THE YOKOHAMA RUBBER CO., LTD.

Patent Trials and Appeals Board

Mar 11, 2021

2020002193 (P.T.A.B. Mar. 11, 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 03/11/2021
THORPE NORTH & WESTERN/YOKOHAMA
P.O. BOX 1219
SANDY, UT 84091-1219
EXAMINER
KIM, YUNJU
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
03/11/2021 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.

Opinion for the Board filed by COLAIANNI, Administrative Patent Judge.

Opinion concurring in part and dissenting in part filed by HOUSEL,
Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).

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
Yokohama Rubber Co. LTD. Appeal Br. 3.
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Appellant’s invention is directed to a pneumatic tire comprising a
belt-shaped sound-absorbing member bonded to a tire inner surface in a
region corresponding to a tread portion (Spec. ¶ 1).
Claim 1 is representative of the subject matter on appeal:
1. A pneumatic tire, comprising:
an annular-shaped tread portion extending in a tire
circumferential direction;
a pair of side wall portions disposed on both sides of the
tread portion; and
a pair of bead portions disposed to the inside of the side
wall portions in a tire radial direction,
a plurality of circumferential grooves that extend in the tire
circumferential direction being provided in the tread portion, and
a belt-shaped sound-absorbing member being bonded via an
adhesive layer to a tire inner surface in a region corresponding to
the tread portion along the tire circumferential direction, the tire
being characterized in that:
the sound-absorbing member has a width of 70% to 79%
of a ground contact width of the tire, and the circumferential
grooves included in a region in a tire width direction in which the
sound-absorbing member is disposed have a total width of 25%
to 40% of the width of the sound-absorbing member.
Appellant appeals the following rejections:
1. Claims 1–8, 10, 13, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Nakakita (JP 2011020479 A, published
Feb. 3, 2011, as translated) in view of Tanno (US 2007/0074798
A1, published Apr. 5, 2007) and Murata (US 2010/0212795 A1,
published Aug. 26, 2010).
2. Claims 9 and 11 are rejected under 35 U.S.C. § 103 as
unpatentable over Nakakita in view of Tanno, Murata, and
Yukawa ‘824 (US 2007/0089824 A1, published Apr. 26, 2007).
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3. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over
Nakakita in view of Tanno, Murata, and Kajita
(US 2004/0238094 A1, published Dec. 2, 2004).
4. Claim 15 is rejected under 35 U.S.C. §103 as unpatentable over
Nakakita in view of Tanno, Murata, and Yukawa ‘726 (US
2009/0038726 A1, published Feb. 12, 2009).
FINDINGS OF FACT & ANALYSIS
Claim 1
The Examiner’s findings and conclusions regarding the rejection of
claim 1 over Nakakita, Tanno and Murata are located on pages 4 to 6 of the
Final Action. Our focus in this decision is the Examiner’s analysis of
Nakakita’s disclosure. The Examiner finds, in relevant part, that Nakakita
discloses a tire with a sound absorbing insert but Nakakita does not teach
that the insert has a width from 70 to 79% of the tire ground contact width
(Final Act. 4). The Examiner finds that Nakakita’s teaching that the sound
absorber spans 80 to 120% of the tread ground width (Final Act. 5). The
Examiner finds that even though Nakakita discloses negative effects for the
puncture resistance of the tire when the sound absorbing member width is
less than 80% of the ground tread width, the sound absorber contact width of
