Ex Parte Fishman

Board of Patent Appeals and Interferences

Sep 8, 2011

10191062 (B.P.A.I. Sep. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JORDAN FISHMAN
______________

Appeal 2010-000801
Application 10/191,062
Technology Center 1700
_______________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
LORA M. GREEN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1-13 and 19-26 in the Office Action
mailed August 2, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2008).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellant’s invention of a pneumatic tire for heavy
duty use, and is representative of the claims on appeal:
1. A pneumatic tire for heavy duty use, comprising:
a tire carcass covered with molded rubber compound to form a
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pneumatic tire, the tire having respective sidewalls and an outer tread
extending therebetween, each sidewall at its radially innermost end formed
with a bead, and at its radially outermost end formed with an upper sidewall
portion, wherein
a least one of the sidewalls is formed as a thickened sidewall, said
thickened sidewall comprising:
at least one radius relief portion formed adjacent the bead;
a sidewall crown defining the thickest portion of the thickened
sidewall;
a thickened sidewall portion extending from adjacent the relief portion
to the sidewall crown, the thickened sidewall portion substantially uniformly
increasing in thickness from adjacent the relief portion to the sidewall
crown; and
an angled return sidewall portion extending from the sidewall crown
and terminating in the upper sidewall portion of the at least one sidewall.
Appellant requests review of the grounds of rejection advanced on
appeal by the Examiner: claims 1 and 4-6 under 35 U.S.C. § 102(b) over
Iwasaki (JP 4-358906 A);1 claim 3 under 35 U.S.C. § 103(a) over Iwasaki;

1 The Iwasaki patent document is referred to as “Bridgestone” in the
Answer and the Briefs. The Examiner relies on the Derwent Abstract (1999)
of Iwasaki of record (Iwasaki Abstract). In the Amendment filed May 21,
2007 (Amendment), Appellant submitted a computer translation prepared by
the Japan Patent Office of Japanese Examined Patent Application
Publication No. JP3074400B2, which according to Appellant “constitutes
the published application corresponding to” Iwasaki, and relies on this
“translation as describing the subject matter disclosed in” Iwasaki (Iwasaki
JPO Translation). Br. 12; Amendment 8. Subsequent to mailing the Answer
on July 16, 2009, the Examiner forwarded to Appellant the translation of
Iwasaki prepared for the USPTO by The McElroy Translation Company
(PTO 09-7509 September 2009) (Iwasaki USPTO Translation) in the Office
communication of September 18, 2009. We refer to the Iwasaki patent
document, the Iwasaki Abstract and the Iwasaki JPO Translation as
indicated below. We have not considered the Iwasaki USPTO Translation.
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claims 7-13 under 35 U.S.C. § 103(a) over Iwasaki in view of Chrobak (US
3,989,083) and Honbo (US 5,236,031); and claims 19-23 under 35 U.S.C.
§ 103(a) over Iwasaki in view of Casanova (US 4,856,572). App. Br. 11;
Ans. 3-6.
Appellant argues the claims in the first and third grounds of rejection
as a group, and argues the fourth ground of rejection based on claims 19 and
20. See generally Br. Thus, we decide this appeal based on claims 1, 3, 7,
and 19. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Opinion
I. Claim 1: § 102(b) over Iwasaki
The threshold issue presented by Appellant’s position is whether the
Examiner erred in finding that the Figure in the Iwasaki patent document
describes to one of ordinary skill in the art a pneumatic tire with a thickened
sidewall that anticipates representative claim 1. Ans. 3 and 7-8; Br. 12-14.
A.
Our consideration of the threshold issue entails the interpretation of
claim 1 by giving the terms thereof the broadest reasonable interpretation
consistent with the description in the Specification. See, e.g., In re Suitco
Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010), and cases cited therein;
In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). The limitation of
claim 1 at issue is “a thickened sidewall portion extending from adjacent the
relief portion to the sidewall crown, the thickened sidewall portion
substantially uniformly increasing in thickness from adjacent the relief
portion to the sidewall crown.” We determine that the subject limitation,
with reference to Specification Figure 1, specifies, in context, that pneumatic
tire 20 has at least one thickened sidewall 24 comprising at least, among
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other things, thickened sidewall portion A extending from adjacent inner
radius portion 44 and outer radius portion 46 of relief portion 43, to sidewall
crown 42, thickened sidewall portion A “substantially uniformly increasing
in thickness” from adjacent inner radius portion 44 and outer radius portion
46 of relief portion 43 to sidewall crown 42. See Spec. 4-5. We find no
limitation on any feature of thickened sidewall portion A in claim 1.
We fail to find in the Specification a definition for or other description
of the claim phrase “substantially uniformly increasing in thickness,” which
is one of degree. Indeed, Appellant discloses that “[t]he present invention is
directed, in part, to the enhanced, i.e., thickened, sidewall present along
substantially the vertical extent of outer sidewall portion 24, as denoted by
reference letter A.” Spec. 4:20-23; see also Spec. 5:11-13. Thus, we look to
Specification Figure 1 for guidance. See Seattle Box Co. v. Indus. Crating &
Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“When a word of degree
is used the district court must determine whether the patent’s specification
provides some standard for measuring that degree.”).
We find that in Specification Figure 1, the area of thickened sidewall
portion A extending from inner radius portion 46 of relief portion 43 to
sidewall crown 42, increases abruptly between inner radius relief portion 46
to outer radius relief portion 44 and abruptly between outer radius portion 44
to interesting point 45 of elongated sidewall 40 and outer radius portion 44,
and then increases non-uniformly along elongated sidewall 40 from
interesting point 45 to sidewall crown 42, the latter being the thickest point
on thickened sidewall 24. Spec. 4-6 and Fig. 1.
Thus, on this record, we interpret the claimed phrase “substantially
uniformly increasing in thickness” as largely but not wholly uniformly
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increasing in thickness. See, e.g., York Prods., Inc. v. Central Tractor Farm
& Family Ctr., 99 F.3d 1568, 1572-73 (Fed. Cir. 1996) (“In this case, the
patent discloses no novel use of claim words. Ordinarily, therefore,
‘substantially’ means ‘considerable in . . . extent,’ American Heritage
Dictionary Second College Edition 1213 (2d ed. 1982), or ‘largely but not
wholly that which is specified,’ Webster’s Ninth New Collegiate Dictionary
1176 (9th ed. 1983).”).
B.
Appellant annotated the Figure of the Iwasaki patent document (Br.
13), and the Examiner further annotated Appellant’s annotated Figure (Ans.
11, Exh. A). We refer to the Examiner’s annotated Figure as Iwasaki’s
Figure.
We find that Iwasaki’s Figure shows sidewall 5 extending from the
area of bead part 6 to the intersection of sidewall 5 with buttress 4 at point C.
Iwasaki JPO Translation ¶ 0008. Annular projection 7 is in the upper end of
sidewall 5, extending to point C, has a projection at point B, and is described
as in “the shape of a cross-section trapezoid or a triangle.” Iwasaki JPO
Translation ¶ 0008.
The Examiner finds that in Iwasaki’s Figure, the lower end of sidewall
5 is the same as the claimed “relief portion” and point B is the same as the
claimed “sidewall crown.” Ans. 3. The Examiner finds that “it is evident
from [Lwasaki’s Figure] that the thickened sidewall portion, which begins
adjacent the bead region and terminates at the sidewall crown, has a
substantially uniform increase in thickness.” Ans. 3; see also Ans. 7-8.
“[T]he thickened sidewall portion [of Iwasaki’s Figure] has been highlighted
with cross hatchings.” Ans. 7. The Examiner submits that the thickened
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sidewall portion of Iwasaki’s Figure “can be viewed as ‘substantially
