The Yokohama Rubber Co., LTD.

Patent Trials and Appeals Board

Sep 2, 2021

2020005135 (P.T.A.B. Sep. 2, 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.
15/317,700 12/09/2016 Atsushi Tanno 3138-415.PCT.US 9788
162045 7590 09/02/2021
THORPE NORTH & WESTERN/YOKOHAMA
P.O. BOX 1219
SANDY, UT 84091-1219
EXAMINER
JOHNSTONE, ADRIENNE C
ART UNIT PAPER NUMBER
1749
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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
____________
Appeal 2020-005135
Application 15/317,700
Technology Center 1700

____________
Before LINDA M. GAUDETTE, DEBRA L. DENNETT, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/317,700 filed Dec. 9, 2016 (“the ’700 App.”); the Non-Final Office
Action dated Apr. 4, 2019 (“Non-Final Act.”); the Final Office Action dated
Oct. 18, 2019 (“Final Act.”); the Appeal Brief filed Jan. 21, 2020 (“Appeal
Br.”); the Examiner’s Answer dated Apr. 30, 2020 (“Ans.”); and the Reply
Brief filed June 30, 2020 (“Reply Br.”).
Appeal 2020-005135
Application 15/317,700
2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 6, and 7 of Application
15/317,700, which constitute all the claims pending in this application.3 We
have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
The subject matter of the invention relates to a pneumatic tire
provided with a surface fastener on the tire inner circumferential surface for
attaching a desired functional object inside the tire. Spec. ¶ 2. Figures 1,
2A, and 2B of the ’700 Application are reproduced below:

Figure 1 is a meridian cross-sectional view of a tire of the present
invention. Spec. ¶ 15.
In Figure 1, tread portion 11 extends in the tire circumferential
direction to form an annular shape, a pair of sidewall portions 12 disposed

2 “Appellant” refers 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.
3 Appellant misidentifies the pending claims as 1–4, 6, 9–13, and 18–22.
Appeal Br. 13, 15.
Appeal 2020-005135
Application 15/317,700
3
on both sides of the tread portion 11, and a pair of bead portions 13 disposed
on the inner side in the tire radial direction of the sidewall portions 12.
Spec. ¶ 17. Carcass layer 14 is mounted between the pair of bead portions
13, and includes a plurality of reinforcing cords extending in the tire radial
direction. Spec. ¶ 18. A plurality of belt layers 17, embedded on the outer
circumferential side of carcass layer 14 in tread portion 11, include a
plurality of reinforcing cords that are inclined with respect to the tire
circumferential direction. Spec. ¶ 19. Steel cords are preferably used as the
reinforcing cords of the belt layers 17. For the purpose of improving the
high-speed durability, at least one belt cover layer 18 is disposed on the
outer peripheral side of the belt layers 17. Spec. ¶ 19. Surface fastener
members 2 are mounted on the tire inner circumferential surface 1. Spec.
¶ 21.

Figures 2A and 2B are views that schematically illustrate the full
circumference of an inner surface of a tire tread portion. Spec. ¶ 15.
Appeal 2020-005135
Application 15/317,700
4
Figures 2A and 2B illustrate a plurality of surface fastener members 2
disposed in a manner in which at least eight surface fastener members 2 are
disposed intermittently on a tread inner circumferential surface. Spec. ¶ 21.
Surface fastener members 2 have a uniform cross-sectional dimension, an
overall band-like shape, and a length L in a tire axial direction of the surface
fastener members 2 from 50% to 120% of a maximum belt width WB of the
pneumatic tire (see Figure 1). Spec. ¶ 21.
Figures 2A and 2B show angle θ, which is between a longitudinal
direction of the surface fastener members 2 and the tire axial direction (X-X
direction). Spec. ¶ 21. In Figure 2A, angle θ is approximately 0 degrees.
Spec. ¶ 21. Figure 2B illustrates a configuration in which angle θ is
approximately 10 degrees. Spec. ¶ 21.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief with the disputed limitation italicized, represents the claimed subject
matter:
1. A pneumatic tire mounted with surface fastener members
for attaching an object to a tire inner circumferential surface,
comprising:
a tread portion, a carcass layer, a plurality of belt layers
on an outer circumferential side of the carcass layer in the tread
portion, the belt layers each including a plurality of reinforcing
cords that are inclined with respect to a tire circumferential
direction so that the reinforcing cords of adjacent belt layers
intersect each other, the inclination angle of the reinforcing
cords being within a range of 10 to 40 degrees;
at least eight surface fastener members having an
intermittent arrangement on a tread inner circumferential
surface of the tread portion,
the surface fastener members having a uniform cross-
sectional dimension,
Appeal 2020-005135
Application 15/317,700
5
an overall band shape, and
a length in a tire axial direction from 50% to 120%
of a maximum belt width of the belt layers of the
pneumatic tire;
wherein an angle θ between a longitudinal direction of
the surface fastener members and the tire axial direction is
from 1 to 45 degrees; and
an installation period in the tire circumferential direction
is from 80% to 150% of the length in the tire axial direction of
the surface fastener members.
Appeal Br. 20 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the pending
claims:
Name Reference Date
Yamashita US 5,458,173 Oct. 17, 1995
Tanno et al.
(“Tanno”)
US 2010/0043951 A1 Feb. 25, 2010
Tanno (“JP
’503”)4
JP 2006044503 A Feb. 16, 2006
Fujita et al. (“JP
’703”)
JP 2008279703 A Nov. 20, 2008

