The Goodyear Tire & Rubber Company

Patent Trials and Appeals Board

Mar 3, 2020

15447160 - (D) (P.T.A.B. Mar. 3, 2020)

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.
15/447,160 03/02/2017 Cheng-Hsiung Lin DN2014-005-C01 8768
27280 7590 03/03/2020
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
EXAMINER
KOTTER, KIP T
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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
pair_goodyear@firsttofile.com
patents@goodyear.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHENG-HSIUNG LIN
Appeal 2019-004504
Application 15/447,160
Technology Center 3600
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 7, 8, 10–14, and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “The
Goodyear Tire & Rubber Company.” Appeal Br. 3.
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According to Appellant, the “invention relates to a rim mounted
system for directing air into a tire cavity of a pneumatic tire.” Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A system for use with a pneumatic tire mounted on
a wheel rim to keep the pneumatic tire from becoming
underinflated, the system comprising:
a plurality of pumps attached circumferentially to the
wheel rim, each pump having pump parameters, each pump
including one piston;
a primary check valve disposed adjacent each pump; and
a control valve for controlling inlet air into a tire cavity
of the pneumatic tire, the control valve having valve
parameters, the system predicting system performance under
various configurations and conditions through use of the pump
parameters and the valve parameters, each pump including one
piston placed between two chambers connected by a narrow
passage having a secondary check valve.
REJECTIONS
The Examiner rejects the claims as follows:
I. Claims 1, 2, 7, 8, 10–14 and 17 under 35 U.S.C. § 112(a), as
failing to comply with the written description requirement; and
II. Claims 1, 2, 7, 8, 10–14 and 17 under 35 U.S.C. § 112(b), as
indefinite.
ANALYSIS
Rejection I—Written-description rejection
The Examiner finds, as to independent claims 1 and 11, that “the
[S]pecification does not describe ‘the system predicting system performance
under various configurations and conditions through use of the pump
parameters and the valve parameters’ in such a way as to reasonably convey
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to one skilled in the relevant art that the inventor had possession of the
claimed invention.” Answer 3. The Examiner further finds
[t]here are no drawings or description with sufficient details to
show how the pump parameters and valve parameters are used
to predict system performance under various configurations and
conditions. Further, the specification fails to expressly disclose
what these claimed various configurations and conditions are.
As such, there is not sufficient reduction to practice either
disclosed in the specification, or shown in the drawings, to
show that the Appellant had possession of the claimed
invention.
Id. The Examiner does not indicate what level of detail would be
“sufficient.”
Appellant argues that “[c]laims 1 and 11, as filed, both recite the
system predicting system performance under various configurations and
conditions through use of the pump parameters and the valve parameters.”
Appeal Br. 5. Appellant further argues that “systems with this function have
been appropriately and definitely described in paragraphs 47, 48[,] and 54 of
the Specification.” Id.
Based on our review of the record, we agree with Appellant.
“The ‘written description’ requirement implements the principle that a
patent must describe the technology that is sought to be patented; the
requirement serves both to satisfy the inventor’s obligation to disclose the
technologic knowledge upon which the patent is based, and to demonstrate
that the patentee was in possession of the invention that is claimed.” Capon
v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). Whether a specification
complies with the written description requirement of 35 U.S.C. § 112(a) is a
question of fact. See Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d
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1559, 1566 (Fed. Cir. 1997) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991)).
The Manual of Patent Examining Procedure (“MPEP”) explains that
[t]o satisfy the written description requirement, a patent
specification must describe the claimed invention in sufficient
detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. See, e.g.,
Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306,
1319 . . . (Fed. Cir. 2003) . . . . However, a showing of
possession alone does not cure the lack of a written description.
Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956,
969–70 . . . (Fed. Cir. 2002). For example, it is now well
accepted that a satisfactory description may be found in
originally-filed claims or any other portion of the originally-
filed specification. See In re Koller, 613 F.2d 819 . . . (CCPA
1980); In re Gardner, 475 F.2d 1389 . . . (CCPA 1973); In re
Wertheim, 541 F.2d 257 . . . (CCPA 1976). However, that does
not mean that all originally-filed claims have adequate written
support. The specification must still be examined to assess
whether an originally-filed claim has adequate written support.
MPEP § 2163(I). As further explained in the MPEP,
issues of adequate written description may arise even for
original claims, for example, when an aspect of the claimed
invention has not been described with sufficient particularity
such that one skilled in the art would recognize that the
applicant had possession of the claimed invention at the time of
filing. The claimed invention as a whole may not be adequately
described if the claims require an essential or critical feature
which is not adequately described in the specification and
which is not conventional or known in the art.
Id. § 2163(II).
To this end, the Examiner has the initial burden of presenting
evidence or reasoning to explain why persons skilled in the art would not
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recognize in the original disclosure a description of the invention defined by
the claims. See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976); see, e.g.,
MPEP § 2163(I)(A).
Here, the recitation on which the Examiner bases the rejection
appears, verbatim, in the originally-filed claims. Regardless, the Examiner
finds there are inadequate details “to show how the pump parameters and
valve parameters are used to predict system performance.” Answer 3. In
response to Appellant citing paragraphs 47, 48, and 54 of its Specification,
the Examiner merely finds “the [S]pecification fails to describe with
sufficient details how the pump parameters and valve parameters are used to
predict system performance.” Id. at 4–5.
The invention features “an air maintenance feature within a pneumatic
tire that will maintain recommended air pressure without requiring
bothersome driver intervention.” Spec. ¶ 3. The Specification describes that
“[a]s the tire/wheel rotates, the piston body 16 may travel in a forward
direction and an opposite backward direction per each revolution thereby
producing a high pumping frequency.” Id. ¶ 47. Additionally, the
“parameters of the pumping action depend upon the mass and angular
velocity of the tire/wheel assembly.” Id.
Paragraph 54 of Appellant’s Specification describes programming “an
analytical pumping model. This model may design and predict system
performance under various configurations and conditions for both consumer
and commercial air maintenance tire systems.” Id. ¶ 54. The Specification
then lays out an analytical construct involving a number of variable having
to do with a number of pumps and check valves, an angle of rotation of a
wheel/tire, whether a check valve is open or closed, and a number of
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measured pressures, including the pressure in the tire itself (Ptire). Id. ¶¶ 55–
77. Additionally, “control valve 22 may include an adjustment for varying a
set pressure for the tire cavity. Id. ¶ 50. Further, several examples of
predictions are described, the results of which are shown in Appellant’s
Figures 9A, 9B, 10A, and 10B. Spec. ¶¶ 78–79. Given this extensive
disclosure of pump parameters (e.g., number of pumps, check valve states)
and valve parameters (e.g., tire cavity pressure), it is unclear to us the reason
the Examiner finds there is not sufficient disclosure to show the ordinary
artisan the Appellant had possession of “the system predicting system
performance under various configurations and conditions through use of the
pump parameters and the valve parameters,” because the Specification
describes various parameters, how they are used to make predictions, and
shows the results of several example predictions. Answer 3.
Thus, without further explanation from the Examiner, the Examiner
does not support adequately that the claims lack written-description support.

