THE YOKOHAMA RUBBER CO., LTD.

Patent Trials and Appeals Board

Aug 10, 2021

2020002193 (P.T.A.B. Aug. 10, 2021)

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.
15/038,021 05/19/2016 Atsushi Tanno 3138-367.PCT.US 8547
162045 7590 08/10/2021
THORPE NORTH & WESTERN/YOKOHAMA
P.O. BOX 1219
SANDY, UT 84091-1219
EXAMINER
KIM, YUNJU
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
08/10/2021 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):
braegger@tnw.com
patentdocket@tnw.com
warren.archibald@tnw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ATSUSHI TANNO and YOUSUKE SAKAMOTO
____________

Appeal 2020-002193
Application 15/038,021
Technology Center 1700
____________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
JAMES C. HOUSEL, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is in response to a Request, filed May 10, 2021, for rehearing of
our Decision dated March 11, 2021.
Appellant argues the court’s reasoning in In re Wertheim, 541 F.2d
257 (CCPA 1976), supports the position that the claim recitation of 70 to
79% has written descriptive support in the original Specification (Req.
Reh’g 5). Appellant argues that the original Specification discloses the
width of the sound-absorbing member is 70% to 95% of the tire ground
contact width (Req. Reh’g 5). Appellant argues the Specification provides
examples with tire ground contact width including 75%, 85%, and 95% that
are within the broader range for further support (Req. Reh’g 5). Appellant
contends that the Board has not provided any evidence or otherwise
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contended that there is any distinction in operability or desired result
between the claimed range endpoints and those of the original application
(Req. Reh’g 6). Appellant argues the broader original range does not pertain
to a different invention than the narrower and subsumed range (Req. Reh’g
6). Appellant argues the Decision does not explain why the alleged lack of
literal support for the 79% limitation is insufficient (Req. Reh’g 7).
Appellant argues the Decision is contrary to the Wertheim decision (Req.
Reh’g 7). Appellant argues that Wertheim supports that amending to claim a
narrower range as in the present case to avoid prior art is acceptable (Req.
Reh’g 8). Appellant argues that In re Ruschig, 379 F.2d 990 (CCPA 1967)
and Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320 (Fed. Cir. 2000)
are directed to compounds within a genus, not ranges as is Wertheim (Req.
Reh’g 6, 8).
Appellant is permitted to claim less than what they originally claimed.
Wertheim, 541 F.2d at 263 (“To rule otherwise would let form triumph over
substance, substantially eliminating the right of an applicant to retreat to an
otherwise patentable species merely because he erroneously thought he was
first with the genus when he filed.”). With respect to ranges, the description
requirement is determined on a case-by-case basis. Id. at 264. However,
where a broader range pertains to a different invention than the narrower
(and subsumed) range, then the broader range does not describe the narrower
range. Id. at 265. In other words, where a narrower ranges exhibits
unexpected results then the broader range is directed to a different invention
than the narrower, subsumed range.
In the present case, Appellant argues the broader original range (i.e.,
70 to 95%) does not pertain to a different invention than the narrower and
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subsumed range (i.e., 70 to 79%) (Req. Reh’g 6). The Specification
discloses the width of sound absorbing member 6 is 70 to 95% of the tire
ground contact width (Spec. 9:19–21). The Specification discloses that
when the sound absorber width is less than 70% of the total ground contact
width, the cavernous-resonance-reducing effects is reduced (Spec. 9:29–31).
The Specification discloses that when the width of the sound absorber is
greater than 95% of the total contact width the sound absorbing member will
tend to debond due to the effects of curvature of the tire inner surface (Spec.
9:31–34). In Specification Working Examples 1 to 3, sound absorbers with
widths of 75%, 85%, and 95% were tested and yielded similar cavernous
resonance results (Spec. 17). In other words, the Specification evidence
supports Appellant’s argument that the results across the range are the same.
There is no different invention within a narrower subsumed range (i.e., there
is no criticality in a narrower subsumed range). In light of these facts now
on record, we grant Appellant’s request for rehearing and withdraw our new
ground of rejection under 35 U.S.C. § 112(a) as failing to comply with the
written description requirement.