79% of a ground contact width recited in claim 1 would have been obvious
(Final Act. 5). The Examiner determines that because the recited sound
absorber contact width of 79% of a ground contact width is so close to 80%
that a person of ordinary skill in the art would have expected it to have the
same properties as a tire with a sound absorber spanning 80% of the ground
contact width (Final Act. 5). The Examiner finds that Nakakita’s range for
the sounds absorber width is merely preferred and does not prohibit values
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outside of the range (Ans. 3). The Examiner states “the effect of the width
less than 80% is unclear enough to be considered as a negative effect.” (Ans.
3).
Appellant argues that Nakakita discloses that sound absorber widths
less than 80% of the ground contact width yield negative effects to the tire
(Appeal Br. 11). Appellant contends that 70 to 79% sound absorber width
relative to the tire’s ground contact width entirely excludes Nakakita’s range
(Appeal Br. 11). Appellant argues that Nakakita teaches that sound absorber
widths less than 80% of the ground contact width fail to provide sufficient
coverage for a tire blowout and causes an unnecessary increase in cost of
mass (Appeal Br. 11). Appellant argues the Examiner has not shown that a
person of ordinary skill in the art would have expected sound absorber width
values outside of Nakakita’s range to have the same properties as those
falling within Nakakita’s range (Appeal Br. 12–13). Appellant cites to In re
Patel, 566 F.Appx. 1005 (Fed. Cir. 2014) for the proposition that proximity
alone is not enough to establish obviousness (Appeal Br. 13).
The claims in Patel concerned a nonwoven fabric made up of polymer
blends. Patel, 566 F.Appx. at 1007. The claims recited a first polymer blend
made up “from 26 weight percent to 80 weight percent” of the nonwoven
material. Id. The prior art disclosed a range for the first polymer blend from
0.5 to 25 weight percent. Id. The court vacated the Board’s determination of
a prima facie obviousness case based solely on the closeness of the ranges
because “the ranges d[id] not overlap and the prior art d[id] not teach that a
broader range would be appropriate.” Id. at 1009. The court found that a
rejection may be appropriate based upon ranges approaching each other
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where “there is a teaching in the prior art that the end points of the prior art
range are approximate, or can be flexibly applied.” Id. at 1010.
The Examiner does not explain sufficiently why a sound absorber
spanning 79% of the ground contact width as recited in claim 1 would have
been rendered obvious by Nakakita’s teaching of a sound absorber spanning
80 to 120% of the ground contact width of the tire. The Examiner’s sole
basis for the obviousness of the claimed range for the sound absorber width
is that the two ranges are close to one another2 (Final Act. 4–5). The
Examiner does not find that the endpoints of the prior art range (i.e., 80% in
Nakakita) may be flexibly applied (i.e., there is some variation around the
endpoints of Nakakita’s range). Rather, Nakakita teaches that going below
80% affects the tire puncture characteristics3 (¶ 38). Specifically, we
understand from Nakakita that using a sound absorber with a width that is
less than 80% of the width of the ground contact width negatively affects the
ability of the tire to cover a puncture in the tire (Nakakita ¶ 38).
In light of Nakakita’s disclosure, we find that the endpoints of
Nakakita’s range are not flexible and would exclude the claimed sound

