Ex Parte Crowe et al

Patent Trial and Appeal Board

Dec 17, 2018

14338096 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/338,096 07/22/2014
77432 7590 12/19/2018
HAHN LOESER & PARKS, LLP - MICHELIN
200 Public Square, Suite 2800
Cleveland, OH 44114
FIRST NAMED INVENTOR
David Allen Crowe
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.
PS0-0268-US-DIVl 8087
EXAMINER
WILSON, MICHAEL H
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
PA TENTS@HAHNLA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ALLEN CROWE,
WILLIAM EDWARD CHEEK, JR., ROBERT YOUNG,
and STEPHEN MANUEL
Appeal2018-000005
Application 14/338,096
Technology Center 1700
Before GEORGE C. BEST, MONTE T. SQUIRE, and LILAN REN,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-12 and 14--19 of Application
14/338,096 under 35 U.S.C. § 103(a) as obvious. Final Act. 5-16 (October
20, 2016). The Examiner also rejected claims 10 and 15 under 35 U.S.C.
§ 112, ,r 1, as failing to comply with the written description requirement.
Id. at 2-3. The Examiner further rejected claims 3 and 15 under 35 U.S.C.
§ 112, ,r 2, as indefinite. Id. at 3--4. Appellants 1 seek reversal of these
1 Michelin Recherche et Technique S .A. and Compagnie Generale des
Establissements Michelin are identified as the real parties in interest.
Appeal Br. 3.
Appeal2018-000005
Application 14/338,096
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm and the rejection of claims
1-12 and 14--19 as obvious. Because our affirmance relies, in part, on a new
translation of one reference, we designate our affirmance of the obviousness
rejection as constituting a new ground of rejection under 37 C.F.R.
§ 4I.50(b).
BACKGROUND
The '096 Application describes methods and apparatus for applying
cushion gum to a tire casing. Spec. ,r 1.2. In tire retreading processes, a
layer of cushion gum is applied to the surface of the tire casing and, after
curing, adheres the tread to the casing. Id. ,r 2. According to the
Specification, it is important to apply a uniform layer of cushion gum. Id.
,r 3. If the cushion gum is applied inconsistently, the treads on the retreaded
tire may fail prematurely. Id.
Claim 1 is representative of the '096 Application's claims and is
reproduced below from the Claims Appendix of the Appeal Brief:
1. A cushion gum applicator, comprising:
a cushion gum extruder having an extruder head;
a tire casing mount for mounting and rotating a tire
casmg;
a controller comprising a processor and a memory
storage device having stored instructions readable by the
processor, the stored instructions including:
selecting instructions for selecting one of a
plurality of recipes for applying cushion gum based on
one of a size, model and shape of the tire casing;
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pressurizing instructions for pressurizing the tire
casing to a predetermined pressure based on the selected
recipe;
crushing instructions for crushing the tire casing
with the extruder head a predetermined amount of the tire
casing radius at the predetermined pressure, the
predetermined amount based on the selected recipe;
extruding instructions for extruding the cushion
gum from the extruder head onto the tire casing and
about a tire casing circuniference to a predetermined
extrusion stop distance less than 360° about the tire
casing as the tire casing rotates and as the tire casing is
crushed according to the crushing instructions, the
predetermined extrusion stop distance being based upon
the selected recipe; and
smearing instructions for smearing a portion of the
cushion gum remaining at an extruder head-tire casing
interface at least about the remainder of the tire casing
circumference by a predetermined smear distance based
upon the selected recipe, the step of smearing being
performed after the step of extruding about the tire casing
circumference to the predetermined stop distance.
Appeal Br. 27 (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 10 and 15 are rejected under 35 U.S.C. § 112, ,r 1, as
failing to comply with the written description requirement. Final
Act. 2-3.
2. Claims 3 and 15 are rejected under 35 U.S.C. § 112, ,r 2, as
indefinite. Final Act. 3--4.
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3. Claims 1-3,2 7, 8, 14, and 17 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination of Meyer, 3
Colantonio,4 Stieff, 5 Mory, 6 Bakke,7 Woock, 8 Caretta '871, 9
Nowak, 10 Landes, 11 Gonzaga, 12 Riva, 13 and Aoki. 14 Final Act. 5-
10.
4. Claims 4---6 are rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Meyer, Colantonio, Stieff, Bakke, Woock,
2 The Examiner omitted claim 2 from the summary statement of this
rejection, see Final Act. 5. Claim 2, however, is included in the detailed
statement of the grounds of rejection. See id. at 8-9.
