Ex Parte Colby et al

Patent Trial and Appeal Board

Jan 30, 2018

12744063 (P.T.A.B. Jan. 30, 2018)

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.
12/744,063 05/21/2010 E. Bruce Colby P50-0249-US-PCT 8997
77432 7590 02/01/2018
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
02/01/2018 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 and CESAR ENRIQUE ZARAK
Appeal 2016-000461
Application 12/744,0631
Technology Center 1700
Before DONNA M. PRAISS, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
maintained rejection of claims 1, 4—6, 8, 9, 11, 13, 14, and 22—30. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as MICHELIN RECHERCHE
ET TECHNIQUE S.A. Appeal Br. 3.
Appeal 2016-000461
Application 12/744,063
CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal relates to methods of
applying a repair patch to a damaged portion of a tire. Specification filed
May 21, 2010 (“Spec.”), Abstract. The method relies on the use of a repair
patch having removable protective sheets that cover the bonding surface of
the patch, allowing the patch to be positioned prior to removal of the
protective sheets and exposure of the bonding surface to the tire. Spec. 14.
As set forth in each independent claim, each protective sheet is folded onto
itself and arranged on the repair patch to provide an inner and outer
protective layer. Claims 1, 30. In use, as depicted in Figures 4—8, pulling a
tab on the edge of the outer protective layer opposite the fold in the
protective sheet peels back the inner protective layer thereby removing the
protective sheet.
Independent claims 1 and 30 are representative.
1. A method for applying a repair patch to a damaged
portion of a tire, the method comprising:
removably positioning the repair patch in a repair position
overlapping the damaged portion, the damaged portion
including a depressed area and the repair patch including
a body and a protective layer having a plurality of
protective sheets covering a bonding surface,
the plurality of protective sheets each having a fold arranging
each of the plurality of protective sheets into an internal
sheet layer engaging the bonding surface and an external
sheet layer extending along a direction of patch length
from the fold to an edge of the repair patch opposite the
fold,
each external sheet layer forming a tab that by pulling uncovers
an associated portion of the bonding surface covered by
each connected internal sheet layer within the repair
position,
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the plurality of protective sheets comprising one or more
depression sheets having one or more depression sheet
widths associated with each of the one or more
depression sheets, where a sum of the one or more
depression sheet widths is approximately equal to a
depressed area width of the depressed area within the
damaged tire portion;
pulling a first tab and translating a first fold, thereby uncovering
the associated portion of the bonding surface, the first tab
is the tab associated with one of the plurality of
protective sheets; and
pressing the associated portion of the bonding surface into
contact with the damaged portion during translating of
the first fold, removing air between the repair patch and
the damaged portion and preventing bridging of the
repair patch.
30. A method for applying a repair patch to a damaged
portion of a tire, the method comprising:
removably positioning the repair patch in a repair position
overlapping the damaged portion,
the repair patch including a body and a plurality of protective
sheets covering a bonding surface,
the plurality of protective sheets including a central pair of
opposing protective sheets covering a central portion of
the bonding surface, a first adjacent pair of opposing
protective sheets covering a first abutting portion of the
bonding surface adjacent to the central portion of the
bonding surface, and a second adjacent pair of opposing
protective sheets covering a second abutting portion of
the bonding surface adjacent to the central portion of the
bonding surface and opposite the first abutting portion
across the central portion of the bonding surface,
the plurality of protective sheets each having a fold arranging
each of the plurality of protective sheets into an internal
sheet layer engaging the bonding surface and an external
sheet layer extending in a direction of patch length from
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each fold toward an edge of the repair patch opposite
each fold,
the external sheet layer forming a tab that by pulling uncovers a
portion of the bonding surface covered by the internal
sheet layer within the repair position;
pulling a first central tab of the central pair of opposing
protective sheets, translating a first fold of the central
pair of protective sheets and uncovering a first central
portion of the central portion of the bonding surface; and
pressing the first central portion into contact with the damaged
portion during translating of the first fold, removing air
between the repair patch and the damaged portion and
preventing bridging of the repair patch.
Appeal Brief filed March 20, 2015 (“Appeal Br.”), 45, 50-51.
