Ex Parte Miklic et al

Patent Trials and Appeals Board

Jun 25, 2019

15101464 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/101,464 06/03/2016
48985 7590 06/27/2019
BRIDGESTONE AMERICAS, INC.
10 East Firestone Blvd.
AKRON, OH 44317
FIRST NAMED INVENTOR
Andrew T. Miklic
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.
Pl2199US2A 9262
EXAMINER
LY,KENDRA
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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 ANDREW T. MIKLIC and PAUL B. WILSON
Appeal2019-004517
Application 15/101,464
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
July 27, 2018 decision finally rejecting claims 1-3 and 25-29 ("Final Act.").
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellant is the Applicant, Bridgestone Americas Tire Operations LLC,
which is also identified the real party in interest (Appeal Br. 1 ).
Appeal2019-004517
Application 15/101,464
CLAIMED SUBJECT MATTER
Appellant's disclosure relates, inter alia, to a tire having an electronic
device, in particular a radio frequency identification ("RFID") tag in a lower
sidewall (Abstract, Spec. ,r 1 ). Such RFID tags are said to allow
transmission of data about the tire to an external reader (Spec. ,r 2). The
location of the RFID tag in the tire is said to be important to, inter alia the
tire's structural integrity and also reading of data from the tag (id.). Details
of the claimed invention are set forth in representative claim 29, which is
reproduced below from the Claims Appendix to the Appeal Brief ( emphasis
added):
29. A tire comprising:
a circumferential tread;
a pair of sidewalls;
a pair of bead portions, each bead portion including a
bead and a bead filler having an apex;
at least one body ply extending from bead to bead,
including a pair of tum up portions, each tum up portion having
a tum up end axially outside of a respective bead and radially
below the apex of a respective bead filler;
a pair of wire reinforcements, each wire reinforcement
wrapping around one of the pair of bead portions such that each
wire reinforcement has an inner portion axially inside the body ply
and an outer portion axially outside a respective tum up portion of
the body ply, wherein the inner portion of each wire reinforcement
has an inner end disposed radially above a respective bead and
radially below the apex of a respective bead filler, and wherein the
outer portion of each wire reinforcement has an outer end radially
above a respective bead and radially below the tum up end of a
respective tum up portion of the body ply;
a pair of reinforcement fillers, each reinforcement filler
having an inner surface with an upper portion contacting an outer
surface of a respective bead filler, a middle portion contacting an
2
Appeal2019-004517
Application 15/101,464
outer surface of a respective tum up portion of the body ply, and
a lower portion contacting an outer surface of a respective wire
reinforcement, wherein the reinforcement filler has a top end
disposed below the apex of the respective bead filler;
a pair of first and second chafers, each of the pair of first
and second chafers at least partially wrapping around one of the
pair of bead portions,
wherein each of the pair of first and second chafers
includes a first portion disposed axially outside of a
respective bead filler, a respective reinforcement filler,
and a respective wire reinforcement, the first portion
extending radially above the respective reinforcement
filler,
wherein each of the pair of first and second chafers includes
a second portion disposed below a respective bead,
wherein each first chafer of the pair of first and second
chafers has a first outer end,
wherein each second chafer of the pair of first and second
chafers has a second outer end located radially below the
first outer end;
a pair of abrasion portions, each abrasion portion at least
partially wrapping around one of the pair of bead portions such
that each abrasion portion includes:
a first portion disposed axially outside a respective bead
filler, a respective reinforcement filler, and a respective
tum up portion of the body ply, and
a second portion disposed below a respective bead; and
an electronic device disposed radially below the apex of
the bead filler of one of the bead portions and axially outside
the bead filler, wherein the electronic device is axially spaced
from the bead filler such that the electronic device does not
contact the bead filler
wherein the electronic device is sandwiched between the
first chafer of one of the pair of chafers and one of the
pair of sidewalls.
3
Appeal2019-004517
Application 15/101,464
REJECTIONS
(1) Claim 29 is rejected under 35 U.S.C. § 112(b) as being
indefinite because the recitation of "one of the pairs of chafers" in the last
line of the claim lacks antecedent basis.
(2) Claims 1-3 and 25-29 are rejected under 35 U.S.C. §I03(a) as
unpatentable over JP' 1182 in view ofMyatt3 and either of JP '2124 or
JP '210. 5
DISCUSSION
Rejection (1) - § 112(b)
The Examiner finds that claim 29 is indefinite because the phrase
"one of the pair of chafers" as used in the last line of claim 29 lacks
antecedent basis and, therefore, it is unclear which pair of chafers the phrase
is referring to (Final Act. 4). We reverse this rejection.
Claim 29 recites the presence of "a pair of first and second chafers,"
which means that there are (at least) two pairs of chafers, each containing a
first and a second chafer. This understanding is supported, for example, by
the Specification at paragraph 48 ( describing how a single bead region, of
