BRIDGESTONE CORPORATION

Patent Trials and Appeals Board

Jan 24, 2022

2021000100 (P.T.A.B. Jan. 24, 2022)

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. 15/189,071 06/22/2016 Hiroyuki FUDEMOTO Q227082 5399 23373 7590 01/24/2022 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 9000 WASHINGTON, DC 20006 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1749 NOTIFICATION DATE DELIVERY MODE 01/24/2022 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HIROYUKI FUDEMOTO, TAKASHI HARADA, YOSHIHIDE KOUNO, SEIJI KON, KEIICHI HASEGAWA, MUNENORI IIZUKA, TAKAYUKI YAKO, and KUNIO MACHIDA __________ Appeal 2021-000100 Application 15/189,071 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134 the final rejection of claims 1-10 and 12-14. We have jurisdiction over the appeal pursuant to 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 Bridgestone Corporation (Appeal Br. 2). Appeal 2021-000100 Application 15/189,071 2 Appellant’s invention is directed to a tire in which at least a portion of it is formed of a thermoplastic material (Spec. ¶ 1). Claim 1 is illustrative: 1. A tire assembly comprising at least a circular tire frame formed of a thermoplastic resin material and a rim, the thermoplastic resin material including a polyamide-based thermoplastic elastomer, and an acid-modified elastomer obtained by acid- modifying a thermoplastic elastomer other than the polyamide- based thermoplastic elastomer, or a mixture of a thermoplastic elastomer other than the polyamide-based thermoplastic elastomer and an acid-modified elastomer obtained by acid- modifying the elastomer other than the polyamide-based thermoplastic elastomer, wherein the tire comprises a reinforcing cord layer comprising a reinforcing cord member wound around an outer circumference of the tire frame, wherein the tire is configured to be fixed to the rim and the tire is physically different from the rim, the tire and the rim being non-integral, and the tire is not equipped with carcass cords, wherein the reinforcing cord member is coated with a resin material, in which the resin material for coating the reinforcing cord member is the same kind as the thermoplastic resin material that forms the tire frame; and wherein the reinforcing cord member is a steel cord. Appeal Br. 15 (Claims App.). Appellant appeals the following rejections: 1. Claims 1, 3-9, and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Merle (US 4,862,939; iss. Sept. 5, 1989) in view of Chino (US 7,754,819 B2; pub. July 13, 2010). Appeal 2021-000100 Application 15/189,071 3 2. Claims 10 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Merle in view of Chino and Vannan (WO 01/17800 A1; pub. Mar. 15, 2001). 3. Claims 2 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Merle in view of Chino and Takesue (US 6,319,152 B1; iss. Nov. 20, 2001). Appellant argues the subject matter common to independent claims 1 and 14 only (Appeal Br. 8-13). We select claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv) (2019). Any claim not argued separately will stand or fall with the claim 1. FINDINGS OF FACT & ANALYSIS We review the appealed rejection for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). The Examiner’s findings and conclusions regarding Merle and Chino are located on pages 2 to 3 of the Final Action. The Examiner finds Merle teaches the subject matter of claim 1 except for the thermoplastics recited in claim 1 (Final Act. 2). The Examiner determines and Appellant does not dispute that Chino would have suggested using the mixture of thermoplastic resins recited in claim 1 as the resin material in Merle’s tire (Final Act. 2-3; Appeal Br. 8-13). The Examiner finds Merle teaches a reinforcing cord layer 8 that is completely embedded within the tire body (Final Act. 3). The Appeal 2021-000100 Application 15/189,071 4 Examiner finds that Merle teaches the reinforcing cords in the layer 8 can be formed of steel cords (Final Act. 3). Appellant argues Merle does not teach a reinforcing cord layer comprising a reinforcing cord member wound around an outer circumference of the tire frame, where the reinforcing cord member is a steel cord singly (Appeal Br. 8). Appellant argues Merle teaches an organic fiber in combination with steel cord and fails to teach using only steel cord as the reinforcing fiber (Appeal Br. 12-13). Appellant further argues that using only steel cord advantageously makes recycling the tires easier, which is not taught or recognized by Merle (Appeal Br. 13). Appellant contends that none of the prior art teaches a tire assembly that includes a resinous tire frame in combination with a reinforcing cord member that is coated with a resin material (Appeal Br. 13). We are unpersuaded by Appellant’s arguments and adopt the Examiner’s response thereto on pages 3 to 6 of the Answer as our own. We add the following analysis primarily for emphasis. The Examiner finds that Merle teaches that reinforcing cords 9, 19, and 20 are part of the reinforcing cord layer wherein any one of cords 9, 19, or 20 could be considered the reinforcing cord member (Ans. 3-4). The Examiner correctly finds and Appellant does not dispute that Merle teaches that each of the cords 9, 19, and 20 may be made of the same material which includes steel (Ans. 4; Appeal Br. 8-13). In other words, Merle includes an embodiment where the cords are made of only steel. Appellant’s alleged benefit from using only steel cord does not diminish the fact that Merle teaches using steel as the reinforcing cord material. The prior art reason for using the material (i.e., steel reinforcing Appeal 2021-000100 Application 15/189,071 5 cord) does not need to be the same as Appellant’s reason. KSR Int’l Co. v. Teleflex, Inc., 550 US 398, 420 (2007) (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). The Examiner correctly states that the alleged benefit would flow naturally from Merle’s teaching to use steel cord even if the benefit (easier tire recycling) was not recognized by patentee. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Regarding the argument that the prior art does not teach the reinforcing cord member is coated with resin, claim 1 is a product claim not a method. Therefore, the resultant structure recited in claim 1 requires that steel cord is surrounded (i.e., coated) by the resin as part of the tire structure. We agree with the Examiner’s assessment that Merle’s end-product where the steel cords are embedded in the resin would meet the requirement that the steel cord is coated with resin that is the same kind as the thermoplastic resin that forms the tire frame (Ans. 5). Merle’s product has the same structure (i.e., a resin coated steel cord) as recited in claim 1 irrespective of how that structure was achieved. CONCLUSION On this record, we affirm the Examiner’s § 103 rejections over Merle in view of Chino, Merle in view of Chino and Vannan, and Merle in view of Chino and Takesue. DECISION SUMMARY Appeal 2021-000100 Application 15/189,071 6 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-9, 12 103 Merle, Chino 1, 3-9, 12 10, 13 103 Merle, Chino, Vannan 10, 13 2, 14 103 Merle, Chino, Takesue 2, 14 Overall Outcome 1-10, 12-14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED