                      NOTE: This disposition is nonprecedential.

 United States Court of Appeals for the Federal Circuit
                                        2009-1277
                                 (Serial No. 10/374,800)




                             IN RE DOUGLAS J. SHONER




      Douglas J. Shoner, of Hawthorne, California, pro se.

      Raymond T. Chen, Solicitor, Office of the Solicitor, United States Patent and
Trademark Office, of Arlington, Virginia, for the Director of the United States Patent and
Trademark Office. With him on the brief were Mary L. Kelly and Frances M. Lynch,
Associate Solicitors.

Appealed from: United States Patent and Trademark Office
               Board of Patent Appeals and Interferences
                         NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit


                                        2009-1277
                                 (Serial No. 10/374,800)


                              IN RE DOUGLAS J. SHONER


         Appeal from the United States Patent and Trademark Office, Board of
         Patent Appeals and Interferences.

                           ____________________________

                              DECIDED: August 10, 2009
                           ____________________________


Before LOURIE, CLEVENGER, and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

                                       DECISION

      Douglas Shoner appeals from the final decision of the Board of Patent Appeals

and Interferences (“Board”) affirming the examiner’s rejection of all seven claims of

appellant’s patent application as obvious under 35 U.S.C. § 103(a). Ex parte Shoner,

No. 2008-1960 (B.P.A.I. July 31, 2008). Because the Board did not err in its decision,

we affirm.

                                     BACKGROUND

      Shoner filed U.S. Patent Application No. 10/374,800 (the “’800 application” or

“Shoner’s application”) on February 25, 2003. Shoner’s application claims a Cellular

Tire Liner and Air Chamber System for Pneumatic Tires. Claim 1 of the ’800 application

reads as follows:
      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 elastometric cellular structure
             composed of a multiplicity of elastometric 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 a segment
             configuration;
             e.      when said cellular tire liner and air chamber system is lining
             said interior of said pneumatic tire, a substantial portion of the
             exterior surface of said cellular tire liner that is adjacent to said air
             chamber forming essentially a vee shape, with the widest part of
             said essentially vee shape furthest from the tread area of said
             pneumatic tire;
             f.      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 segment configuration causes the force exerted by said
             pressurized air chamber on said cellular tire liner circumferentially,
             to be a compression load, whereby said segment configuration
             precludes a circumferential tension load from being applied to said
             cellular tire liner by air chamber pressurization;
             g.      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.

      The patent examiner assigned to the ’800 application issued a final rejection of all

pending claims. The examiner found that U.S. Patent 6,116,308 (“Yoshida”) taught all

of the elements of claims 1-3 and 5-7 of Shoner’s application, with the exception of the

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                                         -2-
“segment configuration” of the tire liners, as seen in subparagraph (d) of claim 1. The

examiner cited numerous prior art publications that she felt demonstrated that it was

“notoriously well-known” to produce tire cores in segments in order to facilitate

mounting. Thus, according to the examiner, one skilled in the art would have found the

combination of segment configuration with Yoshida to have been obvious.                The

examiner therefore rejected claims 1-3 and 5-7. Regarding claim 4, the examiner found

that Yoshida and the segmented configuration prior art, in combination with a patent

previously issued to Shoner, U.S. Patent 5,031,679 (“the ’679 Patent”), also rendered

that claim obvious. Shoner appealed the examiner’s rejections to the Board.

       The Board affirmed the examiner’s decision. In its analysis, the Board examined

claims 1 and 4 of the ’800 application. Because the Board adopted the examiner’s

findings as to obviousness, we assume that the Board adopted the examiner’s

conclusion that claims 2 and 3 rise or fall with the patentability of claim 1. Claims 5-7 of

the ’800 application are dependent claims.        The Board found that the Examiner’s

rejection “present[ed] a reasonable basis to conclude that the invention, as claimed in

claims 1 and 4, would have been obvious to one of ordinary skill in the art at the time of

invention.” Ex parte Shoner, No. 2008-1960, slip op. at 10. The Board also found that a

declaration submitted by Shoner purporting to establish superior results of his patented

tire over prior art tires was “not persuasive in establishing non-obviousness of the

claimed invention.” Id. at 12.

       Shoner timely appealed the Board’s decision. We have jurisdiction pursuant to

28 U.S.C. § 1295(a)(4)(A).




2009-1277
                                         -3-
                                      DISCUSSION

       Section 103(a) of title 35 of the U.S. Code “forbids issuance of a patent when ‘the

differences between the subject matter sought to be patented and the prior art are such

that the subject matter as a whole would have been obvious at the time the invention

was made to a person having ordinary skill in the art to which said subject matter

pertains.’” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. §

103(a)). “Determination of obviousness under 35 U.S.C. § 103 is a legal conclusion

based on underlying facts.” In re Kumar, 418 F.3d 1361, 1365 (Fed. Cir. 2005). This

court reviews “the Board's ultimate determination of obviousness de novo,” while the

Board's underlying findings of fact are reviewed under a substantial evidence standard.

In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000).

       On appeal, Shoner presents the same primary argument that he presented to the

Board. Shoner argues that the ’800 application claims, and Yoshida does not teach, an

air chamber that “is sealed separately from the rest of the tire cavity.” According to

Shoner, subparagraphs b, c, and h of claim 1 claim a separately sealed cavity, and

none of the cited references includes that limitation.

       In response, the Director of the PTO argues that claim 1 of Shoner’s application

is not limited to the structure that Shoner urges. Because the PTO is required to give

claims their broadest reasonable interpretation, the Director claims that it would be

improper to read Shoner’s suggested structural limitation into the ’800 application’s

claims. Therefore, the Director urges us to affirm the Board’s decision.

       We agree with the Director that Yoshida, in combination with the references that

teach segmented construction, renders the claims of the ’800 application obvious. We



2009-1277
                                         -4-
note that Shoner does not argue that the Board’s combination of references would not

have been obvious to one of ordinary skill in the art. Nor does he present any argument

that claims 2-7 are distinct from claim 1 to such a degree that they would be nonobvious

regardless whether claim 1 was obvious. Rather, the only issue for us to decide on

appeal is whether claim 1 is limited to an air chamber that is separately sealed from the

rest of the tire cavity. The other claims stand or fall on that question. For the reasons

described below, we conclude that it is not.

       Claim 1 of the ’800 application claims a system for lining the interior of a tire that

consists of a cellular tire liner and a v-shaped air chamber. Claim 1 further limits the air

chamber to one that is “sealed and pressurized,” ’800 application ¶ (b), that is “adjacent

to” the cellular tire liner, id. ¶ (f), that forms “an essentially vee shape . . . with the widest

part of said essentially vee shape farthest from the tread area” of the tire, id., and that

produces a constant pressure against the tire liner, id. ¶ (h). Shoner concedes that

Yoshida contains all those limitations, except for the requirement that the air chamber

be “sealed.” According to Shoner, the ’800 application requires a structure for sealing

the air chamber that is separate from the rest of the interior of the tire, such as an inner

tube, whereas Yoshida does not have such a structure. Thus, according to Shoner,

Yoshida’s system will not produce the results required by subparagraphs (b), (c), and

(h) of claim 1 of the ’800 patent.

       We acknowledge that the specification of the ’800 application describes an

invention that has a sealed air chamber that is structurally separate from the rest of the

tire cavity. See e.g., ’800 application fig.4. Figure 4 of the ’800 application, reproduced




2009-1277
                                           -5-
below, evidences the specification’s description of a separate structure for the air

chamber.




The description of figure 4 states that air chamber, 50, is “sealed by means of inner

tube,” 25. ’800 application ¶ 37.

      However, claim 1 of the ’800 application does not limit the invention to one in

which the air chamber is sealed with an inner tube or similar structure. Claim 1 requires

only that the air chamber be “sealed and pressurized.” ’800 application claim 1 ¶ (b).

There is no limitation in the language of subparagraph (b) of claim 1 that would narrow

the meaning of “sealed” to a particular structure. The PTO is required to give claim


2009-1277
                                       -6-
terms their “broadest reasonable interpretation consistent with the specification,” and

there is nothing in the specification that would explicitly limit the air chamber to a

particular structure. We therefore must adopt the PTO’s broad interpretation of “sealed”

to include any structure that seals and pressurizes the air chamber. See In re Bigio,

381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow

meaning, the PTO should only limit the claim based on the specification or prosecution

history when those sources expressly disclaim the broader definition.”).

      Yoshida teaches a “sealed and pressurized” air chamber. Figure 1 of Yoshida is

reproduced below:




2009-1277
                                       -7-
Shoner does not dispute that Yoshida teaches an air chamber, 10, that is “pressurized.”

Although Yoshida does not disclose an inner tube or other structure in which to seal and

pressurize the air chamber, the air chamber must be sealed, otherwise it could not be

pressurized. Clearly, the air chamber, 10, in Yoshida is sealed from atmospheric air

pressure by the tire core, 5, and the wheel rim, 3. As we have shown above, claim 1 of

the ’800 application requires only that an air chamber be sealed; there is no requirement

that the air chamber be sealed separately from the tire core or the wheel rim. Yoshida

therefore teaches an air chamber that is “sealed and pressurized.” Because Shoner


2009-1277
                                       -8-
does not argue that the Board erred in finding that Yoshida meets the other relevant

limitations of claim 1 of the ’800 application, we therefore affirm the Board’s finding that

the claims of the ’800 application would have been obvious.

       We also agree with the Board that Shoner’s declaration purporting to establish

superior results is “not persuasive” in establishing nonobviousness.              Shoner’s

declaration describes the tests he conducted using tire liners designed in accordance

with one of his earlier issued patents, not the patent application at issue in this case.

The declaration does not purport to relate to the tire liner of the ’800 application and

therefore does not overcome the prima facie case of obviousness.

       We thus affirm the judgment of the Board.




2009-1277
                                         -9-