3 US 5,458,727, issued October 17, 1995.
4 US 6,491,076 Bl, issued December 10, 2002.
5 US 2008/0119978 Al, published May 22, 2008.
6 US 7,040,371 B2, issued May 9, 2006.
7 US 2,992,675, issued July 18, 1961.
8 US 2,009,599, issued July 30, 1935.
9 US 2004/0194871 Al, published October 7, 2004.
10 US 2,976,910, issued March 28, 1961.
11 US 2006/0293149 Al, published December 28, 2006.
12 US 2003/0084977 Al, published May 8, 2003.
13 US 2002/0157750 Al, published October 31, 2002.
14 JP-07-205333, published August 8, 1995. The Examiner relied upon the
machine translation that was entered into the record ofthe'096 Application
on June 1, 2016. We, however, rely upon a new, non-machine translation
that we obtained. We enter this translation into the record and provide a
copy to Appellants with this opinion.
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Caretta '871, Nowak, Landes, Gonzaga, Riva, Aoki, and Caretta
'449. 15 Final Act. 10-11.
5. Claims 9 and 10 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Meyer, Colantonio, Stieff,
Mory, Bakke, Caretta '871, Nowak, Landes, Gonzaga, Riva, Aoki,
and Gerloff. 16 Final Act. 11-12.
6. Claims 11, 12, and 16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Meyer, Colantonio, Stieff,
Mory, Bakke, Woock, Caretta '871, Nowak, Landes, Gonzaga,
Riva, Aoki, Gerloff, Chapman, 17 and Clayton. 18 Final Act. 12-14.
7. Claim 15 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Meyer, Colantonio, Stieff, Mory, Bakke,
Woock, Caretta '871, Nowak, Landes, Gonzaga, Riva, Aoki,
Gerloff, and Chapman. Final Act. 14.
8. Claims 18 and 19 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Meyer, Colantonio, Stieff,
Mory, Bakke, Woock, Caretta '871, Nowak, Landes, Gonzaga,
Riva, Aoki, and Chauvin. 19 Final Act. 14--16.
15 US 3,819,449, issued June 25, 1974.
16 US 5,725,703, issued March 10, 1998.
17 US 2005/0279443 Al, published December 22, 2005.
18 US 4,957,574, issued September 18, 1990.
19 US 6,982,050 B2, issued January 3, 2006.
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DISCUSSION
Rejection 1. The Examiner rejected claims 10 and 15 as failing to
comply with the written description requirement. Final Act. 2-3.
Appellants have decided not to contest the basis for the rejection of claim 15
under 35 U.S.C. § 112. Reply Br. 13. Accordingly, we summarily affirm
the rejection of claim 15 and limit our analysis to the rejection of claim 10.
Claim 10 is reproduced below:
10. The cushion gum applicator of claim 9, where the
calculating parameters include at least one of a volume of
cushion gum extrusion, a rate of rotation of the tire casing, and
a rate of extrusion of the cushion gum.
Appeal Br. 29.
The Examiner found that the Specification did not support the full
scope of claim 10. Final Act. 3. "For example, the written description
appears to describe determining the volume and rate of extrusion gum
together, but the examiner cannot find support in the application as
originally filed for the 'at least one' phrasing of the claim." Id.
Appellants argue that, in paragraphs 29 and 30 of the Specification,
the volume of cushion gum, rate of rotation, and rate of
extrusion are discussed exclusive of one another. They are also
collectively discussed as being dependent upon the measured
circumference [of the pressurized tire casing]. Since they are
discussed exclusive of one another, the application support[ s]
that the measuring parameters may be established on one of
these parameters. Also, since the[y] [are] collectively discussed
as dependent upon the measuring circumference, the application
also supports that the measure[ d] parameters may be established
on a combination of these parameters. For these reasons, the
"at least one" phrasing is fully supported by the disclosure ....
Appeal Br. 25.
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We begin by considering the proper interpretation of claim 10. Claim
10 depends from claim 9. Claim 9 requires, inter alia, that the stored
instructions for the processor include the step of "calculating parameters for
applying the cushion gum, the parameters being based on the measured
circumference." Id. at 29. Claim 10 further requires that the "calculat[ed]
parameters[20J include at least one of a volume of cushion gum extrusion, a
rate of rotation of the tire casing, and a rate of extrusion of the cushion
gum." Id. Claim 10, therefore, requires that the apparatus of claim 1 have a
memory device storing instructions readable by the processor that include
the step of calculating at least one of a volume of cushion gum extrusion, a
rate of rotation of the tire casing, and a rate of extrusion of the cushion gum
based upon the measured circumference of the tire casing.