THE REJECTIONS
Claims 1, 4—6, 8, 9, 11, 13, 14, and 22—29 stand rejected under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement.2
Claims 1, 4—6, 8, 9, 11, 13, 14, and 22—30 stand rejected under
35 U.S.C. § 112, second paragraph as being indefinite.
2 As the pending application was filed prior to the effective date of the AIA
(America Invents Act), the pre-AIA statute is applicable.
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Claims 1, 4—6, 9, 11, 13, 14, and 22—30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Helfenbein,3 Arquilla,4 Kay,5 Dupelle,6
Miyaji,7 Trigg,8 and Propp.9
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Helfenbein, Arquilla, Kay, Dupelle, Miyaji, Trigg, and Propp, in further
view of Durif.10
Claims 1, 4—6, 8, 9, 11, 13—14, and 22—24 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Gruber* 11 in view of Kay, Dupelle,
Helfenbein, Arquilla, Miyaji, Trigg, and Propp.
DISCUSSION12
We have reviewed the maintained grounds of rejection set forth by the
Examiner, Appellants’ arguments, and the Examiner’s response. We are
persuaded that the Examiner erred reversibly in determining that claims 1,
4—6, 8, 9, 11, 13, 14, and 22—29 fail to comply with the written description
requirement of 35 U.S.C. § 112. We are persuaded that the Examiner erred
3 Helfenbein, DE 3926946 Al, published January 10, 1991.
4 Arquilla, US 4,385,651, issued May 31, 1983.
5 Kay, US 5,713,842, issued February 3, 1998.
6 Dupelle et al., US 7,027,877 B2, issued April 11, 2006.
7 Miyaji, JP 2001-279835, published October 10, 2001. A machine
translation into English is used, which use is not contested.
8 Trigg et al., US 2006/0037507 Al, published February 23, 2006.
9 Propp, US 7,025,749 B2, issued April 11, 2006.
10 Durif, US 4,424,088, issued January 3, 1984.
11 Gruber, US 2,638,955, issued May 19, 1953.
12 In this discussion, we refer to the Specification, the Final Office Action
dated November 19, 2014 (“Final Act.”), the Appeal Brief, the Examiner’s
Answer dated August 3, 2015 (“Ans.”), and the Reply Brief filed October 5,
2015 (“Reply Br.”).
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reversibly in determining that claims 1, 4—6, 8, 9, 11, 13, 24, and 26—30, are
indefinite within the meaning of35U.S.C. § 112, but are unpersuaded of
reversible error as to claims 14, 22, 23, and 25. We are persuaded that the
Examiner erred reversibly in determining that claims 1, 4—6, 9, 11, 13, 14,
and 22—29 are unpatentable over the cited prior art under 35 U.S.C. § 103,
but are unpersuaded of reversible error as to claim 30.
For any ground of rejection, “the Examiner bears the initial burden . . .
of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). We consider the record to determine whether
Appellants have identified reversible error in the Examiner’s rejection. See
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
examiner’s rejections” (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential))). Further, “the burden of showing that the error is
harmful normally falls upon the party attacking the agency’s determination.”
In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (quoting Shinseki v.
Sanders, 556 U.S. 396, 409 (2009)).
We address below each claim separately argued by Appellants.
Written Description
The Examiner finds a lack of written description support in the
Specification for the “sum of the one or more depression sheet widths
[being] approximately equal to a depressed area width,” at least for the
constructively elected invention having an abutting-folds arrangement as
shown in Figures 3 and 10 (Final Act. 3—4), because the sum of the widths of
the two depression sheets 38 is double the width of the depression {id. at 3).
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The Examiner’s position is grounded on the addition of widths of each
depression sheet. Ans. 3—5.
The Examiner further finds a lack of written description support in the
Specification for depression sheet widths each having more than one width.
Final Act. 3; Ans. 2—3.
Appellants cite paragraphs 34 and 46 as written support.13 Appeal
Br. 18—19. The cited support includes, inter alia, that “each depression
sheet has a width, such that one or more depression sheets have a collective
width that approximates a width of the depressed area” (Spec. 31) and that
“[e]ach depression sheet 38 may ... be combined with other depressed
sheets 38 to collectively approximate the width w of depressed area 44” {id.
at 43 (bolding omitted)). Appellants contend that the claim language
reasonably means that the widths of depression sheets are such that the
depression sheets collectively approximate the width of the depressed area
and that each depression has a width, but that the widths of the depression
sheets need not be the same when more than one depression sheet is used to
approximate the width of the depressed area. Appeal Br. 18—19; Reply
Br. 3^4.
