Continental Reifen Deutschland GmbH

Patent Trials and Appeals Board

Apr 2, 2020

14640888 - (D) (P.T.A.B. Apr. 2, 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.
14/640,888 03/06/2015 Daniel Baeuning 2012P70125WOUS 8580
137541 7590 04/02/2020
Continental
Intellectual Property
Jaedekamp, 30
Hannover, 30419
GERMANY
EXAMINER
LY, KENDRA
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
david.cate@continental.com
greg.adams@continental-corporation.com
hannover.patente@conti.de
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL BAEUNING and ANDREAS DOMSCHEIT
Appeal 2019-003744
Application 14/640,888
Technology Center 1700
Before BEVERLY A. FRANKLIN, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
RANGE, 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, 3–5, and 7–11. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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 Continental
Reifen Deutschland GmbH. Appeal Br. 2.
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Application 14/640,888

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a self-sealing
pneumatic vehicle tire. Spec. 1:11–14. Appellant seeks to save on costs of
tire production without negatively affecting tire properties. Id. at 2:8–15.
Appellant seeks to achieve such savings by omitting an inner liner arranged
radially above a sealant layer. Id. at 2:16–18. Claim 1 is the only
independent claim on appeal and is illustrative:
1. A self-sealing pneumatic vehicle tire defining a
tire circumference, the self-sealing pneumatic vehicle tire
comprising:
a belt assembly having a first width;
a tread arranged radially above said belt assembly;
an airtight inner liner arranged radially inwardly;
a sealant layer applied radially internally after the
pneumatic vehicle tire has been vulcanized;
wherein the sealant layer defines an area radially above
said sealant layer around said tire circumference,
wherein the inner liner is configured such that the area
radially above said sealant layer is devoid of said inner liner,
wherein the inner liner comprises edges at radially
outward-most points and that are axially separated by the
sealant layer;
wherein the sealant layer comprises two axial edges each
of which overlap with one of the edges of said inner liner;
wherein the overlap is the only area where said sealant
layer and said inner liner overlap in the self-sealing pneumatic
vehicle tire, and

2 In this Decision, we refer to the Final Office Action dated July 16, 2018
(“Final Act.”), the Appeal Brief filed January 10, 2019 (“Appeal Br.”), the
Examiner’s Answer dated February 19, 2019 (“Ans.”), and the Reply Brief
filed April 11, 2019 (“Reply Br.”).
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Application 14/640,888

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wherein the sealant layer has an axial width that is
approximately the first width of the belt assembly.
Appeal Br. 21 (Claims App.).

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Egan US 4,359,078 Nov. 16, 1982
Yukawa US 2009/0277551 A1 Nov. 12, 2009
Nagumo et al.
(“Nagumo”)
JPH0490902 (A) Mar. 24, 1992