Appellants point to paragraphs 29 and 30 of the Specification as
supporting this claim limitation. In particular, the Specification states that
"[ t ]he volume and rate of cushion gum [extrusion] is based on the measured
circumference." Spec. ,r 29 (emphasis added). The Specification further
states that "as the volume and rate of cushion gum extrusion, and/or rotation
of the tire casing 38 is dependent upon the measured circumference of the
particular tire casing 38, the accuracy and consistency of the cushion gum
layer is increased." Id. ,r 30. Thus, the Specification describes the
determination of the volume and rate of cushion gum extrusion as being
determined together from the measured tire casing circumference. See
20 Read in conjunction with claims 1 and 9, it is clear to us that claim 10
should refer to the "calculated" parameters. If prosecution of the '096
Application continues, we suggest correction of claim 10.
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id. ,r 29. The Specification further states that the tire casing's rotation rate
also is based upon the tire casing's circumference. Id. ,r 30.
Thus, the Specification does not provide any literal description of
calculating either the volume of cushion gum to be extruded or the rate of
cushion gum extrusion independently. The full scope of claim 10, therefore,
is not literally described in the '096 Application's Specification.
This, however, is not the test for satisfying the written description
requirement. Just as appearance of a claim in the specification in ipsis
verbis does not guarantee that the written description requirement is
satisfied, see, e.g., Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968
(Fed. Cir. 2002), a failure to meet that standard does not require a finding
that a claim does not comply with the written description requirement, In re
Edwards, 568 F.2d 1349, 1351-52 (Fed. Cir. 1987). All that is required is
that the specification demonstrates, with reasonable clarity, to a person of
ordinary skill in the art that the inventor was in possession of the invention.
Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122
(Fed. Cir. 2008).
In this case, we agree with Appellants that a person of ordinary skill in
the art reading the '096 Application's Specification would have understood
that the inventors were in possession of the full subject matter of claim 10.
Although the Specification does not literally describe determining either the
volume of cushion gel extruded or the rate of cushion gel extrusion from the
measured tire casing circumference, a person of ordinary skill in the art
would have inferred that the inventors possessed the idea of calculating
either of these parameters without necessarily determining the other. Such
calculations would have been apparent to a person of ordinary skill in the art
at the time of the invention.
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For the reasons set forth above, we determine that Appellants have
demonstrated reversible error in the Examiner's finding that the broadest
reasonable interpretation of claim 10 lacks written description support. We,
therefore, reverse the rejection of claim 10 under 35 U.S.C. § 112, ,r 1.
Rejection 2. The Examiner rejected claims 3 and 15 under 35 U.S.C.
§ 112, ,r 2, as indefinite. Final Act. 3--4. As discussed above, Appellants
have decided not to contest the basis for the rejection of claim 15 under 35
U.S.C. § 112. Reply Br. 13. Furthermore, Appellants do not address the
rejection of claim 3 as indefinite in their Appeal Brief.
In view of the foregoing, we summarily affirm the rejection of claims
3 and 15 as indefinite.
Rejections 3-8. The Examiner rejected claims 1-12 and 14--19 as
obvious under 35 U.S.C. § 103(a). Final Act. 4--16.
Appellants argue for reversal of the rejection of claims 1-6, 9-12, and
14--19 as a group. Appeal Br. 9-21. Appellants present separate arguments
for the patentability of claims 7 and 8. Id. at 22-24.
Claim 1. Appellants argue that the rejection of claim 1 should be
reversed because the Examiner has not established a prima facie case of
obviousness. Id. at 11-12. In particular, Appellants argue that the
combination of references relied upon by the Examiner does not describe or
suggest:
( 1) extruding instructions that halt extrusion after less than a full
rotation of the tire casing,
(2) smearing instructions for smearing a portion of the cushion gum
remaining at the extruder head-tire casing interface about the remainder of
the tire casing circumference,
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(3) a combination of pressurizing instructions and crushing
instructions both corresponding to a predetermined pressure of the tire
casing, and
( 4) selecting a cushion gum recipe corresponding to at least one of
a size, model, or shape of the tire casing wherein the recipe takes into
account a combination of pressurizing instructions, crushing instructions,
extruding instructions and smearing instructions. Id.
