tread non-foamed rubber layers taught by
Kawabata et al., we find no suggestion in either reference why this person would find the “gripping”
property of a tire manifested at high speeds on dry pavement, which is the focus of Kawabata et al., to
provide any reason or motivation with respect to modifying the “gripping” property of a tire manifested
at slow speeds on ice/snow covered pavement, which is the focus of Kawaguchi et al., and no reason
or motivation in this respect is provided by Iwafune et al., which is directed to the same “gripping”
property on ice/snow covered pavement as Kawaguchi et al. See In re Laskowski, 871 F.2d 115, 10
USPQ2d 1397 (Fed. Cir. 1989).
Thus, on this record, the examiner has not carried his burden of establishing a prima facie case
of obviousness by showing that some objective teaching or suggestion in the applied prior art taken as a
whole and/or knowledge generally available to one of ordinary skill in this art would have led that
person to the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Oetiker, 977 F.2d 1443,
1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Fine, 837 F.2d
1071, 1074-75, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988).
The examiner’s decision is reversed.
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