DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Declaration Under 37 CFR 1.132
The affidavit under 37 CFR 1.132 filed 07/08/2021 is not sufficient to overcome the rejection of claim 1 based upon 35 U.S.C. 103 over references Nagatsu et al. (JP 3718340, see machine translation) (of record), [any one of Rigo et al. (US 20180361791) (of record) (Rigo ‘791), Rigo et al. (US 20190358921) (of record) (Rigo ‘921), and/or Chang et al. (US 20130146198) (of record)], and [any one of Taniguchi et al. (US 5419109) (of record) and/or Hirakawa et al. (US 5340650) (of record)], as detailed in the rejection below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 5, 9, 12-13, 17, 20-21, and 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagatsu et al. (JP 3718340, see machine translation) (of record), [any one of Rigo et al. (US 20180361791) (of record) (Rigo ‘791), Rigo et al. (US 20190358921) (of record) (Rigo ‘921), and/or Chang et al. (US 20130146198) (of record)], and [any one of Taniguchi et al. (US 5419109) (of record) and/or Hirakawa et al. (US 5340650) (of record)].
Regarding claims 1, 9, and 13, Nagatsu discloses a bicycle-tire reinforcing ply (Fig. 1: 2) ([0001]), consisting of: a single woven fabric (Figs. 1, 2: 2) in which warps (Fig. 2: 5) and wefts (Fig. 2: 6) are interlaced ([0012]), wherein the warps may comprise vinylon (i.e., polyvinyl alcohol-series) fiber yarns ([0016]-[0018]).
Nagatsu further discloses a bicycle tire (Fig. 1), comprising: a tread part (Fig. 1: 3) provided to a ground contact surface of the bicycle tire ([0008], [0012]); and a carcass part (Fig. 1: 1) provided inside the tread part (Fig. 1: 3), wherein the bicycle tire comprises the bicycle-tire reinforcing ply (Fig. 1: 2) between the tread part (Fig. 1: 3) and the carcass part (Fig. 1: 1).
Nagatsu further discloses that the ratio of weft to warp per 1 cm square is less than 1.0 ([0014]), and the weft density is preferably 25 yarns/cm or less (63.5 yarns/2.54 cm or less) ([0015]). Because the weft to warp ratio is less than 1.0, the warp density may be greater than 25 yarns/cm (63.5 yarns/2.54 cm), or merely just greater than 0 yarns/cm, so long as the ratio between the weft and warp is less than 1.0. For instance, if the weft density is 25 yarns/cm (63.5 yarns/2.54 cm), the warp density may be any value greater than 25 yarns/cm (63.5 yarns/2.54 cm) (e.g., 25/26 = 0.96, 25/27 = 0.93, 25/28 = 0.89, etc.). While a broad range of values, the warp density range disclosed by Nagatsu encompasses the claimed range of 45 yarns/2.54 cm or greater and 90 yarns/2.54 cm or less. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the warp density of the woven fabric.
However, Nagatsu does not expressly recite each of the polyvinyl alcohol-series fiber yarns includes a plurality of single fibers having an average fiber diameter of 45 µm or smaller.
Rigo ‘791 teaches a bicycle-tire reinforcing ply (Figs. 1-2, 4, 7: 26) ([0002]), comprising: a single woven fabric (Figs. 4, 7: 26) in which warps (Figs. 4, 7: 64) and wefts (Figs. 4, 7: 66) are interlaced ([0172]), wherein the warps (Figs. 4, 7: 64) comprise polyvinyl alcohol-series fiber yarns ([0031]), wherein each of the polyvinyl alcohol-series fiber yarns includes a plurality of single fibers having an average fiber diameter of between 5 µm and 20 µm ([0032], [0040]), which overlaps with the claimed range of 45 µm or smaller. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the average fiber diameter of the polyvinyl alcohol-series fiber yarns. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the yarns of Nagatsu in order to have a plurality of single fibers having an average fiber diameter in the aforementioned range as is generally known in the substantially similar art, as taught by Rigo ‘791.
Additionally or alternatively, Rigo ‘921 teaches a two-wheeled vehicle tire (i.e., bicycle-tire) reinforcing ply (Figs. 1-2: 10) ([0002]), comprising: a single woven fabric (Figs. 5, 10-12: 26) in which warps (Fig. 5: 64, 76) and wefts (Fig. 5: 66) are interlaced ([0050]-[0052], [0057], [0317], [0325]-[0326]), wherein the warps (Fig. 5: 64, 76) comprise polyvinyl alcohol-series fiber yarns ([0044], [0050], [0059], [0298]), wherein each of the yarns includes a plurality of single fibers having an average fiber diameter between 5 and 20 μm ([0045]), which overlaps with the claimed range of 45 µm or smaller. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for an average fiber diameter of the single fibers. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the yarns of Nagatsu in order to have a plurality of single fibers having an average fiber diameter in the aforementioned range as is generally known in the substantially similar art, as taught by Rigo ‘921.
