Ex parte Speyer

• Decision Date: 19 July 2012
• Docket Number: Appeal 2010-010834
• Parties: Ex parte AL SPEYER, EDWARD KEITH SHRIEVE, FRANCIS J. BYRNE, and ANTON H. GEORGE Application 11/501, 126 Technology Center 1700
• Court: Patent Trial and Appeal Board

Ex parte AL SPEYER, EDWARD KEITH SHRIEVE, FRANCIS J. BYRNE, and ANTON H. GEORGE Application 11/501, 126 Technology Center 1700

Appeal 2010-010834

United States Patent and Trademark Office, Patent Trial and Appeal Board

July 19, 2012

FILING DATE:07/19/2012

Before CHUNG K. PAK, PETER F. KRATZ, and BEVERLY A. FRANKLIN Administrative Patent Judges.

DECISION ON APPEAL

PAK, Administrative Patent Judge

Appellants appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 34 through 37 and 39 through 41.^[1] Claims 18, 19, 22, and 29 through 33, the other claims pending in the above-identified application, stand withdrawn from consideration by the Examiner. We have jurisdiction over the appealed subject matter pursuant to 35 U.S.C. § 6.

STATEMENT OF THE CASE

The subject matter on appeal is directed to "[a] method of providing race-specific information to an audience during a race of vehicles along a track" via mounting a "tire having information-bearing indicia provided on at least one sidewall of the tire" onto a vehicle. (See, e.g., claim 34.) According to paragraphs 0018 to 0022 at pages 4 and 5 of the Specification, the race-specific information includes unlimited indicia or markings, such as colored indicia, a solid annular ring, arcuate segments, letters, numerals, characters, shapes, ornamental designs, decorative patterns, trademarks, logos, or any combination thereof. (Seeparticularly Spec. 4-5, para. 0019.) Applying such information onto tires is said to be accomplished by various known techniques described at paragraph 0025, page 6, of the Specification.

This appealed subject matter relates to what was acknowledged to be a well-known practice in the tire industry, i.e., using indicia or color indicia on the side wall of tires to convey information and/or to enhance their appearance and marketability. In particular, Appellants acknowledge at page 1, paragraphs 0001 and 0002, of the Specification that:

For many years, tire manufacturers have placed indicia (i.e., letters, numerals, characters, symbols, trademarks or similar designations and descriptions) upon the sidewalk of tires for informational and identification purposes. For example, such indicia may take a variety of forms and convey information relative to the tire manufacturer, the brand name of the tire, the tire size, its construction and load limits, the quality grade thereof, sizes, mounting instructions, safety warnings, as well as the place and date of its manufacture.

Moreover, tires having decorative sidewalls, including color, are well known and can enhance the appearance and, thus, the marketability of the tires. For example, tires having a colored annular ring that extends around the sidewall of the tire (e.g., "white wall" tires) are known in the art and are used for decorative purposes. [(Emphasis added.)]

Details of the appealed subject matter are recited in representative claim 34 which is reproduced below:

34. A method of providing race-specific information to an audience during a race of vehicles along a track, the method comprising:

mounting a tire onto a vehicle entered in the race, the tire having information-bearing indicia provided on at least one sidewall of the tire, wherein the information-bearing indicia comprises a solid annular ring that extends around the entire circumference of the tire and that indicates a characteristic of a driver in a vehicle racing series;

placing the vehicle in a stopped position on the track to expose the at least one sidewall of the tire to the audience thereby permitting the audience to visibly detect the solid annular ring when the vehicle is stopped; and

driving the vehicle along the track to expose the at least one sidewall of the tire to the audience thereby permitting the audience to visibly detect the solid annular ring when the vehicle is moving.

Appellants seek review of the Examiner's rejection of claims 34 through 37 and 39 through 41^[2] under 35 U.S.C. § 103(a) as unpatentable over the disclosures of GB 2, 381, 367 A issued to John Smith on April 30, 2003 (hereinafter referred to as "Smith"). (See App. Br. 8 and Reply Br. 2.)