We address each of these arguments below.
First, Appellants argue that the cited prior art does not describe or
suggest extruding instructions that halt extrusion after less than a full
rotation of the tire casing. The Examiner found that Meyer describes halting
extrusion after less than a full rotation of the tire casing:
The "substantially" language in Column 12, lines 17-22
of Meyer teaches or suggests using the electronic controls
(Meyer Column 10, lines 35-45) for terminating the extrusion
before a full rotation of the casing and thereafter continuing the
rotation of the casing to spread the remaining rolling bank into
the joint area. The examiner wishes to note that the size of the
rolling bank is disclosed by Meyer as variable (Meyer Column
11, lines 29).
Final Act. 8.
Appellants argue persuasively that the Examiner's reliance on Meyer
is misplaced. See Appeal Br. 13-15. The portion of Meyer relied upon by
the Examiner describes reducing the extruder speed to zero over the time
between when the tire casing has completed "substantially a full rotation"
and when the extruder head reaches of the location where the cushion gum
layer has first built up to its full thickness. Id. at 13-14 (citing Meyer
12: 17-20).
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In the alternative, the Examiner relied upon Aoki:
To the extent that [Meyer's] "substantially" language does not
convey or at least suggest a stop position short of a full 360°
rotation, this would also be obvious to one of ordinary skill in
the art because it is known for extruding a rubber material onto
a rotating support (Aoki [0013]) and/or recognized as low cost
or easy to employ (Aoki [0018]).
Final Act. 8 (citing Aoki ,r,r 13, 18).
The portion of Aoki cited by the Examiner is a description of Aoki's
Figure 6 which, for ease of reference, we reproduce below.
T: St0p p0siti0n
Aoki' s Figure 6 is a front cross-sectional view of an apparatus
implementing Aoki' s annular member molding method.
Because the machine translation of Aoki relied upon by the Examiner
was ambiguous, we obtained a new, non-machine translation of the
reference. According to this translation, Aoki describes Figure 6 as follows:
When the lower mold 19 has rotated about 1 circle and
the starting end of the extrusion material G filling up the ring-
shaped concave groove 23 approaches the nozzle 36 of the
extruder 31 and reaches a stop position T as shown in Figure 6,
the control means 41 outputs a control signal to the drive part
33 of the extruder 31 based on the output from the encoder 20.
As a result, the drive part 33 of the extruder 31 stops, and the
rotation of the screw 34 stop as shown in Figure 4(a). Since the
internal pressure of the extruder 31 is fairly high (about 25
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kgflcm2) during extrusion, the extrusion material G is extruded
sluggishly from the extrusion port 35 of the extruder 31 into the
ring-shaped concave groove 23 under the residual pressure
remaining in the extruder 31 even after the screw 34 stops
rotating. Since the lower mold 19 is driven by the motor 17 to
continue rotating at that time, the extrusion material G fills up
the rest of the ring-shaped concave groove 23.
Aoki ,r 13 ( emphasis added).
As the above-quoted passage makes clear, Aoki describes an
apparatus in which extrusion of material is stopped at a predetermined stop
distance after less than a complete rotation. We, therefore, are not persuaded
to reverse the rejection of claim 1 on the basis of Appellants' first argument.
Second, Appellants argue that the combination of references does not
describe or suggest smearing instructions for smearing a portion of the
cushion gum remaining at an extruder head-tire casing interface for at least
the remainder of the tire casing circumference. Appeal Br. 12. This
argument, however, is based upon Appellants' assumption that the prior art
does not teach stopping extrusion after less than a complete rotation of the
tire casing. Id. ("Since the cited references teach filling extrusions in a full
rotation. or at least three hundred and sixty degrees, the references cannot
and do not teach smearing a portion of the cushion gum remaining at an
extruder head the remainder of the tire casing circuniference." ( original
emphasis)).
As discussed above, Aoki describes a method in which extrusion of
material is stopped at a predetermined stop distance after less than a
complete rotation. We, therefore, are not persuaded to reverse the rejection
of claim 1 on the basis of this argument.
Third, Appellants argue that the combination of references relied upon
by the Examiner does not describe or suggest the combination of
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pressurizing instructions and crushing instructions both corresponding to a
predetermined pressure of a tire casing. Appeal Br. 12, 18-20.
