Ex Parte Bormann et al

Patent Trial and Appeal Board

Apr 28, 2016

13196511 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/196,511 08/02/2011 Rene Louis Bormann
27280 7590 05/02/2016
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DN2011-122 3991
EXAMINER
LY, KENDRA
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
kathleen.swisher@goodyear.com
patents@ good year.com
pair_goodyear@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RENE LOUIS BORMANN, EDDY DONG-RONG PAN,
JASON MARK MIDDELBERG, KARL ERIC SUNDKVIST,
XIANWEI MENG, PAUL HARRY SANDSTROM,
DAVID ANDREW BENKO, BRUCE RAYMOND HAHN,
and REBECCA LEE DANDO
Appeal2014-008435
Application 13/196,511
Technology Center 1700
Before KAREN M. HASTINGS, MICHELLE N. ANKENBRAND,
and MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal the Examiner's final rejection of claims 1-3, 6-10,
12-16, 18, 19, and 23-26. 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM.
1 Appellants identify The Goodyear Tire & Rubber Company of Akron,
Ohio as the real party in interest. App. Br. 3.
Appeal2014-008435
Application 13/196,511
The Claimed Invention
Appellants' disclosure relates to a method for making a pneumatic tire
having a foam noise damper. Abstract; Spec. 2. Claim 1 is representative of
the claims on appeal and is reproduced below from the Claims Appendix to
the Appeal Brief (App. Br. 8) (emphasis added):
1. A method for making a pneumatic tire having a foam noise
damper, the pneumatic tire comprising two spaced inextensible
beads; a ground contacting tread portion; a pair of individual
sidewalls extending radially inward from the axial outer edges of
said tread portion to join the respective beads, the axial outer
edges of the tread portion defining a tread width; a supporting
carcass for the tread portion and sidewalls; an innerliner disposed
radially inward of the carcass, the innerliner having a innerliner
surface facing an interior cavity of the tire; the method
comprising the steps of:
applying a silicone adhesive to the innerliner surface as a
plurality of circumferential stripes to form an adhesive prepared
surface, wherein the innerliner surface comprises a silicone
release agent;
applying a single solid foam noise reducer to the plurality
of circumferential stripes on the adhesive prepared surface; and
curing the adhesive.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Siegfried Nitzsche et al., US 3,065,194
(hereinafter "Siegfried")
Majumdar et al., US 5,951,797
(hereinafter "Majumdar")
Yukawa et al., US 2003/0020320 Al
(hereinafter "Yukawa")
2
Nov. 20, 1962
Sept. 14, 1999
Jan.30,2003
Appeal2014-008435
Application 13/196,511
Hahn et al., US 2007/0107824 Al May 17, 2007
(hereinafter "Hahn")
Tanno et al., US 2007/0175559 Al Aug. 2, 2007
(hereinafter "Tanno")
Aoki et al., US 2010/0038005 Al Feb. 18, 2010
(hereinafter "Aoki")
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 6, 8, 9, 12, 14, 15, 18, and 23-26 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Hahn in view of Aoki,
Yukawa, and Majumdar.
2. Claims 3, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hahn in view of Aoki, Yukawa, and Majumdar, and in
further view of Siegfried.
3. Claims 1, 2, 6-9, 12-15, 18, 19, and 23-26 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Hahn in view of Tanno, Yukawa,
and Majumdar.
OPINION2
Rejection 1
Appellants argue claims 1, 2, 6, 8, 9, 12, 14, 15, 18, and 23-26 as a
group. We, therefore, select claim 1 as representative of this group, and the
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv)
2 We affirm the Examiner's rejections for the reasons set forth in the
Answer, which we adopt as our own. Nevertheless, we highlight and
address specific findings and arguments for emphasis as follows.
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Application 13/196,511
(2014). The Examiner finds that the combination of Hahn, Aoki, Yukawa,
and Majumdar teaches all the limitations of claim 1. Ans. 2--4.
The Examiner finds that the combination of Hahn and Aoki teaches
nearly all of claim 1 's limitations, but that it does not teach "a plurality of
circumferential adhesive stripes," as recited in the claim. Ans. 2, 3 (citing
Hahn i-fi-f 12, 13, 15; Aoki i142, Fig. 1). The Examiner, however, relies on
Yukawa and Majumdar for disclosures that account for that limitation. Id. at
3. In particular, the Examiner finds that Yukawa teaches affixing "a noise
damper on the reverse face of the tread using an adhesive agent" and
"expressly discloses [that] the adhesive is applied all over or alternatively in
spots which broadly encompasses a plurality of adhesive stripes." Id. (citing
Yukawa i142) (emphasis in original); Yukawa i-fi-f l, 3, Abstract. The
Examiner finds further that Majumdar evidences that "a plurality of
circumferential stripes" was generally "known in the tire art to glue two
parts together." Id. (citing Majumdar, Fig. 1); Majumdar, col. 2, 11. 49-51.
The Examiner concludes that applying an adhesive to the innerliner
surface as a plurality of circumferential stripes to form an adhesive prepared
surface would have been obvious to one of ordinary skill in the art at the
time of the invention because: (1) Yukawa teaches applying an adhesive
"all over" or alternatively, as a plurality of "adhesive spots" to attach the
noise damper to the tire; (2) Majumdar evidences that a plurality of
circumferential stripes was known in the art; and (3) in light of Yukawa's
and Majumdar' s teachings, one of ordinary skill would have expected an
innerliner surface with a plurality of circumferential stripes to have
sufficient adhesive properties. Ans. 3, 4.
