Ex Parte Kurita et alDownload PDFPatent Trial and Appeal BoardJul 29, 201612738466 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121738,466 07/07/2010 23373 7590 08/02/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Keiichi Kurita 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. Ql 18600 2023 EXAMINER DYE, ROBERT C ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 08/02/2016 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 sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEIICHI KURIT A and SEIICHI TODA 1 Appeal2014-005077 Application 12/738,466 Technology Center 1700 Before CHUNG K. PAK, KAREN M. HASTINGS, and JEFFREY R. SNAY, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's decision2 finally rejecting claims 1-4 and 8-11, which are all of the claims pending in the above-identified application. An oral hearing was held on June 14, 2016. 3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The real party in interest is said to be Bridgestone Corporation. Appeal Brief filed October 11, 2013 ("App. Br.") at 2. 2 Final Action entered April 11, 2013 ("Non-Final Act.") at 1-10 and the Examiner's Answer entered January 17, 2014 ("Ans.") at 2-5. 3 A transcript of the oral hearing has been entered into the electronic record. Appeal2014-005077 Application 12/738,466 STATEMENT OF THE CASE The subject matter on appeal is directed to "a pneumatic tire, in particular a pneumatic tire for heavy load vehicles, such as trucks, buses and the like[.]" Spec. 1, i-f 1. The pneumatic tire has "a recess in a side rubber at an outside face of the tire" to provide its weight reduction "without deteriorating a pulling resistance of carcass ply cords" to reduce rolling resistance and fuel consumption. Spec. 2, i-f 7. Figures 1, 3, and 4, which are illustrative of widthwise sectional views of a half portion of such pneumatic tire, are reproduced below: FIG, I FfO. 3 FIG. 4 .':1 Figures 1, 3, and 4 show a half portion of the pneumatic tire having tread portion 1 or 21, sidewall portion 2 or 22, bead portion 3 or 23, bead core 4 or 24, carcass 5 or 25, a carcass ply having main body portion 5a or 25a, tumup portion 5b or 25b, radially outer end 5c, belt 6 or 25, tread rubber 7 or 27, core reinforcing layer 8 or 28, side rubber 9 or 29, thin-walled recesslO or 30, radially outer end lOa or 30a (30a not shown in Figure 3), radially inner end lOb or 30b (30b not shown in Figure 3) and rim flange Rf. Spec. i-f 29. In Figure 1, "thin-walled recess 10 is formed inward from a tire maximum width position W in the radial direction of the tire and outward from a radially outer end 5c of the tumup portion 5b of the 2 Appeal2014-005077 Application 12/738,466 carcass [5] so that a minimum size t of rubber gauge in the sider rubber as measured in a normal direction drawn from the outermost carcassply is within a range of 2.5 mm-4.5 mm." Spec. i-f 36. Radially outer end lOa of recess 10 is preferably "positioned at a distance h 1 within a range of 30-65% from a line segment n passing through an outer edge of a rim flange [Rf] and parallel to a central axis of the tire with respect to the direction H from the line segment to the tire maximum width position in the radial direction .... " Spec. i-f 37. "[T]he radially outer end [ 1 Oa] may be an inflection point, change point, turnoff point of the like of the side rubber." Spec. i-f 12. In Figures 3 and 4, "recess 30 of a single arc having a center outside a carcass 25 in the widthwise direction of the tire and a radius r of curvature within a range of 10-200mm is formed in a side rubber 29 on outer surfaces of a sidewall portion 22 and a bead portion 23." Spec. i-f 43. Details of the appealed subject matter are recited in representative claims 1 and 2, 4 which are reproduced below from the Claims Appendix of the Appeal Brief (with bracketed reference characters of Figures 1, 3, and 4 discussed above and disputed limitations in italicized form): 1. A pneumatic tire comprising a tread portion [1 or 21 ], a pair of sidewall portions [2 or 22], a pair of bead portions [3 or 23], a carcass [ 5 or 25] comprised of at least one carcass ply having a main body portion [ 5a or 25a] toroidally extending between bead cores [ 4 or 24] each embedded in the respective bead portion [3 or 23] and a tum-up portion [5b or 25b] wound around the bead core from inside to outside of the tire in a width direction, and a side rubber [9 or 29] arranged outside of the carcass [ 5 or 25] in the width direction of the tire, characterized in that: 4 Appellants only focus on the limitations of claim 1 for the first four grounds of rejection and focus on the limitations of claim 2 for the fifth ground of rejection. App. Br. 6-15. Therefore, for purposes of this appeal, we limit our discussion to claims 1 and2. 