Robert Edward. Lionetti et al.

Patent Trials and Appeals Board

Aug 20, 2019

14674335 - (D) (P.T.A.B. Aug. 20, 2019)

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.
14/674,335 03/31/2015 Robert Edward Lionetti DN2015-003 8368
27280 7590 08/20/2019
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
EXAMINER
DYE, ROBERT C
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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 ROBERT EDWARD LIONETTI,
RICHARD MBEBWO SAMWAYEBA FOSAM,
ERIK SIMON MARCEL EULER,
and OLIVIER LESCAUD
________________
Appeal 2018-004640
Application 14/674,335
Technology Center 1700
________________
Before GEORGE C. BEST, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1 and 4–8 of Application 14/674,335
under 35 U.S.C. § 112(a) as lacking written description support. Final Act.
2 (October 19, 2017). The Examiner also rejected claims 1 and 4–8 under
35 U.S.C. § 112(b) as indefinite. Id. at 4. The Examiner rejected claim 6
under 35 U.S.C. § 112(d) as being of improper dependent form. Id. at 5.
The Examiner further rejected claims 1 and 4–8 under 35 U.S.C. § 103 as
Appeal 2018-004640
Application 14/674,335
2
obvious. Id. at 5–7. Appellant1 seeks reversal of these 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.
BACKGROUND
The ’335 Application describes a belt construction for pneumatic tires.
Spec. ¶ 1. Such tires typically have a belt structure disposed radially
between the tire carcass and the tread rubber. Id. ¶ 2. A conventional belt
structure comprises more than one layer of reinforcement cords. Id. ¶ 5. An
overlay may be radially disposed between the belt structure and the tire
tread. Id. ¶ 41, Fig. 1.
According to the ’335 Application’s Specification, the conventional
belt structure and overlay may be replaced by a continuous strip crown
reinforcement comprising a single layer of woven strips of material. Id.
¶¶ 46–50. Each woven strip may comprise one or more cords having an
elongation at break of less than 2.5%. Id. ¶ 46.
Claim 1 is representative of the ’335 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief. Key
limitations in claim 1 have been italicized.
1. A pneumatic tire comprising:
a carcass reinforced by a carcass ply extending from a
first bead to a second bead; and
a single reinforcement disposed radially outward of the
carcass ply in a crown portion of the pneumatic tire, the single
reinforcement comprising woven strips reinforced with fused
polyester and steel cords, the steel cords having a 2+2 × 0.22

1 The Goodyear Tire & Rubber Co. is identified as the applicant and real
party in interest. Appeal Br. 3.
Appeal 2018-004640
Application 14/674,335
3
ultra tensile steel construction, the strips being a constant width
of 3.0 mm to 30.0 mm, the single reinforcement comprising
both a belt structure and an overlay.
Appeal Br. 8 (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 4–8 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 2.
2. Claims 1 and 4–8 are rejected under 35 U.S.C. § 112(b) as
indefinite. Final Act. 4.
3. Claim 6 is rejected under 35 U.S.C. § 112(d) as being of improper
dependent form. Final Act. 5.
4. Claims 1, 4, and 6 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Oswald,2 Sinopoli,3 Son,4
and Beck.5 Final Act. 5.
5. Claims 5, 7, and 8 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Oswald, Sinopoli, Son, Beck,
and Borowczak.6 Final Act. 7.