Appellants argue that the Examiner's rejection should be reversed
because none of the prior art combinations "teach an adhesive disposed as a
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Application 13/196,511
plurality of circumferential stripes as recited in the present claims."
App. Br. 5. In particular, Appellants argue that "neither Yukawa nor
Majumdar alone or in combination teach a plurality of circumferential
stripes" and that the "circumferential stripes as recited in the claims clearly
refer[] to the adhesive as applied as lines each extending around the
circumference of the tire innerliner." Id. at 5, 6 (internal quotations
omitted).
We are not persuaded by Appellants' argument for the following
reasons. First, the fact that the cited prior art references alone or in
combination do not expressly teach "a plurality of circumferential stripes,"
without more, is insufficient to weigh in favor of non-obviousness. Uni gene
Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) (explaining
that the references collectively, but not necessarily expressly, must guide a
skilled artisan to the claimed invention); see also In re Burckel, 592 F.2d
1175, 1179 (CCPA 1979) ("[A] reference must be considered not only for
what it expressly teaches, but also for what it fairly suggests."). Rather, as
the Examiner found (Ans. 7, 8), Yukawa teaches attaching the noise damper
to the innerliner of the tire by applying the adhesive entirely or,
alternatively, in spots, and one of ordinary skill would have understood
Yukawa's teachings in combination with Majumdar's teachings as
suggesting a genus encompassing many adhesive application patterns (i.e.,
species), including, "a plurality of circumferential stripes." Yukawa i-f 42;
Majumdar, Fig. 1, col. 2, 11. 49-51. Appellants' argument, without more, is
insufficient to establish reversible error in the Examiner's analysis and
findings in this regard.
Second, Appellants have failed to identify sufficient evidence in
record to rebut or otherwise show reversible error in the Examiner's
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conclusion (Ans. 3, 4) that, in light of the combined teachings of the cited
references, it would have been obvious to apply an adhesive to the innerliner
surface as a plurality of circumferential stripes to form an adhesive prepared
surface. Yukawa i-f42; Majumdar, Fig. 1, col. 2, 11. 49-51. Appellants'
argument regarding the prior art's disclosure of applying adhesive "dots," as
opposed to "stripes," without more, is unpersuasive. Indeed, it is well-
settled that changes in shape or to the pattern of a known element (i.e.,
applying adhesive to the innerliner of a tire to attach a noise damper) are
prima facie obvious. Cf In re Dailey, 357 F.2d 669, 676 (CCPA 1966)
(holding that the configuration of the claimed disposable plastic nursing
container was a matter of choice, which a person of ordinary skill in the art
would have found obvious absent persuasive evidence that the particular
configuration of the claimed container was significant).
Moreover, as noted by the Examiner (Ans. 9), Appellants have not
persuasively argued or identified sufficient evidence of "unexpected results
or criticality" with respect to the plurality of circumferential stripes
limitation, particularly in view of the Examiner's finding (Ans. 3) regarding
Majumdar' s teaching that a plurality of circumferential stripes was known in
the tire art as a method for gluing parts together (Majumdar, Fig. 1, col. 2, 11.
49-51). KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
Third, Appellants' argument that the circumferential stripes refer to
"lines each extending around the circumference of the tire innerliner" is
unpersuasive because it is not commensurate in scope with the claims. As
noted by the Examiner (Ans. 8, 9), and contrary to Appellants' argument, the
claims do not recite or require that the stripes be annular or that they extend
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completely around the circumference of the tire. In re Van Geuns, 988 F.2d
1181, 1184--85 (Fed. Cir. 1993) ("[L]imitations are not to be read into the
claims from the specification."). Appellants have not persuasively argued or
directed us to sufficient evidence in the record to establish reversible error in
the Examiner's analysis and findings in this regard.
Accordingly, based on the findings and technical reasoning provided
by the Examiner, and for the reasons discussed above, we affirm the
Examiner's rejection of claims 1, 2, 6, 8, 9, 12, 14, 15, 18, and 23-26 under
35 U.S.C. § 103(a) as unpatentable over Hahn in view of Aoki, Yukawa, and
Majumdar.
Rejections 2 and 3
In response to the Examiner's Rejections 2 and 3, Appellants do not
present any separate or additional arguments for the patentability of claims
3, 10, and 16 and claims 1, 2, 6-9, 12-15, 18, 19, and 23-26, respectively.
Instead, Appellants rely on the same arguments presented above for
Rejection 1. App. Br. 5, 6. Based on the findings and technical reasoning
provided by the Examiner, and for the reasons discussed above for Rejection
1, we find that Appellants fail to establish reversible error in the Examiner's
factual findings and legal conclusions with respect to each of the above-
identified claims.
Accordingly, we affirm the Examiner's Rejections 2 and 3.
DECISION/ORDER
The Examiner's rejections of claims 1-3, 6-10, 12-16, 18, 19, and
23-26 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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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
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