Ex Parte Girard et al

Board of Patent Appeals and Interferences

Sep 16, 2008

10777366 (B.P.A.I. Sep. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEAN-CLAUDE GIRARD, JAMES MICHAEL HART,
and WILLIAM ALLEN REX
__________

Appeal 2008-4304
Application 10/777,366
Technology Center 1700
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Decided: September 16, 2008
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Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 9-13. Claims 1-8 are also pending in the application but
have been withdrawn from consideration. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.
Appeal 2008-4304
Application 10/777,366

The Examiner finally rejected claims 9-13 under 35 U.S.C. § 102(b)
as anticipated by Fritze.1 Final 3.2
The Examiner also finally rejected claims 9-13 under 35 U.S.C. § 112,
first paragraph, based on the written description requirement. Final 2. The
Examiner, however, withdrew the rejection in the Answer. Ans. 3.3
B. ISSUE
Whether the Appellants have shown that the Examiner reversibly
erred in rejecting claims 9-13 under 35 U.S.C. § 102(b) as anticipated by
Fritze.
C. FINDINGS OF FACT
The following findings of fact are believed to be supported by a
preponderance of the evidence. Additional findings of fact as necessary
appear in the Analysis portion of the opinion.
1. Appellants’ Specification
The Appellants disclose a tire build apparatus and method for
incorporating an annular antenna and associated electronics into a tire.
Spec., para. [001].
Figure 1 illustrates a tire having an annular antenna assembly
incorporated therein. Spec., para. [008]. Appellants’ Figure 1 is reproduced
below:

1 US 3,662,335 issued to Fritze on May 9, 1972 (“Fritze”).
2 Final Office Action mailed February 9, 2007.
3 Examiner’s Answer mailed December 12, 2007.
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Application 10/777,366

Figure 1 depicts a portion of a tire.
Figure 2 illustrates a section of an annular antenna ring and a
transponder element. Spec., para. [008]. Appellants’ Figure 2 is reproduced
below:

Figure 2 depicts an annular ring and a transponder element.
The Appellants disclose that the apparatus 10 comprises antenna
wire(s) 32, a tag carrier 34, and a carrier strip 36. Spec., para. [0011].
Carrier strip 36 is formed of electrically insulating, preferably semi-
rigid elastomeric material common to the industry, such as rubber or plastic.
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Application 10/777,366

The strip 36 is formed to substantially encapsulate the antenna wire(s) 32
and at least a portion of the tag carrier 34. Spec., para. [0011].
In the post manufacturing state shown in Figure 1, the apparatus 10
comprises antenna 32, tag carrier 34, and carrier strip 36, in a unitary,
generally circular, assembly. Spec., para. [0011].
2. Claimed subject matter
Claim 9 is the only independent claim on appeal, and it reads as
follows:
9. A tire having an antenna assembly affixed to an inward
surface, the tire being formed by a process comprising the
steps:
forming within a rigid core defining an interior surface of
the tire a core recess complementarily configured to the antenna
assembly;
positioning the antenna assembly within the core recess,
the antenna assembly having an inward peripheral boundary
enclosed by the recess and an exposed outward peripheral
boundary;
building an uncured carcass of the tire around the rigid
core and over the outward antenna assembly boundary, an inner
surface of the tire entrapping the antenna assembly within the
core recess;
cross-bonding the antenna assembly outward boundary to
the inner surface of the tire during a cure cycle;
removing the cured tire and antenna assembly from the
rigid core, the inward antenna assembly boundary being
unbonded to the tire and facing an inner cavity of the tire.

Br. 14-15,4 Claims Appendix.