4 The Examiner relies on machine translations of JP 2006044503 A and JP
2008279703 A, to which Appellant does not object.
Appeal 2020-005135
Application 15/317,700
6
REJECTIONS5
The Examiner maintains the rejection of claims 1–4, 6, and 7 as
obvious under 35 U.S.C. § 103(a) over (1) Yamashita in view of JP ’503 and
JP ’703; and (2) Yamashita in view of JP ’503, JP ’703, and Tanno. Final
Act. 3–6.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejection over Yamashita in view of JP ’503 and JP ’703
Appellant argues the claims as a group. Appeal Br. 13–18. We select
claim 1, the sole independent claim, as representative of the group. Claims
2–4, 6, and 7 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The only disputed issue with respect to the rejection of claim 1 over
Yamashita, JP ’503, and JP ’703 is whether the Examiner erred in finding

5 In the Answer, the Examiner withdraws the rejection of claims 4 and 7
under 35 U.S.C. § 112(b) in view of Appellant’s Amendment After Final
Office Action filed Jan. 20, 2020. Ans. 7.
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Application 15/317,700
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that the claimed range for angle θ between a longitudinal direction of the
surface fastener members and the tire axial direction of from 1 to 45 degrees
is obvious over the cited art. See Appeal Br. 13–15.
The Examiner finds that JP ’703 discloses an angle θ of 0 degrees.6
Non-Final Act. 5. The Examiner further finds
[T]he structural difference between 1 degree and 0 degrees is so
small as to be negligible (produces the same 20 mm band width
W of the surface fastener members for the preferred 20 mm
length in the circumferential direction)7 and therefore it would
have been obvious to one of ordinary skill in the art to provide
such an equivalent structure to the 0 degree angle structure due
to a reasonable expectation of success in obtaining the same
results in the 1 degree structure as in the 0 degree structure
(MPEP 2144.05(I)[).] Similarly, a prima facie case of
obviousness exists where the claimed ranges or amounts do not
overlap with the prior art but are merely close. Titanium Metals
Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985).
Final Act. 3.
Appellant argues that the recited range of 1 to 45 degrees for angle θ
“entirely excludes the range of the cited art. The angle of claim 1 is
explicitly not parallel with the tire axial direction while the cited art is only
cited as disclosing the arrangement parallel to the tire axial direction (i.e., 0
degree angle).” Appeal Br. 13. Appellant argues that the Examiner’s
finding that the structural difference between 0 degrees and 1 degree for

