Bridgestone Corporation et al.

Patent Trials and Appeals BoardAug 18, 2021

2020003371 (P.T.A.B. Aug. 18, 2021)

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. 15/540,875 06/29/2017 William L. Hergenrother P12063US2A 9313 48985 7590 08/18/2021 BRIDGESTONE AMERICAS, INC. 10 EAST FIRESTONE BLVD. AKRON, OH 44317 EXAMINER ZIMMER, MARC S ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 08/18/2021 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): iplawpat@bfusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM L. HERGENROTHER, WILLIAM J. CORSAUT, and HIROSHI MOURI Appeal 2020-003371 Application 15/540,875 Technology Center 1700 Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and N. WHITNEY WILSON, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant requests that we denominate our affirmance as involving a new ground of rejection due to our reliance upon Bailey and MatMatch which were newly cited in our Decision (Req. Reh’g second and third pages).1 The Appellant’s claims require a steel alloy wire comprising iron and about 1% to about 50% of at least one alloy metal. Hergenrother, the primary reference in the Examiner’s rejection, exemplifies steel wire made of low, medium or high-grade steel (¶ 36)). Bailey discloses that “[s]teel is 1 The Request for Rehearing’s pages are not numbered. Appeal 2020-003371 Application 15/540,875 2 an alloy of iron and other elements” (first page), “[m]anganese is present in all commercial steels as an addition” (second page), and “[t]he typical Manganese content is 0.20 – 2.00%” (id). MatMatch discloses that medium carbon steel has a manganese content of 0.65 – 1.65 wt % (second page). The Appellant states: “The Board is requested to designate these rejections as new grounds of rejection. Applicants should be entitled to an opportunity to reopen prosecution to amend or supply additional evidence in view of these new references and new reasoning for rejection” (Req. Reh’g third page). The Appellant separately argues dependent claim 16 which requires “removing oil from the steel alloy wire by soaking the steel alloy wire in a solvent for the oil prior to the wetting step” (i.e., the step of wetting the wire in a bath of coating solution comprising one or more amino alkoxy-modified silsesquioxane compounds) (Req. Reh’g third to fourth pages). The Examiner found that “it is widely known to treat wires comprised of steel with oil at the point of manufacture to prevent oxidation of the wire given the ease with which steel oxidizes even under ambient conditions” (Ans. 3), and “the oil may impart undesirable properties to a rubber into which the wire is imbedded” (id). The Examiner concluded that “it would be obvious that the wire should be cleaned of the protecting oil prior to coating it with the silsesquioxane” (Ans. 4). In our Decision we stated: “The Examiner’s finding is directed toward claim 16’s limitations and, therefore, implicitly includes the recited soaking step. The Appellant does not argue that the Examiner’s finding is wrong. For that reason and because the Examiner’s finding is reasonable, we accept it is fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964)” (Dec. 7). Appeal 2020-003371 Application 15/540,875 3 In the Request for Rehearing, the Appellant points out a factual difference between Kunzmann and the present case, but does not argue that the Examiner’s finding is wrong or unreasonable (Req. Reh’g third to fourth pages). Instead, the Appellant argues that the Examiner does not specifically address claim 16’s soaking requirement and has not provided enough information for the Appellant to assess the Examiner’s finding (Req. Reh’g fourth page). CONCLUSION We grant the Appellant’s request for rehearing to the extent that we denominate our affirmance as involving a new ground of rejection so the Appellant can address the Bailey and MatMatch disclosures and assess the Examiner’s finding regarding obviousness of using soaking in solvent to remove oil from wire. However, we decline to make any other change to our Decision. GRANTED