4 Amended Brief on Appeal dated September 6, 2007.
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Appeal 2008-4304
Application 10/777,366

3. Fritze
Fritze discloses a wheel comprising an oscillator and an antenna
connected therewith. The components form an oscillator-antenna unit that
extends about the entire circumference of the wheel. Fritze 3:26-31.
Figure 2 illustrates an embodiment of the invention. Fritze 2:55-57.
Fritze Figure 2 is reproduced below:

Figure 2 depicts a portion of a vehicle wheel.
In Figure 2, the components constituting the oscillator-antenna unit
are in the form of one or more copper strands 20 extending about the
circumference of the wheel. Fritze 3:45-49.
In Figure 2, the oscillator-antenna unit is vulcanized to the inside of
the tire in proximity to the radial rim outer edge. Fritze 3:62-66.
D. PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
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Application 10/777,366

Product-by-process claims are limited by and defined by the recited
process. Determination of patentability, however, is based on the product
itself. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
E. ANALYSIS
Referring to column 3, lines 63-64 of Fritze, the Examiner found that
Fritze describes a tire comprising an antenna assembly, e.g., an oscillator-
antenna unit, vulcanized or bonded to the inside of the tire. Ans. 3-4.
The Examiner found that the antenna assembly depicted in Figure 2
comprises strands 20 and surrounding material, and projects from the inner
surface of the tire to face the inner cavity of the tire. Ans. 4, 5. The
Examiner found that the antenna assembly depicted in Figure 2 represents an
antenna assembly in the same way that the Appellants’ wires 32
encapsulated in carrier strip 36 represents an antenna assembly. Ans. 5.
In sum, the Examiner found that the structural features of the tire
implied by the process of claim 9 are met by the tire disclosed in Fritze.
Ans. 4.
The Appellants argue that Fritze does not disclose each and every
element of a tire formed by the claimed process, and thus, does not
anticipate the claimed subject matter. In particular, the Appellants argue that
Fritze does not disclose a tire comprising the following structural features:
1. a tire having an antenna assembly having an inward peripheral
boundary and an exposed outward peripheral boundary;
2. a tire having an antenna assembly in which an outward
boundary of the antenna assembly is cross-bonded to the inner surface of the
tire; and
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Application 10/777,366

3. a tire having an antenna assembly in which an inward antenna
assembly boundary is unbonded to the tire and faces an inner cavity of the
tire. Br. 7-8.
Rather, the Appellants argue that Fritze discloses an antenna 20
embedded in the sidewall of a tire. Br. 8-9.
Fritze discloses a tire comprising an oscillator-antenna unit vulcanized
to the inside of the tire. Fritze 3:62-66; Figure 2. Figure 2 shows the
oscillator-antenna unit or copper strands 20 to be encapsulated in a material.
Based on the crosshatching in Figure 2, it appears that the material
encapsulating copper strands 20 is different from the tire material. In any
event, Fritze illustrates a boundary between the tire and the material
encapsulating strands 20. Thus, we find that Fritze describes an antenna
assembly comprising encapsulated copper strands 20 bonded to the inner
surface of a tire. We further find that the surface of the antenna assembly
facing the inner cavity of the tire is not bonded to the tire.
The Appellants disclose an antenna assembly 10 comprising antenna
wire(s) 32, a tag carrier 34, and a carrier strip 36. Carrier strip 36 is formed
of electrically insulating material, such as rubber or plastic. The strip 36 is
said to substantially encapsulate the antenna wire(s) 32 and at least a portion
of the tag carrier 34. Spec., para. [0011].
We see no difference between the tire disclosed in Fritze comprising
encapsulated copper strands 20 vulcanized to the inside of the tire and the
tire produced by the claimed process comprising an encapsulated antenna
assembly bonded to an inner surface of the tire.
The Appellants also seek reconsideration of the Examiner’s refusal to
enter an amendment in response to the Final Office Action. Br. 10.
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Application 10/777,366

The Examiner’s refusal to enter the Appellants’ amendment is a
petitionable matter, not an appealable matter. Thus, the issue is not properly
decided in this appeal. In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002);
In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
The Appellants have not shown that the Examiner reversibly erred in
rejecting claims 9-13 under 35 U.S.C. § 102(b) as anticipated by Fritze.
F. DECISION
The rejection of claims 9-13 under 35 U.S.C. § 102(b) as anticipated
by Fritze is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 35 U.S.C. § 1.136(a) (2008).

AFFIRMED

sd

The Goodyear Tire & Rubber Company
Intellectual Property Department 823
1144 East Market Street
Akron, OH 44316-0001

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