Sayaka Mishima

Patent Trials and Appeals Board

Aug 29, 2019

14373111 - (D) (P.T.A.B. Aug. 29, 2019)

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.
14/373,111 07/18/2014 Sayaka Mishima Q213442 1365
23373 7590 08/29/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
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 SAYAKA MISHIMA
_____________
Appeal 2018-001201
Application 14/373,111
Technology Center 1700
_____________
Before MARK NAGUMO, GEORGE C. BEST, and JEFFREY R. SNAY,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1–4, 6, and 8–20 of Application
14/373,111 under 35 U.S.C. § 103(a) as obvious. Final Act. 3–7 (December
30, 2016). The Examiner also rejected claim 11 under 35 U.S.C. § 112, ¶ 2
as indefinite. Id. at 2. Appellant1 seeks reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm-in-part.

1 Bridgestone Corp. is identified as the applicant and real party in interest.
Appeal Br. 2.
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BACKGROUND
The ’111 Application describes the problems associated with heat
generation during rotation of the tire. Spec. ¶ 2. In particular, at higher
temperatures, the rate of changes in the physical properties of tire material
and tread breakage are accelerated. Id. An area of special concern is heat
generation in the tire sidewall due to friction between the bead side section
and the wheel rim flange. Id. The ’111 Application describes a tire
structure that is said to suppress the temperature increase of the rubber
during use of the tire. Id. ¶ 7.
Claims 1 and 17 are representative of the ’111 Application’s claims
and are reproduced below from the Claims Appendix of the Appeal Brief.
1. A tire including a tread section coming into contact with
a road surface and a tire side section continuous with the tread
section, wherein
a circumferential recess is formed on an outer surface of
the tire side section, the circumferential recess being depressed
inward in a tread width direction and extending in a tire
circumferential direction,
in a cross section along the tread width direction of the
tire and a tire radial direction, a rim outer surface formed in an
area from a rim-side separation point, which is the outermost
point in the tire radial direction that is in contact with a rim
flange, to an inner end of the circumferential recess in the tire
radial direction, is formed along a first arc curve having a center
of a curvature radius on the inside in the tread width direction,
and
in the cross section along the tread width direction of the
tire and the tire radial direction, a sidewall surface formed in an
area from the inner end of the circumferential recess in the tire
radial direction to a bottom surface of the circumferential
recess is formed along a second arc curve having a center of a
curvature radius on the outside in the tread width direction, and
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a block is formed on an inside of the recess, wherein the
block is partially protruded further to the outside in the tread
width direction than the first arc curve.
Appeal Br. 29 (emphasis added).
17. A tire including a tread section coming into contact with
a road surface and a tire side section continuous with the tread
section, wherein
a circumferential recess is formed on an outer surface of
the tire side section, the circumferential recess being depressed
inward in a tread width direction and extending in a tire
circumferential direction,
in a cross section along the tread width direction of the
tire and a tire radial direction, a rim outer surface formed in an
area from a rim-side separation point, which is the outermost
point in the tire radial direction that is in contact with a rim
flange, to an inner end of the circumferential recess in the tire
radial direction, is formed along a first arc curve having a center
of a curvature radius on the inside in the tread width direction,
and
in the cross section along the tread width direction of the
tire and the tire radial direction, a sidewall surface formed in an
area from the inner end of the circumferential recess in the tire
radial direction to a bottom surface of the circumferential
recess is formed along a second arc curve having a center of a
curvature radius on the outside in the tread width direction, and
a plurality of blocks protruding outward in the tread width
direction are formed on an inside of the recess, wherein the
blocks are arranged around a whole circumference with a
predetermined pitch in the tire circumferential direction.
Appeal Br. 33–34 (emphasis added).
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REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1 and 13 are rejected under 35 U.S.C. § 102(b) as
anticipated by Takenaka.3 Final Act. 3.
2. Claims 2–4, 6, 9, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Takenaka. Final Act. 3.
3. Claims 1, 8, 10, 11, and 14–20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sato.4 Final Act. 5.
4. Claims 17, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Endo5 and Clementz.6
Answer 3.
DISCUSSION
Rejection 1. The Examiner rejected claims 1 and 13 as anticipated by
Takenaka. Final Act. 3.
Appellant argues for reversal of this rejection based upon the
limitations of claim 1. Accordingly, we select claim 1 as representative of