To satisfy the written description requirement, “the applicant must
‘convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.’” Carnegie
Mellon University v. Hoffman-La Roche Inc., 541 F.3d 1115, 1122 (2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir.
1991)).
13 Appellants cite to paragraph numbers of the corresponding published
application, US 2010-0258229 Al.
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On the record before us, we find the Appellants have conveyed the
claimed invention with reasonable clarity to those skilled in the art that they
were in possession of the invention as claimed, as the claims are construed
to require whatever widths are necessary for the depression sheets, as
arranged in the repair patch, to cover, but not extend beyond, a width
approximating the width of a depressed area within the damaged tire portion.
Accordingly, we do not sustain the written description rejection of
claims 1, 4—6, 8, 9, 11, 13, 14, and 22—29.
Indefiniteness
The Examiner determines various claims to be indefinite on a number
of different bases. Final Act. 4—10; see also Ans. 5—11. A claim fails to
meet the statutory requirement that the claim be definite if the language is
ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention. In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014). Our reviewing court has held that when the USPTO has
initially issued a well-grounded rejection that identifies ways in which the
language in a claim is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention, and thereafter the
applicant fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirement that the claims
be definite. Id. at 1313—14. The court explained a satisfactory response can
take the form of modification of the language identified as unclear, a
separate definition of the unclear language, or, in appropriate circumstances,
“persuasive explanation for the record of why the language at issue is not
actually unclear.” Id. at 1311.
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With the exception of claims 14, 22, 23, and 25, we find the
Examiner’s § 112, second paragraph rejections are not well founded and are
adequately addressed by the Appellants. Appeal Br. 20-22; Reply Br. 3—5.
The Examiner’s general position is that certain terms lack antecedent
basis in the claims. Regarding claim 14, it is unclear whether “one of each
tab” referenced in “the step of pulling one of each tab” refers to the tab of a
depression sheet or to the tab of a protective sheet. Final Act. 7; see also
Ans. 8. Claim 13, from which claim 14 depends, recites “the one or more
depression sheets are removed . . . before any other of the . . . protective
sheets are removed in accordance with the steps of pulling and pressing,”
such that the recited “step[] of pulling” refers to protective sheets other than
depression sheets. Claim 1, from which claim 13 depends, recites both
“pulling a first tab” and that “each external sheet layer form[s] a tab that by
pulling uncovers an associated portion,” but these also fall short of providing
sufficient antecedent basis for “the step of pulling one of each tab.”
Claim 14 is, accordingly, ambiguous, vague, incoherent, opaque, or
otherwise unclear in defining the invention such that the Examiner can
properly require a satisfactory response. Packard, 751 F.3d at 1313—14.
Appellants’ contention that “the claim as pending is proper” (Appeal
Br. 22) and citation to portions of the Appeal Brief that lack cogent
argument directed to the particular deficiencies identified by the Examiner
(Reply Br. 4) are not a satisfactory response and are, thus, insufficient to
establish reversible error in the rejection of claim 14. Claims 22, 23, and 25,
depending directly or indirectly from claim 14, are indefinite by virtue of
their dependency from an indefinite claim.
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We agree with Appellants, however, that the recited terms identified
by the Examiner in claims 1, 4, 6, 11, 24, 29, and 30 are reasonably clear in
the context of the particular claim.
Regarding the Examiner’s position that “the sum of the one or more
depression sheets” is indefinite because the sum of widths of a pair is greater
than the width of the depressed area and depression sheets each have more
than one width (Final Act. 5), we find the Appellants’ arguments persuasive
for reasons discussed above in connection with the written description
rejection.
As to claim 29, the Examiner’s determination that “the phrase ‘a third
and fourth adjacent sheet of the second adjacent pair’ is arguably unclear . . .
as requiring a pair of sheets possessing at least four sheets” (Final Act. 10) is
not supported by the record because the claim simply sets forth that two
pairs of adjacent sheets provide four sheets, the first two—the first and
second—coming from the first adjacent pair and the second two—the third
and fourth—coming from the second adjacent pair.
As to claim 30, the Examiner’s determination that “the phrase ‘the
external sheet’ and ‘the internal sheet’ are unclear” (Final Act. 10) is not
supported by the record either because claim 30 actually recites “the external
sheet layer” and the “internal sheet layer,” which terms are sufficiently
defined in the claim.
