12596601 (P.T.A.B. Jun. 30, 2016)

Ex Parte Matsuda et al

Patent Trial and Appeal BoardJun 30, 2016

12596601 (P.T.A.B. Jun. 30, 2016)

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. 12/596,601 10/19/2009 Jun Matsuda 4386.087643 2930 24978 7590 07/05/2016 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 EXAMINER BELLINGER, JASON R ART UNIT PAPER NUMBER 3617 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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): ptomail @ gbclaw. net docket @ gbclaw. net verify @ gbclaw. net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN MATSUDA and YOSHIAKI HASHIMURA Appeal 2014-006318 Application 12/596,601 Technology Center 3600 Before JAMES P. CALVE, BRANDON J. WARNER, and FREDERICK C. LANEY, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jun Matsuda and Yoshiaki Hashimura (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—11, which are all the pending claims. Appeal Br. 4. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is The Yokohama Rubber Co., LTD. Appeal Br. 2. Appeal 2014-006318 Application 12/596,601 CLAIMED SUBJECT MATTER Appellants’ disclosed invention “relates to a non-pneumatic tire and a method of manufacturing the same.” Spec. 11. Claims 1 and 9 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A non-pneumatic tire comprising a spoke structure including an annular outer peripheral member and an inner peripheral member connected to each other by a plurality of spokes joined to the inner circumferential side of a tread ring, wherein said inner peripheral member is divided into independent members in the circumferential direction of the tire, and wherein the outer peripheral member is continuously formed in the tire circumferential direction. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Matsuda2 JP 4093318 B2 June 4, 2008 REJECTION The following rejection is before us for review: Claims 1—11 stand rejected under 35 U.S.C. § 102(d) as being barred by Matsuda. 2 It is undisputed that Matsuda is Appellants’ own corresponding foreign patent, which matured from foreign application JP 2006-066057, filed March 10, 2006. See, e.g., Final Act. 2; Appeal Br. 11. 2 Appeal 2014-006318 Application 12/596,601 ANALYSIS The Examiner determined that claims 1—11 are time barred under 35 U.S.C. § 102(d) by Matsuda. Final Act. 2; Ans. 2. As Appellants concisely explain, the “only issue in this appeal is whether the April 24, 2007 [international filing date of the PCT application that corresponds to the present application should be considered as the U.S. filing date.”3 Appeal Br. 11. Specifically, the Examiner states that the U.S. filing date is October 19, 2009 (Final Act. 3; Ans. 3), which would trigger the statutory time bar of 35 U.S.C. § 102(d), whereas Appellants assert that the U.S. filing date is the international filing date of April 24, 2007 (Appeal Br. 11—18; Reply Br. 2—9), which would avoid the statutory time bar. In short, Appellants are correct for the reasons explained in sections A through D of their Appeal Brief—by operation of law, the U.S. filing date for the present application is April 24, 2007. See Appeal Br. 12—15. Although the October 19, 2009, date is important—it is the date on which the last of the requirements for entry into the U.S. national stage under 35 U.S.C. §§ 371(c)(1), (c)(2), and (c)(4) was received, commonly referred to as the 371(c) date (including on the Filing Receipt for the present application)—it is not the U.S. filing date, effective or otherwise. The Examiner’s only error, albeit fatal to the rejection here, was considering the 371(c) date to be the U.S. filing date. 3 It is undisputed that the present application is a U.S. National Stage Application, submitted under 35 U.S.C. § 371, of PCT/JP2007/058884, which has an international filing date of April 24, 2007. See, e.g., Filing Receipt (dated June 29, 2011); Appeal Br. 11. 3 Appeal 2014-006318 Application 12/596,601 Rather, for an international application (PCT application) that timely enters the U.S. national stage under 35 U.S.C. § 371, as in the present case, the U.S. filing date is the international filing date of the PCT application.4 35 U.S.C. § 363; Broadcast Innovation, L.L.C. v. Charter Commc’ns, Inc., 420 F.3d 1364, 1368 (Fed. Cir. 2005) (expressly stating that, “under 35 U.S.C. § 363, the international filing date of a PCT application is also the U.S. filing date for the corresponding national stage application”); see also MPEP §§ 1893, 1896. Therefore, given that the U.S. filing date of the present application is April 24, 2007, by operation of law, Matsuda does not meet the conditions of 35 U.S.C. § 102(d). Specifically, Matsuda, dated June 4, 2008, was not patented prior to the U.S. filing date of the present application.5 See MPEP 4 The Examiner’s asserted distinction between the U.S. filing date (purported to be October 19, 2009) and the effective U.S. filing date (purported to be April 24, 2007) is incorrect. See Final Act. 3; Ans. 3^4. As discussed herein, the law establishes that the U.S. filing date (not merely the effective U.S. filing date) for a properly submitted U.S. national stage application, as here, is the international filing date—in this case, April 24, 2007. 5 We note that the Examiner identifies the issue date of Matsuda as the publication date of June 4, 2008 (Final Act. 2; Ans. 3), whereas Appellants identify the issue date as the grant date of March 14, 2008 (see, e.g., Appeal Br. 11, 18; Reply Br. 2, 9). Also, we note that the cover page of the B2 publication of Matsuda lists March 14, 2008, as the date from which industrial property rights may have effect (per INID Code 24), and lists June 4, 2008, as the date of publication by printing of a patent document on which grant has taken place on or before the publication date (per INID Code 45). We appreciate that Appellants identify the earlier date of March 14, 2008, which appears accurate for the 35 U.S.C. § 102(d) analysis under the guidance in MPEP § 2135.01 (discussing that the relevant date is that when exclusionary rights become enforceable, even if the patent is not published until later). Although this date discrepancy is an interesting academic 4 Appeal 2014-006318 Application 12/596,601 § 2135 (discussing four conditions required by 35 U.S.C. § 102(d) to establish a time bar); see also Appeal Br. 12; Ans. 2—3 (both discussing the same conditions). Consequently, the rejection cannot be sustained. DECISION We REVERSE the Examiner’s decision rejecting claims 1—11 under 35 U.S.C. § 102(d) as being barred by Matsuda. REVERSED exercise, the distinction is unimportant for the purposes of the present appeal—the analysis here is unchanged regardless of whether Matsuda is considered to have issued on March 14, 2008, or June 4, 2008, as neither date is prior to the U.S. filing date of the present application of April 24, 2007. 5