2 The Examiner apparently has withdrawn the rejection of claim 11 as
indefinite in view of Appellant’s amendment of claim 11. See Advisory
Action (April 11, 2017) (entering amendment of claim 11). Neither the
Advisory Action nor the Examiner’s Answer expressly state that this
rejection has been withdrawn, but it does not appear in the list of rejections
maintained in the Examiner’s Answer. See Answer 2–3.
3 JP 5-139123, published June 8, 1993. We cite the machine translation that
is of record.
4 US 2008/0283169 A1, published November 20, 2008.
5 JP 2000-198324, published July 18, 2000.
6 US 5,645,661, issued July 8, 1997.
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the claims subject to this ground of rejection. Claim 13 will stand or fall
with claim 1, from which it depends. 37 C.F.R. § 41.37(c)(1)(iv).
For ease of reference, we reproduce Takenaka’s Figure 2 below:

Takenaka’s Figure 2 illustrates concave part 2b formed in
sidewall of the pneumatic tire 2. Takenaka ¶ 10.
In rejecting claim 1, the Examiner found that Takenaka’s Figure 2
illustrates “a recess having a concave orientation (radius of curvature is on
the tire outside- analogous to claimed second arc curve) is arranged at a
height that corresponds with a radially outer end of said first arc curve.”
Final Act. 3. In the Advisory Action the Examiner clarified that “[t]he
claims as currently drafted fail to exclude viewing recess 2b as the claimed
‘circumferential recess’ and annular protecting member 3b as the claimed
‘block’.” Advisory Action 2.
The Examiner erred by finding that Takenaka’s Figure 2 describes
each limitation of claim 1. We, therefore, reverse the rejection of claim 1 as
anticipated by Takenaka.
In relevant part, claim 1 requires the presence of “a sidewall surface
formed in an area from the inner end of the circumferential recess in the tire
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radial direction to a bottom surface of the circumferential recess . . . formed
along a second arc curve having a center of curvature radius on the outside
in the tread width direction.”
We have enlarged and modified the key portion of Takenaka’s Figure
2 to more clearly explain the basis for our finding. We reproduce this
illustration below.

In this illustration, we have indicated the claimed first arc curve, the
bottom surface of the circumferential recess, and the second arc curve. As
can be seen, the center of curvature of the second arc curve is not on the
outside of the tire in the tread width direction. Claim 1, however, requires
that the center of curvature of the second arc curve to be on the outside of
the tire in the tread width direction. Thus, the Examiner erred by finding
that Takenaka anticipates claim 1.
Rejection 2. The Examiner rejected claims 2–4, 6, 9, and 12 as
obvious over Takenaka. Final Act. 3–4. Each claim subject to this ground
of rejection depends from claim 1. As discussed above, the Examiner erred
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by finding that Takenaka describes each of the limitations present in claim 1.
The Examiner makes no subsidiary findings that correct the error regarding
claim 1, discussed supra. Thus, the Examiner also erred by finding that
Takenaka describes or suggests each of the limitations present in these
claims. We, therefore, reverse this rejection.
Rejection 3. The Examiner rejected claims 1, 8, 10, 11, and 14–20 as
obvious over Sato. Final Act. 5–7.
Appellant primarily argues for reversal of this rejection on the basis of
limitations present in both independent claims 1 and 17. Appeal Br. 17–19.
Moreover, Appellant’s only argument with respect to the patentability of
claim 17 is that “the Examiner has failed to supply a prima facie case of
obviousness with respect to claim 17, based on the claim’s similarity to
claim 1.” Id. at 19. Appellant, however, also presents additional arguments
for the separate patentability of claims 10, 11, 16, and 20. Id. at 25–26. We,
therefore, choose claim 1 as representative of claims 1, 8, 14, 15, and 17–19.
37 C.F.R. § 41.37(c)(1)(iv). These claims will stand or fall with claim 1.
We will address the patentability of claims 10, 11, 16, and 20 separately.
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Claim 1. For ease of reference, we reproduce Sato’s Figure 5 below.

