Ex Parte Currie et al

Patent Trial and Appeal Board

Jun 19, 2018

14192017 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/192,017 02/27/2014 William Dudley Currie
27280 7590 06/21/2018
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
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.
DN2014-001 3813
EXAMINER
ROGERS, MARTIN K
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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 WILLIAM DUDLEY CURRIE, GARY ROBERT BURG,
and JOHN EDWARD ANDERSON1
Appeal2017---003822
Application 14/192,017
Technology Center 1700
Before BEYERL YA. FRANKLIN, JEFFREY T. SMITH, and
AVEL YN M. ROSS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1-3, 6-12, 15, and 16. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 Appellants identify the real party in interest as The Goodyear Tire &
Rubber Company. Br. 4.
Appeal2017-003822
Application 14/192,017
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. An apparatus defining a variable circumference for building
a pneumatic tire comprising
a cylindrical frame having a central axis of rotation;
a plurality of multi-sectional arcuate segments mounted to the frame
in side-by-side relationship about the central axis thereof, the arcuate
segments being radially movable inwardly and outwardly with respect to the
central axis of the frame and including arcuate surfaces which move toward
one another when the arcuate segments are moved radially inwardly and
away from one another when the arcuate segments are moved radially
outwardly to collectively define a circumference,
each arcuate segment including an intermediate section and
circumferentially adjacent first and second side sections flanking the
intermediate section on respective ones of opposite sides thereof, each of the
first and second side sections being mounted to the frame for hinged
movement of each side section with respect to the corresponding
intermediate section,
opposite ends of the intermediate section of a first arcuate segment are
secured by guide structures, a guide structure at one end of the intermediate
section extends therefrom in the direction of a side section of a second
arcuate segment adjacent to the first arcuate segment, a guide structure on
the opposite end of the intermediate section extends therefrom in the
direction of a side section of a third arcuate segment adjacent to the opposite
side of the intermediate section, radial movement of the intermediate section
of the first arcuate segment being converted into hinged movement of the
side sections of second and third arcuate segments,
at least one of the two side sections of each arcuate segment having a
row of spaced fingers corresponding in a fitted arrangement with gaps of an
adjacent arcuate segment such that, as the circumference is adjusted and the
side sections of each segment hingedly move relative to the
intermediate section about a corresponding pivot axis, the fingers moving
into and out of the gaps provided between the fingers of the adjacent arcuate
segment,
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Application 14/192,017
the fingers and gaps both being tapered at a taper angle relative to the
circumferential direction of the apparatus, each arcuate segment including a
row of magnets circumferentially between the gaps and fingers for holding
steel breaker material added to the circumferential surface during tire
building operations.
Br. 14--16.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Gazuit
Ozawa
Benjamin
Byerley '374
Byerley '016
Uyttenboogaart
Marchini
Jones
Omokawa
Buckenauer
us 1,524,369
us 4,923,554
us 5,066,354
us 5,618,374
us 5,635,016
US 2006/0127519 Al
US 2010/0116414 Al
US 2014/0216660 Al
JP 2001-113611
WO 02/27102 Al
THE REJECTIONS
Sept. 13, 1978
May 8, 1990
Nov. 19, 1991
Apr. 8, 1997
June 3, 1997
June 15, 2006
May 13, 2010
Aug. 7, 2014
Apr. 24, 2001
Apr. 4, 2002
1. Claims 1-3, 6, and 7 are rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre- AIA), first paragraph, as failing to comply with the
written description requirement.
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Application 14/192,017
2. Claims 1-3, 6-12, 15, and 16 are rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite. 2
3. Claim 7 is rejected under 35 U.S.C. § 112, 4th paragraph, as being
of improper dependent form.
4. Claims 1, 7, and 8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Byerley '016, Gazuit, Benjamin, Jones, Uyttenboogaart,
Marchini, and Ozawa.
5. Claims 2 and 6 are rejected under 35 U.S.C. § 103 as being
unpatentable over the previous combination of Byerley 'O 16, Gazuit,
Benjamin, Jones, Uyttenboogaart, Marchini, and Ozawa, as applied to
claim 1 above, and further in view of Omokawa and Buckenauer.
6. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable
over the previous combination of Byerley '016, Gazuit, Benjamin, Jones,
Uyttenboogaart, Marchini, and Ozawa, as applied to claim 1 above, and
further in view of Byerley '374.
7. Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Byerley '016, Gazuit, Benjamin, and Jones.
2 The Examiner mistakenly indicates that claims 1-16 are rejected in this
rejection. Final Act. 4--5. However, claims 4, 5, 13, and 14 are withdrawn, so
are not included in this rejection.
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Application 14/192,017
8. Claims 12 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over the previous combination of Byerley 'O 16, Gazuit,
Benjamin, and Jones as applied to claim 9 above, and further in view of
Omokawa and Buckenauer.
9. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable
over the previous combination of Byerley 'O 16, Gazuit, Benjamin, and
Jones, as applied to claim 9 above, and further in view of Byerley '374.
10. Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable
over the previous combination of Byerley 'O 16, Gazuit, Benjamin, and
Jones as applied to claim 9 above, and further in view of Uyttenboogaart.
ANALYSIS
Appellants have not presented separate arguments for all of the
rejected claims. Any claim not separately argued will stand or fall with its
respective independent claim. We therefore consider claims 1 and 9 in the
present appeal. See 37 C.F.R. § 4I.37(c)(l)(vii). As such, with regard to the
prior art rejections, we focus on the rejection involving independent claim 1
(Rejection 4) and the rejection involving independent claim 9 (Rejection 7).
We additionally note that Rejections 4 and 7 are the only prior art rejections
that Appellants discuss in their Appeal Brief. 3 Appeal Br. 9--12.
3 As such, the other prior art rejections (Rejections 5, 6, 8, 9, and 10) are
summarily affirmed. SeeHyattv. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008) ( explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).
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Application 14/192,017
With regard to the prior art rejections (Rejections 4 and 7 in
particular), upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner's findings and conclusion that the subject matter of
Appellants' claims is unpatentable over the applied art. Accordingly, we
sustain these prior art rejections essentially for the reasons set forth in the
Final Office Action, and in the Answer, and affirm. With regard to each of
the respective 35 U.S.C. § § 112 rejections, our analysis follows.
Rejection 1 (35 U.S.C. § 112 first paragraph (written description))
It is the Examiner's position that there is no support for the recitation
of "each arcuate segment including a row of magnets circumferentially
between the gaps and fingers for holding steel breaker material added to the
circumferential surface during tire building operations" as recited in claim 1.
Final Act. 4. Ans. 2-3.
The Examiner explains that the last paragraph of claim 1 pertains
to a configuration in which each segment has a first row of fingers on
one circumferential side and a second row of fingers on the
circumferential side, each segment therefore also having a row of
magnets between its own two rows of fingers, as shown in Figure 1. The
Examiner states that this is problematic because line 21 of claim 1
requires only that "at least one of the two side sections of each arcuate
segment" have a row of spaced fingers. Ans. 3.
The Examiner concludes that Appellants are improperly
combining a limitation from line 21 of the claim in which each segment
can have only one row of fingers with a description from the
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Application 14/192,017
Specification which is limited to the embodiment in which each segment
must have two rows of fingers. Ans. 3.
We agree with Appellants that the Examiner is construing the
claims too narrowly. Appeal Br. 9. Paragraph [0056] of the
Specification discloses:
[056] The segments 528 may be constructed of aluminum or other
suitable material and may include a row of magnets 570
circumferentially between the gaps 554 and fingers 556 for
holding steel breaker material added to the B&T drum 12 during
tire building operations. The magnetic pattern of each segment 528
may be altered by removing some or all of the magnets 570 and
replacing the magnets with blank steel plugs at each segment hole.
As ,r [056] describes, the magnetic pattern of each segment 528 can be
altered by removing some or all of the magnets and replacing them with
plugs. This disclosure supports "at least one of the two side sections of each
arcuate segment" in combination with "each arcuate segment including a
row of magnets circumferentially between the gaps and fingers for holding
steel breaker material added to the circumferential surface during tire
building operations". In other words, the disclosure found in ,r [056] allows
for one side or both sides of an arcuate segment to have magnets because the
magnetic pattern of each segment can be chosen as desired.
In view of the above, we reverse Rejection 1.
