Paul Harry. Sandstrom et al.

Patent Trials and Appeals Board

Feb 18, 2020

14855414 - (D) (P.T.A.B. Feb. 18, 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.
14/855,414 09/16/2015 Paul Harry SANDSTROM DN2011-005-C01 2950
27280 7590 02/18/2020
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
EXAMINER
MAKI, STEVEN D
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
02/18/2020 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):
kathleen.swisher@goodyear.com
pair_goodyear@firsttofile.com
patents@goodyear.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL HARRY SANDSTROM,
ARTHUR ALLEN GOLDSTEIN, JONATHAN MICHAEL DARAB,
KENNETH LEE OBLIZAJEK, WILLIAM RONALD RODGERS,
JENNIFER LYN RYBA, RACHEL TAMAR GRAVES,
and CHAD EDWARD MELVIN

Appeal 2019-002792
Application 14/855,414
Technology Center 1700
____________

Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1 and 4–7. 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 The
Goodyear Tire & Rubber Company. Appeal Br. 3.
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CLAIMED SUBJECT MATTER

The present application generally relates to a pneumatic tire having a
tread with plugs of a material having a relatively high stiffness.
Specification filed Sept. 16, 2015 (“Spec.”) ¶ 1. The plugs extend through a
relatively less stiff tread material. Id. The Specification teaches that “[t]his
high stiffness in the Z [radial] direction of the plugs 44, 48 or combination of
effects of the plugs and the other structures of the tire 10 may thus result in
significantly reduced rolling resistance (RR) of the tire 10 without
significantly diminishing other tire performance criteria.” Id. ¶ 87.
Figure 2 of the Specification is reproduced below.

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Figure 2 is a partial cross-section of a tire made “in accordance with the
present invention.” Id. ¶ 30. Figure 2 shows “first set 40 of plugs 44, or z-
plugs, of a third material 39.” Id. ¶ 85. Figure 2 further shows “second set
42 of plugs 48, or z-plugs, of the third material 39 (or alternatively a fourth
different material).” Id.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
1. A pneumatic tire comprising:
a tread base consisting of a first material;
a tread cap consisting of a second material, the tread cap being
disposed radially outward of the tread base and in operational contact
with a ground surface; and
a plurality of plugs forming a circumferential ring disposed
in a shoulder portion of the tread, some of the plugs consisting of
a third material and the remaining plugs consisting of a fourth
material different from the third material, the plurality of plugs
being disposed at least partially within the tread cap and extending
radially away from the tread base, the plurality of plugs yielding a
tread stiffness in a first direction greater than stiffness in at least one
other direction, the third material having a lower hysteresis than the
second material during operation of the pneumatic tire, the third
material and the fourth material both comprising a polymer
material selected from the group consisting of: syndiotactic
polybutadiene, epoxy, crosslinked urethane, unsaturated polyester,
polyamides, poly etherether ketones, polybutylene terephalate,
polyethylene terephalate, poly(phenylene sulfide), liquid crystal
polymer, and a thermoplastic polymer with an inorganic filler.
Appeal Brief dated Oct. 1, 2018 (“Appeal Br.”) 7 (Claims App.) (emphasis
added).
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REJECTION
The Examiner maintains the following rejection: Claims 1 and 4–7 are
rejected under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement. Final Action dated Sept. 27, 2018 (“Final Act.”) 2–
4.
DISCUSSION
The Examiner determines that claims 1 and 4–7 contain subject matter
which was not described in the Specification in such a way as to reasonably
convey to one skilled in the relevant art that the joint inventors had
possession of the claimed invention at the time the application was filed. Id.
at 2.
Claim 1 requires, inter alia, “a plurality of plugs” with “some of the
plugs consisting of a third material and the remaining plugs consisting of a
fourth material different from the third material . . . the third material and the
fourth material both comprising a polymer material selected from the group
consisting of: [multiple listed polymers].” Appeal Br. 7 (Claims App.). The
Examiner determines that “[n]o examples of a fourth material are described”
in the Specification. Final Act. 3.
Appellant argues that the rejection is in error. Appeal Br. 4–6.
Appellant cites to several portions of the Specification which, it argues,
describe the limitation in question. Those portions of the Specification are
reproduced below.
A pneumatic tire in accordance with the present invention
includes . . . a plurality of plugs comprised of a third and/or more
materials.