Sato’s Figure 5 is a partial perspective view of a tire
which is cut in half. Sato ¶ 20.
In rejecting claim 1, the Examiner found that Figure 5 illustrates a tire
having a first, convex curve 103 that extends radially outward from a rim
separation point and a second, concave curve associated with recess 111.
Final Act. 5–6. The Examiner also found that Figure 5 illustrates a plurality
of blocks or markings 110 that are spaced apart from one another in the
circumferential direction and can extend between 0.5 mm and 3.0 mm
beyond sidewall surface 103a. Id. at 6.
Appellant presents two arguments for reversal of this rejection.
Because neither of these arguments is persuasive of reversible error, we
affirm the rejection of claim 1 as obvious over Sato.
First, Appellant argues that both of Sato’s curves 103 and 111 are
formed at a position substantially away from the bead portion 4. Appeal
Br. 18. According to Appellant, the first arc curve identified by the
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Examiner—which is defined by sidewall surface 103—does not begin in an
area near the rim-side separation point as required by claim 1.
This argument is incorrect. As can be seen in Figure 5, sidewall
surface 103a extends from bead portion 4 radially outward to
circumferential recesses 111. Sato describes bead portion 4 as being secured
to the rim flange of the wheel. Sato ¶ 84. Thus, sidewall surface 103a
extends from the rim-side separation point toward the inner end of the
circumferential recess.
Second, Appellant argues that “in Sato, there is no disclosure wherein
the alleged blocks (letters) extend beyond the alleged first arc curve.” Reply
Br. 8. This argument is incorrect. Sato states that
[t]he projecting height of the markings 110 may be made equal
to the height of the sidewall surface 103a or made to project
further outwards on the order of 0.5 to 3.0 mm than the
sidewall surface 103a depending upon tire sizes and types
(letters, designs and the like) of markings.
Sato ¶ 108 (emphasis added). Moreover, Sato’s Figure 10 depicts markings
110 as extending beyond sidewall surface 103a. Sato Figure 10; ¶ 106.
In view of the foregoing, we affirm the rejection of claims 1, 8, 14,
15, and 17–19 under § 103(a) as obvious over Sato.
Claims 10 and 11. Claim 10 specifies the width of the block in the
tire circumferential direction. Appeal Br. 31.
With respect to claim 10, the Examiner found that
Sato teaches a tire having any number of markings, such as
trade names, tire sizes, manufacture information, and graphics
(Paragraph 105). One of ordinary skill in the art at the time of
the invention would have found it obvious to include blocks or
markings having any number of circumferential widths,
including those required by the claims, there being no
conclusive showing of unexpected results for the claimed
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arrangement (limitations pertain to the aesthetic features as
opposed to the function or operation of the tire).
Final Act. 6–7.
Claim 11 specifies the relationships between the height, width, and
pitch of the blocks. Appeal Br. 31–32.
With respect to claim 11, the Examiner found that
Sato broadly teaches the inclusion of markings in the form of
any symbol or number, or letter or character or graphic without
limiting the dimensions of said markings. One of ordinary skill
in the art at the time of the invention would have found it
obvious to use markings having any number of dimensions
including those satisfying the claimed relationships absent a
conclusive showing of unexpected results.
Final Act. 7.
Appellant argues that the rejection of claims 10 and 11 is the result of
impermissible hindsight. “That is, while there is an extensive showing in the
instant specification regarding the benefits (realized after extensive testing)
for the specific ranges and relationships claimed in claims 10 and 11, there is
no disclosure whatsoever in Sato regarding these claimed ranges and
relationships.” Appeal Br. 25.
This argument is not persuasive of reversible error.
To begin with, the Specification does not contain an “extensive
showing” of any kind. For example, with respect to claim 10’s limitation on
the width of the blocks, the Specification states that, in one embodiment, the
width of the blocks in the circumferential direction is 2–10 mm. Spec. ¶ 87.
The Specification then sets forth conclusions without reporting any of the
data that may form the basis for these conclusions:
When the width w of the blocks 110 in the tire circumferential
direction Tc is less than 2 mm, the blocks 110 may be vibrated
by the flow of air drawn into the circumferential recess 100.
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Moreover, when the width W of the blocks 110 in the tire
circumferential direction Tc is less than 2 mm, the blocks may
be broken during driving on a rough road due to reduction in
rigidity of the blocks. On the other hand, when the width W of
the blocks 110 in the tire circumferential direction Tc is larger
than 10 mm, the blocks become likely to generate heat due to
an increase in the amount of rubber forming the respective
blocks. This deteriorates the effect of suppressing the increase
in temperature by the formation of the circumferential recess
100.
Id.
Even if we were to assume that there is data underlying these
conclusory statements, there is still insufficient evidence of unexpected
results to rebut the prima facie case of obviousness. First, the statements are
addressed to observations made with respect to a single embodiment of the
claimed invention and thus are not commensurate in scope with the claims.
Second, Appellant has not identified any evidence that the results
supposedly underlying the Specification’s conclusory statements were, in
any sense, unexpected.
The Specification’s discussion of the limitations in claim 11 are
similarly deficient. See id. ¶ 88.
We, therefore, affirm the rejection of claims 10 and 11.
Claims 16 and 20. Appellant presents a specific additional argument
for reversal of the rejection of claim 16 and asserts that claim 20 “recite
