Ex Parte Sandstrom

Patent Trial and Appeal Board

Jul 27, 2016

13744671 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/744,671 01/18/2013 Paul Harry Sandstrom
27280 7590 07/29/2016
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.
DN2013-001 1476
EXAMINER
ROGERS, MARTIN K
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
07/29/2016 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):
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 PAUL HARRY SANDSTROM
Appeal2015-000890
Application 13/744,671
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY,
and MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals from the Examiner's final rejection of claims 1
and 5-7. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 Appellant identifies The Goodyear Tire & Rubber Company as the Real
Party in Interest. App. Br. 3.
Appeal2015-000890
Application 13/744,671
The Claimed Invention
Appellant's disclosure relates to a system for constructing a
pneumatic tire which includes a tread component having two opposite tread
splice ends, a water based adhesive applied to the tread splice ends for
securing the tread splice ends to each other; and a heating means applied to
the tread splice ends and water based adhesive for reducing drying duration
of the water based adhesive. Abstract; Spec. 8. Claim 1 is representative of
the claims on appeal and is reproduced below from the Claims Appendix to
the Appeal Brief (App. Br. 8) (emphasis added):
1. A system for constructing a pneumatic tire comprising:
a tread component having two opposite tread splice ends;
a water based adhesive applied to the tread splice ends for
securing the tread splice ends to each other, the water based
adhesive including about 0.02 to 0.6 weight percent pH adjusters
selected from the group of potassium hydroxide, aqueous
ammonia, and mixtures thereof, the water based adhesive further
including elastomers from the group consisting of natural rubber,
styrene butadiene rubber, polybutadiene rubber, and mixtures
thereof, the water based adhesive compnsmg 35 percent to 50
percent total weight of elastomer; and
a heater applying heat to the tread splice ends and water
based adhesive for reducing drying duration of the water based
adhesive, the heat being applied to the cured tread splice ends
prior to application of the water based adhesive.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Barten et al., US 5,130,173 July 14, 1992
(hereinafter "Barten")
Murray US 5,395,879 Mar. 7, 1995
(hereinafter "Murray '879")
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Application 13/744,671
Murray US 5,652,298
(hereinafter "Murray '298")
Hargis et al., US 5,741,393
(hereinafter "Hargis")
Johnston et al., US 6,270,602B1
(hereinafter "Johnston")
July 29, 1997
Apr. 21, 1998
Aug. 7, 2001
Brown et al., US 2004/0170763 Al Sep. 2, 2004
(hereinafter "Brown")
Basile et al., US 8,367,165 B2 Feb. 5,2013
(hereinafter "Basile '165")
Basile WO 2011/114219 Al Sep.22,2011
(hereinafter "Basile '219")
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 5-7 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
2. Claims 1 and 5-7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Basile '219 in view of Murray '879, Johnston, Barten,
Hargis, and Brown.
3. Claims 1 and 5-7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Murray '298 in view of Basile '165.
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Application 13/744,671
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in both the Answer2 and Final Office
Action, 3 which we adopt as our own. Nevertheless, we highlight and
address specific findings and arguments for emphasis as follows.
Rejection 1
Appellant argues claims 1 and 5-7 as a group. We, therefore, select
claim 1 as representative of this group, and the remaining claims stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejects claim 1 for indefiniteness under 35 U.S.C.
§ 112, second paragraph. 4 Final Act. 2. In particular, the Examiner finds
that the phrase "the cured tread splice ends" lacks antecedent basis because
the presence of a "cured" tread has not been established. Id. at 2, 3. The
Examiner further finds that the "a heater applying heat ... prior to the
application of the water based adhesive" language of the claim is unclear.
Id. at 3.
In response to the Examiner's rejection, Appellant states that "Claim
1, as recited above, clearly recited cured tread splice ends, to which the
Examiner correctly rejected as lacking antecedent basis" and argues that the
2 Answer ("Ans.") refers to the Answer to the Appeal Brief dated August 15,
2014.
3 Final Office Action ("Final Act.") refers to the Final Office Action dated
May 21, 2014.
4 The Examiner also rejects claims 5-7 on the same ground "because they
depend from claim 1." Final Act. 3.
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Application 13/744,671
"original claim 4 recited a cured tread component and thus cured tread splice
ends." App. Br. 4, 5 (emphasis added).
Section 112, second paragraph, of 35 U.S.C. requires the applicant to
distinctly claim the subject matter which the applicant regards as his
invention. A claim fails to meet the statutory requirement if the language in
the claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention. In re Packard, 751 F.3d
1307, 1311 (Fed. Cir. 2014).
