THE YOKOHAMA RUBBER CO., LTD.

Patent Trials and Appeals Board

Mar 1, 2021

2020002114 (P.T.A.B. Mar. 1, 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.
15/038,020 05/19/2016 Atsushi Tanno 3138-366.PCT.US 5572
162045 7590 03/01/2021
THORPE NORTH & WESTERN/YOKOHAMA
P.O. BOX 1219
SANDY, UT 84091-1219
EXAMINER
KIM, YUNJU
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
03/01/2021 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 2020-002114
Application 15/038,020
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY, and
LILAN REN, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–6, 8, 9, 11–13, 15, 16, and 18–24.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies The Yokohama Rubber Co., LTD., as the real party in interest.
Appeal Br. 3.
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Application 15/038,020

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BACKGROUND
The invention relates to a pneumatic tire having a sound-absorbing
member adhered to a tire inner surface. Spec. 1. According to the
Specification, adhering a sound-absorbing member along the inner surface in
the tread region of a tire can reduce cavity resonance noise caused by tire
vibration. Id. However, unevenness at spliced portions of tire component
layers is said to deform the sound-absorbing member’s adhesive layer,
causing the sound-absorbing member to peel from the tire inner surface. Id.
The Specification describes adhering a sound-absorbing member to a tire
inner surface that does not include a spliced portion of tire component
layers. Claim 1 is the sole independent claim and reads as follows:
1. A pneumatic tire comprising:
a tread section forming an annular shape extending in a
tire circumferential direction;
a pair of side wall sections arranged on both sides of the
tread section; and
a pair of bead sections arranged inside in a tire radial
direction of the side wall sections, wherein
a tire constituent member is provided in at least the tread
section, extending in the tire circumferential direction and
spliced at any position in the tire circumferential direction, a
belt-shaped sound-absorbing member is adhered to a region
corresponding to the tread section in a tire inner surface, along
the tire circumferential direction and via an adhesive layer, the
sound-absorbing member is formed of a porous material having
open cells, the sound-absorbing member is arranged
intermittently along the tire circumferential direction so as to be
exposed to the tire inner surface, sections where the sound-
absorbing member is missing are arranged at positions
corresponding to a splice portion of the tire constituent
member, and the sound-absorbing member is arranged so as to
not overlap the splice portion.
Appeal Br. 20 (Claims Appendix) (emphasis added).
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Application 15/038,020

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REJECTIONS
I. Claims 1–6, 11–13, 18, and 20–24 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Yukawa ’686 (US 2005/0155686 A1, published
July 21, 2005) and Tsukada (US 2004/0206440 A1, published Oct. 21,
2004).
II. Claims 8 and 15 stand rejected under 35 U.S.C. § 103 as unpatentable
over Yukawa ’686, Tsukada, and Yukawa ’251 (US 2005/0098251 A1,
published May 12, 2005).
III. Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over
Yukawa ’686, Tsukada, and Yukawa ’551 (US 2009/0277551 A1, published
Nov. 12, 2009).
IV. Claims 16 and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Yukawa ’686, Tsukada, Yukawa ’251, and Yukawa ’551.
V. Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable over
Yukawa ’686, Tsukada, and Tanno (JP 2006044503 A, published Feb. 16,
2016, as translated).

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
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knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
The sole independent claim on appeal—claim 1—recites, inter alia, a
“sound-absorbing member [that] is arranged so as to not overlap the splice
portion” of a tire constituent member. The Examiner finds Yukawa ’686
discloses adhering a sound-absorbing member to an inner surface of a tire,
but does not teach arranging the sound-absorbing member so that it does not
overlap any tire constituent splice. The Examiner finds Tsukada would have
provided a reason to so-position the sound-absorbing member of Yukawa
’686—namely, “to prevent cutting the sound-absorbing member in the splice
portion of the tire constituent member when the tire constituent is cut during
tire forming.” Non-Final Act. 6. Appellant argues, inter alia, the purpose
taught by Tsukada and relied upon by the Examiner would have been
inapplicable to the tire structure disclosed in Yukawa ’686. Appeal Br. 13–
14; Reply Br. 6–7. Particularly, Appellant contends Yukawa ’686 teaches
attaching the sound-absorbing member only after a tire has been formed,
such that the sound-absorbing member would not have been present during
any cutting or splicing steps performed during Tsukada’s tire fabrication
process. Appeal Br. 13; Reply Br. 7.
There is no dispute Yukawa ’686 teaches attaching a noise
suppressing body to the inner liner of a tire such that the noise suppressing
body extends into the tire cavity. Yukawa ’686 ¶¶ 38–39, Fig. 1. As
Appellant points out, Yukawa ’686 teaches attaching the noise suppressing
body to the tire-side cavity surface either at the time of or after vulcanization
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molding. Appeal Br. 13–14 (citing Yukawa ’686 ¶¶ 49–50). In either case,
Yukawa ’686 plainly teaches attachment to the inner surface of an existing
tire cavity. Yukawa ’686 ¶ 49 (“a fixing method for fixing tire-side noise
suppressing body 10 to the tire-side cavity surface 4S1”).
Tsukada teaches embedding volume adjusting members between an
inner layer and carcass layer in the bead section of a tire. Tsukada ¶ 6. To
accomplish that result, Tsukada provides volume adjusting members
crimped to a sheet inner liner material, which is cut, delivered to a forming
drum, and spliced. Id. ¶ 20. Thereafter, a sheet carcass material is wound
over the sheet liner material on the forming drum. Id. ¶ 21. Subsequently,
the wound materials are vulcanized in a mold. Id.
Applying Tsukada’s forming technique to Yukawa ’686 would have,
at best, resulted in the noise suppressing member being embedded between
an inner liner layer and a carcass layer, contrary to the result desired in
Yukawa ’686. To obtain the noise suppressing member positioned on the
interior of the tire cavity—that is, on the opposite side of the liner layer
relative to Tsukada’s volume adjusting members—it would have been
necessary to deliver the sheet liner material to the forming drum with the
noise suppressing member located between the liner material and the drum.
The Examiner does not provide evidence or technical reasoning to explain
why or how such a reconfiguration of Tsukada’s forming process would
have been feasible, much less suggested. To the contrary, the Examiner
does not substantively address or explain how Tsukada’s forming drum
technique could have been applied to yield the cavity-side noise suppressing
body taught by Yukawa ’686. Rather, as persuasively argued by Appellant,
Yukawa ’686 requires attaching the noise suppressing member only after the
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tire cavity is formed, such that the noise suppressing member would not
have been present during any forming drum fabrication steps. Accordingly,
Tsukada’s teaching regarding avoidance of cutting volume adjusting
elements present during drum fabrication would not have served as a reason
to modify positioning of the noise suppressing member in Yukawa ’686.
It is well-established that “rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Having reviewed the Non-Final Action and the Examiner’s Answer, we are
persuaded that the Examiner has not met the burden of articulating sufficient
reasoning to support the legal conclusion of obviousness.
For the foregoing reasons, Rejection I is not sustained.
The Examiner does not rely on additional prior art or reasoning in any
of Rejections II–V in a manner that overcomes the foregoing deficiency with
regard to claim 1. Accordingly, each of Rejections II–V also is not
sustained.
CONCLUSION
The Examiner’s decision rejecting claims 1–6, 8, 9, 11–13, 15, 16,
and 18–24 is reversed.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 11–13,
18, 20–24
103 Yukawa ‘686,
Tsukada
1–6, 11–13,
18, 20–24
8, 15 103 Yukawa ’686,
Tsukada, Yukawa
’251
8, 15
9 103 Yukawa ’686,
Tsukada, Yukawa
’551
9
16, 18 103 Yukawa ’686,
Tsukada, Yukawa
’251, Yukawa ’551
16, 18
19 103 Yukawa ’686,
Tsukada, Tanno
19
Overall
outcome
1–6, 8, 9,
11–13, 15,
16, 18–24

REVERSED