Ex Parte Wang

Patent Trial and Appeal Board

Oct 10, 2012

11912421 (P.T.A.B. Oct. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/912,421 10/24/2007 Mingjiang Wang THP-115 US 8701
56352 7590 10/10/2012
GLOBAL IP SERVICES
2166 S. Playa Ave.
Fresno, CA 93727
EXAMINER
LEYSON, JOSEPH S
ART UNIT PAPER NUMBER
1744
MAIL DATE DELIVERY MODE
10/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MINGJIANG WANG
________________

Appeal 2011-009840
Application 11/912,421
Technology Center 1700
________________

Before BRADLEY R. GARRIS, DEBORAH KATZ, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1-5 of Application 11/912,421
under 35 U.S.C. § 112, ¶ 1 for failing to comply with the written description
requirement and under 35 U.S.C. § 103(a) as obvious. Appellant seeks
reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

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BACKGROUND
The ’421 application describes a rubber extrusion mold that is said to
be particularly useful for manufacturing non-pneumatic multi-hole hollow
tires. Amended Spec. 3. According to the ’421 application, there are
currently three widely used types of tires: (1) tires which have both an inner
tube and an outer cover, (2) a single hole tire without an inner tube, such as
is commonly used on automobiles, and (3) solid tires. Id. at 3-4. Each of
these tires has certain drawbacks. Id. The ’421 application asserts that there
is a pressing need to develop “a kind of non-pneumatic multi-hole tires
which can save materials and are elastic and are not vulnerable to
[puncture].” Id. at 4.
Figure 2 of the ’421 application is reproduced below:

Figure 2 is an end view of the extrusion mold described in the ’421
application. The die has a discharge hole 4. Spec. 4. Discharge hole 4 is
provided with at least two mold blocks 5, which create the holes in the non-
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pneumatic multi-hole tire. Id. at 4-5. Mold blocks 5 are held in place by thin
wall connection straps 6 that directly or indirectly connect mold blocks 5
with the walls of discharge hole 4. Id. at 5.
Claim 1 of the ’421 application is the only independent claim and is
reproduced below with the portions of the claim that will be the focus of our
analysis italicized:
1. An extrusion mold for non-pneumatic multi-hole hollow
tires comprising:
a mold core;
a mold frame, with one end for connecting with an extruder’s
feeder and other end for connecting with the mold core, the
mold frame has a feeding passageway, which communicates a
feed inlet of the extruder’s feeder at one end and the mold core
at other end;
the mold core consisting of a flat cylinder having one flat
discharge hole, flat multi-mold blocks matching the multi-holes
in the non-pneumatic multi-hole hollow tire and flat thin-wall
connection straps, the multi-mold blocks being connected with a
wall of the discharge hole and fixed therein by the flat thin-wall
connection straps respectively, the flat discharge hole, flat
multi-mold blocks and flat thin-wall connection straps defining
a molding hole for molding the non-pneumatic multi-hole
hollow tire; thin-strip shaped gaps formed by the thin-wall
connection straps of the molding hole in a extruded non-
pneumatic multi-hole hollow tire will be agglutinated
automatically to disappear during cooling process;
the flat mold core is movably fixed on a discharge end of the
mold frame.
Supp. Claims App’x 2 (filed Feb. 14, 2011) (emphasis added).
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REJECTIONS
1. The Examiner finally rejected claims 1-5 under 35 U.S.C. § 112,
¶ 1 (now 35 U.S.C. § 112(a)) for failing to comply with the written
description requirement.
2. The Examiner finally rejected claims 1 and 3-5 under 35 U.S.C.
§ 103(a) as obvious over U.S. Patent No. 1,725,959 (“Heath,”
issued Aug. 27, 1929) in view of U.S. Patent No. 4,298,564
(“Higuchi,” issued Nov. 3, 1981).
3. The Examiner finally rejected claim 2 under 35 U.S.C. § 103(a) as
obvious over Heath in view of Higuchi and further in view of U.S.
Patent No. 2,705,669 (“Leston,” issued April 5, 1955).
DISCUSSION
Rejection 1. During prosecution, claim 1 was amended to add the
phrase “thin-strip shaped gaps formed by the thin-wall connection straps of
the molding hole in a extruded non-pneumatic multi-hole hollow tire will be
agglutinated automatically to disappear during cooling process.”
Amendment 2 (March 15, 2010).
Following this Amendment, the Examiner rejected claims 1-5 under
35 U.S.C. § 112, ¶ 1 (now 35 U.S.C. § 112(a)). The Examiner found that the
newly added language constituted new matter because it lacks written
description support in the ’421 application as originally filed. Ans. 3. In
particular, the Examiner found that the ’421 application’s specification
disclosed that “that the thin-wall connection strap 6 shall be as thin as
possible, so that its thin-strip vias formed in tires during the process of
extrusion molding will automatically disappear during the cooling process
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after the removal of the rubber out of the mold.” Id. at 3-4. The Examiner,
however, found that the original specification did not specifically state that
the vias would disappear by agglutination. Id. at 4.
Appellant appears to argue that a person of ordinary skill in the art
would have known that two pieces of rubber can be agglutinated together if
their surfaces are melted and then held in contact with one another while the
melted material is allowed to cool. App. Br. 6. Thus, a person of ordinary
skill in the art, reading the specification’s description of the thin-strip vias
automatically disappearing during the cooling process, would have
recognized that the disappearance was the result of an agglutination process.
Id. at 6-7.
However, Appellant’s assertion regarding what is common knowledge
to a person of ordinary skill in the art is not supported by anything other than
attorney argument. Furthermore, this argument is inconsistent with
arguments made later in the Appeal Brief, where Appellant argues that a
person of ordinary skill in the art would think that the thin-strip vias would
not have disappeared automatically. App. Br. 8.
Therefore, we find that the Examiner’s rejection of claims 1-5 for lack
of written description support is supported by a preponderance of the
evidence. Thus, we sustain the Examiner’s rejection of these claims 1-5
under 35 U.S.C. § 112, ¶ 1.
Rejection 2. The Examiner finally rejected claims 1 and 3-5 under 35
U.S.C. § 103(a) as obvious over Heath in view of Higuchi. On appeal,
Appellant only makes specific arguments for the patentability of claim 1.
Claims 3-5, therefore, stand or fall with claim 1. App. Br. 7-10.
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The Examiner found that Heath described or suggested all of the
elements in claim 1 except for the mold frame. Ans. 4-5. The Examiner
found that Higuchi described or suggested a mold frame. Id. at 5.
Appellant asserts that the Examiner’s rejection should be reversed for
at least three reasons: (1) lack of a motivation to combine the teachings of
Heath and Higuchi, (2) lack of a reasonable expectation of success that the
device created by following the combined teachings of Heath and Higuchi
would work for its intended purpose, and (3) the combination of Heath and
Higuchi do not teach or suggest all of claim 1’s limitations. App. Br. 9. This
appeal may be resolved by on the basis of the last of these arguments.
Claim 1 states that the claimed extrusion mold includes “the mold
core consisting of a flat cylinder having one flat discharge hole, flat multi-
mold blocks matching the multi-holes in the non-pneumatic multi-hole
hollow tire and flat thin-wall connection straps, the multi-mold blocks being
connected with a wall of the discharge hole and fixed therein by the flat
thinwall connection straps . . . .”
The Examiner found that Heath describes this structure and depicts it
in Figures 2 and 3. Ans. 4. Heath’s Figure 3 is reproduced below:

