Ex Parte JamesDownload PDFPatent Trial and Appeal BoardDec 29, 201714358066 (P.T.A.B. Dec. 29, 2017) Copy Citation 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. 14/358,066 05/14/2014 Michael S. James P07048US2A 3335 48985 7590 01/03/2018 BRIDGESTONE AMERICAS, INC. 10 East Firestone Blvd. AKRON, OH 44317 EXAMINER FISCHER, JUSTIN R ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 01/03/2018 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): iplawpat@bfusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL S. JAMES Appeal 2017-004768 Application 14/358,066 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s August 15, 2016 decision finally rejecting claims 18-27 as unpatentable under 35 U.S.C. § 103(a). Claims 1-17 have been cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We reverse. 1 Appellant identifies the real party in interest as is Bridgestone Americas Tire Operations, LLC. (Appeal Br. 2). Appeal 2017-004768 Application 14/358,066 CLAIMED SUBJECT MATTER Appellant’s invention is directed to a rolled multilayer tire inner liner product (Spec. ^ 1). Claim 18 is representative and is reproduced below from the Claims Appendix of the Brief (emphasis added): 18. A rolled multilayer tire inner liner product comprising: a. a film layer with a thickness of 100 to 400 microns; b. two adhesive layers each directly contacting one outer surface of the film layer and each having a thickness of 10 to 50 microns and c. at least one removable partitioning sheet layer contacting the outer surface of at least one adhesive layer and having a thickness of 50 to 500 microns[,] wherein (i) the overall thickness of the film layer and the two adhesive layers is 120-500 microns; (ii) each adhesive layer is comprised of at least one thermoplastic elastomer and may be of the same or different composition overall; (iii) the film layer and the adhesive layers are comprised of materials that are capable of being extruded by blowing through a stacking die; and (iv) the film layer has an air permeation coefficient of not more than 25 x 10'12 cc • cm/cm2 • sec • cmHg determined according to JIS K7126 at 30°C. Appeal Br. 12 (Claims App.). REJECTIONS (1) Claims 18-22, 26, and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Katsuki.2 (2) Claims 23-25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Katsuki in view of Shannon.3 2 Katsuki et al., US 5,992,486, issued November 30, 1999. 3 Shannon et al., WO 2012/134454 Al, published October 4, 2012. 2 Appeal 2017-004768 Application 14/358,066 Appellant does not offer separate arguments for patentability of any dependent claim; arguments are directed to limitations recited in independent claim 18 (see generally Appeal Br. 5-11; Reply Br. 3—4). Accordingly, our discussion will focus on claim 18. DISCUSSION Independent claim 18 requires “at least one removable partitioning sheet layer.” The Examiner construed claim 18 as “fail[ing] to require the actual removal of the ‘removable’ partitioning layer.” Ans. 3. Based on this claim construction, the Examiner found that claim 18 “as currently drafted fail[s] to exclude viewing [Katsuki’s polyolefin resin layer D] as a partitioning sheet (layer D has the capability of being removed and thus can be fairly characterized as a removable layer).” Final Act. 2. The Examiner further found that a layer will have “the capability of being removed” if “for example, it can physically be removed via a cutting process.” Id. at 4. However, under the Examiner’s interpretation, because it is possible to remove anything by cutting, every object capable of being cut is removable. This interpretation is unreasonably broad because it would effectively expunge the word “removable” from the claim language. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). The Specification explains that [t]he at least one partitioning sheet layer that contacts the outer surface of the adhesive layers is a removable layer that is intended to be removed after the multilayer tire inner liner product is unrolled but before the inner liner is placed into a tire during the tire building process. In other words, the 3 Appeal 2017-004768 Application 14/358,066 partitioning sheet layer is not intended to become a part of the inner liner that is built into a tire. Specification 16. The Specification further provides that “[t]he partitioning sheet layer is made from a material or materials with suitable properties to allow for removal of the partitioning sheet layer(s) from the adhesive layer(s) when the multilayer tire inner liner product is unrolled and prior to incorporation into a tire as an inner liner.” Id. Therefore, one of ordinary skill in the art of tire manufacturing would interpret that a “removable partitioning sheet layer” refers to a layer that may be removed from an inner tire layer without rendering the tire unusable. Consequently, the ability to be removed by means such as cutting is not within the scope of claim 18. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1365 (Fed. Cir. 1999) (“claim construction is firmly anchored in reality by the understanding of those of ordinary skill in the art”). We agree with Appellant that “[cjutting away layer D from Katsuki’s laminate would arguably render the remaining laminate unsatisfactory for its intended purpose, i.e., as a tire inner liner, since it would subject the remaining layers A and B to being punctured or otherwise damaged during any cutting away of layer D.” Appeal Br. 10. The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the 4 Appeal 2017-004768 Application 14/358,066 knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). In this instance, the Examiner has not shown that the use of a removable partitioning sheet layer was taught or suggested by the cited prior art, as Katsuki does not teach such a layer. Therefore, Appellant has persuasively argued that the facts and reasons relied on by the Examiner are insufficient to establish a prima facie case of obviousness as to independent claim 18. The rejections of dependent claims 19-27 are reversed for the same reason as independent claim 18. Accordingly, we reverse the rejections of claims 18-27 for the reasons set forth above. CONCLUSION We REVERSE the rejection of claims 18-22, 26, and 27 under 35 U.S.C. § 103(a) as obvious over Katsuki. We REVERSE the rejection of claims 23-25 under 35 U.S.C. § 103(a) as obvious over Katsuki in view of Shannon. REVERSED 5 Copy with citationCopy as parenthetical citation