Ex Parte Curry

Patent Trials and Appeals Board

Jun 13, 2019

14275489 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/275,489
7590
James Curry
5016 Zoe Anne Way
Glendale, CA 91214
FILING DATE FIRST NAMED INVENTOR
05/12/2014 James E. Curry
06/13/2019
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9661
EXAMINER
KRUER,KEVINR
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
06/13/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. CURRY1
Appeal2017-009834
Application 14/275,489
Technology Center 3600
Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1-23. Appeal Br. 3. We have jurisdiction under
35 U.S.C. § 6(b). Appellant presented argument at an oral hearing held on
June 6, 2019.
We AFFIRM.
1 Appellant is identified as the real party in interest. Appeal Br. 3.
Appeal2017-009834
Application 14/275,489
CLAIMED SUBJECT MATTER
Motorbikes and other off-road vehicles operate at low tire pressure for
optimal traction; however, low tire pressures often result in the inner tube
being pinched between a deformed tire and rim thereby causing a pinch flat.
See Spec. 1:15-23. The claimed tire flap comprises a low density impact
absorbent foam that deflects under shear loads. Id. at 5:3-19.
Claims 1, 9, and 16 are independent. Claim 1 is reproduced below.
1. A flap for an off-road tire mounted on a safety rim
having a rim lock with a inner tube installed in between the tire
and the rim, the flap comprising:
a continuous cylindrical C-cup portion having a central
aperture for receiving a valve stem of the inner tube, the C-cup
portion having a wing portion on both ends forming an
internally facing surface and an externally facing surface, the
internally facing surface of the flap designed to be positioned
against the inner tube, the externally facing surface of the flap
designed to be positioned against an arcuate beadwell of the
rim, the rim lock, and beads of the tire; and,
the flap made from a impact absorbing foam having a
density between 1.2 lb/ft3 and 30.0 lb/ft3.
Appeal Br. 28 (Claims App.).
REJECTIONS
Claims 1, 6-8, 16, and 21-23 are rejected under 35 U.S.C. § 103 as
unpatentable over Applicant's Admitted Prior Art (AAPA), Yabuta (JP 05-
319009 A, pub. Dec. 3, 1993), Lejeune (US 3,866,653, iss. Feb. 18, 1975),
and Nishikawa (US 2006/0234033 Al, pub. Oct. 19, 2006).
Claims 2-5, 9-15, and 17-20 are rejected under 35 U.S.C. § 103 as
unpatentable over AAP A, Yabuta, Lejeune, Nishikawa, and Mahling
(US 5,591,283, iss. Jan. 7, 1997).
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Appeal2017-009834
Application 14/275,489
ANALYSIS
Claims 1, 6---8, 16, and 21-23
As Unpatentable Over AAPA, Yabuta, Lejeune, and Nishikawa
Appellant argues the claims as a group. Appeal Br. 7-27. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
Regarding claim 1, the Examiner finds that Appellant's Admitted
Prior Art in Figures 1-3 includes tire 13 with main section 29, two beads 31
mounted on safety rim 15, inner tube 17, and valve stem 27. Final Act. 2-3.
The Examiner also finds that Yabuta teaches a tire flap (buffer 6) with wing
portions (vanes 6B) as claimed to provide puncture resistance in a pneumatic
tire and reasons that it would have been obvious to add this tire flap to the
AAP A to increase the puncture resistance of the tire. Id. at 3-4.
The Examiner further finds that Lejeune teaches tire flap 1 having a
central aperture (valve hole 10) for a valve stem and determines that it would
have been obvious to include such an aperture in Yabuta' s buffer to receive
a valve stem of the inner tube. Id. at 4.
The Examiner relies on Nishikawa to teach a polyethylene foam
product with a density of 0.02-0. 7 g/cm3 that overlaps the claimed range and
provides excellent impact absorption, flexibility, sound absorption, abrasion
resistance, and impact strength in run flat tires and tire materials. Id. ( citing
Nishikawa, Abstract, ,-J 151 ). The Examiner reasons that these properties are
desired in tire flaps so it would have been obvious to make Yabuta's buffer
out of this foam material to provide similar improvements in these properties
in Yabuta' s buffer 6 and to optimize its density as a result effective variable
to control the weight, impact strength, insulating properties, flexibility, and
sound absorption ofYabuta's tire flap/buffer 6. Id at 4-5.