2 US 4,600,456, issued July 15, 1986.
3 US 2001/0023730 A1, published September 27, 2001.
4 KR-B-1995-0004085, published April 25, 1995. The copy of Son that is
part of the ’335 Application’s record includes a machine translation, which
we cite.
5 US 2013/0240106 A1, published September 19, 2013.
6 US 5,225,457, published July 6, 1993.
Appeal 2018-004640
Application 14/674,335
4
DISCUSSION
Appellant presents substantive arguments for the reversal of each
rejection of claim 1 only. See Br. 4–7. Appellant stipulates that claims 4–8
stand or fall with claim 1. Id. at 4.
Rejection 1. The Examiner specifically rejected claims 1, 5, 7, and 8
for failure to comply with the written description requirement. Final Act. 2–
3. Claims 4 and 6 are rejected because they depend from claim 1. Id.
As discussed above, Appellant only presents substantive argument for
reversal of the rejection of claim 1. We, therefore, summarily affirm the
rejection of claims 5, 7, 8.
In rejecting claim 1, the Examiner found that the claim limitation “the
single reinforcement comprising both a belt structure and an overlay” is not
supported by the ’335 Application’s written description. Id.
Appellant argues that “replacing two steel belts and an overlay with a
single woven crown reinforcement is equivalent to the single woven crown
reinforcement comprising both a belt structure and an overlay, as recited in
claim 1. This limitation would have been adequately described to one of
ordinary skill in the art.” Br. 4.
This argument is not persuasive. The claim language in question
specifies the structure of the “single reinforcement.” The Specification does
not describe the single reinforcement as comprising a belt structure and an
overlay. Instead, the Specification describes the single woven crown
reinforcement as replacing and performing the functions of the prior art
overlay in belt structures. We are unable to find any description of the
single woven crown reinforcement comprising two parts in the ’335
Application’s Specification.
Appeal 2018-004640
Application 14/674,335
5
Thus, we affirm the rejection of claim 1 as lacking written description
report. Claims 4–8 are rejected as lacking written description support based
upon their dependence from claim 1. As discussed above, we also affirm the
independent rejections of claims 5, 7, and 8 as lacking written description
support.
Rejection 2. The Examiner specifically rejected claim 1 as indefinite.
Final Act. 4. Claims 4–8 are rejected as indefinite based upon their
dependence from claim 1. Id.
In particular, the Examiner concluded that it is unclear how the
“single reinforcement can comprise two separate reinforcement structures
and further it is unclear as to how many reinforcement layers are required to
be present in the crown.” Id.
We affirm this rejection because, as written, claim 1 fails to distinctly
claim the subject matter which the joint inventors regard as their invention.
The ’335 Application’s Specification clearly describes the invention as
replacing the belt structure and overlay with a single woven reinforcement.
Thus, claim 1—which specifies that the single reinforcement comprise an
overlay and a belt structure—is not directed to the invention described in the
Specification.
We, therefore, affirm the rejection of claims 1 and 4–8 as indefinite.
Rejection 3. The Examiner rejected claim 6 under 35 U.S.C.
§ 112(d). As discussed above, Appellant presents arguments only for the
reversal of the rejection of claim 1. Because Appellant does not argue for
reversal of this rejection, we summarily affirm it.
Rejection 4. The Examiner rejected claims 1, 4, and 6 as
unpatentable over the combination of Oswald, Sinopoli, Son, and Beck.
Final Act. 5–6.
Appeal 2018-004640
Application 14/674,335
6
As discussed above, Appellants advances arguments only for reversal
of the rejection of claim 1. In particular, Appellant identifies four bases for
reversal of the rejection of claim 1: (1) the Examiner has not presented a
prima facie case of obviousness, (2) the Examiner has not provided factual
basis or rational underpinning to support the legal conclusion of
obviousness, (3) the Examiner relied upon hindsight in formulating the
rejection, and (4) tire construction is an unpredictable art and, therefore, the
result of modifying Oswald’s tire by the teachings of Sinopoli, Son, and
Beck cannot be predicted and is nonobvious. See Br. 5–6.
We do not find Appellant’s arguments persuasive.
As an initial matter, Appellant does not present these arguments with
the necessary level of detail to establish reversible error. For example,
Appellant merely asserts that the Examiner has not established a prima facie
case of obviousness. In doing so, Appellant does not identify any limitation
not described or suggested in the prior art. Appellant’s first argument,
therefore, lacks sufficient substance to merit consideration on appeal. See,
e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that “the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”). Each of Appellant’s other arguments is similarly deficient.
Moreover, we determine that the Examiner has established a prima
facie case of obviousness. As described in the Final Action, the combination
of Oswald, Sinopoli, Son, and Beck describes or suggests every limitation in
claim 1. Final Act. 5–6; see also Answer 4–5. The Examiner also explains
why a person of ordinary skill in the art at the time of the invention would
Appeal 2018-004640
Application 14/674,335
7
have wanted to combine these references in the manner relied upon in the
rejection to arrive at the claimed invention. Id.
For the reasons set forth above, we affirm the rejection of claims 1, 4,
and 6 as unpatentable over the combination of Oswald, Sinopoli, Son, and
Beck.
Rejection 5. The Examiner rejected claims 5, 7, and 8 as
unpatentable over the combination of Oswald, Sinopoli, Son, Beck, and
Borowczak. Final Act. 7. Appellant does not present substantive argument
for reversal of this rejection. Rather, Appellant has stipulated that these
claims will stand or fall with claim 1. Br. 4. Because we have affirmed the
rejection of claim 1 under 35 U.S.C. § 103, we also affirm the rejection of
claims 5, 7, and 8 under that section.
CONCLUSION
For the reasons set forth above, we summarily affirm the rejection of
claims 5, 7, and 8 for failing to comply with the written description
requirement for the reasons set forth in the Final Action. We also summarily
affirm the rejection of claim 6 for failure to comply with 35 U.S.C. § 112(d).
On the merits, we affirm the rejection of claim 1 as lacking written
description support and affirm the rejection of claims 4–8 as lacking written
description support based upon their dependence from claim 1. We also
affirm the rejection of claim 1 as indefinite and affirm the rejection of claims
4–8 as indefinite based upon their dependence from claim 1. Furthermore,
we affirm the rejection of claims 1, 4, and 6 as unpatentable over the
combination of Oswald, Sinopoli, Son, and Beck. Finally, we affirm the
rejection of claims 5, 7, and 8 as unpatentable over the combination of
Oswald, Sinopoli, Son, Beck, and Borowczak.
Appeal 2018-004640
Application 14/674,335
8
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