New Ground of Rejection
In light of Appellant’s admission that the disclosed sound absorber
width range from 70 to 95% and its narrower range recited in claim 1 (i.e.,
70 to 79%) are not drawn to different inventions (i.e., there is no criticality
in the recited range), we reinstate the Examiner’s § 103 rejection of claims
1–8, 10, 13, and 14 over Nakakita in view of Tanno and Murata. We further
reinstate the rejections of claims 9 and 11 under § 103 as unpatentable over
Nakakita in view of Tanno, Murata, and Yukawa ’824, claim 12 under § 103
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as unpatentable over Nakakita in view of Tanno, Murata, and Kajita, and
claim 15 under § 103 as unpatentable over Nakakita in view of Tanno,
Murata, and Yukawa ’726. We designate the rejections new grounds of
rejection pursuant to 37 C.F.R. § 41.50(b) because our reasoning differs
from the thrust of the Examiner’s rejections based upon Nakakita, Tanno
and Murata.
We refer to the Final Office Action, pages 4 to 6 for the findings
regarding Nakakita’s, Tanno’s, and Murata’s teachings. Appellant primarily
argued that Nakakita taught away from using a sound absorber with a width
less than 80% of the tread width of the tire (Appeal Br. 11). Appellant
argued that Nakakita described negative effects in paragraph 38 when the
sound absorbing member width is less than 80% of the tread width (Appeal
Br. 11). The “negative effects” argued by Appellant relate to the ability to
cover a tire puncture when the sound absorber is less than 80% (Nakakita
¶ 38). The Examiner finds Nakakita teaches a preferred sound absorber
width range, but which would include values outside the range (Ans. 3).
Nakakita is silent regarding negative effects on sound absorption when the
sound absorber is decreased to 79%, for example. In other words, the
claimed endpoint of the range (79%) is so close to Nakakita’s 80% that a
person of ordinary skill in the art would have expected a tire with a sound
absorber spanning 79% of the ground contact width to have similar sound
absorbing properties as a tire with a sound absorber spanning 80% of the
tread width as in Nakakita. The existence of trade-offs does not obviate
motivation to modify the prior art. See, e.g., Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit . . . should not
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nullify its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained, should be
weighed against one another.”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (“a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine”). Nakakita described the sound absorbing
member. A person of skill in the art would have recognized the trade-off
between, for example, decreasing puncture resistance and maintaining sound
adsorption properties. Further, the small reduction in tire puncture coverage
is a trade-off for the reduced cost of material used in making a sound
absorber that spans 79% of the ground contact width, which would also have
been expected to have a similar sound absorption property. Appellant does
not direct us to criticality or difference in property in the sound absorber
width range. The Examiner finds that 79% and 80% sound absorber width
are close enough that a person of ordinary skill in the art would have
expected them to same properties (i.e., sound dampening) without any
superior effect or result (i.e., criticality) when the width is 79% versus 80%
(Final Act. 18). Appellant has not established otherwise.
Appellant further argued that the Examiner had not shown that the
sound absorber width is a result effective variable that would have been
optimized outside of Nakakita’s range by routine experimentation (Appeal
Br. 11). Appellant’s argument is not persuasive because optimizing for
sound dampening would have led to selecting a desired sound absorber
width with the attendant trade-off in puncture resistance. Stated differently,
a person of ordinary skill in the art would have used less material to make a
narrower sound dampener with similar sound dampening to a sound
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dampener spanning 80% of the ground contact width (i.e., a narrower sound
absorber such as 79% of the ground contact width of the tire) while
understanding that a small decrease in puncture resistance would have
resulted.
Appellant argues that there is no reason to combine Murata’s grooves
with Nakakita’s tire absent hindsight (Appeal Br. 15). Appellant argues
Murata does not teach the relationship between grooves and sound absorber
(Appeal Br. 14). Appellant contends that Comparative Examples 3 and 4 in
Table 1 support the unexpected and surprising results in the ratio of total
groove width to sound absorber width (Appeal Br. 14). Appellant argues
that a person of ordinary skill in the art would not have understood that
sound absorber width and total groove width should be related to one
another (Appeal Br. 14).
Contrary to Appellant’s arguments, the Examiner finds that Murata
teaches using grooves to improve the wet performance and dry grip
