Ex Parte James

Patent Trial and Appeal Board

Dec 29, 2017

14358066 (P.T.A.B. Dec. 29, 2017)

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.
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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
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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
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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
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