uniformly increasing in thickness,’” and thus “the claims as currently drafted
fail to describe the thickened sidewall portion in a manner that defines over
the thickened sidewall portion of” Iwasaki. Ans. 8.
Appellant contends that in Iwasaki’s Figure, the sidewall extends from
point 100 to point C; “[t]he sidewall gradually increases in thickness from
point 100 to no further than point 102;” “[t]he sidewall then continues
upward to point 104 with substantially uniform thickness;” “[f]rom point
104, the sidewall abruptly transitions outward and upward to a point 106 of
the annular protector 7;” and “[f]rom point 106, the sidewall continues
vertically upward to point B.” Br. 12-13. Appellant contends that “[t]his
portion of the sidewall, between point 100 and point 104, comprises a
standard light rubber covering the tire carcass up to the protector 7,” and
“[p]oint B is the thickest point on the sidewall.” Br. 12-13. Appellant
contends that “[Iwasaki patent document] FIG. 1 clearly . . . illustrates the
trapezoidal or triangular cross-section abruptly extending abruptly extending
outward away from the sidewall . . . [which] is directly contrary to the
uniformly increasing thickness of the sidewall recited in” claim 1. Br. 14.
C.
On this record, we cannot agree with Appellant’s position. Contrary
to Appellant’s contentions, we do not find any size limitation with respect to
thickened sidewall portion A in claim 1 or in the Specification. See above p.
4. We also interpreted the subject limitation in claim 1 to include the
pneumatic tire embodiment illustrated in Specification Figure 1 in which the
sidewall includes sections that abruptly change thickness or are otherwise
non-uniformly increased in thickness, and the sidewall crown is the thickest
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point in the sidewall. See above pp. 3-5. Thus, we find that the features of
sidewall 5 and annular projection 7 with point B of the pneumatic tire in
Iwasaki’s Figure on which Appellant relies, fail to distinguish claimed the
pneumatic tire encompassed by claim 1 from the pneumatic tire illustrated in
Iwasaki’s Figure. See above p. 5. Accordingly, the evidence in the Iwasaki
patent document supports the Examiner’s position.
D.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of anticipation found in the
Iwasaki patent document with Appellant’s countervailing evidence of and
argument for non-anticipation and conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
by appealed claims 1 and 4-6 would have been anticipated as a matter of fact
under 35 U.S.C. § 102(b).
II. Claims 3 and 7: § 103(a) over Iwasaki
In each of the respective grounds of rejection of claims 3 and 7,
Appellant relies in part on the same arguments with respect to Iwasaki that
we considered above. Br. 14. See above pp. 5-7. Appellant does not
address Chrobak and Honbo, and thus we will not discuss these references.
See Br. 14-15.
Here, Appellant contends that there is no suggestion to modify
Iwasaki alone to arrive at the subject matter of claims 3 and 7. See Br. 14-
15. According to Appellant, Iwasaki discloses the goals of providing a tire
that protects the upper portion of the sidewall from buckling with protector
7, and to provide a light-weight tire. Br. 14, citing the Iwasaki JPO
Translation ¶¶ 0003, 0006, 0010, and 0011. Appellant contends that the goal
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to prepare a thin tire is contrary to the thickened portion of the claimed tires,
arguing that it is common sense that the goal of a thin tire would not lead to
increasing “the thickness of an entire sidewall.” Br. 14. Appellant further
contends that the claimed thickened sidewall of the claimed tire protects
against “constant rubbing during underground mining operations” is not
suggested by Iwasaki. Br. 14-15.
We cannot agree with Appellant’s position. Contrary to Appellants’
contentions, Iwasaki teaches a pneumatic tire with a thickened sidewall that
falls within claim 1, on which claims 3 and 7 depend, as we found above.
See above p. 5. In this respect, Appellant does not identify the claim
limitations of claims 3 and 7 which are not addressed by the Examiner’s
grounds of rejection. Ans. 4-6. Furthermore, contrary to Appellant’s
contentions, Iwasaki discloses that rubbing against “lump of rock” is a
known problem in the prior art, and a goal of Iwasaki was for
“improvement” against “rock bite” for “loaders” and the disclosed
pneumatic tires are of a “side cut-proof nature.” Iwasaki JPO Translation,
e.g., ¶¶ 0002, 0004, 0006, and 0015.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Iwasaki
alone and combined with Chrobak and Honbo, with Appellant’s
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 3 and 7-13 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
III. Claim 19: § 103(a) over Iwasaki and Casanova
Appellant’s contentions based on Casanova alone and on Iwasaki
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alone do not address the combination of Iwasaki and Casanova. Br. 15. See
In re Merck & Co., 800 F.2d 1091, 1097-98 (Fed. Cir. 1986); In re Keller,
642 F.2d 413, 425-26 (CCPA 1981). We determined that, contrary to
Appellant’s position, the Examiner, in stating the ground of rejection,
properly interpreted claim 19 as requiring only one “thickened sidewall,”
and we agree with the Examiner’s finding that Casanova would have
disclosed to one of ordinary skill in the art a tire with one thickened
sidewall. Ans. 7, citing Casanova, abstract, and col. 2, ll. 5-15; see also Ans.
9. We considered Appellant’s contentions with respect to Iwasaki above.
See above pp. 7-8.
Thus, we are of the opinion that the evidence in the combined
teachings of Iwasaki and Casanova supports the Examiner’s position that the
combined teachings of the references would have led one of ordinary skill in
the art to the claimed pneumatic tires encompassed by claim 19. See, e.g., In
re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); Keller, 642 F.2d at 425
(“The test for obviousness is . . . . what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combination of Iwasaki and Casanova, with Appellant’s countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 19-23 would have been obvious
as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
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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)(iv).
AFFIRMED

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