similar features of claim 16, and is submitted as being patentable over Sato
for at least the same additional reason as claim 16.” Appeal Br. 26. We,
therefore, select claim 16 as representative of this group of claims. 37
C.F.R. § 41.37(c)(1)(iv). Claim 20 will stand or fall with claim 16.
We reproduce claim 16 below with the key language italicized.
16. The tire according to claim 14, wherein
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the tire comprises a plurality of first and second blocks
arranged in the tire circumferential direction with a pitch p
therebetween in the tire circumferential direction, and the
distance in the tire radial direction of the first block and the
second block is 15% to 30% of the pitch p of the first block or
the second block.
Appeal Br. 32–33 (emphasis added).
Appellant bases its argument for reversal of the rejection of claim 16
language italicized above. See id. at 25–26. Although this language is not a
model of clarity, a review of the ’111 Application’s Specification leads us to
conclude that the “distance” referred to in claim 16 is the spacing in the tire
radial direction between the end of the outer end of the innermost block and
the inner end of the outermost block. Spec. ¶ 50; see also Figure 6(b).
In rejecting claim 16, the Examiner found that
the general disclosure of Sato identified above would have le[]d
one having ordinary skill in the art to include a wide variety of
aesthetic arrangements. It is emphasized that Sato teaches the
general inclusion of markings and such would include the
presence of multiple markings or blocks really spaced from one
another (within the single recess). Again, one of ordinary skill
in the art at the time of the invention would have found it
obvious to include any number of symbols, graphics, letters,
numbers, etc.
Final Act. 7.
Appellant argues that “[a]ccording to one embodiment representative
of claim 16, th[e] spacing between the blocks allows for an increase in air
flow, and an increase in heat dissipation. (See specification as filed,
paragraph [0050]). This claimed range of claim 16 was the result of
extensive testing. (See specification as filed, paragraphs [0103]-[0110]).”
Appeal Br. 26. Based upon this disclosure, Appellant asserts that claim 16 is
patentable over Sato. Id.
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We have reviewed the portions of the Specification cited by
Appellant. We conclude that these portions of the Specification do not
constitute sufficient evidence of unexpected results to rebut the prima facie
case of obviousness. As Appellant admits, the statements in paragraph 50
are limited to one embodiment of claim 16. Id. As such they are not
commensurate in scope with the claim. We have also reviewed the
experimental data that is reported in paragraphs 103–110 and Table 1. The
data are insufficient to support the statements made in paragraph 50. For
example, this portion of the Specification does not report either the specific
arrangement of the sets of blocks or the pitch used to create the tire. Thus, it
is not possible to ascertain whether any of the tires tested fall within the
scope of claim 16. Moreover, the Specification is devoid of any evidence
that either the conclusory statements reported in paragraph 50 or the results
reported in Table 1 would not have been expected by a person of ordinary
skill in the art at the time of the invention.
For these reasons, we affirm the rejection of claims 16 and 20 as
unpatentable over Sato.
Rejection 4. The Examiner rejected claims 17, 19, and 20 as obvious
over the combination of Endo and Clementz. Answer 3.
Appellant argues that the rejection of claim 17 should be reversed
because neither Endo nor Clementz describe or suggest claim 17’s feature of
“blocks [which] are arranged around a whole circumference with a
predetermined pitch in the tire circumferential direction.” Reply Br. 10
(emphasis omitted).
In rejecting claim 17 as obvious over the combination of Endo and
Clementz, the Examiner found that Endo does not depict blocks arranged
over the entire circumferential extent of the tire as required by claim 17.
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Answer 3. The Examiner further found that Clementz provides evidence
that a person of ordinary skill in the art would have known to provide
lettering that could serve as the claimed blocks over the entire
circumferential extent of the tire. Id.
We agree with Appellant that the Examiner has not established a
prima facie case that claim 17 is obvious over the combination of Endo and
Clementz. Claim 17 requires that the blocks occur over the whole
circumference of the tire with a predetermined pitch. We begin by
considering the proper interpretation of the word “pitch” as used in claim 17.
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id.
In this context, claim 17’s use of the term “pitch” refers to the regular,
repetitive spacing between adjacent blocks or sets of blocks. This
interpretation is consistent with the ordinary meaning of pitch:
[t]he distance between successive corresponding points or lines;
[specifically] (a) the distance between the centres of any two
successive teeth of a cog wheel or links of a gear chain; (b) the
distance between the successive convolutions of the thread of a
screw; (c) a measure of the angle of the blades of a screw
propeller, equal to the distance forward a blade would move in
one revolution if it exerted no thrust on the medium.
Shorter Oxford English Dictionary 2223 (6th ed. 2007); see also Webster’s
Ninth New Collegiate Dictionary 896 (1989) (“the number of teeth or of
threads per inch”). The ’111 Application’s Specification and Figures also
are consistent with the interpretation of the term pitch as referring to the
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regular, repetitive spacing of blocks or sets of blocks. See, e.g., Figures 2, 6,
7, 10, 16.
The Examiner relies upon Clementz’s Figure 4 as depicting the final
limitation in claim 17. Answer 3. For ease of reference, we reproduce
Figure 4 below.

