THE YOKOHAMA RUBBER CO., LTD

Patent Trials and Appeals Board

May 1, 2020

2019006200 (P.T.A.B. May. 1, 2020)

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.
14/352,049 04/15/2014 Takumi Sekiguchi 3138-162.PCT.US 5390
162045 7590 05/01/2020
Thorpe North & Western/Yokohama
P.O. Box 1219
SANDY, UT 84091-1219
EXAMINER
HAKOMAKI, JAMES R
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
braegger@tnw.com
patentdocket@tnw.com
warren.archibald@tnw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKUMI SEKIGUCHI
____________

Appeal 2019-006200
Application 14/352,049
Technology Center 3700
____________

Before STEFAN STAICOVICI, ERIC C. JESCHKE, and
AMANDA F. WIEKER, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s
decision, as set forth in the Non-Final Office Action dated September 24,
2018, rejecting claims 1–3 and 7–9. Claims 4–6 and 10–24 have been
canceled. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies The Yokohama Rubber Co., LTD as
the real party in interest. Appeal Br. 3.
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BACKGROUND
The disclosed subject matter “relates to a puncture repair liquid
injection method and injection device that can easily inject a puncture repair
liquid contained in [a] hand squeeze type container into a tire.” Spec. 1:8–
10.2 Claims 1 and 7 are independent. Claim 1 is reproduced below, with
emphasis added to certain claim language:
1. A puncture repair liquid injection method
comprising the steps of:
using a puncture repair liquid injection
device comprising a container having a liquid
containing portion containing a puncture repair
liquid, an outlet for discharging the puncture repair
liquid, and an inlet for introducing compressed air;
an injection hose connected between a tire valve of
a wheel mounted on a tire and the outlet of the
container; and a compressor having a pressure
adjuster for selecting an air pressure reduced
relative to an air pressure at a time of normal
driving which is for filling the tire air pressure; the
method further comprising the steps of connecting
the injection hose between the tire valve and the
outlet of the container, connecting the compressor
to the inlet of the container, selecting a reduced air
pressure as a pressurizing force by the compressor
by an operation of the pressure adjuster, injecting
the puncture repair liquid into the tire by
pressurizing an interior of the container based on
the reduced air pressure, selecting the liquid
containing portion of the container to be configured
from a plastic material, and selecting a thickness of
the liquid containing portion to be 2.0 mm or less;

2 Citations to the Specification refer to the Substitute version filed on
April 15, 2014.
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the pressure adjuster including a pressure
adjusting valve, a pressure adjusting button driving
the pressure adjusting valve, and a lock mechanism;
the lock mechanism locking the pressure adjusting
button in a push-in position;
wherein the pressure adjusting button
comprises a plate-shaped pinch portion on a top
surface side to enable twisting of the pressure
adjusting button.

REFERENCES
The Examiner relies on the following references:
Name Reference Date
Knubley US 4,333,491 Issued June 8, 1982
Kojima ’875 US 6,668,875 B2 Issued Dec. 30, 2003
Kojima ’217 US 2011/0011217 A1 Published Jan. 20, 2011
Maki3 Japanese Publication No.
2009-269322 A (and machine
translation of abstract)
Published Nov. 19, 2009

REJECTIONS
1. Claims 1 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kojima ’217, Knubley, and Kojima ’875.
2. Claims 2, 3, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kojima ’217, Knubley, Kojima ’875, and Maki.

3 Maki is a 17-page document that includes an English-language translation
of the abstract, as well as the original document (in Japanese). It was
entered into the file history on April 15, 2014.
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DISCUSSION
Objections to the Drawings
In the Office Action, the Examiner objected to the drawings filed on
April 15, 2014, and March 3, 2016. Non-Final Act. 2–4. Appellant asserts
that the Examiner’s objections are improper for various reasons. See Appeal
Br. 10–13. In the Answer, the Examiner does not address Appellant’s
arguments or the objections to the drawings. See generally Ans.; see also
Reply Br. 4 (noting that, in the Answer, the Examiner “does not in any way
respond to any of Appellant’s arguments against the drawing objections”
and “does not even mention the objection to the drawings”).
Here, Appellant has not argued that the drawing objections are related
to any rejection now on appeal. In addition, the panel does not—based on
our review of the record—identify any relationship. Thus, Appellant’s
requested review of the drawing objections is to be made via petition to the
Director under 37 C.F.R. § 1.181, not by appeal to the Board. Ex parte
Frye, 94 USPQ2d 1072, 1077–78 (BPAI 2010) (precedential). We do not
address further, and take no position as to the merits of, the stated
objections.
Rejection 1 – Claims 1 and 7
Appellant argues the patentability of independent claims 1 and 7
based on the same arguments. Appeal Br. 15–20; Reply Br. 4–8; see also
Appeal Br. 18 (“Independent claim 7 includes similarly distinguishing
limitations and Appellant similarly requests that the rejection be
overturned.”). Because Appellant and the Examiner focus on the language
of claim 1, however, we do also.
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For claim 1, the Examiner relied on Kojima ’217 for certain
limitations but stated that “Kojima ’217 does not explicitly disclose a step of
selecting an air pressure reduced relative to an air pressure at time of normal
driving which is for filling a tire air pressure.” Non-Final Act. 5–6.4 The
Examiner found, however, that “Knubley teaches a method of selecting an
air pressure reduced relative to an air pressure at a time of normal driving
which is for filling the tire air pressure.” Id. at 6 (citing Knubley 8:28–35).
The Examiner states that it would have been obvious for one of ordinary
skill in the art at the time of the invention “to have modified the compressor
disclosed by Kojima ’217 to include the selective pressure ability of
Knubley” and also states that “[o]ne of ordinary skill in the art would have
been motivated to make this modification because this would allow a tire to
be filled with greater precision and accuracy, as suggested by Knubley
(column 1, lines 48–52).” Id. The Examiner relied on Kojima ’875 as to
certain claimed aspects not at issue on appeal. See id. at 6–7.
First, Appellant contends that although “Knubley allegedly discloses
that the air pressure can be set to any desired pressure and may be
selectively increased or decreased as desired, Knub[le]y is clea[]r that the
selected pressure is intended to be the correct driving pressure for safety,
fuel economy and optimizing the life of the tires.” Appeal Br. 15 (citing
Knubley’s Background). Appellant continues that, “[b]ased on the
disclosure of Knubley, one of ordinary skill in the art would not understand
or be motivated to use an air pressure reduced relative to an air pressure at a
time of normal driving.” Id.; see also id. at 15–16 (“The ability to select an

