Ex Parte Kotanides

Patent Trial and Appeal Board

May 19, 2016

12190110 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/190,110 08/12/2008
27280 7590 05/23/2016
THE GOODYEAR TIRE & RUBBER COMPANY
200 Innovation Way
AKRON, OH 44316-0001
John Kotanides JR.
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.
DN2005040D01 8203
EXAMINER
JOHNSTONE, ADRIENNE C
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
05/23/2016 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):
kathleen.swisher@goodyear.com
patents@ goody ear.com
pair_goodyear@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN KOTANIDES JR. 1
Appeal2014-008570
Application 12/190,110
Technology Center 1700
Before CHUNG K. PAK, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 4--7. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to super single radial truck
pneumatic drive tires. Spec. i-f 1; Claim 1. Claim 1 is reproduced below
from page 10 (Claims Appendix) of the Appeal Brief:
1 According to the Appellant, the Real Party in Interest is The Goodyear Tire
& Rubber Company. Br. 3.
Appeal2014-008570
Application 12/190,110
1. A pneumatic super single radial truck tire ( 10) of the type having
at least one pair of parallel annular beads ( 17), at least one carcass
ply ( 16) wrapped around said beads, a crown reinforcing
structure comprising radially spaced spliced belts plies and a
helically wound belt ply in a crown area of said tire, tread (28)
disposed over said crown reinforcing structure, and sidewalls
(26) disposed between said tread and said beads, characterized in
that the belt plies comprise a least three ply layers (23, 24, 25)
and at least one radially outermost helically wound layer (22)
located radially outward of the ply layers in a full spiral overlay
of non-steel cords, comprising about 100% of the footprint width
of the tire tread.
REJECTIONS ON APPEAL
1. Claims 1, 2, and 5-7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kotanides (US 2006/0225826 Al, filed Mar. 30, 2005).2
2. Claims 1, 2, and 4--7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sinopoli et al. (US 5,743,975, issued Apr. 28, 1998) in
view of Forney et al. (US 5,042,546, issued Aug. 27, 1991), Marquet et al.
(US 5,616,195, issued Apr. 1, 1997), Okuyama et al. (US 5,092,946, issued
Mar. 3, 1992), and Kojima et al. (US 5,032,198, issued July 16, 1991).
ANALYSIS
Rejection 1
As an initial matter, we must address the Examiner's denial of the
Appellant's claim of priority to U.S. Application Serial No. 11/093,635. See
Br. 4; Ans. 5, 7. The '635 application is the application that resulted in the
Kotanides prior art reference (which is the publication of the '635
2 In the Answer, the Examiner withdraws a rejection of claim 4 as
anticipated by Kotanides. Ans. 6.
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Application 12/190,110
application) that provides the basis for Rejection 1. If the Appellant's
priority claim were granted, Kotanides would not be prior art to the
application presently on appeal ("the '110 application"). In the Appeal
Brief, the Appellant presents as the sole issue whether the Examiner's denial
of the Appellant's priority claim was proper. See Br. 4.
For a later application to be entitled to the priority date of an earlier
filed application, among other requirements, "the written description of the
earlier filed application [must] disclose[] the invention claimed in the later
filed application sufficient to satisfy the requirements of§ 112." In re NTP,
Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011). The Examiner concludes that
the '110 application is not entitled to the priority date of the '63 5 application
because the '110 application was filed with a preliminary amendment that
allegedly broadened the scope of claim 1 beyond what was disclosed by the
'635 application. Ans. 5---6. In particular, the Examiner focuses on the
following element of claim 1: "at least one radially outermost helically
wound layer (22) located radially outward of the ply layers in a full spiral
overlay of non-steel cords, comprising about 100% of the footprint width of
the tire tread." (emphasis added). The Examiner concludes that the '63 5
application supports the limitation "having a width about 100% of the
footprint of the tire tread," such as that appearing in claim 4, but that the
language "comprising about 100% of the footprint" is "broader generic"
language that lacks support in the '635 application. Ans. 5-7 (interpreting
"comprising" as "includ[ing] widths of both about 100% and more than
about 100% of the footprint width"). The Examiner appears to interpret the
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Appeal2014-008570
Application 12/190,110
"having" language of claim 4 as being closed and therefore limited to widths
of about 100%. See id.
While we recognize that claim l's phrase "comprising about 100% of
the footprint width of the tire tread" is similar to, but not identical to, claim
4's phrase "having a width about 100% of the footprint width of the tire
tread," (emphases added), we agree with the Appellant that the specification
of the '63 5 application supports an outer layer "comprising" a width of
about 100% of the footprint width of the tire tread. In that regard, we note
that, like the term "comprising," the term "having" may be interpreted as
open-ended. See, e.g., Lampi Corp. v. American Power Products Inc., 228
F.3d 1365, 1376 (Fed. Cir. 2000) (interpreting the term "having" as open
terminology, allowing the inclusion of other components in addition to those
recited); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1573
(Fed. Cir. 1997).
However, even assuming that the Examiner's interpretation of
"having" and "comprising" is correct, the '635 application provides written
description support for the term "comprising." For written description
support, the Appellant cites i-f 29 of the specification originally filed with the
'635 application.3 Br. 6-7. That paragraph describes layer 22 in open-ended
terms, noting that it "compris[ es]" various features, with one of the features
being a 100% footprint width, according to a table following i-f 304 of the
Specification. See '635 Specification i-fi-129 and 30. Moreover, referencing
3 Paragraph 29 of the originally filed '635 Specification is i-f 30 of the
published application, Pub. No. US 2006/0225826 Al.
4 Paragraph 30 of the originally filed '635 Specification is i-f 31 of the
published application.
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Application 12/190,110
the table, if 30 states that "the percentages may be varied if desired without
departing from the spirit of the invention." Thus, we are persuaded that the
'635 application provides written description support for the term
"comprising about 100% of the footprint width of the tire tread," as
interpreted by the Examiner.
In view of the above findings, the Examiner's denial of the
Appellant's priority claim was improper, the Kotanides reference is not prior
art, and the Examiner's rejection of claims 1, 2, and 5-7 as anticipated by
Kotanides cannot be sustained.
Rejection 2
In the Appeal Brief, the Appellant fails to address, or even to
acknowledge, the rejection of claims 1, 2, and 4--7 under 35 U.S.C. § 103(a)
as unpatentable over Sinopoli in view of Forney, Marquet, Okuyama, and
Kojima. See generally Br. 4--8. Notwithstanding the fact that the Examiner
notes that deficiency in the Answer and maintains the § l 03 rejection, see
Ans. 2, 7, the Appellant fails to file a Reply Brief. It appears that all of the
§ 103(a) references remain prior art even in view of our reversal of the
Examiner's denial of the Appellant's priority claim, and the Appellant has
not argued to the contrary.
Because the Appellant has not asserted any error in the Examiner's
§ 103(a) rejection, we summarily affirm that rejection.
CONCLUSION
Because we reverse the Examiner's denial of the Appellant's priority
claim, we REVERSE the Examiner's rejection of claims 1, 2, and 5-7 as
anticipated by Kotanides.
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Application 12/190,110
We AFFIRM the Examiner's rejection of claims 1, 2, and 4-7 as
unpatentable over Sinopoli in view of Forney, Marquet, Okuyama, and
Kojima.
Because the rejection of every claim on appeal is affirmed under at
least one of the stated grounds of rejection, we AFFIRM the Examiner's
rejection of claims 1, 2, and 4-7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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