Rejection II—Indefiniteness rejection
With reference to independent claims 1 and 11, the Examiner finds
that
the term ‘valve parameters’ renders the claims indefinite
because it is unclear what is encompassed by this limitation.
While it is well-known that control valves have a number of
known valve parameters, Appellant’s [S]pecification fails to
describe which of these known valve parameters are considered
to be the claimed ‘valve parameters’ that are utilized to predict
system performance under various configurations and
conditions for Appellant's system.
Answer 4–5.
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Appellant argues that a “broad claim is not indefinite merely because
it encompasses a wide scope of subject matter provided the scope is clearly
defined,” and that “one of ordinary skill in the art would understand its
scope.” Appeal Br. 5–6 (citing MPEP § 2173.04).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). “All words in a claim must be considered in judging the
patentability of that claim against the prior art. If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious—the claim becomes indefinite.” In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970).
By the Examiner’s own statement, the Examiner acknowledges “that
control valves have a number of known valve parameters.” Answer 4–5.
The Specification describes that “[t]he control valve has valve parameters.”
Spec. ¶ 4. The ordinary and customary meaning of a “parameter” is “any of
a set of physical properties whose values determine the characteristics or
behavior of something.” Merriam-Webster Online Dictionary,
https://www.merriam-webster.com/dictionary/parameter (last retrieved
February 24, 2020). A “valve parameter” is thus a physical property of a
valve whose value can be used to determine the characteristics of something.
The Specification mentions tire cavity pressure (Spec. ¶ 50) that the ordinary
artisan would understand as one valve parameter, and the ordinary artisan
also would understand whether the valve is open or closed is another
parameter of a control valve (id. ¶¶ 8, 9). Based on the foregoing, we see no
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uncertainty concerning what subject matter falls within the scope of the
claims.
By not specifying which specific valve parameters are used for
making predictions, the claims are merely broad, not indefinite. See In re
Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977) (breadth is not
indefiniteness). This is in accordance with the Examiner’s further
statements in the Answer—that “it is well-known that control valves have a
number of known valve parameters, [but] Appellant’s [S]pecification fails to
describe which of these known valve parameters are considered to be the
claimed ‘valve parameters’ that are utilized.” Answer 4–5.
For these reasons, the Examiner does not support adequately that the
claims are indefinite.
CONCLUSION
We reverse the Examiner’s written-description and indefiniteness
rejections.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 7, 8,
10–14, 17
112(a) Written
Description
1, 2, 7, 8,
10–14, 17
1, 2, 7, 8,
10–14, 17
112(b) Indefiniteness 1, 2, 7, 8,
10–14, 17
Overall
Outcome
1, 2, 7, 8,
10–14, 17
REVERSED