Obviousness
Helfenbein, Arquilla, Kay, Dupelle, Miyaji, Trigg, and Propp
The Examiner relies on Helfenbein and Arquilla for their disclosures
of applying repair patches to a damaged portion of a tire. Final Act. 12. The
Examiner finds Helfenbein discloses positioning a repair patch 16 in a
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position overlapping the damaged portion of a tire 10 where an adhesive
surface of the patch is exposed by removal of protective layer. Final Act. 12
(citing Helfenbein, Fig. 1, last paragraph). The Examiner also finds
“Helfenbein discloses applying the patch into and around a depressed area.”
Final Act. 13 (citing Helfenbein, Fig. 1). The Examiner further finds
Arquilla discloses a method that includes removing a protective layer that
covers the patch adhesive and then applying the adhesive of the patch into
contact with the tire, and that the method can be used to “patch[] a
depression in the tire wall.” Final Act. 12 (citing Arquilla, Abstract, col. 3,
11. 30-32, col. 4,11. 34—36, Fig. 5)).
The Examiner relies on the additional cited references for disclosing
the further recited aspects of the protective sheets, as arranged, and how they
are removed when applying an adhesive-bearing, sheet-like element. Final
Act. 12-16.
The Examiner relies on Kay for disclosing the configuration of a
protective sheet of an adhesively-bonded laminate such that the protective
sheet is folded to form internal and external sheet layers that function in like
manner to those according to the disclosed invention, allowing positioning
the adhesive laminate with protective sheets in position for use, pulling a tab
associated with the external sheet to expose a portion of the bonding surface,
and pressing the uncovered bonding surface into contact with the substrate.
Final Act. 12 (citing Kay col. 4,11. 1—3, col. 9,11. 23—34, 57—60, Fig. 3). The
Examiner further finds Kay discloses “that this has the benefit of avoiding
the creation of. . . wrinkles or tunnels . . . and avoiding the adhesive from
sticking to itself.” Final Act. 12—13 (citing Kay col. 1,11. 42-45, 51—54).
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The Examiner similarly relies on Dupelle for its highly analogous
disclosure, also directed to a folded configuration of a protective sheet of an
adhesively-bonded laminate and its use, including “the benefit of facilitating
the accurate placement of the laminate ... as well as preventing the exposed
adhesive from becoming tangled.” Final Act. 13 (citing Dupelle col. 1,
11. 35-38, 45—48, 59-61, col. 3,11. 49-51, 63-66, Figs. 2, 4).
As the cited prior art is applied by the Examiner, independent claims 1
and 30 both require that there is a central portion of the bonding surface
covered with corresponding protective sheets and adjacent portions of
bonding surface covered with further corresponding protective sheets. In
claim 30, this arrangement is explicit and straightforward. In claim 1, it is
not made explicit in the same manner, but the arrangement follows from the
claim’s recitations that the repair patch is positioned “in a repair position
overlapping the damaged portion, the damaged portion including a
depressed area” and that the sum of the width (or widths) of the “one or
more depression sheet widths is approximately equal to [the] depressed area
width.” The Examiner relies on Miyagi and Trigg as suggesting segmenting
the protective sheet to provide this arrangement, as well as further
limitations. The Examiner further cites Propp as “disclosing] that it is well-
known and that there is a reasonable expectation of success of combining the
functionality of a folded liner with that of the segmented liner.” Final
Act. 15 (citing Propp, Fig. 2).
Miyaji is directed to applying an adhesive material into the depth of a
masonry joint to provide a waterproof bond between masonry sections. As
applied to claim 1, the Examiner finds “Miyaji discloses that when providing
an adhesive laminate in a groove, the application of the laminate can be
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facilitated ... by using a segmented inner liner ... in which the central
segment is first removed ... for attachment to the floor of the groove before
attachment of the lateral segments of the adhesive laminate.” Final Act. 13—
14 (citing Miyaji 4, 5, 14, 18, 20, 22). The Examiner further relies on
Miyagi as “disclosing] that the width of the central protective sheet section
should be approximately equal in dimension to the area of the substrate
which requires no folding to apply the patch.” Final Act. 15 (citing Miyaji
113, Fig. 3). The Examiner similarly relies on Miyaji in the rejection of
claim 30. Final Act. 23 (referring back to Final Act. 22 citing Miyaji, Fig.
lb).