37 C.F.R. § 41.37(c)(l)(iv) (2012). 3 Appeal2014-005077 Application 12/738,466 a thin-walled recess [10 or 30] is formed inward from a tire maximum width position in a radial direction and outward from a radially outer end of the tum-up portion [5b or 25b] of the carcass [5 or 25] at a posture of mounting the tire on an approved rim so that a minimum size of rubber gauge in the side rubber [9 or 29] as measured in a normal direction drawn from the outermost carcass ply is within a range of 2.5 mm - 4.5 mm; the thin-walled recess [l 0 or 30] is comprised of a single arc having a center positioned outward from the carcass [5 or 25] in the widthwise direction; and the recess [10 or 30] has a curvature radius within a range of 10-200 mm before the mounting on an approved rim. 2. A pneumatic tire comprising a tread portion [ 1 or 21], a pair of sidewall portions, a pair of bead portions [2 or 22], a carcass [5 or 25] comprised of at least one carcassply, and a side rubber [9 or 29] arranged outside of the carcass [5 or 25] in a widthwise direction of the tire, characterized in that the carcass [5 or 25] comprises a main body portion [5a or 25a] toroidally extending between bead cores [ 4 or 24] each embedded in the respective bead portion [3 or 23] and a wound portion wound around the bead core [ 4 or 24] from outside to inside in a width direction of the tire; and a thin-walled recess [JO or 30] comprised of a single arc having a center positioned outward from the carcass in the width direction and formed in the side rubber at an outer face of at least one of the sidewall portion [2 or 22] and the bead portion [3 or 23] in the width direction of the tire, wherein the recess [10 or 30] has a curvature radius within a range of 10-200 mm before the mounting on an approved rim. App. Br. 17-18. 4 Appeal2014-005077 Application 12/738,466 The Examiner has maintained the following grounds of rejection: 1. Claims 1, 3, 4, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings ofTsuruta, 5 Ikeda, 6 and Ueyoko '856; 7 2. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings ofTsuruta, Ikeda, Ueyoko '856, and Yoshioka; 8 3. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Tsuruta, Ikeda, Ueyoko '856, and Ueyoko '944; 9 4. Claims 1, 3, 4, and 8 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings ofHokushu10 and Ikeda; and 5. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings ofTsukagoshi 11 and Ueyoko '856. Final Act. 2-10 and Ans. 2-5. DISCUSSION Upon consideration of the evidence on this record in light of the respective positions advanced by the Examiner and Appellants, we find that Appellants have 5 JP 06-032122 published in the name of Tsuruta et al. on February 8, 1994 ("Tsuruta"). Our reference to Tsuruta is to the English machine translation of record, together with the drawing in JP 06-032122. 6 US 2001/0002604 Al published in the name of Ikeda on June 7, 2001 ("Ikeda"). 7 US 6,269,856 Bl issued in the name ofUeyoko on August 7, 2001 ("Ueyoko '856"). 8 US 2003/0005994 Al published in the name of Yoshioka on January 9, 2003 ("Yoshioka"). 9 US 2007/0113944 Al published in the name ofUeyoko et al. on May 24, 2007 ("Ueyoko '944"). 10 JP 2000-185530 A published in the name ofHokushu on July 4, 2007 ("Hokushu"). Our reference to Hokushu is to the English machine translation of record, together with the drawings in JP 2000-185530 A. 11 US 2003/0141001 Al published in the name ofTsukagoshi et al. on July 31, 2003 ("Tsukagoshi"). 5 Appeal2014-005077 Application 12/738,466 not identified reversible error in the Examiner's determination that the applied prior art would have rendered the subject matter recited in claims 1--4 and 8-11 obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's§ 103(a) rejections of the above claims for substantially the reasons set forth in the Final Action and the Answer. We add the following primarily for emphasis. I. Rejection 1 There is no dispute that one of ordinary skill in the art would have been led to employ the recess of the type taught by Ueyoko '856 in a side rubber at an outside face of the pneumatic tire suggested by Tsuruta and Ikeda. 12 Compare Final Act. 3-4 with App. Br. 6-10. Nor is there any dispute that the collective teachings of Tsuruta, Ikeda, and Ueyoko '856 would have suggested a pneumatic tire having all of the recited features, except for the thin-wall recess feature "comprised of a single arc" recited in claim 1. 13 Compare Final Act. 3-6 with App. Br. 6-10. 