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Figure 3 is a cross section view of one embodiment of Heath’s device. In
this figure, die 30 is counter-bored 31 at the throat end to receive annulus 32.
Heath, p. 2, ll. 83-87. Ribs 34 and 35 may be formed integrally with annulus
32. Id. Core shanks 12 and 13 support core members in the mold core
portion of die 30. Id.
The Examiner’s finding that Heath describes or suggests the structure
in claim 1 is erroneous. Claim 1 requires that the mold core consist of (1) a
flat cylinder having one flat discharge hole, (2) flat multi-mold blocks
matching the holes in the tire, and (3) flat thin-wall connection straps. Claim
1 further requires that the multi-mold blocks are connected with a wall of the
discharge hole and fixed therein by the flat thin wall connection straps.
The Examiner found that Heath described all of these limitations
based on a determination that the discharge hole “extends from the top to the
bottom of the apparatus shown in fig. 3.” Ans. 4.
This finding ignores claim 1’s language. Claim 1 specifically states
that the mold core has a flat cylinder shape. Thus, as defined by claim 1, the
mold core in Figure 3 of Heath is located at the bottom of the apparatus,
where there is a short cylindrical portion of die 30. The mold core does not
encompass the upper portion of die 30, which has a frusto-conical shape.
Figure 3 of Heath is reproduced again below, with the mold core enclosed
by the dotted red rectangle.

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Figure 3 of Heath is a cross-sectional view of a mold die. In this instance, it
has been modified to show the mold core and discharge hole surrounded by
a dotted red rectangle. Once claim 1’s requirements that the mold core have
a cylindrical shape and that the discharge hole be part of the mold core are
applied, it can readily be seen that the thin wall connector strips, identified
as ribs 34 and 35 in Figure 3, do not connect the mold blocks to a wall of the
discharge hole.
For the foregoing reasons, we cannot sustain the rejection of claims 1
and 3-5 under 35 U.S.C. § 103(a) as obvious.
Rejection 3. The Examiner finally rejected claim 2 under 35 U.S.C.
§ 103(a) as obvious over Heath in view of Higuchi and further in view of
Leston. Claim 2 is reproduced below:
2. The extrusion mold for non-pneumatic multi-hole hollow
tires according to Claim 1, wherein a side of the mold core
facing the mold frame is provided with a boss, the boss is
inserted into the feeding passageway of the mold frame.
Supp. Claims App’x 2.
As discussed above, the Examiner has failed to establish a prima facie
case of obviousness because the combination of Heath and Higuchi do not
describe or suggest a structure in which the multi-mold blocks are connected
with a side of the extrusion hole. Leston does not remedy this defect in the
prima facie case. Thus, we cannot sustain the Examiner’s rejection of claim
2 under 35 U.S.C. § 103(a) as obvious.
CONCLUSION
For the reasons set forth above, we sustain the Examiner’s rejection of
claims 1-5 of the ’421 application under 35 U.S.C. § 112, ¶ 1 as containing
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new matter. However, we cannot sustain the Examiner’s rejection of these
claims as obvious under 35 U.S.C. § 103(a).
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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