Ex Parte Takahashi et al

Patent Trial and Appeal Board

Jun 17, 2016

12808431 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/808,431 07/14/2010
23373 7590 06/21/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Fumio Takahashi
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 19433 3571
EXAMINER
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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 FUMIO TAKAHASHI
and SOUTO NAKAYAMA
Appeal2014-004193
Application 12/808,431 1
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and
BRIAND. RANGE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 2, and 4--11. An oral hearing was
held on June 7, 2016.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appeal Brief, the Real Party in Interest is
BRIDGESTONE CORPORATION. App. Br. 2.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2014-004193
Application 12/808,431
BACKGROUND
According to Appellants, the object of the invention is to provide
detailed tire configurations for providing a tire having excellent wear
resistance performance and relatively low rolling resistance. (Spec. i-f 5.)
Claims 1 and 2 are reproduced below from the Claims Appendix to the
principal Brief:
1. A pneumatic tire having a carcass as a skeleton
extending in a toroidal shape over a pair of bead portions, a belt
including at least one slant layer, and a tread, the belt and the
tread being disposed on the outer side in the tire radial direction
of a crown portion of the carcass in this order, characterized in
that:
a ratio BD/BW of radius difference BD between radius at
the center portion and radius at an end portion in the tire
widthwise direction of the outermost layer of the slant belt
layer(s), to a width BW of the outermost layer, is in the range of
0.01 to 0.04 in a section of the tire in the widthwise direction in
a state where the tire is assembled with an application rim,
wherein a ratio CSWh/CSH of the shortest distance
CSWh between a line drawn in parallel with the rotation axis of
the tire at the maximum width position of the carcass and a line
drawn in parallel with the rotation axis of the tire at a bead toe,
to a distance CSH in the radial direction between the outermost
side of the carcass and the bead toe, is in the range of 0.6 to 0.9.
2. A pneumatic tire having a carcass as a skeleton
extending in a toroidal shape over a pair of bead portions, a belt
including at least one slant layer, and a tread, the belt and the
tread being disposed on the outer side in the tire radial direction
of a crown portion of the carcass in this order, characterized in
that:
a ratio BD/BW of radius difference BD between radius at
the center portion and radius at an end portion in the tire
widthwise direction of the outermost layer of the slant belt
2
Appeal2014-004193
Application 12/808,431
layer(s), to a width BW of the outermost layer, is in the range of
0.01 to 0.04 in a section of the tire in the widthwise direction in
a state where the tire is assembled with an application rim,
wherein a ratio SWh/SH of the shortest distance SWh
between a line drawn in parallel with the rotation axis of the tire
at the maximum width position of the tire and a line drawn in
parallel with the rotation axis of the tire at a bead toe, to a
sectional height SH of the tire, is in the range of 0.5 to 0.8.
The Examiner maintains, and Appellants appeal, the rejection of
claims 1, 2, and 4--11under35 U.S.C. § 103(a) as obvious over Yagi3 et al.
(US 4,662,416, issued May 5, 1987) ("Yagi") in view of Kojima (JP 06-
001109 published Nov. 1, 1994).
OPINION4
The dispositive issue on appeal is: Did the Examiner err in
determining that the parameter CSWh/CSH of claim 1 as well as the
parameter SWH/SH of claim 2 are the same as the parameter hw/h of Yagi
as recited in claims 1 and 2?
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not
established that the parameter hw/h of Yagi would have suggested the
parameter CSWh/CSH of claim 1 as well as the parameter SWH/SH of
claim 2.
3 We will refer to the English language translation that has been entered in
the record.
4 We limit our discussion to the independent claims 1 and 2.
3
Appeal2014-004193
Application 12/808,431
The complete statement of the rejection on appeal appear in both the
Final Action and the Answer. (Final Act. 2-5; Ans. 2-5.) The Examiner
recognizes that Yagi5 fails to expressly disclose the claimed invention.
(Ans. 5.) The Examiner specifically states the following:
The examiner agrees that Yagi fails to expressly disclose
the claimed ration [sic]. However, Yagi is seen to suggest a
ratio that would fall within the broad range of the claimed
invention. More particularly, (a) height hw in Yagi corresponds
to the claimed height CSWh and (b) Yagi suggests a ratio hw/h
between 0.55 and 0.70. While not depicted in Yagi, it is clearly
evident that height CSH (height of the carcass at the equatorial
plane of the tire) is slightly less than height h, such that the ratio
hw/CSH in Yagi would be defined by a lower value greater
than 0.55 and an upper value greater than 0.70. This range is
extremely similar to the claimed range between 0.6 and 0.9. It is
emphasized that the ratio hw/CSW (same as CSWh/CSH) in
Yagi is necessarily less than 1 and given the above noted ratio
for hw/h, is necessarily greater than 0.55. The claimed range
between 0.6 and 0.9 is fully encompassed with the range
disclosed by Yagi and applicant has not provided a conclusive
showing of unexpected results to establish a criticality for a
ratio less than 0.9.
(Ans. 5---6.)
Regarding claim 2, the Examiner asserts the maximum tire section
width (claimed as SWh) appears to be present at the same height as the
maximum carcass section width of Yagi. (Final Act. 3; Ans. 3.)
5 It is noted that the Examiner has improperly identified Yagi as Kojima in
the first two paragraphs of the stated rejection appearing in both the Final
Action and Answer. (Final Act. 2; Ans. 2.) Appellants acknowledge this
error in the responsive brief. (Reply Br. 2.)
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Appeal2014-004193
Application 12/808,431
We agree with the Appellants that the claimed invention is not
obvious over the combination of the Yagi and Kojima.
Appellants argue the parameters CSH and SWh of the claimed
invention is not the same as the parameters h and hw in Yagi. (App. Br. 7,
14.) The parameter CSH is the height of the outermost side of the carcass,
while h in Yagi is the maximum height of the tread. (App. Br. 7.)
Appellants also argue the parameter SWh recited in claim 2 represents a
distance in the tire radial direction between the maximum width position of
the tire and the bead toe, while the parameter hw of Yagi represents the
height of a point P at the maximum width of a carcass line. (App. Br. 7, 14;
claim 1 of Yagi Fig. 1 and claim 1.) Consequently, the parameter h and hw
of Yagi cannot correspond to CSH of the claim 1 and SWh recited in claim
2. Further, the Examiner has not directed us to evidence to support the
position that Yagi discloses or suggests the ratio CSWh/CSH in the range of
0.6 to 0.9 as recited in claim 1 or of the ratio SWh/SH in the range of 0.5 to
0.8 as recited in claim 2.
For the foregoing reasons and those stated in the Brief, we determine
that the Examiner's conclusion of obviousness is not supported by facts.
"Where the legal conclusion [of obviousness] is not supported by facts it
cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
We reverse the appealed prior art rejection.
REVERSED
5