Trigg is directed to an adhesive label assembly that includes a
protective, removable backing that covers the adhesive allowing a central
portion of adhesive to be exposed and then contacted to an article to be
labeled, followed by subsequent removal of protective, removable backing
for outward regions, exposing those regions’ adhesive, and allowing
contacting the article to affix the label. See, e.g., Trigg, Abstract, Figs. 1, 3—
5. The Examiner finds Trigg discloses that “it is beneficial to allow the
center of the adhesive protecting layer to be removed first so that the center
of the sheet can be anchored in position, thereby allowing the lateral sides
. . . to be bent away from the central region in a smooth manner.” Final Act.
14 (citing Trigg 132). As applied to claim 1, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art, at the time of the
invention, to use a segmented release liner with a central segment
corresponding to the floor of the depression, or to allow the center of the
patch to be “anchored to its corresponding planar surface before folding the
lateral sides of the patch (as disclosed by Trigg) along the walls of the
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depression.” Final Act. 14. As to claim 30, the Examiner, as with Miyagi,
relies on Trigg as disclosing “dividing the release sheet into side-by-side
section.” Final Act. 22 (citing Trigg, Figs. 3, 4). The Examiner further
emphasizes Trigg’s teaching that “it is beneficial to achieve correct
positioning and defect-free application by first adhering the central portion
. . . before applying the lateral portions of the laminate.” Ans. 18 (citing
Trigg 1132, 33); see also Ans. 20.
Appellants contend the Examiner erred reversibly because Kay,
Dupelle, Miyaji, Trigg, and Propp are non-analogous art, the cited references
do not render all claimed elements obvious, and the rejections are grounded
on impermissible hindsight. Appeal Br. 24-43.
Appellants’ central argument that Kay, Dupelle, Miyaji, Trigg, and
Propp are non-analogous art is that they are not reasonably pertinent to
Appellants’ problem. Appeal Br. 24—25, 28—33; see also Reply Br. 6—7.
Appellants argue that “defining the problem as ‘applying a release sheet
covered adhesive laminate to a substrate’ fails to describe the particular
problem addressed by the inventors.” Appeal Br. 25. Appellants argue Kay
fails because it is for use on skin and the laminate bandage affixed by the
adhesive is gas-permeable. Appeal Br. 28—29. Appellants argue that
Dupelle fails because it is directed to removably affixing an electrode pad to
skin. Appeal Br. 29. Appellants argue that Trigg fails because it is directed
to a label that can be readily removed and reaffixed, and that includes a hole,
because both are contrary to patching a tire. Appeal Br. 31. Appellants
argue that Propp fails because, like Kay and Dupelle, the substrate in Propp
is a skin surface. Appeal Br. 31—32.
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As to each of these cited references, Appellants’ arguments are not
persuasive because they establish no reversible error in the Examiner’s
determinations that one of ordinary skill in the art would have found the
relied on teachings reasonably pertinent to the problem to be solved for the
reasons expressed by the Examiner. Final Act. 12—13, 14—15; Ans. 15—16,
17—19. The differences Appellants emphasize relating to the substrate, or to
what is attached to the substrate, do not apprise us of differences in the
problems to be solved sufficient to establish reversible error in the
Examiner’s reliance on them as analogous art.
Appellants further argue that Miyaji is not analogous art. Appeal
Br. 24, 30; Reply Br. 7.
As to Miyaji, we are persuaded by Appellants’ arguments that the
Examiner erred. In contrast to each of Kay, Dupelle, Trigg, and Propp,
Miyaji does not facially relate to applying a release sheet covered adhesive
laminate onto, and over, a substrate surface. Rather, it relates to insertion of
a laminate into the depth of a masonry joint to provide a waterproof bond
between masonry sections. On this record, accordingly, the Examiner has
failed to establish Miyaji would have commended itself for addressing any
problem addressed by the inventors. As discussed below, this error is
harmful as to independent claim 1, and claims dependent therefrom, but
harmless as to claim 30.
Appellants contend that the Examiner has failed to establish the
claims are obvious on the basis that claim elements are missing from the
references and because the requisite articulated reasoning, particularly
motivation, is lacking. Appeal Br. 33—34.