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Appeal2017-009834
Application 14/275,489
Appellant argues that Yabuta's foam insert or buffer is not a tire flap
as claimed because it extends substantially up the sidewall of the tire in the
heat zone of the tire, whereas the claimed "tire flap" resides adjacent to the
beads of the tire and the beadwell of the rim without protruding inside the
central portion of the tire so that it is not subjected to the extreme deflective
environment occurring in the central portion of the tire. Appeal Br. 14-15;
Reply Br. 3. Appellant also argues that the purpose ofYabuta's buffer is to
improve the stability of tires by introducing rubber foam up both sidewalls
to stiffen the sidewall so the tire can run on low tire pressure. Appeal Br. 15.
These arguments are not persuasive because claim 1 does not recite
such limitations for the "C-cup portion" or its "wing portion on both ends."
Instead, claim 1 recites that the internally facing surface of the tire flap is
"positioned against the inner tube." The externally facing surface of the tire
flap is "positioned against an arcuate beadwell of the rim, the rim lock, and
beads of the tire." Appeal Br. 28 (Claims App.). A sidewall position is not
claimed. Yabuta discloses such a tire flap in Figure 1 reproduced below.
[l/11 l
/c
... -- T r~ ------! )
lt ' ~L. I / T
13--···-
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Appeal2017-009834
Application 14/275,489
Figure 1 of Y abuta (above) illustrates tire 2 with inner tube 5, rim 3
with bead 15 and seat 17 for a tire bead, inner tube 5, and buffer 6 with side
portions (vanes 6B). As illustrated, Yabuta's buffer 6 and vanes 6b form a
tire flap with an internally facing surface positioned against inner tube 5 and
an externally facing surface positioned against the rim beadwell and tire
bead, as claimed, and as Appellant illustrates in Figure 10 of the application.
This interpretation is consistent with the Specification, which does not
define tire flap in a manner asserted by Appellant. Instead, the Specification
discloses that "the thickness of the tire flap does not significantly protrude
inside the central portion of the tire." Spec. 20:8-9 (emphasis added). This
teaching contradicts Appellant's argument that the tire flap does not protrude
at all into the central portion of the tire. The Specification and Figure 11,
which is reproduced below, disclose how the length of wing portions 14 of
C-Cup portion 12 may extend well into the tire's central sidewall portion.
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Appeal2017-009834
Application 14/275,489
Figure 11 illustrates wing portions 14 extending a distance h1 from flat
shelf 3 3 of rim 15. In a preferred embodiment, distance h1 "must be at least
120% the height 'hr' of the vertical lips 35 measured from the flat shelf 33 of
the rim 15" as shown in Figure 11. See Spec. 15: 17-19. However, wing
portions may extend further down the sidewalls so "[p ]referably, the height
'hj should be between about 150% to 225% the height 'hr' of the rim 15 in
off-road motorcycle wheel applications." Spec. 15:22-24 (emphasis added).
Thus, the Specification discloses tire flap 10 and its wing portions 14
extending well into a central region of the tire. Figure 11 illustrates a height
h1of about 120%, but the Specification discloses that wing portion 4 extends
into the central section up to 225%, which is almost double the height shown
in Figure 11. Id. Therefore, we interpret "tire flap" in light of the plain
language of the claims and the Specification to allow the wing portions to
extend into the central portion of the tire that Appellant characterizes as the
"heat zone." We find no basis in the language of claim 1 interpreted in light
of the Specification to exclude Yabuta' s buffer 6 from the scope of claim 1.