Additionally or alternatively, Chang teaches a rubber-coated composite thread-based reinforcement (Fig. 1: 6) for use in bicycle tires ([0009]-[0010], [0021], [0109]-[0110]), wherein the reinforcing thread may be PVA ([0027]), and wherein the reinforcing thread may be formed from a plurality of elementary filaments of small diameter, typically less than 30 µm ([0023]), which overlaps with the claimed range of 45 µm or smaller. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the average fiber diameter. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the yarns of Nagatsu in order to have a plurality of single fibers having an average fiber diameter in the aforementioned range as is generally known in the substantially similar art, as taught by Chang.
However, Nagatsu does not expressly recite a polyvinyl alcohol series polymer constituting said polyvinyl alcohol series fiber yarns has a saponification degree of 98 mol% or higher.
Taniguchi teaches a tire cord made of a multifilament yarn of polyvinyl alcohol (“PVA”) having a degree of polymerization of at least 1500 (Col. 2 lines 25-29), which overlaps with the claimed range of 1000 to 20000, and having a saponification value of at least 99 mol% (Col. 1 lines 65-67), which overlaps with the claimed range of 98 mol% or higher. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a degree of polymerization or a saponification degree of said polyvinyl alcohol series fiber yarns. By using this kind of polyvinyl alcohol having a high degree of polymerization and high saponification value, the resulting yarn is able to have a tensile strength of at least 10 g/d, and the high saponification value of at least 99 mol % gives the good water resistance together with a high tensile strength (Col. 2 lines 25-36). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Nagatsu in order to provide the PVA yarns of the woven fabric ply with a degree of polymerization value and a saponification value as taught by Taniguchi for the advantages as discussed above.
Additionally or alternatively, Hirakawa teaches a PVA fiber used in tires (Col. 1 lines 9-19), wherein the PVA has a degree of polymerization of at least 1000 (Col. 4 lines 26-36), which overlaps with the claimed range of 1000 to 20000, and wherein the PVA may be obtained by saponification of polyvinyl acetate and has a degree of saponification of at least 98.5 mol % (Col. 4 lines 26-31), which overlaps with the claimed range of 98 mol% or higher. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a degree of polymerization and a saponification degree of said polyvinyl alcohol series fiber yarns. A higher degree of polymerization generally provides better resistance to hot water and wet heat (Col. 4 lines 33-36). Lower saponification degrees decrease the crystallinity of the copollaner, thereby decreasing the properties such as strength of the resulting fiber and causing the polymer to tend to soften, which creates troubles during fiber formation by melt spinning and leads to the obtained fiber being of poor softness (Col. 5 lines 65-68; Col. 6 lines 1-7). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Nagatsu in order to provide the PVA yarns of the woven fabric ply with a degree of polymerization value and a saponification value as taught by Hirakawa for the advantages as discussed above.
Regarding claim 3, Rigo ‘791 further teaches that both a first surface and a second surface of the woven fabric are each provided with an elastomer matrix that may be cured or may be raw with a vulcanization system (i.e., vulcanized rubber) ([0082]-[0087], [0090]). Additionally or alternatively, Rigo ‘921 further discloses that both a first surface and a second surface of the woven fabric are each provided with a vulcanizable elastomer matrix (i.e., vulcanized rubber) ([0298]-[0299], [0369]). Additionally or alternatively, Chang teaches that the fabric is coated with rubber that includes a vulcanizing system (i.e., vulcanized rubber) ([0021], [0028], [0079]-[0081], [0089], [0098], [0100]). While Rigo ‘791, Rigo ‘921, and Chang do not expressly recite that the vulcanized rubbers that are heated under pressure to give a specimen having a thickness of 2 mm and a maximum load of 13 N or greater in a penetration test, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. In this case, Rigo ‘791, Rigo ‘921, and Chang teach the claimed structure of both a first surface and a second surface of the woven fabric each provided with a vulcanized rubber, thereby the vulcanized rubbers taught by Rigo ‘791, Rigo ‘921, and Chang are capable of providing a specimen having a thickness of 2 mm and a maximum load of 13 N or greater in a penetration test. 0051
Regarding claim 5, Nagatsu further discloses the woven fabric may be a plain weave fabric ([0013]).