In support of patentability of the claimed subject matter, Appellants rely upon the following evidence (App. Br. 27):

1. A Rule 132 Declaration executed by Terry Angstadt on September 1, 2009 (hereinafter referred to as the "Angstadt Declaration");

2. A Rule 132 Declaration executed by Jack Arute on August 29, 2009 (hereinafter referred to as the "Arute Declaration");

3. A Rule 132 Declaration executed by Robbie Buhl on October 7, 2009 (hereinafter referred to as the "Buhl Declaration");

4. A Rule 132 Declaration executed by Sarah Fisher on August 29, 2009 (hereinafter referred to as the "Fisher Declaration");

5. A Rule 132 Declaration executed by Brian Gordon on October 7, 2009 (hereinafter referred to as the "Gordon Declaration");

6. A Rule 132 Declaration executed by Matthew Mullen on September 1, 2009 (hereinafter referred to as the "Mullen Declaration");

7. A Rule 132 Declaration executed by A1 Speyer on October 9, 2009 (hereinafter referred to as the "Speyer Declaration"); and

8. A Rule 132 Declaration executed by Justin Wilson on August 29, 2009 (hereinafter referred to as the "Wilson Declaration").

DISCUSSION

Appellants do not dispute the Examiner's finding that Smith teaches the claimed method of using a tire having on at least one sidewall race-specific information-bearing indicia to provide such information to an audience during a race of vehicles along a track, except for the indicia being a solid annular ring that extends around the entire circumference of the tire and that indicates a characteristic of a driver. (Compare Ans. 3-4 with App. Br. 9-1 land Reply Br. 3-4.)

Thus, the first critical question is: Has the Examiner reversibly erred in determining that the use of such indicia or marking on a sidewall of a tire does not impart patentability to the claimed method or would have been obvious to one of ordinary skill in the art in light of the teachings of Smith. On this record, we answer this question in the negative.

As is apparent from pages 1 through 7 of the Specification, the indicia in question is used for ornamental, instructional information and/or advertisement purposes and is not functionally related to the tire. As such, we concur with the Examiner that the use of such indicia, as opposed to other printed matters, does not impart patentability to the claimed method. Cf In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004), citing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) ("As the Gulack court pointed out, '[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.'"); In re Seid, 161 F.2d 229, 231 (CCPA 1947) ("Those matters, as the board properly held, relate to ornamentation only and have no mechanical function whatsoever. They cannot, therefore, properly be relied on here, as the appealed claims are not directed to a design but are structural claims.") To do otherwise is to allow continued patenting of any known products or processes, including a known process for applying printed matters, e.g., information, onto a known tire, indefinitely upon including any new printed matters, such as new instructions, new ornamentations or any other new information which are unrelated to the function of a substrate. Cf. Ngai, 367F.3datl339 ("If we were to adopt Ngai's position, anyone could continue patenting a product [or a process] indefinitely provided that they add a new instruction sheet to the product.")

To the extent that such printed matter is entitled to some patentable weight, we concur with the Examiner's determination at pages 4 and 5 of the Answer that one of ordinary skill in the art would have been led to employ various informational indicia, including a solid annular ring extending around the entire circumference of the tire, which according to claim 34 is indicative of a characteristic of a driver, on at least one sidewall of the tire taught by Smith, with a reasonable expectation of successfully improving the appearance and marketability of the tire and/or successfully using such a ring symbol for informational purposes. While some specific embodiments of Smith may be directed to forming or printing a plurality of markings on a sidewall of a tire that could produce an indicium, such as a letter, a numeral, logo, picture, pictorial representation or the like, upon rotating the tire at a particular angular velocity as argued by Appellants, the broader embodiment of Smith is drawn to employing various informational marks, especially those which are legible to observers during the rotation of a tire. (See pp. 1-2.) Smith also teaches that these marks can be designed from a solid annular strip formed of a different color rubber than the rest of the sidewall of a tire. (See p. 10.) According to Appellants, such different colored solid annular strips, by themselves, were also known to be used as decorative indicia on a sidewall of a tire to improve the appearance and marketability of the tire at the time of the invention as indicated supra. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness."); In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The admitted prior art in applicant's Specification may be used in determining the patentability of a claimed invention.) On this record, Appellants have not shown that the solid annular ring on at least one sidewall of a tire is not legible to observers during the rotation of...