The Examiner found that
a skilled artisan would understand that the mounting the casing
on its support (Meyer Column 9, line 64) renders obvious a step
of pressurizing the tire casing especially to provide the
necessary counterforce against the impinging extruding head (if
necessary, see the following as evidence that a skilled artisan
would understand that tires [are] mounted in a pressurized state:
Mori Column 7, line 22; Bakke Column 5, lines 23-25 and 71-
74).
Performing the crushing of Meyers [sic] against a
pressurized casing would address the requirement of crushing at
the predetermined pressure. Additionally or alternatively,
Woock discloses that a skilled artisan would find obvious to
crush the tire under pressure according to the specific tire being
retreaded because this is well-known in the art (Woock Page 2,
lines 44-47; Page 3, lines 15 and 20-23) and/or because this
achieves equal force or desired application width for the tire
(Woock Page 1, lines 15-19; Page 3, lines 34-44).
Final Act. 5-6.
Appellants argue that "no reference or combination of references
teach crushing a tire casing according to a recipe[21 J or crushing a tire casing
at a particular casing pressure as provided by the same selected recipe."
Appeal Br. 18. In particular, Appellants argue that "no reference ties
crushing to a particular tire casing pressure based upon a particularly-
selected recipe." Id.
21 As the Examiner points out, "the word 'recipe' in the present application
and claims is not referring to a chemical composition, but rather a set of
control parameters enacted by a controller." Answer 10.
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This argument is not persuasive because, as the Examiner finds, Mory
shows that a recipe is an obvious format for using a single controller to
control retreading of different tires. Answer 10 (citing Mory 18:64---65); see
generally Answer 10-12. Furthermore, Woock describes crushing a
pressurized tire to a predetermined extent according to the specific tire being
retreaded. Answer 10 (citing Woock, 2, left col., 11. 44--46; 3, left col., 11.
20-22).
We have considered Appellants' other arguments on this point and
find them unpersuasive.
Fourth, Appellants argue that the rejection of claim 1 should be
reversed because the combination of cited references does not describe or
suggest selecting a cushion gum recipe corresponding to at least one of a
size, model, or shape of the tire casing wherein the recipe takes into account
a combination of pressurizing instructions, crushing instructions, extruding
instructions and smearing instructions. Appeal Br. 12. In particular,
Appellants argue that the prior art does not teach the use of a particular
recipe selected from a plurality of recipes based upon the size, model, and/or
shape of the tire casing wherein the selected recipe specifies a predetermined
pressure for pressurizing the tire casing, the predetermined amount of
crushing of the tire casing by the extruder head, a predetermined extrusion
stop distance, and a predetermined smear distance. Id. at 20.
In rejecting claim 1, the Examiner found
the different electronic controls used to operate on the different
tires of Meyer can be considered to read on the requirements of
a "recipe," the automation of Meyer (Column 10, lines 65-66)
teaching or suggesting the selection of appropriate control
parameters for the different tires operated on. To the extent that
Meyer's electronic controls do not teach or suggest the scope of
the recitation of recipes from the claim, Mory indicates that
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operating a controller with respect to a recipe would be obvious
because it is well-known in the art (Mory Colmnn 15, lines 39-
41) and/or recognized as a convenient manner of organizing
control parameters (Mory Column 15, lines 43-45).
To the extent that automated controls do not
automatically provide suitable control parameters for the
specific tire being operated on, it is noted that Mory
alternatively renders the selecting instructions of the claim
obvious by providing its control parameters based on size
(Column 18, lines 52-53 and 64-65; Column 20, lines 42-50)
and/or Caretta indicates that by selecting control parameters
based on recognition of a tire model would be obvious because
it is known and/or provides the benefit of facilitating plant
flexibility ([O 116]). The examiner notes that Mory discloses
benefits with respect to automation (Mory Column 20, lines 42-
50) and Meyer expresses a desire for automation in its process
(Meyer Column 10, lines 65-66).
Final Act. 6-7.
Appellants argue that the Examiner has not provided any reason that
the specific set of parameters included in the claimed recipe appears as a set
in a single prior art reference. Appeal Br. 20-21. Further, according to
Appellants the Examiner has not provided any motivation for a person of
ordinary skill in the art to combine the various parameters described in the
prior art into a single recipe as set forth in the claim. Id. In particular,
Appellants argue that
it appears that this [ relationship of all the parameters] to a
selected recipe has been overlooked by the Office in rendering
its rejection of Claim 1 and its dependent claims. Specifically,
many of the rejections fail to recognize that all of the
instructions ( e.g., extruding, smearing, etc.), separate from the
selecting instructions, are linked by a common recipe selected
from the plurality of recipes. This belief is exhibited by the
nature in which the Office independently rejects each claimed
instruction, without recognizing that each instruction is linked
to the other instructions by the recipe. In other words, the
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office fails to find any recipe that contains all the features
claimed and provides no motivation for combining the separate
teachings into a single recipe, a single recipe that is one selected
from a plurality of recipes.