performance for the tires (Final Act. 5–6). The Examiner finds each of
Murata’s main grooves span about 4 to 9% of the tire ground contact width
(Final Act. 6). The Examiner finds that four contact grooves in Murata
would have a total width in the range of 20 to 45% of the total contact area
(Final Act. 6).
Regarding the allegation of unexpected results, Appellant refers to
comparative examples 3 and 4 but does not explain the data (Appeal Br. 14).
Appellant argues that the negative results discussed in paragraph 32 of the
Specification with operating outside of the 25% to 40% range are
unexpected (Appeal Br. 14). Paragraph 32 of the Specifications discloses
that when the total width of the circumferential grooves included in the
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region where the sound absorber is disposed is less than 25%, wet
performance will be reduced. Specification paragraph 32 discloses that if the
total width is greater than 40%, then it will be impossible to sufficiently
reduce air column resistance. Appellant’s mere statement that these results
are unexpected is not sufficient to explain why the data establishes
unexpected results. An ordinarily skilled artisan would have reasonably
expected that having less grooves (i.e., less percent area grooves) in an area
of the tire would make water removal between the road and the tire difficult
and thus negatively affect wet performance as disclosed. Conversely, the
ordinarily skilled artisan would have reasonably expected that having more
open space in the form of additional grooves would provide more channels
for air to resonate through resulting in additional air column resonance.
Appellant has not adequately established the results are unexpected.
Regarding the rejection of claim 9 under § 103 over Nakakita, Tanno,
Murata, and Yukawa ’824, Appellant argued that Yukawa ’824 teaches
away from a sound absorber that occupies 21% of the volume of the cavity
formed within the tire (Appeal Br. 18). Appellant argued that Yukawa ’824
teaches that sound absorber volumes greater than 20% result in loss of tire
balance (Appeal Br. 18). Appellant argues the Examiner has not established
that sound absorber volume is a result-effective variable that is subject to
optimization (Appeal 18–19). Appellant contends the Examiner has not
established that values outside of a volume of 21% would have been
expected to have the same properties as values within the range (i.e., at least
21%) (Appeal Br. 20).
Yukawa ’824 teaches if the volume of the sound damper is more than
20% of the tire cavity volume (v1), then it becomes difficult to maintain the
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tire weight balance (¶ 70). Yukawa ’824 teaches a range for the volume of
the sound absorber from at least 0.4% to not more than 20% (¶ 70).
Yukawa’s teachings that it is difficult to maintain tire weight balance if the
sound absorber volume is more than 20% is not a teaching away. Rather, we
find Yukawa ’824 teaches that extra effort may be required to balance the
tire weight but more sound dampening may be achieved with a larger
volume. The Examiner finds the claimed 21% volume of the sound absorber
is sufficiently close to Yukawa ’824’s sound absorber that a person of
ordinary skill reasonably would have expected it to have the same noise
dampening property as Yukawa ’824’s sound dampener (Final Act. 13). We
agree in that the slight difference in volume would have been expected to
yield a material with as good if not better sound dampening properties with
the trade-off of extra effort to balance the tire weight. Appellant’s argument
regarding whether sound absorber volume is a result-effective variable is
undermined by Yukawa ’824’s teaching that the volume of the sound
absorber affects its ability to dampen noise (¶ 70).
For the reasons discussed above, Appellant’s rehearing request is
granted. We reinstate the Examiner’s § 103 rejections of record and
denominate them as new grounds of rejection because our reasoning differs
from thrust of the Examiner’s rejections.
Outcome of Decision on Rehearing:
Claims 35
U.S.C
§
Reference(s)/Basis Denied Granted New
Ground
1–15 112(a) Written
Description
1–15

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Final Outcome of Appeal after Rehearing1:
Claims 35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–8, 10,
13, 14
103 Nakakita, Tanno,
Murata
1–8, 10,
13, 14
9, 11 103 Nakakita, Tanno,
Murata, Yukawa
’824
9, 11
12 103 Nakakita, Tanno,
Murata, Kajita
12
15 103 Nakakita, Tanno,
Murata, Yukawa
’726
15
Overall
Outcome
1–15
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review. "37 C.F.R. § 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
examiner, in which event the proceeding will be remanded to
the examiner. ...

1 We reinstate the Examiner’s § 103 rejections of record and denominate
them as new grounds of rejection because our reasoning differs from thrust
of the Examiner’s rejections.
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(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
GRANTED
37 C.F.R. § 41.50(b)