Clementz’s Figure 4 is a side view of a tire with writing
around the tire’s circumference. Clementz 3:12–13.
The Examiner’s precise finding is that “it is equally well known to
provide indicia or advertisement or additional information over the entire
circumferential extent of the tire, as evidenced by Clementz (see Figure 4).”
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Id. This finding does not address claim 17’s requirement that the blocks
occur around the tire with a predetermined pitch. As can be seen in Figure
4, the letters—which the Examiner finds correspond to claim 17’s blocks—
are not evenly spaced all the way around the tire’s circumference. Nor does
the Examiner explained why this figure would have suggested evenly
locating blocks with a predetermined pitch around the entire circumference
of the tire.
In view of the foregoing, the Examiner has not established a prima
facie case of obviousness of claim 17 over the combination of Endo and
Clementz. We, therefore, reverse the rejection of claim 17. Because claims
19 and 20 depend from claim 17, we also reverse the rejection of those
claims.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1
and 13 as anticipated by Takenaka and claims 2–4, 6, 9, and 12 as obvious
over Takenaka. We also reverse the rejection of claims 17, 19, and 20 as
obvious over the combination of Endo and Clementz. We, however, affirm
the rejection of claims 1, 8, 10, 11, and 14–20 as obvious over Sato.
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-IN-PART