2 Appellant argues that the Examiner has not shown that sound absorber
width is a result-effective variable (Appeal Br. 12). We do not find the
Examiner’s findings with regard to the sound absorber width to be based on
optimization of the range (Final Act. 4–5). Accordingly, we pass no
judgement on such a theoretical rejection.
3 The Nakakita translation states, “The width Wa . . . of the noise damper 9
in the axial direction of the tire is preferably in the range of 80 to 120% of
the tread ground width TW, and when it is less than 80%, the tire puncture is
sufficiently covered.” This appears to be a typographical error in the
translation in that Appellant states that the translation states “if the width Wa
is less than 80%, the puncture of the tire cannot be sufficiently covered.”
(Reply Br. 4). The Examiner does not specifically address this part of
Nakakita’s translation.
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absorber spanning 79% of the tire’s ground contact width. The Examiner
has not established that Nakakita as combined with the various other
references would have suggested a tire with a sound absorber spanning
between 70 to 79% of the tire’s ground contact width. On this record, we
reverse the Examiner’s § 103 rejections (1) to (4) noted above based on
Nakakita.

New Ground of Rejection
Original claim 1 recites “the sound-absorbing member has a width of
70% to 95% of a ground contact width of the tire.” Original claim 9 recites
“wherein the volume of the sound-absorbing member is more than 20% of
the volume of a cavity formed within the tire when mounted on a rim.”
Claim 1 was amended on July 2, 2018 to shorten the range in claim 1 to 70%
to less than 80%. Claim 1 was amended on February 25, 2019 to further
limit the range from 70 to 79%. Claim 9 was also amended on February 25,
2019 to limit the volume of the sound absorbing member to “at least 21%.”
These amendments were made to overcome the prior art rejections as
discussed above. On this record, we determine the range 70 to 79% and the
“at least 21%” to lack written descriptive support.
The original disclosure of a broader range may support the recitation
of a narrower range, even though the narrower range had not been explicitly
disclosed. In re Wertheim, 541 F.2d 257, 262–63 (CCPA 1976). However,
as noted in Wertheim, determination of questions relating to the written
description requirement depend upon the facts of each particular case. Id.
There are no hard and fast per se rules in this area. Mere comparison of
ranges is not enough. If the written description does not use precisely the
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same terms used in a claim, the question then is whether the specification
directs or guides one skilled in the art to the subject matter claimed. See,
e.g., In re Smith, 458 F.2d 1389, 1394–95 (CCPA 1972); Purdue Pharma
L.P. v. Faulding, Inc., 230 F.3d 1320, 1326 (Fed. Cir. 2000); see also In re
Ruschig, 379 F.2d 990, 994–995 (CCPA 1967).
In this case, Appellant does not direct us to where in the Specification
the claim language is supported or explain the significance in selecting the
79% end point of the range. We find that only Examples 1 and 6–11 in
Tables 1 and 2 of the Specification use a sound absorber spanning 75% of
the tread contact width (Tables 1 and 2). Working Examples 1 and 6–11 are
the only examples provided that are closest to the new endpoint of 79% and
these examples are still 4% away from the claimed endpoint. See, Wertheim,
541 F.2d at 265 (Court found specific disclosed embodiment that recited
36% supported that applicant possessed the narrower range of 35 to 60%
that was carved out of the broader range 25 to 60%). The Specification does
not provide blazemarks or direction to select 79% as the upper limit of the
range for the sound absorber width from the broader disclosed range.
Ruschig, 379 F.2d at 994–95. Rather, the selection of 79% for the spanning
width of the sound absorber is merely to get around Nakakita as prior art.
The Specification’s broad range of 70 to 95% for the sound absorber width
with no direction on selecting 79% as the upper end of the range is
insufficient to show that Appellant had possession of the narrower range of
70 to 79%. A “description need not recite the claimed invention in haec
verba but must do more than merely disclose that which would render the
claimed invention obvious.” ICU Medical, Inc. v. Alaris Medical Systems,
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Inc. 558 F.3d 1368, 1377 (Fed. Cir. 2009). Claim 1 lacks written descriptive
support for the selection of 79% as the upper end of the range.
Claim 9 suffers from a similar problem. Amended claim 9 was
modified from “greater than 20%” to “at least 21%” to get around Yukawa
‘826. Appellant does not direct us to where in the Specification the
amendments to the claims are supported or explain the significance in
selecting the 21% end point of the range. The only disclosure in Appellant’s
Specification is to a sound absorber that occupies “greater than 20%” of the
tire cavity volume (Spec. ¶ 19). The Specification provides no guidance on
selecting 21% as the lower limit on the range. None of the examples in the
Specification disclose what the volume of the sound absorber is relative to
the tire cavity (Tables 1 and 2).
On this record, we reject claims 1–15 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement for the reasons
discussed above.
DECISION
In summary:
Claims
Rejected
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
1–15 112(a) Written Description 1–15
Overall 1–15 1–15
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Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed New
Ground
Outcome

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. . . .
(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.

REVERSED
37 C.F.R. § 41.50(b)

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HOUSEL, Administrative Patent Judge, concurring in part and dissenting in
part.