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As to missing elements, Appellants argue, inter alia, that the
Examiner erred in relying on Trigg as providing that the “central protective
section should be approximately equal in dimension to the area of the
substrate” (Appeal Br. 35). That is, Trigg does not teach or suggest that the
sum of the width (or widths) of the “one or more depression sheet widths is
approximately equal to [the] depressed area width” (as required by claim 1).
Appellants further contend other elements are lacking from certain of the
relied on references. Appeal Br. 34—37.
We agree with Appellants that the cited portions of Trigg do not
reasonably teach or suggest a central sheet (or sheets) having a width (or a
sum of widths) approximately equal to the width of a depressed area width.
Because the Examiner relied only on Trigg and Miyagi (which is non-
analogous art as discussed above), for the depression sheet width (or sum of
widths) to be approximately equal to the depressed area width, we find that
the Examiner reversibly erred in rejecting independent claim 1 as
unpatentable for obviousness.
Independent claim 30, however, is not similarly limited. There is no
corresponding limitation as to width because claim 30 only requires that the
corresponding protective sheets cover the central surface of the bonding
surface and be bounded by first and second adjacent pairs of protective
sheets. Claim 30. Accordingly, we are not persuaded that the Examiner
reversibly erred in rejecting claim 30 over the cited prior art including
Trigg’s teaching that “it is beneficial to achieve correct positioning and
defect-free application by first adhering the central portion . . . before
applying the lateral portions of the laminate.” Ans. 18 (citing Trigg || 32—
33); see also Ans. 20.
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Appellants’ further arguments regarding missing elements pertinent to
independent claims 1 and 30 (Appeal Br. 34—35) are unpersuasive because
they fail to address the combination as set forth by the Examiner. “Non­
obviousness cannot be established by attacking [the] references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986);
see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is . . . what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
Appellants additionally argue that the Examiner has failed to set forth
a sufficient motivation to combine the teachings of the relied on references
on that bases that: (i) the Examiner’s reasoning is conclusory; (ii) that the
record lacks discussion of required modifications upon combining
references; (iii) that the rationale lacks a finding that results flowing from
the combination would have been predictable; and (iv) that several
references teach away from one another, or if combined would have been
rendered unsuitable. Appeal Br. 38—39.
Except as to Miyaji, discussed above, we are unpersuaded that the
Examiner failed to adequately set forth why one of ordinary skill in the art
would have been motivated to combine the teachings of the prior art. While
Appellants contend—without elaboration—that there is no meaningful
discussion provided, the Final Office Action and the Examiner’s Answer, as
discussed above, provide a sufficient explanation why one of ordinary skill
in the art would have modified the combination.
As to the contended lack of discussion regarding required
modifications, Appellants direct us to no cogent argument that the
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combination of teachings, as relied on by the Examiner, would have required
any further modification. Appellants’ argument also fails because “the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ” in overcoming the difficulties within their level of skill.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
As to the lack of a finding as to predictability, Appellants’ cursory
argument fails to address squarely the Examiner’s reasoning that includes,
inter alia, reliance on Propp “as a reference which shows a reasonable
expectation of success for combining the features of a folded release sheet
and a subdivided release sheet.” Ans. 18—19.
As to the contended teaching away, based on the cited record in this
appeal, we do not find sufficient support for the existence of any teaching
away. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a
reference a teaching away from a process where no such language exists.”).
Appellants’ argument that “several references ... if combined would be
rendered unsuitable (e.g., a porous bandage material is absolutely
impracticable to an effective tire patch, removable adhesives are likewise
undesirable)” (Appeal Br. 39) fails because (1) it is grounded on literal
incorporation of the references together such that the tire patch is replaced
with the porous bandage material, which does not address the rejection, or
(2) it relies upon a feature that is not claimed, i.e. a non-removable adhesive.
Appellants further contend other Graham factors cut against the
conclusion of obviousness and that the Examiner has failed to consider
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these. Appeal Br. 39-41. Appellants argue that the Examiner failed to
properly define the scope and content of the prior art in relying on references
“so remote from the particulars of Appellants’ claims.” Appeal Br. 39-40.
Appellants argue that the Examiner has failed to indicate in a meaningful
way the perceived level of ordinary skill in the art, contending that “[t]he
Office makes no attempt to satisfy this requirement.” Appeal Br. 40.
Appellants further contend that there is a long felt but unsolved need
manifest in the existence of tire repair technology advancing over more than
a century and the failure of the Office to find a reference bearing on the
“invention, including methods for installing a tire patch using protective
sheets and depression sheets having folds and a tab.” Appeal Br. 41.