Appeal Br. 21.
We are not persuaded by this argument. As the Examiner points out,
Woock describes the use of chart 31 to summarize the desired degree of
crushing according to tire size. Woock, 2, left col., 11. 42-51. As Woock
states, "the chart [is] figured to take care of the size range of all tires." Id.;
see also Mory 18:62---64 (varying the buffing path for buffing a tire casing
based on the type and size of the tire casing). Thus, the prior art describes
the variation of process parameters according to tire size.
As the Examiner further points out, Mory describes the use of touch
screen that allows the user to program a tire buffer (used to remove residual
tread from a tire casing before retreading). Mory states that
[ t ]he touch screen display 800 can be displayed on the touch
screen at the operator station. The operator can interact with
the display 800 to program the tire buffer to operate according
to predetermine sequences based on the input information for
the displayed parameters. The first touch screen display 800
can include a "recipe" portion 802 wherein characteristics of
the tire casing to be buffed and the depth of cut for the rasp
head can be displayed and adjusted. The recipe portion
provides a user with convenient access to tire characteristics for
commonly buffed tire casings which can be recalled by recipe
number.
Mory 15:34--45. Mory, therefore, describes the consolidation of multiple
parameters into a single "recipe."
Similarly, the Examiner found that "the different electronic controls
used to operate on the different tires of Meyer can be considered to read on
the requirements of a 'recipe,' the automation of Meyer ( Col. 10, 11. 65-66)
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teaching or suggesting the selection of appropriate control parameters for the
different tires operated on." Final Act. 6.
In view of the foregoing, the Examiner correctly concluded that it
would have been obvious to a person of ordinary skill in the art to
consolidate the various parameters used to control the automated spreading
of cushion gum during a tire retreading process into a plurality of recipes
that vary depending on the size and type of tire casing being processed.
For the reasons set forth above, we affirm the rejection of claim 1 as
obvious. Thus, we also affirm the rejection of claims 2-6, 9-12, and 14--19.
Claims 7 and 8. Appellants present separate additional arguments for
the patentability of claims 7 and 8. Appeal Br. 22-24. For the following
reasons, we do not find these arguments persuasive.
The Examiner found that a person of ordinary skill in the art would
have arrived at the degree of crushing recited in these claims through routine
experimentation. Final Act. 9. The Examiner further found that Meyer
discloses that the degree of crushing is described as a parameter that
influences cushion gum thickness. Id. (citing Meyer 6:60-30; 7:33-38;
8:57---61; 11:25-31). In the alternative, the Examiner found that Woock
discloses that the degree of crushing is used to accommodate a specific tire
and/or control the application width of the cushion gum. Id. (citing
Woock3).
In arguing separately for the patentability of claims 7 and 8,
Appellants do not address the Examiner's alternate finding that Woock
describes or suggests that the degree of crushing is a result effective variable
that a person of ordinary skill in the art would optimize to arrive at the
claimed ranges. See Appeal Br. 22-24. Because Appellants have not
addressed this alternative basis for finding that the limitations recited in
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claims 7 and 8 are described or suggested in the prior art, we affirm the
Examiner's rejection of these claims.
CONCLUSION
For the reasons set forth above, we summarily affirm the rejection of
claim 15 under 35 U.S.C. § 112, ,r 1, and under 35 U.S.C. § 112, ,r 2. We
also summarily affirm the rejection of claim 3 under 35 U.S.C. § 112, ,r 2.
With regard to rejections Appellants contest on the merits, we reverse
the rejection of claim 10 as lacking written description support. We,
however, affirm the rejection of claims 1-12 and 14--19 as obvious.
Because our affirmance of this rejection relies upon a translation not
previously entered into the record of the '096 Application, we designate it as
constituting a new ground of rejection.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b), which provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
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Appeal2018-000005
Application 14/338,096
examiner, in which event the proceeding will be remanded to
the examiner. . ..
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
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; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 4I.50(b)
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