I concur completely in the new ground of rejection of claims 1–15
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement. However, I write separately to dissent, respectfully, from the
majority decision to reverse the Examiner’s rejection of claim 1 under 35
U.S.C. § 103 as unpatentable over Nakakita in view of Tanno and Murata.
There is no dispute that Nakakita discloses that the sound absorber
width may be in a range of 80–120% of the ground tread width. Nakakita ¶
10. Nakakita further discloses that this range is preferable, and “when it is
less than 80%, the tire puncture is [not] sufficiently covered.” Id. ¶ 38. The
majority states the Examiner’s sole basis for concluding that the range
recited in claim 1 would have been obvious over Nakakita’s range is that
these ranges are close to one another. However, the Examiner’s also finds
that 1) Nakakita’s range is merely preferable, thereby permitting values
outside this disclosed range, and 2) the effect of widths less than 80% is
“unclear enough to be considered as a negative effect.” Ans. 3.
As the majority states, Appellant argues that the Examiner has not
shown that a person of ordinary skill in the art would have expected sound
absorber width values outside Nakakita’s range to have the same or similar
properties as those falling within Nakakita’s range. Appeal Br. 12–13, citing
In re Patel, 556 F.Appx. 1005 (Fed. Cir. 2014). In Patel, the Office argued
that, although the recited range neither overlapped nor abutted the prior art
range, one of ordinary skill in the art would have found the recited range
obvious “because the end points of the ranges are so close to each other.” Id.
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at 1009. The Patel court reversed the obviousness rejection “because the
ranges do not overlap and the prior art does not teach that a broader range
would be appropriate.” Id. Further, the Patel court recognized that a
rejection might be appropriate if the prior art taught the end points of the
prior art range are approximate or can be flexibly applied. Id. at 1010; cf. In
re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018).
Although the Examiner does not artfully explain why one of ordinary
in the art would have reasonably expected the results for sound absorber
widths of 79% and 80% of tire ground contact width to be substantially the
same, in my view, such a determination is nonetheless supported by this
evidentiary record. The Examiner found, without dispute, that Nakakita
teaches that the disclosed range is preferred, thereby suggesting that the
range and its end points may be flexibly applied. In addition, the only
performance properties disclosed by Nakakita that are attributed to this
sound absorber width proportion are sound absorption and tire puncture
protection.
Nakakita does not disclose that a reduction below 80% would affect
sound absorption, though it is reasonable to expect such. However, there is
no evidence or argument that a decrease of only 1% in the sound absorber
would substantially reduce sound absorption, and in my view, an ordinary
artisan would not reasonably expect anything other than a small,
proportional reduction in sound absorbance performance. Further, there is no
evidence that a decrease of only 1% in the sound absorber would
substantially reduce tire puncture protection, and again in my view, an
ordinary artisan would reasonably expect only a small, proportional
reduction in tire puncture protection. Indeed, there is no reason to expect
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much of a difference in tire puncture protection due to a 1% reduction in
sound absorber width, i.e., whether 20% or 21% of the tire ground contact
width is exposed to tire puncture would likely result in little or no change in
actual tire puncture protection.
As indicated in the majority opinion, Appellant initially disclosed and
claimed that the sound absorber width is set in a range of 70–95%. Spec. ¶¶
29–30. Apparently, to avoid Nakakita’s range, Appellant now recites the
range of 70–79%. Appellant discloses a number of examples including 65%,
75%, 85%, 95%, and 98%. However, as the majority opinion explains,
Appellant fails to sufficiently demonstrate unexpected results for the range
of 70–79%. To the contrary, there is little performance difference between
relatively large changes in sound absorber width values, e.g., 75% (Working
Example 1) and 85% (Working Example 2).
Thus, unlike Patel, involving differences in chemical formulation
which the court indicated may produce meaningful differences in results, the
parameter here, the proportion of sound absorber width to tire ground
contact width, is a mechanical property for which there is evidentiary
support for concluding that a 1% difference would not produce a meaningful
difference in results or performance. Brandt, 886 F.3d at 1177–78. For these
reasons, I would affirm the Examiner’s obviousness rejection of claim 1.