two total, contains a pair of chafers, including a first chafer and a second
chafer). At the end of the claim, the reference to "one of the pair of chafers"
is plainly referring to one of the pairs of chafers described earlier in the
2 JP 11-01118 A, published January 19, 1999. We cite the English-language
abstract of record.
3 Myatt, US 2011/0175778 Al, published July 21, 2011.
4 JP 07-101212, published April 18, 1995. We cite the English-language
abstract of record.
5 JP 64-056210, published March 3, 1989.
4
Appeal2019-004517
Application 15/101,464
claim. While the Examiner states that "it is unclear which chafers
comprise[] the 'pair of chafers, '" based on the language of the claim, we
disagree. Therefore, we reverse the rejection under § 112(b ).
Rejection (2) - § 103
The Examiner finds, and Appellant does not dispute, that the
combination of JP '118 and JP '210/JP '212 teach all of the limitations of
the claimed invention, except that they do not provide for the presence of an
electronic device (Final Act. 8-10). In this regard, the Examiner finds that
Myatt provides an electronic device such as an RFID in a tire to control and
measure tire related parameters (Final Act. 10, citing Myatt, ,r 1). The
Examiner further finds that Myatt's FIG. 7 shows an electronic device on the
inner surface of the axially outermost rubber layer of the tire, where the
electronic device is axially outside and not contacting the bead filler (Final
Act. 10). The Examiner also finds that Myatt teaches that an ideal location
of the electronic device is embedding it in the sidewall in the vicinity of the
bead Band placed between two rubber layers of the tire (id.).
Appellant argues that Myatt does not disclose or suggest placing the
electronic device in the locations recited in claim 1 ("the first portion of one
of the pair of chafers is disposed between the electronic device and the
respective bead filler, such that the first portion of the chafer contacts the
electronic device") or claim 29 ("the electronic device is sandwiched
between the first chafer of one of the pair of chafers and one of the pair of
sidewalls") (Appeal Br. 11 ). Appellant contends that Myatt is specifically
concerned with the location to place an electronic device in a tire, and
provides four different locations in the tire, none of which, presumably,
correspond with the claimed location. Appellant argues that Myatt does not
5
Appeal2019-004517
Application 15/101,464
"provid[ e] a broader rationale for placing an electronic device anywhere in a
bead region of a tire, or a specific rationale for placing an electronic device
in contact with a first portion of a chafer or sandwiched between a chafer
and a sidewall" (Appeal Br. 13-14).
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 prim a f acie 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
knowledge of those of ordinary skill in the art. In re Fine, 83 7 F .2d 1071,
1074 (Fed. Cir. 1988). There must be some articulated reasoning with
rational underpinning as to why the necessary modifications would have
made to the prior art to arrive at the claimed invention. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007) (citing In re Kahn, 441 F.3d 977,
988(Fed.C~.2006D.
In this instance, the Examiner finds that Myatt's disclosure of locating
the electronic device at location L2 would have guided one of skill in the art
to place the electronic device at the claimed location (Ans. 12). In
particular, the Examiner finds that Myatt discloses that location L2 is
between two rubber layers of a tire and located radially below the outermost
tip of the bead filler (Ans. 13). According to the Examiner, application of
such a disclosure to the tire structure shown by JP '118 would have resulted
6
Appeal2019-004517
Application 15/101,464
in a location for the electronic device which corresponds to the claimed
location, as illustrated by the Examiner (Ans. 13):
Myatt (US 2011/01157711)
v---....
tli~ iuc~.~:o:; of ~FD/:::-!;:,,:::i:r~,ni,::.
,:l.:,,_.,;,:,:. 3:? k, :],::;t\,~'o)~n '::1,•0 i'-sbbc-:--
i~{eC-~ a~~ ttte ~~d !{.;<:~':'.':'LI
r~;,s'!fty :::~tv~·; th;;;. o~rl>c'rrr:ost t,p ,:J
t:i~ b€~.o n:i~r
12
Fig. 7
JP 11·01111S {JP'1lS) !
. r~o
I 1
-.,,~20""""as----.-Pf I
17 .. ' ··21 ,Ut 1 j
., t 1· ' :
: ~ :
The annotated figure on the left is FIG. 7 of Myatt which identifies the
location the electronic device/RFID 32 in the tire at location L2. The
annotated figure on the right illustrates FIG. 1 of JP '118 modified by
showing the location of the electronic device (RFID) that the Examiner is
rendering obvious to satisfy claims 1 and 29 in view of the teachings,
suggestion, and guidance of Myatt.
In the Reply Brief, Appellant alleges that "The Examiner also
concedes that Myatt does not teach or suggest placing an electronic device in
the location that is required by claims 1 and 29" (Reply Br. 2). However, as
shown in the annotated figures above, the Examiner finds that the L2
location taught by Myatt, if adapted to a tire having the structure of JP '118,
would result in the claimed location for the electronic device. Appellant
does not persuasively dispute this reasoning (see, Reply Br. 2-3).
Accordingly, we determine that the preponderance of the evidence of
record supports the Examiner's obviousness rejection.
CONCLUSION
We REVERSE the rejection of claim 29 under 35 U.S.C. § 112(b).
7
Appeal2019-004517
Application 15/101,464
We AFFIRM the rejection of claims 1-3 and 25-29 under
35 U.S.C. § 103(a) as unpatentable over JP '118 in view of Myatt and either
of JP '212 or JP '210.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
8