Ex Parte Yoshikawa

Patent Trial and Appeal Board

Jul 25, 2016

12528399 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/528,399 03/16/2010
23373 7590 07/27/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Yusuke Yoshikawa
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 14653 3159
EXAMINER
LY, KENDRA
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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 YUSUKE YOSHIKAWA
Appeal2014-005369
Application 12/528,399
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Independent claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief dated December 23, 2013 ("App. Br."). The limitation at issue is
italicized.
1. A pneumatic radial tire, comprising:
a carcass of a toroidal shape engagedly held between at least
one pair of bead cores;
Appeal2014-005369
Application 12/528,399
at least one layer of belt reinforcing layer constituted of a
reinforcing element extending in the tire circumferential direction, and
provided on the outer side of a crown region of the carcass and on the
inner side of a tread rubber; and
a belt formed by at least two belt layers and provided on the
outer side in the tire radial direction of the belt reinforcing layer, belt
cords of one belt layer and those of another belt layer being inclined
opposite to each other with respect to the tire equatorial plane,
wherein the width of a belt cord intersecting region defined by
the at least two belt layers is set in the range of greater than 80% and
less than or equal to 90 % of a tire width, the width of the belt
reinforcing layer is set in the range of 60 to 85 % of the tire width, and
a belt radius ratio, which is a ratio of difference (Ro - Ri) between the
radius (Ro) of the belt at the tire equatorial plane and the radius (R1) of
the belt at a belt side end position thereof measured from the tire axis
in a state where the tire is inflated at the standard inner pressure, with
respect to a belt half width, is not larger than 0.06, and
wherein an outermost end, in the tire width direction, of a
radially outermost belt layer is provided at a radial position that is not
above a radial position of the radially outermost belt layer at the tire
equatoriai piane.
App. Br. 18 (emphasis added).
The claims on appeal stand rejected as follows:
(1) claims 1and3-5 under 35 U.S.C. § 103(a) as unpatentable over Ito et
al. 1 in view of Iwata et al.; 2
(2) claims 6-8 under 35 U.S.C. § 103(a) as unpatentable over Ito in view
of Iwata and Tsuruta; 3 and
1 JP 2001-191725A, dated July 17, 2001 ("Ito"). In this Decision on Appeal, we
refer to the machine translation dated November 9, 2012, which is of record in the
instant Application.
2 US 4,702,293, issued October 27, 1987 ("Iwata").
3 US 2005/0000617 Al, published January 6, 2005 ("Tsuruta").
2
Appeal2014-005369
Application 12/528,399
(3) claim 2 under 35 U.S.C. § 103(a) as unpatentable over Ito in view of
Iwata and Tsuruta, and further in view of Colom.4
B. DISCUSSION
The Examiner finds Ito Figure 1, reproduced below, illustrates a pneumatic
tire comprising, inter alia, a belt formed by at least two belt layers, 7C-2 and 7C-1,
wherein the width of the top belt layer 7C-2 is smaller than the width of the bottom
belt layer 7C-1. The Examiner finds the width of top belt layer 7C-2 corresponds
to the width of the belt cord intersecting region recited in claim 1. Ans. 2-3. 5
~;---J!h~--
~~~~-me~--­
·-;,.--------Cllmx---
Ito Fig. 1 depicts a left half section view of a pneumatic tire.
The Examiner does not find that Ito discloses the relationship between the
width of the belt cord intersecting region (i.e., the width of top belt layer 7C-2) and
4 US 6,386,256 Bl, issued May 14, 2002 ("Colom").
5 Examiner's Answer dated January 31, 2014.
3
Appeal2014-005369
Application 12/528,399
the tire width recited in claim 1 (i.e., "the width of a belt cord intersecting region
defined by the at least two belt layers is set in the range of greater than 80% and
less than or equal to 90 % of a tire width"). Nonetheless, the Examiner concludes
that the claimed relationship recited in claim 1 would have been obvious to one of
ordinary skill in the art based on the combined teachings of Ito and Iwata.
More specifically, the Examiner finds Ito discloses that the width of belt
layer 7C-1 (BWc) is 70-90% of the maximum carcass width (CWmax) (Ito i-f 13),
and relying on Ito Figure 1, finds the width of belt layer 7C-2 (corresponding to the
width of the belt cord intersecting region recited in claim 1) is "slightly less than
70-90% of the maximum carcass width." Ans. 3 (emphasis omitted). Relying on
Ito Figure 1, the Examiner also finds the maximum carcass width (CWmax) "falls
within a range of at least 90% and less than 100% of the tire section width." Ans.
3; see also Final 3 ("The section width is equivalent to the tire width."). 6
Relying on a maximum carcass width (CWmax) of 90% of the tire width (as
calculated from Ito Figure 1 ), the Examiner finds the thickness between the carcass
and the exterior surface of the tire is 16 mm. 7 However, the Examiner finds that
"[ s ]uch value for rubber thickness ... is recognized to be large in the tire art" and
turns to Iwata. Ans. 4.
6 Final Office Action dated May 24, 2013.
7 The Examiner finds that a tire size of315/60R22.5, as disclosed in Ito, has a tire
section width equal to 315 mm. The Examiner finds:
[T]ire section width= rubber thickness g + CWmax +rubber
