Sayaka MishimaDownload PDFPatent Trials and Appeals BoardAug 29, 201914373111 - (D) (P.T.A.B. Aug. 29, 2019) Copy Citation 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. Appeal 2018-001201 Application 14/373,111 2 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 Appeal 2018-001201 Application 14/373,111 3 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). Appeal 2018-001201 Application 14/373,111 4 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. Appeal 2018-001201 Application 14/373,111 5 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 Appeal 2018-001201 Application 14/373,111 6 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 Appeal 2018-001201 Application 14/373,111 7 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. Appeal 2018-001201 Application 14/373,111 8 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 Appeal 2018-001201 Application 14/373,111 9 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 Appeal 2018-001201 Application 14/373,111 10 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. Appeal 2018-001201 Application 14/373,111 11 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 Appeal 2018-001201 Application 14/373,111 12 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. Appeal 2018-001201 Application 14/373,111 13 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. Appeal 2018-001201 Application 14/373,111 14 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 Appeal 2018-001201 Application 14/373,111 15 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).” Appeal 2018-001201 Application 14/373,111 16 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 Copy with citationCopy as parenthetical citation