Appellants’ argument as to scope and content of the prior art is
unpersuasive of harmful error because it fails to establish any error in the
Examiner’s findings as to the scope and content of the prior art, with the
exception of Miyaji, as discussed above.
As to indicating the level of ordinary skill in the art, the Examiner
refers to the rejections themselves (Ans. 23), which, necessarily are
grounded on the cited references, but also include determinations as to what
“one of ordinary skill in the art” would have known or found obvious (see
generally Final Act.; Ans.). Our reviewing court has held that an “appeal to
the references of record” is sufficient without “a specific finding on skill
level” in noting that the level of ordinary skill can be evidenced by the cited
prior art references themselves. In re GPACInc., 57 F.3d 1573, 1579 (Fed.
Cir. 1995). Further, Appellants fail to persuasively argue how the
Examiner’s failure to explicitly set forth the level of skill was harmful.
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As to Appellants’ contention of a long felt, unmet need, Appellants’
arguments are not persuasive of reversible error. Establishing a long-felt
need requires objective evidence that a recognized problem existed in the art
for a long period of time without solution. See Vandenberg v. Dairy Equip.
Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984); see also In re Gershon, 372 F.2d
535, 539 (CCPA 1967). Further, the long-felt need must be shown to still be
unmet at the time of invention. See Newell Co. v. Kenney Mfg. Co., 864
F.2d 757, 768 (Fed. Cir. 1988). Appellants’ arguments are not objective
evidence sufficient to meet the burden of establishing a long-felt, unmet
need. In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984).
Appellants contend the rejections are grounded on impermissible
hindsight. Appeal Br. 41—43. Appellants argue that the disparate nature of
the references combined weighs against the combination being proper.
Appeal Br. 41. Appellants contend that the Examiner’s “articulation of
modifications and combinations is irrelevant to refuting a finding of
hindsight because the knowledge relied upon was not within the level of
ordinary skill in the art.'” Appeal Br. 42. Appellants further contend error in
that identifying the problem to be solved, when the problem is not known, is
reliance on improper hindsight. Appeal Br. 42.
On this record, we are persuaded that the Examiner erred reversibly in
rejecting claim 1, and claims dependent thereon, over the cited prior art,
however, we are not persuaded as to claim 30. As discussed above, Miyaji
is not analogous art and the Examiner’s finding as to matching the width(s)
of depressive sheet(s) and depressed area width is not well founded on this
record. Appellants’ argument as to claim 30, however, is unpersuasive
because we are apprised of no harmful error pertinent to that claim, for the
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reasons discussed above. If the Examiner has articulated a reason having
rational underpinnings for making a proposed combination of prior art
teachings, then that articulated reasoning demonstrates the combination is
not based on hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”) (cited with approval in KSR,
550 U.S. at 419).
For the reasons above, we reverse the rejection of claim 1, and
claims 4—6, 8, 9, 11, 13, 14, and 22—29 dependent thereon, but sustain the
rejection of claim 30 over Helfenbein, Arquilla, Kay, Dupelle, Trigg, and
Propp. Cf In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966) (citing In re
Bush, 296 F.2d 491 (CCPA 1961) (The Board may rely on less than all of
the references applied by the Examiner in an obviousness rationale without
designating it as a new ground.).
Helfenbein, Kay, Dupelle, Miyaji, Trigg, Propp, and Durif
We reverse the rejection of claim 8 in further view of Durif because
Durif does not cure the deficiencies discussed above in connection with
claim 1.
Gruber in view of Kay, Dupelle, Helfenbein, Arquilla, Miyaji, Trigg,
and Propp
Independent claim 1, but not independent claim 30, stands rejected
over Gruber in further view of, inter alia, Miyaji and Trigg. Final Act. 24—
28. The Examiner finds that Gruber discloses a method of applying a repair
patch including positioning a repair patch on and overlapping a damaged
portion after exposing an adhesive surface of the patch. Final Act. 24. The
secondary references, including Miyaji and Trigg, are relied upon by the
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Examiner for effectively the same purposes as the rejection grounded on
Helfenbein, Arquilla, Kay, Dupelle, Miyaji, Trigg, and Propp, discussed
above. Because the Examiner relies upon Miyaji and Trigg in the same
manner (