12 Appellants do not question the Examiner's finding that Tsuruta discloses a thin- wall recess "which is formed inward of the tire maximum width position and outward from a radially outer end of the tumup portion" as required by claim 1. Compare Final Act. 3 with App. Br. 6-10. Although Appellants argue the location ofUeyoko '856's thin-wall recess, there is no dispute that one of ordinary skill in the art would have been led to place Ueyoko '856's thin-wall recess at the location taught by Tsuruta. App. Br. 6-10. 13 We decline to consider Appellants' arguments relating to an apparent reason, suggestion or motivation to combine the teachings of Tsuruta, Ikeda, and Ueyoko '856 or relating to certain deficiencies in Ikeda, which are raised for the first time in the Reply Brief. 37 C.F.R. § 41.37(c)(l)(iv) ("Except as provided for in§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal."). See also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) 6 Appeal2014-005077 Application 12/738,466 Thus, the only disputed issue in this rejection is: Does Ueyoko '856 teach or suggest a thin-wall recess "comprised of a single arc having a center position outward from the carcass in the widthwise direction" as recited in claim 1? On this record, we answer this question in the affirmative. As explained by the Examiner, Figures 1 and 4 of the above-identification application illustrate a depression having both concave and convex curvatures in a side rubber at an outside face of a pneumatic tire. Ans. 3--4. Nevertheless, Appellants identify only the concave curvature (i.e., the concave arc portion) as a recess. Ans. 3. For instance, the Specification, in reference to Figures 3 and 4, defines only the concave portion as "a recess 30 of a single arc having a center outside a carcass 25 in the widthwise direction of the tire[.]" Spec. i-f 43. The Specification also does not require any inflection point at the end of each curvature. Spec. i-f 12. Thus, we agree with the Examiner that the recess recited in claim 1, upon giving it the broadest reasonable interpretation in light of the Specification, embraces each segment of the curvature that defines a single arc regardless of the absence or presence of an inflection point at the end of each segment of the curvature. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications, "the PTO must give claims their broadest reasonable construction consistent with the specification ... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation."). (Informative) (explaining that under the previous rules, which are similar to the current rules, "the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."). 7 Appeal2014-005077 Application 12/738,466 Having interpreted the recess in the above manner, we are not persuaded of any reversible error in the Examiner's finding that Figure 2 of Ueyoko '856 illustrates a concave arc which corresponds to the recited recess. Although Figure 2 ofUeyoko '856, like Figures 1 and 4 of the above-identification application, illustrates a depression having both concave and convex curvatures in a side rubber at an outside face of a pneumatic tire to reduce the tire weight without deteriorating the durability, the concave portion of the depression (the single arc) shown by Ueyoko '856 constitutes the recess recited in claim 1. Ans. 3--4; Ueyoko '856, col. 4, 11. 15-55. In the words ofUeyoko '856, "[t]he concave lower contour 13 extends along a concave curved line E2, which is preferably a circular arc having a single radius R3 .... The concave lower contour 13 is connected to the convex upper contour 14 without any infecting point." Ueyoko '856, col. 4, 11. 36-40; see also Ans. 3. Accordingly, we affirm the Examiner's rejection of claims 1, 3, 4, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Tsuruta, Ikeda, and Ueyoko '856. II. Rejections 2 and 3 Appellants do not separately argue claims 10 and 11 which stand rejected under 35 U.S.C. §103(a) as unpatentable over the combined teachings ofTsuruta, Ikeda, Ueyoko '856, and either Yoshioka or Ueyoko '944. App. Br. 6-15. Appellants appear to rely on the same arguments advanced in connection with claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Tsuruta, Ikeda, and Ueyoko '856. Id. Accordingly, the based on the reasons set forth in the Final Action, Answer and above, we also affirm the Examiner's rejections of claims 10 and 11 under 3 5 8 Appeal2014-005077 Application 12/738,466 U.S.C. § 103(a) as unpatentable over the combined teachings ofTsuruta, Ikeda, Ueyoko '856, and Yoshioka or the combined teachings of Tsuruta, Ikeda, Ueyoko '856, and Ueyoko '944. III. Rejection 4 There is no dispute that the collective teachings of Hokushu and Ikeda would have suggested a pneumatic tire having all of the recited features, except for a thin-wall recess