Rejection 2 (35 U.S.C. § 112 (pre-AIA), second paragraph (indefiniteness)
As an initial matter, we note that the Examiner separately addresses
claims 1, 8, 9, and 10 in this rejection. Final Act. 5-1 0. However,
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Application 14/192,017
Appellants only adequately address claim 1 in the record for this rejection. 4
Appeal Br. 9. As such, with regard to claims 8, 95, and 10, because this
aspect of the rejection is not addressed by Appellants, the rejection of these
claims is summarily affirmed. 6
With regard to claim 1, for similar reasons that we reverse Rejection 1
( discussed supra), we also reverse the rejection of claim 1. We note that
definiteness is evaluated from the perspective of one skilled in the relevant
art. "[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains
words or phrases whose meaning is unclear."' Ex parte McAward, No. 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). The
language in 35 U.S.C. § 112, second paragraph, "of 'particular[ity]' and
'distinct[ness]' indicates[] claims are required to be cast in clear -- as
opposed to ambiguous, vague, indefinite --terms." Packard, F.3d at 1313.
As discussed supra, with regard to Rejection 1, the disclosure found in ,r
[056] allows for one side or both sides of an arcuate segment to have
magnets because the magnetic pattern of each segment can be chosen as
4 Appellants mention claim 9 on page 9 of the Appeal Brief, but not with
respect to the Examiner's rejection as made on page 7 of the Final Office
Action regarding claim 9.
5 With regard to claim 9, while Appellants mention claim 9 on page 9 of the
Appeal Brief, Appellants do not specifically address the Examiner's position
regarding claim 9 made on page 7 of the Final Office Action.
6 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that
summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection).
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Application 14/192,017
desired. It is with this understanding that one skilled in the art would know
what is being claimed when the claim is read in light of the Specification.
We thus reverse Rejection 2 with regard to claim 1 (and its rejected
dependent claims).
In view of the above, we reverse Rejection 2 with regard to claim 1,
including its rejected dependent claims ( claim 2, 3, 6, and 7).
We summarily affirm Rejection 2 with regard to claims 8, 9, and 10,
as well as the rejected dependent claims of claim 9 ( claims 11, 12, 15, and
16).
Rejection 3
As stated by the Examiner on page 2 of the Answer, Appellants do not
address this rejection in the record. We thus summarily affirm this rejection.
Rejection 4
We refer to the Examiner's findings and stated position on pages 10-
14 of the Final Office Action. Therein, the Examiner finds that Byerley
teaches the claimed subject matter, including fingers, but relies upon Gazuit
or Benjamin or Jones for teaching fingers having a tapered shape. Final Act.
11-12. The Examiner relies upon Uyttenboogaart or Ozawa or Marchini for
teaching use of magnets. Final Act. 12-13.
Appellants' position is set forth on pages 9-11 of the Appeal Brief.
Appellants first assert that the applied art does not suggest the claimed
subject matter, but do not refer to factual evidence thereof. Appeal Br. 10.
Attorney argument in a brief does not take the place of the factual evidence
required to rebut a prima facie case of obviousness. In re Geisler, 116 F .3d
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Application 14/192,017
1465, 1470 (Fed. Cir. 1997); In re Pearson, 494 F.2d 1399, 1405 (CCPA
197 4). In like manner, Appellants next argue that the Examiner has relied
upon hindsight, but does not provide sufficient explanation to support this
position. Appeal Br. 10. Appellants then argue that the proposed
modification is unpredictable, but offer no adequate factual support in the
record for this position. Appeal Br. 10-11. We are thus unpersuaded by
such argument. Also, we agree with the Examiner's stated response made
on pages 6-9 of the Answer, in support of the rejection.
In view of the above, we affirm Rejection 4.
Rejection 7
We refer to the Examiner's stated position as set forth on pages 17-19
of the Final Office Action.
Appellants' position is set forth on pages 11-12 of the Appeal Brief.
Appellants' arguments for claim 9 are the same as for claim 1 ( discussed,
supra with regard to Rejection 4). Hence, we are unpersuaded by such
arguments for the same reasons as discussed with regard to Rejection 4,
supra. Attorney argument in a brief does not take the place of the factual
evidence required to rebut a prima facie case of obviousness. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
We thus affirm Rejection 7.
DECISION
Rejection 1 is reversed.
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Application 14/192,017
Rejection 2 is reversed with regard to claim 1, including its rejected
dependent claims ( claim 2, 3, 6, and 7).
Rejection 2 is summarily affirmed with regard to claims 8, 9, and 10,
as well as the other rejected dependent claims of claim 9 (claims 11, 12, 15,
and 16).
Rejection 3 is summarily affirmed.
Rejections 4 and 7 are affirmed.
Rejections 5, 6, 8, 9, and 10 are summarily affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
ORDER
AFFIRMED
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