Furthermore, Y abuta teaches that buffer 6 comprises a closed cell
sponge material that prevents propagation of impulse forces to inner tube 5
and blowouts of the inner tube thereby maintaining driving stability and
riding comfortability. Yabuta ,-J,-J 3, 5-7. Indeed, Yabuta teaches buffer 6 as
providing the same advantages as the claimed tire flap, namely, it prevents
pinch flats of the inner tube when the motorcycle operates off-road and the
sidewall section of the tire deforms and the inner tube is pinched between
the rim and tire causing the inner tube to break as Appellant acknowledges.
Id. ,-i 2; Spec. 12:2-25, 16:9-21, Figs. 4-7, 13, and 14; Appeal Br. 17-18.
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Appeal2017-009834
Application 14/275,489
The remaining issue is whether it would have been obvious to make
the closed cell sponge material buffer 6 of Y abuta of a polyethylene foam of
Nishikawa, which has a density of 0.02-0.7 g/cm3• See Nishikawa ,i 12.
Appellant acknowledges that Nishikawa teaches polyethylene foam
with a density of 1.2485 lb/ft3 to 43.699 lb/ft3 and recognizes that this range
overlaps the claimed range of 1.2 lb/ft3 and 30.0 lb/ft3, but argues that the
Examiner has not shown that it is reasonable to apply this entire density
range to Yabuta to render obvious the claimed tire flap. See Appeal Br. 22.
This argument is not persuasive primarily because it does not address
the Examiner's finding that Nishikawa teaches that the foam density is a
result effective variable that controls the weight, impact strength, insulating
properties, flexibility, and sound absorption. Nor does this argument address
the Examiner's determination that it would have been obvious to optimize
the foam density in Yabuta' s buffer "to optimize the weight, impact strength,
insulating properties, flexibility, and sound absorption of the material."
Final Act. 4-5. The Examiner's determination is supported by a rational
underpinning based on Nishikawa's teaching that the expanded polyethylene
foam product has good mechanical properties such as impact strength and
the like at the lower end of its density range. Nishikawa ,i 73. Nishikawa
also teaches that the expanded foam product exhibits sufficient light weight,
insulating properties, sound absorption, impact absorption, and flexibility at
the higher end of the density range. Id.
Because Y abuta uses buff er 6 as a shock absorbing material to prevent
blowouts, it would have been obvious for a skilled artisan to experiment
with the shock absorbing foam material and densities disclosed in Nishikawa
to provide better impact absorption as Y abuta desires. See Y abuta iJiJ3, 5-7.
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Appeal2017-009834
Application 14/275,489
Such routine experimentation using such a result-effective variable
would result in modification ofYabuta's buffer 6 to comprise an impact
absorbing foam with a density that falls within or overlaps the claimed range
thereby rendering it obvious. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782-83
(Fed. Cir. 1985); see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
1997) (noting 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").
Furthermore, the prior art provides reasons to combine the teachings
of Nishikawa with Yabuta to improve Yabuta similarly. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (holding that a technique that
improves one device would be recognized by skilled artisans as obvious to
use to improve similar devices in the same way unless its actual application
is beyond their skill).
Y abuta teaches the use of a closed cell, sponge material for use as
buffer 6. Yabuta ,i,i 7, 18, 20. Yabuta even teaches an expansion ratio of the
sponge material of 4 or more to 15 or less. Id. ,i 20. Appellant disputes that
this expansion ratio teaches a low density foam within the claimed range.
Appeal Br. 23-24. However, this teaching of Yabuta nonetheless teaches
the use of a foamed/ sponge buffer material to absorb impacts and prevent
blowouts thereby providing another basis for a skilled artisan to experiment
with the foam densities taught by Nishikawa rendering obvious the claimed
density range even if Y abuta' s sponge material and expansion ratio does not
overlap the claimed range as Appellant asserts to be the case.
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Appeal2017-009834
Application 14/275,489
We also agree with the Examiner that Nishikawa is analogous art to
the claimed tire flap. Nishikawa is from the same field of endeavor of using
a low density impact absorbent foam in tire applications. See Spec. 1 :8-12,
4:3-14; Nishikawa ,-J 151 (teaching use of its high strength impact-absorbing
polyethylene foam materials in linings, run-flat tires, and tire materials).