Additionally, Rigo ‘791 further teaches that the woven fabric is a plain weave fabric, a twill fabric, or a satin weave fabric ([0051]), wherein in order to confer good mechanical properties in a use in a tyre, the weave is of plain type ([0051], and Rigo ‘921 further teaches that the woven fabric may be a plain weave fabric, a twill fabric, or a satin weave fabric ([0052]-[0053], [0114]), wherein in order to confer good mechanical properties in a use in a tyre, the weave is of plain type ([0053]).
Regarding claim 12, Nagatsu further discloses the woven fabric has a tensile strength of 40 kgf/cm (i.e., 392.266 N/cm) or more in a longitudinal direction or in a transversal direction or both ([0018]), which overlaps with the claimed range of 1300 N/3 cm (i.e., 433.333 N/cm) or greater. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a tensile strength of the woven fabric.
Additionally, Rigo ‘791 further teaches that certain mechanical characteristics of such woven fabrics, such as their tensile stiffness and their tensile breaking force, according to the direction of the filamentary warp or weft elements, are dependent upon the characteristics of the filamentary elements, such as, in the case of textile filamentary elements, the count (expressed in tex), the tenacity (expressed in cN/tex), and the standard contraction (expressed in %), these filamentary elements being distributed according to a given density (expressed in number of threads/dm) ([0057]). Additionally or alternatively, Rigo ‘921 further discloses that the mechanical characteristics of such woven fabrics, such as their tensile stiffness and their tensile breaking force, according to the direction of the filamentary warp or weft elements, are dependent upon the characteristics of the filamentary elements ([0055]). In other words, the tensile strength of the woven fabric is considered to be a result effective variable that affects certain mechanical characteristics of woven fabrics, such as their tensile stiffness and their tensile breaking force. While Rigo ‘791 and Rigo ‘921 do not expressly recite the tensile strength of the woven fabric in a longitudinal direction or in a transversal direction, or both, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said tensile strength. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the tensile strength of the woven fabric in a longitudinal direction or in a transversal direction, or both.
Regarding claim 17, Rigo ‘791 further teaches that said woven fabric further comprises a polymeric (i.e., rubber) layer on a surface thereof ([0085], [0098], [0130], [0193]). Additionally or alternatively, Rigo ‘921 further teaches that said woven fabric further comprises a rubber layer on a surface thereof ([0134]). Additionally or alternatively, Chang further teaches at said woven fabric further comprises a rubber layer on a surface thereof, wherein the rubber composition coating the reinforcements has excellent water-barrier properties and is capable of giving improved protection to the reinforcements (Abstract, [0001], [0021], [0028]).
Regarding claim 20, Nagatsu further discloses the yarns may be twisted ([0012]).
The examiner further notes the yarns can only be one of two options: untwisted or twisted. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B). Accordingly, as these are the only two options for the state of the yarns, one of ordinary skill in the art would readily recognize, or alternatively find obvious, that the yarns must be either untwisted or twisted.
Additionally, Rigo ‘791 further teaches said yarns are untwisted or twisted ([0032]), and Rigo ‘921 further teaches that said yarns are untwisted or twisted ([0045]).
Regarding claim 21, Nagatsu further discloses said warps may consist of reinforcing elements consisting of vinylon (i.e., polyvinyl alcohol-series) fiber yarns ([0016]-[0018]).
Regarding claim 23, Nagatsu further discloses said woven fabric may consist of polyvinyl alcohol series fiber yarns ([0016]-[0018]).
Regarding claim 24, Nagatsu further discloses said reinforcing ply may be disposed such that a direction of said warps of said woven fabric is diagonal to a center line of said tire in a circumferential direction ([0012]-[0013]).
Regarding claim 25, while Nagatsu illustrates a single ply, this is merely a preferable example and does not explicitly limit the disclosure to such a limitation. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123. Moreover, case law holds that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Nagatsu in order to provide at least two plies for further reinforcement of the bicycle tire crown and tread region.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagatsu et al. (JP 3718340, see machine translation) (of record), [any one of Rigo et al. (US 20180361791) (of record) (Rigo ‘791), Rigo et al. (US 20190358921) (of record) (Rigo ‘921), and/or Chang et al. (US 20130146198) (of record)], and [any one of Taniguchi et al. (US 5419109) (of record) and/or Hirakawa et al. (US 5340650) (of record)] as applied to claim 1 above, and further in view of Renken et al. (US 20140120791) (of record).
Regarding claim 2, while Nagatsu does not expressly recite the basis weight of the woven fabric, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said basis weight. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the basis weight of the woven fabric.
