Ex Parte Shoner

Board of Patent Appeals and Interferences

Dec 1, 2010

10377984 (B.P.A.I. Dec. 1, 2010)

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.
10/377,984 03/01/2003 Douglas Joseph Shoner 6691
63180 7590 12/01/2010
DOUGLAS J. SHONER
12244 TRURO AVENUE
HAWTHORNE, CA 90250
EXAMINER
JOHNSTONE, ADRIENNE C
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
12/01/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS JOSEPH SHONER
____________

Appeal 2009-013255
Application 10/377,984
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013255
Application 10/377,984

2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over Shoner (US 5,031,679, issued Jul. 16, 1991) in view of
Dehn (GB 193,600, issued Mar. 1, 1923).3 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appellant argues the claims as a group. (App. Br. 14.) Accordingly,
we decide the appeal as to claims 1-7 on the basis of claim 1 (see 37 C.F.R.
§ 41.67(c)(1)(vii)), which is reproduced below from the Claims Appendix to
the Appeal Brief:
1. A cellular tire liner and air chamber system for lining the interior of
a pneumatic tire, said system comprising:
a. a cellular tire liner having an elastomeric cellular structure
composed of a multiplicity of elastomeric cells;
b. an air chamber for said interior of said pneumatic tire that is
subsequently sealed and pressurized;
c. when said cellular tire liner and air chamber system is lining said
interior of said pneumatic tire, said cellular tire liner being interposed
between the interior surface of said pneumatic tire and said air
chamber;
d. when said cellular tire liner and air chamber system is lining said
interior of said pneumatic tire, a multiplicity of said cellular tire liners
are used in said interior to line said pneumatic tire, said multiplicity of
said cellular tire liners establishing an annular interface;

2 Final Office Action mailed Jul. 13, 2005 (“Final”).
3 Appeal Brief filed Oct. 16, 2008 (“App. Br.”).
Appeal 2009-013255
Application 10/377,984

3
e. each of said cellular tire liners in said multiplicity of said cellular
tire liners are individual and independent from other said cellular tire
liners in said multiplicity;
f. said annular interface being a ring-shaped surface forming a
common boundary between said individual and independent cellular
tire liners whereby said annular interface disconnects the sidewall
portions of said cellular tire liner from each other allowing said
sidewall portions to move in opposite directions during load
deflection, unconnected to one another;
g. when said cellular tire liner and air chamber system is lining said
interior of said pneumatic tire, said annular interface extends from
said air chamber to said interior surface of said pneumatic tire, in the
tread area of said pneumatic tire;
h. when said cellular tire liner and air chamber system is lining said
interior of said pneumatic tire and said pneumatic tire is mounted onto
a wheel, upon pressurization of said air chamber, said pressurized air
chamber exerts a constant force on said multiplicity of said cellular
tire liners and presses said multiplicity of said cellular tire liners
against said interior surface of said pneumatic tire, whereby said
pressurized air chamber completes the required force necessary to
establish the entire load bearing capability of said pneumatic tire when
said air chamber is sufficiently pressurized.
Appellant raises several issues for our consideration. We focus on the
following issue: did the Examiner establish proper motivation to modify
Shoner to include an annular interface as claimed (see claim 1 d., f., and g.)?
The Examiner finds that Shoner (embodiment of Figure 13) discloses
the invention as claimed with the exception of an annular interface between
independent sections of the cellular tire insert. (Ans.4 3.) The Examiner
relies on Dehn, p. 1, ll. 58-63 to establish that “it is well known to provide

4 Examiner’s Answer mailed Feb. 5, 2009.
Appeal 2009-013255
Application 10/377,984

4
the insert in such independent sections with an annular interface
therebetween in order to facilitate mounting between tire and wheel rim.”
(Ans. 3.) The Examiner thus concludes “[i]t would . . . have been obvious to
one of ordinary skill in the art to provide in the Shoner Figure 13 cellular tire
insert such independent sections with an annular interface therebetween in
order to facilitate mounting between tire and wheel rim.” (Id.)
Dehn, p. 1, ll. 58-63 reads as follows:
It has also been proposed to compose these resilient cores for
tires of several sections which are split in planes or a plane
parallel to the medial plane of the wheel in order to facilitate the
assembly of the cores.

Appellant points out that in Shoner’s method, the tire insert is already
constructed in independent sections along planes perpendicular to the
rotational axis of the wheel to facilitate mounting the inserts between the tire
and wheel rim. (App. Br. 20-21 (relying on US 1,444,892, issued Feb. 13,
1923 to Westgate, as evidence that it was known in the art to separate tire
inserts in this manner to facilitate mounting).) Appellant thus contends the
Examiner failed to provide sufficient rationale as to why the ordinary artisan
would have been motivated to modify Shoner’s method such that the tire
inserts are formed not only in sections separated along planes perpendicular
to the rotational axis of the wheel, but also in sections which, when
assembled, are separated by a common annular interface. (App. Br. 21.)
Appellant further argues Dehn teaches away from forming multiple sections
of tire core since Dehn ultimately unites the sections into an integral unit,
e.g., by vulcanization, to prevent any creeping action between sections.
(App. Br. 17-18.)
Appeal 2009-013255
Application 10/377,984

5
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). See
also, In re Vaidyanathan, No. 2009-1404, 2010 WL 2000682, at *9 (Fed.
Cir. May 19, 2010) (non-precedential) (“KSR did not free the PTO's
examination process from explaining its reasoning. In making an
obviousness rejection, the examiner should not rely on conclusory
statements that a particular feature of the invention would have been obvious
or was well known. Instead, the examiner should elaborate, discussing the
evidence or reasoning that leads the examiner to such a conclusion.”).
Appellant has persuasively argued that the Examiner failed to
establish proper motivation to modify Shoner to include an annular interface
as claimed. The Examiner failed to fully discuss the evidence or reasoning
relied on in support of the obvious determination and, instead, improperly
relied on conclusory statements as to why the claimed invention would have
been obvious. In this regard, we note the Examiner failed to provide
meaningful responses to Appellant’s arguments (see Ans. 3-4), e.g., the
Examiner did not explain why the disclosure in Dehn relied upon by
Appellant (see App. Br. 17-18) does not teach away from forming tire
sections as claimed.
Accordingly, we reverse the rejection of claims 1-7 under 35 U.S.C. §
103(a) as unpatentable over Shoner in view of Dehn.
REVERSED
Appeal 2009-013255
Application 10/377,984

6

sld

DOUGLAS J. SHONER
12244 TRURO AVENUE
HAWTHORNE CA 90250