Nishikawa' s teachings also are reasonably pertinent to the problem that
Appellant was trying to solve of providing a lightweight yet strong impact-
absorbing material to prevent blowouts in a tire. As analogous prior art,
Nishikawa' s teachings provide a basis for a skilled artisan to experiment
with and try different densities of foam, particularly lower density foams,
from the finite number of predictable solutions resulting from experimenting
with the single variable of foam density in the range taught by Nishikawa.
Appellant's attempt to distinguish Nishikawa as being non-analogous
art is not persuasive. Reply Br. 15-16. Appellant argues that Nishikawa's
teaching to use its low density polyethylene in run flat tires and tire materials
does not suggest the use of its foam material in inside tire applications that
are not part of a run flat tire/tire. Id. We do not view Nishikawa's teachings
as so limited. Nishikawa teaches the use of its low-density foam material in
a wide variety of applications including linings, lightweight fillings, gaskets,
packing, impact absorbers, and insulating plates in addition to use in run flat
tires and tire materials. Nishikawa ,-J 151. Skilled artisans would understand
this teaching to mean Niskikawa' s foam materials can be used in linings and
in tires, e.g., portions added to run flat tires and as elements incorporated as
parts or materials of other tires such as buffer and tire flaps taught in Y abuta.
The ordinary desire of skilled artisans to improve a product would have led a
skilled artisan to experiment with Nishikawa's foam in Yabuta.
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Appeal2017-009834
Application 14/275,489
Appellant also offers evidence of industry praise and commercial
success for a foam tire flap sold under the Tube Saddle® product trademark
registration. Appeal Br. 26. In particular, Appellant contends that this
product was named 2015 product of the year in Dirt Rider Magazine and
was named sixth in the top twenty products of 2015 by Motocross Action
Magazine. Id. Furthermore, Appellant argues that interest in the product
has grown internationally and Appellant cannot produce the product fast
enough to meet demand. Id.
We consider this evidence of secondary considerations and the issue
of obviousness anew. See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945
(Fed. Cir. 1990). We are mindful that such objective evidence of non-
obviousness may be entitled to more or less weight depending on its nature
and relationship with the merits of the invention (Stratojlex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983)). We consider the issue of
obviousness anew, carefully evaluating and weighing all of the evidence and
contentions of the parties regarding the obviousness of claim 1 along with all
of the objective evidence of non-obviousness presented by Appellant.
In this case, the evidence of commercial success is not given much, if
any, weight because Appellant does not provide evidence of market share or
even unit sales of commercial products that embody the claimed invention.
See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (units sold without any
market share is a very weak showing of commercial success).
The industry praise indicates that Appellant's product "Tube Saddle"
"makes a pinch flat less likely" and "eliminates, or more accurately lessens,
the danger of pinch flats." Appeal Br. Exhibits C and D.
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Appeal2017-009834
Application 14/275,489
These statements serve to show the claimed invention functions as
intended, not that it would have been non-obvious to a person of ordinary
skill in the art. Additionally, the industry praise indicates that Tube Saddle
flaps do not eliminate pinch flats entirely. Furthermore, it is unclear if the
claimed density reduces pinch flats or another feature like a C-shape, which
is disclosed by Yabuta and Lejeune, provides this benefit. Thus, a nexus
between the industry praise and a low density foam is unclear. Considering
the relatively strong evidence of obviousness and the weaker evidence of
industry praise and commercial success, we determine from the totality of
evidence on the record before us that claim 1 is unpatentable over AAP A,
Yabuta, Nishikawa, and Lejeune. Thus, we sustain the rejection of claim 1
and claims 6-8, 16, and 21-23, which fall therewith.
Claims 2-5, 9-15, and 17-20
As Unpatentable Over AAPA, Yabuta, Lejeune, Nishikawa, and Mahling
Appellant does not present arguments for this rejection. See Appeal
Br. 6-27. Therefore, we summarily sustain this rejection.
DECISION
We affirm the rejections of claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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