thickness g. When tire section width is 315 mm and CWmax is 90%
of tire section width, then 315 mm= rubber thickness g + (0.9 times
315 mm) + rubber thickness g. When this equation is solved, rubber
thickness g = 15.75 (approximately 16 mm).
Ans. 3--4.
4
Appeal2014-005369
Application 12/528,399
The Examiner finds Iwata, like Ito, discloses a heavy duty pneumatic tire.
The Examiner finds the size of Iwata's tire is 380/50Rl 7.5 and, based on the
disclosed dimensions of Iwata' s tire, finds the thickness between the carcass and
the exterior surface of the tire is 4 nun and the maximum carcass width (CW max)
is 372 mm, i.e., approximately 98% of the tire section width. Ans. 4 (citing Iwata,
col. 4, 11. 18, 34--36). The Examiner finds:
As the maximum carcass width approaches very close to the
section width of the tire (98% is expressly taught by Iwata et al.) and
the width 7C-1 is 90% of the maximum carcass width (expressly
taught by Ito et al.) with the general knowledge that the width of 7C-2
is slightly less than the width of 7C-1 (figure 1 Ito et al where Dw
may be 10 mm[8J), one of ordinary skill would readily appreciate that
there are numerous embodiments consistent with the claim
limitations.
Ans. 4 (emphasis omitted).
The Appellant argues:
Ito is completely silent regarding any specific dimension ranges of
CWmax. However, the Examiner continues to assume that CWmax
of Ito is at least 90% [of the tire section width] based on FIG. 1 of Ito.
The Examiner's reliance on FIG 1. in at least this regard is improper.
App. Br. 9 (citing MPEP § 2125 andHockerson-Halberstadt, Inc. v. Avia Group
Int'!, 222 F.3d 951 (Fed. Cir. 2000)).
"[I]t is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue." Hockerson, 222 F.3d at 956. In
this case, the Examiner does not direct us to any disclosure in Ito describing values
for tire width and CWmax or a relationship between tire width and CWmax, apart
from the relationship illustrated in Ito Figure 1. Moreover, the Examiner does not
8 See Ito i-f 14 (Dw, i.e., the difference between BWc and BWw, is 10-25 mm).
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Appeal2014-005369
Application 12/528,399
direct us to any disclosure in Ito indicating that Figure 1 is drawn to scale. Thus,
the Examiner's finding that the maximum carcass width (CWmax) of Ito's tire is at
least 90% and less than 100% of the tire section width and any calculations based
on that finding are not supported by a preponderance of the evidence. See App. Br.
10 (a "second assumption 'based on the inappropriate first assumption' simply
results in another inappropriate assumption").
The Appellant also argues that "the exemplary tire size of 380/50 RI 7.5 of
Iwata is significantly different from the exemplary tire size of Ito (315/60 R22.5)
in terms of tire width, aspect ratio and rim diameter." App. Br. 11. Therefore, the
Appellant argues there would have been no reason to combine the teachings of Ito
and Iwata. App. Br. 11.
In response, the Examiner finds:
Ito et al. discloses a tire size of 315/60R22.5 which is a heavy load
pneumatic tire with a low aspect ratio [i.e., 60]. Similarly, Iwata et al.
discloses a tire size of 3 80/ SOR 17.4 which is a heavy load pneumatic
duty tire with a low aspect ratio [i.e., 50]. One of ordinary skill in the
tire art would expect similar dimensions to the sidewall because of the
similarities to the disclosed tires.
Ans. 11 (emphasis added). The Examiner's finding, however, appears to be in
direct contrast to the Examiner's conclusion in the rejection on appeal that the
thickness between the carcass and the exterior surface of Ito's tire (i.e., 16 mm) is
4 times the thickness between the carcass and the exterior surface of Iwata' s tire
(i.e., 4 mm). See Ans. 4. That is, the Examiner appears to assume, on the one
hand, that the tires disclosed in Ito and Iwata have similar proportional dimensions
and yet, on the other hand, seeks to substitute the thickness between the carcass
and the exterior surface of Iwata's tire into Ito's tire.
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Appeal2014-005369
Application 12/528,399
Significantly, the Examiner has not addressed the Appellant's argument that
there would have been no reason to combine the teachings of Ito and Iwata because
the size of Ito's tire is "significantly different" from the size of Iwata's tire "in
terms of tire width, aspect ratio and rim diameter." See App. Br. 11. That is, the
Examiner has not explained, in any detail, why one of ordinary skill in the art
would have interchanged the dimensions of the tires disclosed in Ito and Iwata
despite their different tire widths, different aspect ratios, and different rim
diameters. The mere fact that Ito and Iwata disclose "heavy duty" pneumatic tires
does not suffice.
Absent the Appellant's disclosure, it is not readily apparent on this record
why one of ordinary skill in the art would have modified the thickness between the
carcass and the exterior surface of Ito's tire as disclosed in Iwata, thereby arriving
at the claimed relationship between the width of the belt cord intersecting region
(i.e., the width of top belt layer 7C-2) and the tire width. For this reason, the
§ 103(a) rejection of claims 1 and 3-5 is not sustained.
The Examiner does not rely on Tsuruta or Colom to cure the deficiencies in
Ito discussed above. Therefore, the§ 103(a) rejections of claims 2 and 6-8 are not
sustained.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
7