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Spec. ¶ 4.
According to still another aspect of the present invention,
the third material is a polymer, such as, for example, the
thermoplastic polymers: polyamides, poly ether-ether ketones,
polyimides, polybutylene terephalates, polyethylene
terephalates, poly(phenylene sulfide), and liquid crystal
polymers. Additionally, the third material may be a
thermoplastic polymer with added inorganic fillers such as, for
example, carbon fiber, glass fiber, glass flake, talc, mica, silica,
glass beads, and calcium carbonate. Furthermore, the third
material may be thermosetting polymer and/or a thermosetting
composite such as, for example, syndiotactic polybutadiene
polymer, epoxy polymer, crosslinked urethane polymer, and
unsaturated polyester (e.g., bulk molding compound). Also, the
third material may be a thermosetting polymer composite with
added inorganic fillers such as, for example, carbon fiber, glass
fiber, glass flake, talc, mica, silica, glass beads, and calcium
carbonate.

Id. ¶ 13.

The tread 30 may also have a second set 42 of plugs 48, or z-
plugs, of the third material 39 (or alternatively a fourth different
material) that extend radially from the tread base 34 through the
tread cap 32 to the outer ground contacting surface 46 of the
tread.

Id. ¶ 85.

Appellant argues that “one of ordinary skill in the art would recognize
paragraphs [0004], [0013], and [0085], read together along with the rest of
the Specification and Drawings, as explicitly disclosing” the limitation at
issue. Appeal Br. 5.
The written description requirement provides that the specification
must “convey with reasonable clarity to those skilled in the art that, as of the
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filing date sought, he or she was in possession of the invention.” Carnegie
Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.
Cir. 1991)). “One shows that one is ‘in possession’ of the invention by
describing the invention, with all its claimed limitations, not that which
makes it obvious.” Lockwood v. American Airlines Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997) (original emphasis not reproduced). “Although the
exact terms need not be used in haec verba . . . the specification must
contain an equivalent description of the claimed subject matter.” Id.
Similarly, “[t]he knowledge of ordinary artisans may be used to inform what
is actually in the specification, but not to teach limitations that are not in the
specification, even if those limitations would be rendered obvious by the
disclosure in the specification.” Rivera v. Int’l Trade Comm’n, 857 F.3d
1315, 1322 (Fed. Cir. 2017) (internal citation omitted).
The portions of the Specification cited by Appellant teach several
points. First, the cited material teaches that the claimed plugs may be
comprised of a third material “and/or more materials.” Spec. ¶ 4. Second,
the Specification teaches that the third material may be a polymer including
the polymers listed in claim 1. Id. ¶ 13. Third, the Specification provides
that the tread may have a second set of plugs which may be made of the
third material or, alternatively, “a fourth different material.” Id. ¶ 85. Thus,
the Specification teaches that the fourth material may differ from the third
material. Id. ¶¶ 4, 85. Appellant does not direct us, however, to any
teaching that the fourth material may comprise a “material [that is] different
from the third material” yet is also “selected from the [same] group” as the
third material. This combination may only be inferred from the disclosures
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in the Specification with the benefit of the disputed claim language in front
of us. As noted above, one shows that one is “in possession” of the
invention by describing all of the claimed limitations, not making those
limitation obvious. Lockwood, 107 F.3d at 1572.
Accordingly, Appellant has not shown reversible error in the
Examiner’s rejection.

CONCLUSION

For the reasons articulated by the Examiner in the Final Action, the
Examiner’s Answer, and above, the Examiner’s rejection is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–7 112(a) Written
Description
1, 4–7

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