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 3–5, and 9–11 under 35 U.S.C. § 103(a) as obvious over
Egan in view of Nagumo. Ans. 3.
B. Claims 7 and 8 under 35 U.S.C. § 103(a) as obvious over Egan in
view of Nagumo further in view of Yukawa. Id. at 6.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
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evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant does not separately argue any dependent claims. See,
e.g., Appeal Br. 18–19. We therefore limit our discussion to claim 1.
Consistent with 37 C.F.R. § 41.37(c)(1)(iv) (2013), all remaining claims
stand or fall with claim 1.
The Examiner finds that Egan teaches a self-sealing pneumatic
vehicle tire with a tread, barrier layer, and sealant layer. Ans. 3. The
Examiner finds that Egan does not disclose “an inner liner comprising edges
at radially outward-most points that are axially separated by the sealant
layer.” Id. at 4. In other words, the Examiner acknowledges that Egan differs
from claim 1 in that Egan’s inner liner extends all the way across the tire
rather than not being above the central portion of the sealant layer. The
Examiner finds, however, that Nagumo (which the Examiner refers to as JP
’902) teaches a tire comprising an inner liner with two parts (i.e., not being
within the central portion of the tire) to obtain a lightweight tire. Id. The
Examiner determines that it would have been obvious to provide Egan’s
sealant layer with Nagumo’s two-part inner liner to “obtain the known,
predictable, and expected benefits of air barrier properties and tire weight
reduction.” Id. at 7; see also id. at 4–5 (explaining reason to combine
references’ teachings).
Appellant argues that the references do not teach (1) a sealant
positioned only underneath the belt assembly and tread region of the tire, (2)
an inner liner that overlaps only at the edges of the inner layer, (3) a sealant
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layer that has approximately the same width as the belt assembly, and (4) a
sealant layer that functions as both a sealant that protects against punctures
and doubles as an air barrier layer. Appeal Br. 13. We observe that claim 1
does not recite aspects (1) and (4). Id. at 21 (Claims App.). With respect to
aspects (2) and (3), Appellant argues that Egan’s barrier layer extends across
the entire tire and argues that Nagumo provides no sealant layer at all.
Appeal Br. 13–14. This argument is unpersuasive because it addresses the
references individually rather than identifying any error in the Examiner’s
findings or the Examiner’s stated rationale to combine the references’
teachings. The Examiner provides a reasoned explanation as to why
combining the references’ teachings would result in the claimed overlap and
width (Ans. 4–5), and Appellant does not persuasively refute the Examiner’s
position. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
In the Reply Brief, Appellant argues that the claims’ recited overlap is
different than that of the two references combined because “[t]he overlap in
Appellant’s claims is between the sealant and the inner liners at the shoulder
regions of the tire” and “[i]n contrast, the overlap of Nagumo et al. is
between the sealant and the belt layer.” Reply Br. 5. Appellant’s argument is
unpersuasive because it is not supported by the evidence. As Appellant
acknowledges, Nagumo does not have a sealant. Appeal Br. 14. Moreover,
the argument fails to persuasively contrast claim 1’s recitations with the
Examiner’s proposed combination.
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Appellant further argues that the Examiner’s rejection is a hindsight
reconstruction that improperly mixes and matches elements of the cited art.
Appeal Br. 15–16; see also Reply Br. 4–5. The Examiner, however, finds
that Egan’s teachings regarding its sealant are not limited to any particular
tire configuration and determines that a person of skill in the art would have
provided Egan’s tire with Nagumo’s two part liner to maintain tire pressure
and reduce weight. Ans. 6–7. The Examiner’s position is supported by a
preponderance of the evidence. See, e.g., Egan 1:11–14 (“This invention
particularly relates to a pneumatic tire of the tubeless type having a puncture
sealant feature.”), 6:51–56 (explaining that changes can be made to Egan’s
embodiments without departing from the spirit or scope of the invention);
Nagumo Abstract (stating goal “[t]o obtain a lightweight tyre without
lowering the air pressure”). Appellant does not provide persuasive argument
or cite contrary evidence to rebut the Examiner’s stated reason to combine.
Appellant also argues that Egan and Nagumo are non-analogous art
because Nagumo is directed to a lightweight tire. Appeal Br. 16; see also
Reply Br. 2–3. We disagree. To rely upon a reference as a basis for an
obviousness rejection of Appellant’s claims, the reference must either (1) be
in the field of the inventor’s endeavor or (2) be reasonably pertinent to the
particular problem with which the inventor was concerned. In re Kahn, 441
F.3d 977, 986‒87 (Fed. Cir. 2006). Here, both Egan and Nagumo are
analogous art because they concern the field of pneumatic tires. Egan 1:11–
14; Nagumo Abstract (indicating “excellent in air impermeability” and
thereby suggesting the tire is pneumatic). Appellant does not persuasively
argue why the pneumatic tires of Egan or Nagumo are in a different field
than Appellant’s pneumatic tire. Spec. Title (“PNEUMATIC VEHICLE
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TIRE”). Appellant also does not explain why Egan’s teachings are
inapplicable to lightweight tires, and we do not discern such a teaching in
Egan.
Finally, Appellant argues that a person of skill in the art would not
perceive a sealant that could provide a dual function (as both a sealant in the
event of puncture and an airtight layer). Appeal Br. 17–18. Claim 1,
however, does not require that the sealant form an airtight layer. As we
explain above, the Examiner provided a reason why a person having skill in
the art would have combined the teachings of Egan and Nagumo to reach
claim 1’s recited structure, and Appellant does not persuasively identify
error in the Examiner’s stated reason to combine. As the Examiner points
out (Ans. 7), “the fact that [Appellant] has recognized another advantage
which would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the differences would otherwise
be obvious.” Ex Parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Indeed, the
Supreme Court, in its seminal KSR decision, held that the Court of Appeals
erred by “fail[ing] to recognize that the problem motivating the patentee may
be only one of many addressed by the patent’s subject matter.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, “[u]nder the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” Id. (emphasis added); see also Cross
Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323
(Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical
problem addressed in a prior art reference to be motivated to apply its
teachings.”).
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Because Appellant’s arguments do not identify reversible error, we
sustain the Examiner’s rejections.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 9–11 103(a) Egan, Nagumo 1, 3–5, 9–11
7, 8 103(a) Egan, Nagumo,
Yukawa
7, 8
Overall
Outcome
1, 3–5, 7–11
TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED