Ex Parte Colby et al

Patent Trial and Appeal Board

Feb 23, 2017

13062946 (P.T.A.B. Feb. 23, 2017)

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.
13/062,946 03/08/2011 E. Bruce Colby P50-0284-US-PCT 8919
77432 7590 02/27/2017
HAHN LOESER & PARKS, LLP - MICHELIN
200 Public Square, Suite 2800
Cleveland, OH 44114
EXAMINER
ROGERS, MARTIN K
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
PATENTS @ HAHNLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte E. BRUCE COLBY, NATHAN J. PANNING,
and CESAR E. ZARAK
Appeal 2016-000435
Application 13/062,946
Technology Center 1700
Before TERRY J. OWENS, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seeks our review under 35 U.S.C. § 134(a) of a decision
of the Primary Examiner to reject claims 1—3, 31—33, and 38—41.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is stated to be “MICHELIN RECHERCHE
ET TECHNIQUE S.A.” (App. Br. 3).
Appeal 2016-000435
Application 13/062,946
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key disputed limitations):
1. A method of repairing a damaged portion of a tire, the method
comprising the steps of:
buffing an interior surface of the tire about a perimeter of the damaged
tire portion to form a patch receiving surface, the interior surface being
buffed to a depth sufficient to place each of a plurality of patch
reinforcements of a tire patch a common distance greater than 1 millimeter
from any damaged tire reinforcement of a plurality of damaged tire
reinforcements, each reinforcement not more than 3 millimeters from a
corresponding nearest damaged reinforcement of the plurality of damaged
tire reinforcements, the plurality of damaged tire reinforcements arranged
adjacent the patch receiving surface, the common distance extending in a
direction perpendicular to a tangent of the tire at a measured point anywhere
along an entire length of the plurality of damaged tire reinforcements and in
a direction perpendicular to a tangent of the tire at a measured point
anywhere within the patch receiving surface towards the tire thickness in the
damaged tire portion, where the common distance is maintained along the
entire length of the plurality of damaged tire reinforcements;
covering the damaged portion by applying the patch to the patch
receiving surface along the interior surface of the tire, the tire patch being
preassembled and sized to cover the damaged portion, such patch including
a patch reinforcement layer interposed between an air-impermeable layer
and a tire-contacting surface of the patch, the plurality of patch
reinforcements being contained within the patch reinforcement layer and
being positioned such that each of the plurality of patch reinforcements is
spaced the common distance greater than 1 millimeter from any damaged
tire reinforcement of a plurality of damaged tire reinforcements, each
reinforcement not more than 3 millimeters from the corresponding nearest
damaged tire reinforcement along the entire length of the plurality of
damaged reinforcements when the patch is applied to the patch receiving
surface, wherein each of the plurality of patch reinforcements is
characterized by having a high tensile modulus of at least 10 GPa and the
patch reinforcement layer is characterized as being a high tensile modulus
layer having a minimum effective tensile modulus of 5 GPa, the patch
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Application 13/062,946
further including an adhesive layer at least partially forming a portion of the
contacting surface; and,
curing the patch to the tire.
The Examiner maintains and Appellants appeal the following
rejections:
Claims 1-3, 31-33, and 38-41 are rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement;
Claims 1-3, 31-33, and 38-41 are rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite;
Claims 1-3, 31-33, and 38-41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of Ferrara (US 5,139,840
issued Aug. 18, 1992), Fujiwara (US 2009/0229737 A1 published Sep. 17,
2009), and Mechanics of Pneumatic Tires 130-138 (hereinafter MPT);2
Claims 1-3, 31-33, and 38-41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of Aarts (NT 9302004 A
published Nov. 11, 1993), White (US 3,730,247 issued May 1, 1973) Saito
(JP 9-244124 published Sep. 24, 1996) Saito (JP 7-172123 published Jul. 11,
1995) and MPT.3
2 The Examiner in this line of rejection additionally applied Wolf to
dependent claims 33, 40, and 41 (Final Action 10); and Aarts to dependent
claims 38 and 39 (Final Action 11).
3 The Examiner in this line of rejection additionally applied Wolf to
dependent claims 33, 40, and 41 (Final Action 16).
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Application 13/062,946
ANALYSIS
The §112 written description and indefiniteness rejections
Both of the § 112 rejections are concerned with the same/similar
claim phrases as being not described, as well as indefinite.
Upon consideration of the appeal record, we reverse both of the
Examiner’s § 112 rejections essentially for the reason set out in Appellants’
briefs (App. Br. 14-16; Reply Br. 3-5).
In order to evaluate the alleged lack of written description set out by
the Examiner, the claim terms must be given the broadest reasonable
interpretation in their ordinary usage as they would be understood by one of
ordinary skill in the art in light of the written description in the specification,
including the drawings, as interpreted by this person, unless another
meaning is intended by appellant as established in the written description of
the specification, and without reading into the claims any limitation or
particular embodiment disclosed in the specification. See, e.g., In re Morris,
111 F.3d 1048, 1054-55 (Fed. Cir. 1997).
The Examiner has the burden of making out a prima facie case that
the appealed claims do not comply with § 112, first paragraph, written
description requirement, by setting forth evidence or reasons why, as a
matter of fact, the written description in Appellants' disclosure, including the
figures, would not reasonably convey to persons skilled in this art that
Appellants were in possession of the invention defined by the claims,
including all of the limitations thereof, at the time the application was filed.
See, e.g., In re Alton, 76 F.3d 1168, 1172, 1175-76, (Fed. Cir. 1996), citing
In re Wertheim, 541 F.2d 257, 262-64 (CCPA 1976).
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Application 13/062,946
The Examiner focusses on the Specification not using the exact
phrases as in the claim (e.g., Ans. 7 (pointing out the “tangent” language of
claim 1 is not in the Specification)); however, it is well established that the
claim need not use the same words as the specification, it is enough that one
of ordinary skill in the art would recognize that the inventor invented what is
claimed. Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997
(Fed. Cir. 2000).
For all the reasons presented by Appellants, we conclude Appellants'
Specification and drawings conveys with reasonable clarity to those skilled
in the art that, as of the filing date sought, Appellants were in possession of
the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991).
Thus, we reverse the Examiner's decision to reject the claims for
failure to meet the written description requirement.
With respect to the 112 rejection based on indefmiteness, claims are
definite if they “set out and circumscribe a particular area with a reasonable
degree of precision and particularity. It is here where the definiteness of the
language employed must be analyzed—not in a vacuum, but always in light
of the teachings of the prior art and of the particular application disclosure as
it would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
As Appellants’ state
While the amended claims may be organized in a
verbally different manner than that of the original specification,
the Fegal Basis for Arguments of the Appeal Brief and other
authority make clear that the Office is proscribed from
imposing an in haec verba requirement. Appellants emphasize
"rephrasing of a passage does not constitute new matter.
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Application 13/062,946
Accordingly, a rewording of a passage where the same meaning
remains intact is permissible." MPEP § 2163.07(1) citing In re
Anderson, 471 F.2d 1237 (CCPA 1973). With this understood,
all claims under appeal find support and definiteness in the
specification as filed.
(Reply Br. 3)
Appellants also point out
In one example, the Examiner states "A plain reading of
the phrase 'entire' length of the damaged tire reinforcements
encompasses interpretations which are unclear in intended
scope and seemingly physically impossible." Physically
impossible embodiments would obviously be inconsistent with
the specification. However, physically possible and reasonable
interpretations are embraced consistent with the specification,
and thus should be the interpretations utilized in determining
the scope and meaning of the claim language. The Examiner's
Answer makes at least three different statements that the
interpretations upon which rejection rests are physically
impossible. See, e.g., Examiner's Answer p. 9, second para, and
p. 10, first new para. The Examiner's interpretations are thus by
definition unreasonable, and cannot be used for purposes of
examining the application for patentability.