4 We will refer to this limitation—the first shown in emphasis in the
recitation of claim 1 above—as the “selecting” limitation.
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air pressure for driving according to Knubley would not lead one of ordinary
skill in the art to the claimed inventions.” (emphasis added)). According to
Appellant, “[t]he combination of references would simply . . . result in using
the air pressure of Kojima [’]217 as set precisely using the pressure
transducer, comparator, etc. of Knubley.” Id. at 16.
Second, Appellant argues that “[n]othing in the combination suggests
pressurizing the puncture repair liquid container based on the reduced
pressure as claimed” in the second limitation shown in emphasis above.5
Appeal Br. 17; see also id. at 16 (“One of ordinary skill in the art would not
understand from the combination that a reduced pressure should be used for
injection of puncture repai[r] liquid.”), 15 (“There is no suggestion in
Knubley of selecting a reduced pressure for injecting puncture repair liquid
into a tire.”). According to Appellant, “if the pressure adjusting system of
Knubley was incorporated into the Kojima [’]217 apparatus, it is not clear
that the pressure of the sealing agent container would be reduced.” Id. at 16.
We agree with both of these arguments. As to the first, directed at the
“selecting” limitation, we agree that Knubley discloses a system to more
accurately inflate a tire to an air pressure used during driving, not “an air
pressure reduced relative to an air pressure at a time of normal driving” as
recited in the “selecting” limitation. For example, in the Background of the
Invention (cited by Appellant), Knubley discusses how it is “well known
that the inflation of tires to the correct pressure is a necessity for safety
reasons and for fuel economy and for optimizing the life of the tires.”
Knubley 1:24–27 (emphasis added). Soon thereafter (in a discussion cited