6 At the time of the Non-Final Office Action, claim 1 recited “an angle θ . . .
is from 0 degrees to 45 degrees.” See Amendment / Response filed Feb. 6,
2019. Thereafter, Appellant amended claim 1 to recite “an angle θ . . . is
from 1 to 45 degrees.” See Amendment / Response filed July 3, 2019.
7 In the Answer, the Examiner provides a detailed mathematical analysis in
support of this statement. Ans. 7.
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Application 15/317,700
8
angle θ is so small as to be negligible is without evidence. Id. According to
Appellant
The Federal Circuit in In re Patel (Fed Cir 2014) held that the
statement regarding obviousness of non-overlapping ranges
from the Titanium Metals decision was dicta and cannot be
relied upon (the “statement that ‘obviousness exists when the
claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have
expected them to have the same properties’ was dicta”; Id.).
The court in In re Patel further held that “proximity alone is not
enough to establish a prima facie case of obviousness” (id.).
Id. Appellant then states: “In In re Patel, the Federal Circuit stated that
‘even a cursory review of the cases cited in this opinion reveals that not one
were decided after the Supreme Court’s decision in KSR v. Teleflex, a case
recognized as having changed the standards for deciding when a claim i[s]
obvious.’” Id. at 14. Based on the alleged quote from the Federal Circuit,
Appellant states “[t]he Court is suggesting that cases prior to KSR are not
necessarily applicable when determining a standard for obviousness.” Id. at
15.
Appellant’s arguments are unpersuasive of reversible error.
Appellant misreads Patel as holding that the statement in Titanium
Metals regarding obviousness is dicta. It is not. The unpublished,
nonbinding Patel decision stated
While the court in In re Peterson cited the proposition from
Titanium Metals that “a prima facie case of obviousness exists
when the claimed range and the prior art range do not overlap
but are close enough such that one skilled in the art would have
expected them to have the same properties,” id. at 1329 (citing
Titanium Metals, 778 F.2d at 783) (emphasis omitted), that
statement was dicta; all of the ranges in In re Peterson
overlapped at least to some degree.
In re Patel, 566 F. App’x 1005, 1010 (Fed. Cir. 2014). The statement
Appeal 2020-005135
Application 15/317,700
9
identified as dicta is in Peterson, not in Titanium Metals. Because the
ranges in the application and prior art in Peterson overlapped, the statement
that a prima facie case of obviousness exists when the claimed range and the
prior art do not overlap was not necessary to reach the decision, thus could
be considered dicta. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003).
Moreover, our reviewing court stated “[t]he nonbinding holding in
Patel . . . does not stand for the proposition advanced by Appellants that a
claimed range and prior art range must overlap for an examiner to find a
prima facie case.” In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018). In In
re Brandt, the Federal Circuit held claims requiring a coverboard having a
density greater than 2.5 lbs/ft3 and less than 6 lbs/ft3 were obvious over prior
art that disclosed a coverboard with a density between 6 lbs/ft3 and 25 lbs/ft3
because they “are so mathematically close that the examiner properly
rejected the claims as prima facie obvious.” Id. (citing Peterson, 315 F.3d at
1329 (recognizing “that a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are close enough
such that one skilled in the art would have expected them to have the same
properties” (citing Titanium Metals, 778 F.2d at 783))).
In the case before us, the Examiner finds that any structural difference
resulting from a difference between 1 degree and 0 degrees for angle θ “is so
small as to be negligible,” explaining that both angles achieve the same 20
mm band width W of the surface fastener members. Final Act. 3. In the
Answer, the Examiner further details how an angle θ of 1 degree results in
the band width W being 19.99695 mm, as opposed to a band width of 20
mm when an angle θ is 0 degrees. See Ans. 7.
Appeal 2020-005135
Application 15/317,700
10
Although Appellant argues that the Examiner’s calculation “provides
evidence that a difference does indeed exist,” this argument is unpersuasive
of reversible error in the obviousness rejection because the difference is
shown to be negligible. See Haynes Int’l, Inc. v. Jessop Steel Co., 8 F.3d
1573, 1577 n.3 (Fed. Cir. 1993) (stating the Federal Circuit precedent
holding that when the difference between the claimed invention and the prior
art is the range or value of a particular variable, then a prima facie rejection
is properly established when the difference in range or value is minor); In re
Woodrull, 919 F.2d 1575, 1578 (Fed. Cir. 1990); Titanium Metals, 778 F.2d
at 783. The disclosure of JP ’703 that surface functional members are
arranged at substantially equal intervals with substantially uniform gaps (JP
’703, ¶ 20) and the shape of the member “is not particularly limited” (id.,
¶ 24 (emphasis added)) indicates that the value of angle θ may be flexibly
applied. Brandt, 886 F.3d at 1177 (prima facie obviousness may be
appropriate 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). The
Specification supports this determination, as it discloses that “[t]o obtain a
reliable engagement force, it is important that the angle θ . . . is in a range
from 0 degrees to 45 degrees” and “the values of the angle θ should be
understood to include ‘±’ in its meaning.” Spec. ¶ 28. Nothing in the record
before us suggests a meaningful difference between the cited art’s disclosure
(angle θ of 0 degrees) and the claimed range (angle θ of 1 to 45 degrees).
We also note that, contrary to Appellant’s representation, the Federal
Circuit did not state in Patel—or any other case based on our
investigation—that
even a cursory review of the cases cited in this opinion reveals
that not one were decided after the Supreme Court’s decision in
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Application 15/317,700
11
KSR v. Teleflex, a case recognized as having changed the
standards for deciding when a claim in obvious. All of the cited
cases, including Peterson, Woodruff, Titanium Metals, In re
Kumar, 418 F.3d 1361 (Fed. Cir. 2005); In re Oetiker, 977 F.2d
1443 (Fed. Cir. 1992); In re Glaug, 283 F.3d 1335 (Fed. Cir.
2002); In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984); In re
Geisler, 116 F.3d 1465 (Fed. Cir. 1997); In re Clemens, 622
F.2d 1029 (CCPA 1980) and In re Soni, 54 F.3d 746 (Fed. Cir.
1995), are prior to the KSR decision.
Appeal Br. 14–15. Thus, Appellant’s contention that Titanium Metals and
other cases pre-dating KSR are no long necessarily applicable as a result of
the Federal Circuit’s statement is erroneous.
For the above reasons, we affirm the rejection of claim 1 as obvious
over Yamashita in view of JP ’503 and JP ’703. For the same reasons, we
affirm the rejection of dependent claims 2–4, 6, and 7.
Rejection over Yamashita in view of JP ’503, JP ’703, and Tanno
Because this rejection merely includes an additional reference to the
rejection we affirm above,8 we affirm this rejection of claims 1–4, 6, and 7
for the reasons provided supra.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6, 7 103(a) Yamashita, JP ’503, JP ’703 1–4, 6, 7

8 The Examiner relies on Tanno solely to “reinforce[] the teaching of JP ’703
to minimize the circumferential length of the surface fastener members to
facilitate circumferential expansion of the tire during molding.” Final Act. 5.
Appeal 2020-005135
Application 15/317,700
12
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6, 7 103(a) Yamashita, JP ’503, JP ’703, Tanno 1–4, 6, 7
Overall
Outcome
1–4, 6, 7
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).
AFFIRMED