feature "comprised of a single arc having a center position outward from the carcass in the widthwise direction" as recited in claim 1. Compare Final Act. 6-9 with App. Br. 10-14. Thus, the only disputed issue in this rejection is: Does Hokushu teach or suggest a thin-wall recess "comprised of a single arc having a center position outward from the carcass in the widthwise direction" as recited in claim 1? On this record, we answer this question in the affirmative. According to both Appellants and the Examiner, the Japanese term for the "radius of curvature" used in Hokushu "can literally be either singular or plural [. ]" App. Br. 13 and Ans. 4. The Examiner also finds, and Appellants do not dispute, that "Hokushu discusses the concave portion as having a curvature radius R [of a circular arc] (only one "R" is ever discussed)[.]" Compare Ans. 4-5 with App. Br. 10-14 and Reply Br. 2-5; see also Hokushu i-f 33 and claim 6. Thus, we find no reversible error in the Examiner's finding that Hokushu teaches or would have suggested a thin-wall recess comprising of a single arc having a center position outward from the carcass in the widthwise direction. Appellants contend that the fact that Hokushu's tire "'can effectively control distribution of twisting deformation by specifying thickness of coating rubber in a wide range from the bead portion of the sidewall portion' (last six lines of 9 Appeal2014-005077 Application 12/738,466 paragraph [0009] of Hokushu)" indicates that its thin-wall recess does not have a single arc as recited in claim 1. App. Br. 11. However, Appellants' arguments are unpersuasive because they are not supported by objective evidence. Id.; In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (mere arguments in the Brief or conclusory statements in the specification cannot take the place of objective evidence); in accord In re Lindner, 457 F.2d 506, 508 (CCPA 1972). As indicated supra, there is no dispute that Hokushu only discusses the concave portion as having a curvature radius R of a circular arc. Appellants contend that "Figures 1 to 3 of Hokushu each clearly show a recessed portion 8 composed of two convex-curved portions 8a, 8c and a concave- curved portion 8b therebetween, i.e., at least three arcs[.]" App. Br. 11. However, as indicated supra, Hokushu only discusses the presence of a concave curvature which has a curvature radius R of a circular arc. Moreover, even if Hokushu is limited to a recess having at least three arcs as illustrated in its Figures 1 to 3 as asserted by Appellants, each arc, as indicated above, corresponds to the recess recited in claim 1. Accordingly, based on the reasons set forth in the Final Action, Answer and above, we affirm the Examiner's rejection of claims 1, 3, 4, and 8 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Hokushu and Ikeda. IV. Rejection 5 The only disputed issue in this rejection is: Would Tsukagoshi and/or Ueyoko '856 have taught or suggest a thin-wall recess "comprised of a single arc having a center position outward from the carcass in the widthwise direction" as recited in claim 2? On this record, we answer this question in the affirmative. 10 Appeal2014-005077 Application 12/738,466 There is no dispute that "Tsukagoshi teaches that the recess is formed with a 'substantially arc shape' with curvature center outside of the tire ... and that the depth of the recess can increased to control the heat buildup and durability of the bead portion[.]" Compare Final Act. 9 with App. Br. 14-15; see also Tsukagoshi i-fi-140,44, 128, 130, 131. According to paragraph 45 of Tsukagoshi, the depth of the recess zone can be gradually decreased. Thus, Tsukagoshi's disclosure of a substantially arc shape recess with a gradual decrease in its depth is also suggestive of a recess "comprised of a single art having a center position outward from the carcass in the widthwise direction" as recited in claim 2. Moreover, as discussed supra, Ueyoko '856 teaches or would have suggested a thin-wall recess "comprised of a single arc having a center position outward from the carcass in the widthwise direction." There is no dispute that one of ordinary skill in the art would have been led to employ such recess taught by Ueyoko '856 as the recess of the pneumatic tire taught by Tsukagoshi. Compare Final Act. 9 with App. Br. 14-15. Accordingly, based on the reasons set forth in the Final Action, Answer, and above, we affirm the Examiner's rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Tsukagoshi and Ueyoko '856. ORDER In view of the foregoing, the decision of the Examiner to reject claims 1--4 and 8-11under35 U.S.C. § 103 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation