Jon I. Stuckey et al.

Patent Trials and Appeals Board

Aug 17, 2020

2019004757 (P.T.A.B. Aug. 17, 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.
13/954,249 07/30/2013 Jon I. STUCKEY P11184US3A 7846
48985 7590 08/17/2020
BRIDGESTONE AMERICAS, INC.
10 East Firestone Blvd.
AKRON, OH 44317
EXAMINER
DYE, ROBERT C
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
08/17/2020 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):
iplawpat@bfusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JON I. STUCKEY, KATHLEEN CLEMMER, DAVID
JOHNSON, JACOB LEE WALTERS, MICHAEL A. BERZINS,
WILBUR EUGENE HOLMES, TODD ALAN BUXTON,
KENT DAVID WEATHERWAX, and AUTUMN T. KAHWAJI

____________

Appeal 2019-004757
Application 13/954,249
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 2, 5, 7–12, 16, and 18–22 under 35
U.S.C. § 112 as lacking written description support. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to the “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant is Bridgestone Americas Tire Operations, LLC,
which is also identified as the real party in interest (Appeal Br. 1).

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We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitation):
1. A tire comprising:
a pair of sidewalls;
a circumferential tread constructed of a base rubber, the
circumferential tread having a plurality of grooves disposed
therein, thereby defining a plurality of tread elements, wherein
at least one of the plurality of tread elements includes a sipe;
and
a polymeric laminate disposed on the circumferential
tread,
wherein the polymeric laminate covers at least one of the
plurality of grooves,
wherein the polymeric laminate covers a top surface of at
least one of the plurality of tread elements,
wherein the polymeric laminate covers the sipe, such that
the sipe is not visible when the tire is new,
wherein the polymeric laminate is configured to wear off
of the top surface of the at least one of the plurality of tread
elements during the life of the tire, and
wherein the polymeric laminate has greater snow traction
than the base rubber.

Independent claims 12 and 19 also each recite a tire having a
polymeric laminate that covers sipes in the tire, such that the sipes are not
visible when the tire is new (Claims Appendix 18, 19).
ANALYSIS
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
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1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection.). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
Independent claims 1, 12, and 19 each recite that the laminate covers
at least some sipes such that the sipe(s) are “not visible when the tire is
new.” The Examiner finds the originally-filed application does not contain
written description support for this limitation. Final Act. 2.
The written description “must clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.” Ariad
Pharm., Inc. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(citation and quotations omitted, alteration in the original). The test is
whether the disclosure “conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Id.
As explained in Regents of the Univ. of Cal. v. Eli Lilly & Co., 119
F.3d 1559, 1566 (Fed. Cir. 1997) (emphasis added),
[t]o fulfill the written description requirement, a patent
specification must describe an invention and do so in sufficient
detail that one skilled in the art can clearly conclude that "the
inventor invented the claimed invention." Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 10
USPQ2d 1614, 1618 (Fed. Cir. 1989) ("[T]he description must
clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed."). Thus, an
applicant complies with the written description requirement "by
describing the invention, with all its claimed limitations, not
that which makes it obvious," and by using "such descriptive
means as words, structures, figures, diagrams, formulas, etc.,
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that set forth the claimed invention." Lockwood, 107 F.3d at
1572, 41 USPQ2d at 1966.
Appellant contends that paragraph 24 of the originally-filed
application describes that the laminate may have a thickness of 1.0 to 1.5
mm, paragraph 55 of the originally-filed application describes that the
laminate may be applied using a vacuum process, sipes are known to range
in size from 0 to 5 mm, and therefore one of ordinary skill in the art would
have recognized that the laminate of the described invention may cover the
sipes such that they are not visible when new (that is, when a vacuum
process is used and the sipe size is smaller than the thickness of the
laminate) (Appeal Br. 13–15; Reply Br. 2–4).
The Examiner correctly states that the Specification fails to describe
any specific sizes for the sipes, fails to describe that the sipes are not visible
when the tire is new, describes that the laminate may be thicker or thinner
than 1.5mm, and describes numerous processes that may be used to apply
the laminate (Ans. 4). The Examiner also points out that Appellant has not
provided any credible evidence that a vacuum process would indeed
inherently result in a laminate that would cover the sipes such that they are
not visible when the tire is new (id.).
We agree with the Examiner that the Appellant is now claiming a
negative limitation, that is, the sipes are not visible when the tire is new
(Ans. 5). We do not find, however, nor does Appellant identify, a disclosure
in the Specification that properly describes using a laminate to cover sipes
such that they are not visible when the tire is new. Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1350–51 (Fed. Cir. 2012) (“Negative claim
limitations are adequately supported when the specification describes a
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reason to exclude the relevant limitation.” In Santarus, the court found that
claims reciting the negative limitation “wherein the composition contains no
sucralfate” satisfied the written description requirement, because the
specification described sucralfate as having adverse effects and described
omeprazole as an advantageous alternative.).
Furthermore, the test is not whether one of ordinary skill in the art
would find the invention obvious after reading the disclosure, it is whether
the disclosure itself conveys that Appellant had possession of the later-
claimed subject matter. A disclosure that merely renders the later-claimed
subject matter obvious is not sufficient to meet the written description
requirement; the disclosure must describe the claimed invention with all its
limitations. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998);
Lockwood. “That a person skilled in the art might realize from reading the
disclosure that such a step is possible is not a sufficient indication to that
person that the step is part of appellants’ invention.” In re Barker, 559 F.2d
588, 593 (CCPA 1977) (quoting In re Winkhaus, 527 F.2d 637, 640 (CCPA
1975)).
In sum, Appellant has not persuaded us of reversible error in the
Examiner’s determination that the originally-filed application does not
provide written description support for a tire with sipe(s) that are covered by
a laminate such that the sipes are not visible when the tire is new, as urged
by Appellant (Reply Br. 1).
Accordingly, we sustain the rejection of all the claims under 35
U.S.C. § 112 for lack of written description.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 5, 7–12,
16, 18–22
§ 112 Lack of Written
Description
1, 2, 5, 7–
12, 16,
18–22

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)(1).

AFFIRMED