5 We will refer to this limitation as the “pressurizing” limitation.
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by the Examiner), Knubley states that “[a] principal object of the invention
is the provision of an air dispensing apparatus which will enable the inflation
of a vehicle tire to a desired pressure with a degree of accuracy and
precision which previously has been unavailable using the commonly
provided apparatus.” Id. at 1:48–52 (emphasis added), cited at Non-Final
Act. 6.
In the passage cited by the Examiner as to the “selecting” limitation,
Knubley discloses how:
in the first embodiment compensation for over-run resulting
from the finite time taken for the valves to operate was effected
by generating a target pressure lower than the pressure set by the
user by a predetermined amount and aiming to inflate the tire to
the lower target pressure, the over-run then bringing the target
pressure attained up to close equality with the pressure set by the
user . . . .
Knubley 8:28–35, cited at Non-Final Act. 6. This passage makes clear,
however, that the user sets the “predetermined” pressure value—i.e., for
normal driving—and the system generates a lower pressure before then
attaining the “predetermined” pressure (to compensate for lag in the valves).
The result is that Knubley inflates to the normal driving pressure.
As to this first argument by Appellant, addressing the “selecting”
limitation, the Examiner responds that:
the main reason that Knubley developed his electronically
controlled air dispensing apparatus, was that maintenance of
existing analog gauges was “a matter of great difficulty” and that
“Frequent recalibration of the pressure gauge mechanism would
be required if such mechanical arrangements were to be expected
to function accurately for long periods.”
Ans. 10 (quoting portions of Knubley 1:33–44). As noted by Appellant,
however, this passage from Knubley, summarizing the reasons for the
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invention there, does not support the Examiner’s position that Knubley
discloses the “selecting” limitation here. See Reply 4–5 (stating that the
Examiner “cites to a description of some of the problems the Knubley
invention attempts to overcome . . . , but does not explain why or how this is
relevant to Appellant’s arguments”).
The Examiner also responds by taking the position that the three
recitations of “reduced” air pressures in claim 1 “could be the same.”
Ans. 11. From this, the Examiner determines that Kojima ’217 (rather than
Knubley) discloses the “selecting” limitation. Id. As noted by Appellant,
however, the Examiner already found—and then restated in the Answer—
that “Kojima ’217 does not explicitly disclose a step of selecting an air
pressure reduced relative to an air pressure at time of normal driving which
is for filling a tire air pressure.” Ans. 5; Non-Final Act. 6; see also Reply
Br. 5 (“If the Examiner has acknowledged that Kojima [’]217 does not
disclose the reduced air pressure, it is not clear how the Examiner can
reasonably assert without explanation in the Examiner’s Answer that Kojima
’217 meets the limitations of the reduced pressure.”).
Turning now to Appellant’s second argument summarized above, we
determine that the Examiner has not adequately explained how the proposed
modified device would allegedly satisfy the “pressurizing” limitation. In
response, the Examiner restates the position that the three recitations of
“reduced” air pressures in claim 1 “could be the same.” Ans. 13. From this,
the Examiner determines that Kojima ’217 discloses the “pressurizing”
limitation. Id. The Examiner has not adequately explained this position.
Although we agree with the Examiner that Kojima ’217 discloses
“inject[ing] puncture repair liquid into the tire by pressurizing an interior of
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the container” (Non-Final Act. 5), the Examiner has not adequately
explained how such a pressure is a “reduced air pressure” as required by the
“pressurizing” limitation. See, e.g., Kojima ’217 ¶ 74 (discussing “a nipple-
like air intake port portion 7 that sends the compressed air from the
compressor 3 into the container body 4, and a nipple-like sealing
agent/compressed air ejector port portion 41 that sends out the puncture
sealing agent and the compressed air successively from the container body 4
by the sent compressed air”).
Third, Appellant argues that changeover switch 8 in Kojima ’217—
identified by the Examiner as the “pressure adjuster” recited immediately
prior to the “selecting” limitation (Non-Final Act. 4)—does not provide a
“reduced pressure.” Appeal Br. 17–18; see also id. at 18 (arguing that
“changeover switch 8 is not a pressure adjusting button and the assertion
by the Examiner that it is a pressure adjusting button is in error”).
According to Appellant, in Kojima ’217, changeover switch 8 is used “in
changing over between a puncture repai[r] dedicated hose 77[,] which is
attached to a sealing agent container 6[,] and a compressed air inflation
dedicated hose 23.” Id. at 17; see also, e.g., Kojima ’217, Figs. 2 and 3
(showing the referenced structures). But, Appellant argues, “changeover
switch 8 does not have a mechanism to enable reduction of the pressure.”
Appeal Br. 17 (also stating that “Kojima [’]217 does not teach or suggest to
differentiate the pressure of flow paths of two routes”).
In response, the Examiner states that changeover switch 8 is a
“pressure adjuster” as recited because, “when manipulated by a user between
first and second positions, [it] adjusts the pressure being directed to hoses
(23) and (75).” Ans. 10. According to the Examiner, “[a]s the changeover
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switch (8) is manipulated, the pressures to each of the hoses (75 and 23) will
either be on or off.” Id. at 15.
We do not agree with the Examiner’s position that a pressure at
ambient (i.e., when a hose’s pressure is “off”) is a “reduced” pressure as that
term is used in claim 1. As argued by Appellant, the Examiner has not
adequately explained how an ambient pressure could, when used in
“pressurizing the interior of the container,” cause the “puncture repair
liquid” to be “inject[ed]” “into the tire” as required by the “pressurizing”
limitation and the recitation immediately prior. See Reply Br. 7 (arguing
that “if the pressure is off, then Kojima [’]217 cannot discharge the puncture
repair liquid and introduce compressed air to the tire as required by claim
1”). For these reasons, we do not sustain the rejection of claims 1 and 7.
Rejection 2 – Claims 2, 3, 8, and 9
Claims 2 and 3 depend from claim 1, and claims 8 and 9 depend from
claim 7. Appeal Br. 22–23 (Claims App.). The Examiner’s added reliance
on Maki does not remedy the deficiencies in the rejection based on Kojima
’217, Knubley, and Kojima ’875, discussed above, regarding claims 1 and 7.
Thus, for the same reasons discussed above, we do not sustain the rejection
of claims 2, 3, 8, and 9.

CONCLUSION
We reverse the Examiner’s rejection of claims 1–3 and 7–9. More
specifically, (1) we reverse the decision to reject claims 1 and 7 under
35 U.S.C. § 103(a) based on Kojima ’217, Knubley, and Kojima ’875, and
(2) we reverse the decision to reject claims 2, 3, 8, and 9 under 35 U.S.C.
§ 103(a) based on Kojima ’217, Knubley, Kojima ’875, and Maki.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 7 103(a) Kojima ’217,
Knubley, Kojima ’875
1, 7
2, 3, 8, 9 103(a) Kojima ’217,
Knubley, Kojima
’875, Maki
2, 3, 8, 9
Overall
Outcome
1–3, 7–9

REVERSED