We are unpersuaded by Appellant's argument and agree with the
Examiner's finding that claim 1 is indefinite for the reasons stated at pages 2
and 3 of the Final Office Action. As the Examiner points out (Ans. 2, 3), the
Appellant admits at page 4 of the Appeal Brief that "the Examiner correctly
rejected [claim 1] as lacking antecedent basis."
Moreover, we do not find Appellant's argument regarding "original
claim 4" persuasive because claim 4 has been previously withdrawn from
prosecution and thus, is not one of the claims pending in this Appeal. App.
Br. 8 (Claims App'x). Nonetheless, even if original claim 4 had not been
withdrawn, it still would not be sufficient to overcome the Examiner's
indefiniteness rejection because it recites that "the tread component is
uncured." Id. at 8 (emphasis added). Contrary to Appellant's argument
(App. Br. 5), original claim 4 does not recite "a cured tread component" and
thus, would not appear to provide an antecedent basis for claim 1 's "cured
tread splice ends" limitation, establish the presence of a "cured" tread, or
make the "a heater applying heat ... prior to the application of the water
based adhesive" language of claim 1 any less unclear. Packard, 7 51 F .3d at
1311.
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Appeal2015-000890
Application 13/744,671
In further response to this rejection, Appellant contends that
"Applicant's Amendment After Final Rejection of May 29, 2014 should
have been entered" and that the Examiner's refusal to enter the proposed
amendment to claim 1 was "arbitrary" and "contrary to MPEP § 714.13."
App. Br. 5.
Appellant's contentions, however, in this regard are petitionable-not
appealable-matters, and are, therefore not within the jurisdiction of the
Board. See MPEP § 1201, Rev. 07.2015, 9th ed., (Nov. 2015) ("The Board
will not ordinarily hear a question that should be decided by the Director on
petition .... "). As such, we do not address these matters in this Appeal.
Accordingly, we affirm the Examiner's rejection of claims 1 and 5-7
under 35 U.S.C. § 112, second paragraph for indefiniteness.
Rejections 2 and 3
With respect to Rejection 2, the Examiner finds that the combination
of Basile '219, Murray '879, Johnston, Barten, Hargis, and Brown suggests
all of the limitations of claims 1 and 5-7 and would have rendered the
claims obvious. Final Act. 3---6. With respect to Rejection 3, the Examiner
finds that the combination of Murray '298 and Basile '165 suggests all of the
limitations of the claims and would have rendered the claims obvious. Id. at
6-9.
Appellant does not present separate arguments in response to either of
these rejections. Instead, in response to both rejections, Appellant argues
that: ( 1) "the result of the [Examiner's] proposed modifications cannot be
predicted, and is therefore unpredictable and nonobvious under KSR"; (2)
"[t]he Examiner has provided no basis [for] the predictability of the result of
the modifications to the systems of Murray '298 or Basile '219"; and that
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Application 13/744,671
(3) the Examiner's modifications to the prior art are the "definition of
impermissible hindsight reconstruction." App. Br. 6.
We do not find these arguments persuasive because Appellant fails to
provide an adequate technical explanation to support them. Appellant's
conclusory assertions regarding the "predictability" of the prior art and that
the Examiner's findings are based "impermissible hindsight" (App. Br. 6),
without more, are insufficient to rebut or otherwise establish reversible error
in the Examiner's findings and conclusions. In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984).
Moreover, based on the record before us with respect to both
Rejections 2 and 3, the Examiner's findings regarding the teachings of the
prior art and stated rationales for why one of ordinary skill would have
combined the teachings of the references to arrive at Appellant's claimed
invention, as stated in the Final Office Action at pages 3 through 6 and pages
6 through 9, respectively, are each supported by a preponderance of the
evidence and based upon sound technical reasoning. In re Kahn, 441 F .3d
977, 988 (Fed. Cir. 2006) (requiring that the Examiner's rejections based on
obviousness be supported by "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness").
Appellant's apparent disagreement with the Examiner's reasons for
combining the references, without more, is insufficient to establish
reversible error. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)
(explaining that any need or problem known in the art can provide a reason
for combining the elements in the manner claimed); cf also SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
("[M]ere statements of disagreement ... as to the existence of factual
disputes do not amount to a developed argument.").
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Application 13/744,671
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the reasons discussed above, we affirm Rejections 2
and 3.
DECISION/ORDER
The Examiner's rejections of claims 1 and 5-7 are affirmed.
It is ordered that the Examiner's decision 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).
AFFIRMED
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