Ex Parte Muthigi et al

Patent Trials and Appeals Board

Mar 27, 2019

14674367 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/674,367 03/31/2015
27280 7590 03/29/2019
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
Phaniraj Muthigi
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.
DN2015-010 4450
EXAMINER
FRANKLIN, JODI COHEN
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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 PHANIRAJ MUTHIG!,
DAVID RAY HUBBELL, and
ROMAIN JACK RODOLPHE MERSCH
Appeal2018-003957
Application 14/674,367
Technology Center 1700
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the decision of the
Examiner finally rejecting claims 1---6 and 8-15. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is said to be The Goodyear Tire & Rubber Co.
(Br. 3).
Appeal2018-003957
Application 14/674,367
BACKGROUND
Appellants' invention is directed to pneumatic passenger tires and
methods of manufacturing such tires (Spec. ,r,r 1, 50).
Claims 1 and 9 are representative of the claims on appeal and are
reproduced below from the Claims Appendix to the Appeal Brief:
1. A pneumatic tire comprising a one-piece, integrated
belt/overlay component having a plurality of individually
dipped and individually tackified cords applied individually to
the tire.
9. A method for constructing a one-piece, jointless,
integrated belt/overlay component of a pneumatic tire, said
method comprising the steps of:
pretreating an individual cord by dipping the
individual cord in a first solution or emulsion;
drying the dipped individual cord;
tackifying a surface of the dipped and dried
individual cord with a second solution or emulsion; and
applying the tackified individual cord on a surface
of an uncured tire component.
(Br. 6-7 ( Claims App.)).
REJECTIONS
(1) Claims 1, 3---6, and 8-15 are rejected under 35 U.S.C. § I02(a)(l)
as anticipated by Imhoff. 2, 3
2 Imhoff et al., US 2012/0067476 Al, published March 22, 2012.
3 The Examiner finally rejected claim 7 under 35 U.S.C. § 102(a)(l) as
anticipated by Imhoff and under 35 U.S.C. § 112(b) as indefinite (Final Act
3, 4). However, Appellants canceled claim 7 by Amendment, filed June 13,
2017, and the Examiner indicated that claim 7 was canceled and no longer
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Application 14/674,367
(2) Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over
Imhoff.
(3) Claims 1---6 and 8-15 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
Appellants argue for reversal of Rejections (1 }-(3) in the following
groups of claims: (i) 1---6 and 8; and (ii) 9-15 (see Br. 4--5). Accordingly, we
select claims 1 and 9 as representative of claims groups (i) and (ii). 37 C.F.R.
§ 4I.37(c)(l)(iv).
DISCUSSION
Rejections (1) and (2) under§ 102(a)(l) and§ 103, respectively.
The Examiner finds that Imhoff discloses each limitation recited for
the pneumatic tire subject matter of claim 1 (Final Act. 4, 8 ( citing Imhoff
,r,r 41, 45, 47). The Examiner further finds that Imhoff discloses each
limitation and step recited in the method for constructing a one-piece,
jointless, integrated belt/overlay component of claim 9 (Final Act. 5 ( citing
Imhoff,I 52); Ans. 8 (citing Imhoff,I,I 43--47, 67-73)).
In response to the Examiner's findings in the Final Action, Appellants
contend simply that Imhoff's ,r 47 "in no way discloses or suggests a one-
piece belt/overlay component" (Br. 5). However, Appellants do not offer
any explanation of why the Examiner's findings underlying the anticipation
rejection are erroneous.
pending (Amendment 5; Final Act. 1; Index of Claims, filed July 26, 2017).
Accordingly, we view the Examiner's inclusion of the anticipation and
indefiniteness rejections of claim 7 from the previous Non-Final Office
Action, mailed June 8, 2017, as a clerical error (see Non-Final Act. 2-3).
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Application 14/674,367
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. "[I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections". See In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citing Ex parte Frye, Appeal
2009-006013, at 9-10, 2010 WL 889747 (BPAI Feb 16, 2010) (precedential)
("The panel then reviews the obviousness rejection for error based upon the
issues identified by appellant, and in light of the arguments and evidence
produced thereon.")). An appellant has the burden on appeal to the Board to
demonstrate error in the Examiner's position. See Ex parte Yamaguchi, 88
USPQ2d 1606, 1614 (BP AI 2008) ( on appeal, applicant must show
examiner erred). Moreover, the Federal Circuit has held that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.
See In re Lovin, 99 USPQ2d 1373 (Fed. Cir. 2011). Thus, in this instance,
Appellants have not met their burden of identifying error in the rejections on
appeal, as they have not provided an explanation of why the Examiner erred,
and have merely stated that the prior art does not teach or disclose certain
claim limitations.
With respect to the Examiner's rejections, we note that Imhoff's ,r 66
explicitly discloses nearly identical language as that recited in each method
step of claim 9. Thus, the preponderance of evidence supports the
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Application 14/674,367
Examiner's factual findings which underlie the finding of anticipation and
the determination of obviousness. 4
For the reasons set forth above and in the Final Action and the
Answer, it follows that we sustain Rejection (1) under§ 102(a)(l) and
Rejection (2) under§ 103.
Rejection (3) under 35 U.S.C. § 112(a)
To satisfy the written description requirement of§ 112, the
specification must allow a person of ordinary skill in the art to recognize that
the inventor invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012
(Fed. Cir. 1989). The specification must reasonably convey to a person of
ordinary skill in the art that the inventor had possession of the claimed
subject matter as of the filing date. Ralston Purina Co. v. Far-Mar-Co, Inc.,
772 F.2d 1570, 1575 (Fed. Cir. 1985); see also Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991). The specification, however, need not
describe the claimed subject matter word-for-word. In re Wertheim, 541
F.2d 257,262 (CCPA 1976).
In this instance, the Examiner finds the requirement that the integrated
belt/overlay component is "a one-piece," as recited in claims 1 and 9, is not
described in the Specification within the meaning of§ 112 (Final Act. 3;
Ans. 2-3).
4 Appellants do not offer separate arguments with respect to the obviousness
rejection (see generally Appeal Brief).
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Appeal2018-003957
Application 14/674,367
In response, Appellants' only argument is that the Specification at
"paragraphs 67----69, along with Fig. 3, read together disclose a one-piece,
jointless belt/overlay component" (Br. 4).
Appellants have not met their burden of identifying error in the
§ 112(a) rejection on appeal, as they have not provided an explanation of
why the Examiner erred, and have merely stated that the Specification
describes the limitation at issue. See In re Jung, 637 F.3d at 1365.
Furthermore, we agree with the Examiner that the Specification is silent as
to any recitation of "a one-piece" and that the requirement for both a belt
and an overlay in claims 1 and 9 contradicts the claim term "one-piece" (see
Ans. 7-8). 5 Appellants, moreover, have not addressed the Examiner's
assertion that because "joints are not a well-known term in the art[,] ... one
skilled in the art would not clearly understand what 'jointless' is meant to
indicate" (id. at 8). See In re Gosteli, 872 F.2d at 1012; Ralston Purina 772
F.2d at 1575; see also Vas-Cath, 935 F.2d at 1563. Thus, the preponderance
of evidence supports the Examiner's factual findings which underlie the
finding that the Specification fails to comply with the written description
requirement.
For the reasons set forth above and in the Final Action and the
Answer, it follows that we sustain Rejection (3) under§ 112(a).
5 We note that although component 16 is depicted as one piece in Figure 1 of
the Specification, this depiction conflicts with the requirement for both a belt
and an overlay in claims 1 and 9. Furthermore, the Specification's
paragraph 67 describes the integration of these two separate components by
adding a plurality of a third component, i.e., SED cords 305 (see also Fig.
3). However, the Specification does not reasonably convey to a person of
ordinary skill in the art how such an integration of ( at least) three separate
components is synonymous with forming "a one-piece."
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Application 14/674,367
CONCLUSION
We AFFIRM the rejection of claims 1, 3-6, and 8-15 under
35 U.S.C. § 102(a)(l) as anticipated by Imhoff.
We AFFIRM the rejection of claim 2 under 35 U.S.C. § 103 as
unpatentable over Imhoff.
We AFFIRM the rejection of claims 1---6 and 8-15 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
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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