(Reply Br. 4; emphasis in original)
We reverse the Examiner’s § 112 rejection of 1-3, 31-33, and 38-41
based on indefmiteness, since we agree with Appellants that one of ordinary
skill in the art would have understood the broadest reasonable interpretation
of the claim language in light of the Specification and drawings, as discussed
throughout the prosecution history.
The §103 Rejections
On the other hand, upon consideration of the evidence on this record
and each of Appellants’ contentions, we find that the preponderance of
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Application 13/062,946
evidence supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art. We sustain the
Examiner’s § 103 rejections essentially for the reasons set out by the
Examiner in the Final Action and Answer.
Appellants’ arguments are mainly directed to the lack of any explicit
disclosure in the applied prior art4 that the spacing of tire patch
reinforcements from damaged tire reinforcements is within the claimed
range of greater than 1 millimeter to not more than 3 millimeters, and/or that
this spacing is not a known result effective variable (App. Br. 20-24).
A preponderance of the evidence supports the Examiner’s finding that
MPT evidences that the cord spacing is important and cords should not rub
against one another in a tire, and is sufficient to establish that the tire cord
spacing is a result effective variable (Ans. 20, 21 (explaining that “[i]t
follows that it would be obvious to control the spacing between the patch
cords and the tire cords in order to prevent the patch cords from rubbing
against the cords of the tire in use’)). A “recognition in the prior art that a
property is affected by the variable is sufficient to find the variable result-
effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012). As pointed out by the Examiner, one of ordinary skill would
appreciate that “MPT discourages the frictional rubbing between two plies
of cords in a tire and the reinforced patch of Ferrara [or Aarts] brings a first
ply of (patch) cords against a second ply of (tire) cords” (Ans. 21). Further,
a preponderance of the evidence supports the Examiner’s determination that
4 Appellants’ arguments focus mainly on the rejection based on Ferrara
(App. Br., Reply Br. generally), but also include the rejection based on Aarts
(e.g., App. Br. 18,23).
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Application 13/062,946
Aarts shows that it is well known to situate the depth of a tire patch so patch
cords are separated from tire cords, and this distance affects the transmission
of forces therebetween (Ans. 18, 19; App. Br. Reply Br. generally).
Thus, as indicated by the applied prior art and the Examiner, one of
ordinary skill would have appreciated that the tire patch cord/tire cord
spacing is a result-effective variable in a patched tire (e.g., Ans. 3).
Moreover, it is well settled that it would have been obvious for an artisan
with ordinary skill to develop workable or even optimum ranges for result-
effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference
between the claimed invention and the prior art is some range, the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results). Thus, the claimed range of
greater than 1 millimeter to not more than 3 millimeters for the distance
between patch and tire reinforcements as recited in claim 1 (see also, Spec.
119) is deemed within the level of ordinary skill in the art.
The burden of showing unexpected results rests on the person who
asserts them by establishing that the difference between the claimed
invention and the closest prior art was an unexpected difference. See In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). Further, a showing of unexpected result
supported by factual evidence must be reasonably commensurate in scope
with the degree of protection sought by the claims on appeal. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980).
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Application 13/062,946
The Examiner’s determination that the alleged unexpected results in
the Zarak declarations dated March 4, 2014 and Oct. 4, 2013 (App. Br. 33,
34) are not commensurate with the claimed invention is reasonable, since the
optimum range of 1.2 to 3.7mm is not in accordance with that claimed, and
only one example of a tire was tested (Ans. 23, 24). Likewise the
Examiner’s determination that the results are not unexpected in view of
MPT are also reasonable (Ans. 24), especially since the results are compared
to a misreading of Ferrara that removes all rubber from the tire cords (e.g.,
Ans. 20; see also Ans. 16, 17; App. Br. 33 ). As pointed out by the
Examiner, the proffered showing also does not adequately address the prior
art of Aarts (e.g., Ans. 26).
Accordingly, all of the Examiner’s 103 rejections on appeal are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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