Nevertheless, even if one of ordinary skill in the art would not have found it obvious to optimize the basis weight of the woven fabric, Renken teaches a layer for reinforcement for tires comprising an elastomer and fabric ([0049], [0057]), wherein the fabric may be a woven fabric or unidirectional fabric ([0052]), and wherein the fabric has a basis weight of from 64 to 740 g/m2 ([0053]), which overlaps with the claimed range of at least 100 g/m2. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the basis weight of the woven fabric. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Nagatsu in order to provide the basis weight of the woven fabric in the aforementioned range as is generally known in the similar art, as taught by Renken.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagatsu et al. (JP 3718340, see machine translation) (of record), [any one of Rigo et al. (US 20180361791) (of record) (Rigo ‘791), Rigo et al. (US 20190358921) (of record) (Rigo ‘921), and/or Chang et al. (US 20130146198) (of record)], and [any one of Taniguchi et al. (US 5419109) (of record) and/or Hirakawa et al. (US 5340650) (of record)] as applied to claim 1 above, and further in view of Tanaka (US 3597303) (of record).
Regarding claim 10, while Nagatsu does not explicitly disclose the value for the fiber tenacity of the polyvinyl alcohol-series fiber yarns, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said fiber tenacity. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the optimize the fiber tenacity of the yarns in order to obtain sufficient tensile stiffness and tensile breaking force in the woven fabric.
Even if it would not have been obvious to one of ordinary skill in the art to optimize the fiber tenacity, Tanaka teaches a radial-ply pneumatic tire cover which possesses concurrently improved properties such as high speed quality, wear resistance, cornering characteristics, road-holding characteristics, qualitative re-productibility, etc. (Col. 1 lines 26-30), wherein the improved radial-ply pneumatic tire cover has a breaker comprising cords made of yarns from polyvinyl alcohol (“PVA”) (Col. 1 lines 13-15). Tanaka teaches that the cords may be provided as a woven cord fabric as well (Col. 8 lines 26-33). Although Tanaka teaches a car radial-ply pneumatic tire cover, Tanaka also teaches that conventional PVA yarns are used for light-load tires, such as for bicycles (Col. 3 lines 6-10). One of ordinary skill in the art would readily recognize that if the disclosed PVA yarns may be used in a heavier load car tire for the aforementioned advantages of high speed quality, wear resistance, cornering characteristics, road-holding characteristics, qualitative re-productibility, etc., then the conventional use of such a PVA yarn in a lighter load bicycle would also exhibit the same advantages. Tanaka further teaches that the polyvinyl alcohol-series fiber yarns have a fiber tenacity of not less than 8 g/d (i.e., 8 g/d / 1.1325 = 7.06 cN/dtex) (Col. 3 lines 34-39; Col. 5 lines 25-75; Col. 6 lines 1-71), which overlaps with the claimed range of 7 cN/dtex or higher. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the fiber tenacity of the polyvinyl alcohol-series fiber yarns. The yarns are required to exhibit a low extensibility within a specified range in accordance with the subject invention, wherein this elongation requisite is inseparable from the tenacity requisite, which are also correlated with the twisting conditions, all being critical for achieving the objects of this invention (Col. 5 lines 30-40), and wherein the tenacity may be adjusted to be optimum if other properties are varied (Col. 5 lines 56-60). In other words, the fiber tenacity is a result-effective variable that may be optimized and that is critical to the functionality and operation of the disclosed invention. Moreover, it is important to provide the tenacity in the aforementioned range so as to provide adequate impact strength, avoid excessive tread wear, and suitably perform drawing and heat treating (Col. 5 lines 25-75; Col. 6 lines 1-71). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Nagatsu in order to provide the fiber tenacity of the polyvinyl alcohol-series fibers in the aforementioned range for the advantages discussed above as taught by Tanaka, and because it is known in the tire art that fiber tenacity of PVA yarns is a result-effective variable that may be optimized, as is also taught by Tanaka.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagatsu et al. (JP 3718340, see machine translation) (of record), [any one of Rigo et al. (US 20180361791) (of record) (Rigo ‘791), Rigo et al. (US 20190358921) (of record) (Rigo ‘921), and/or Chang et al. (US 20130146198) (of record)], and [any one of Taniguchi et al. (US 5419109) (of record) and/or Hirakawa et al. (US 5340650) (of record)] as applied to claim 1 above, and further in view of Yamamoto (JP 2015001031, see machine translation) (of record).
Regarding claim 14, Nagatsu does not expressly recite that said polyvinyl alcohol-series fiber yarns further comprise an additive.
Yamamoto teaches a polyvinyl alcohol fiber for rubber reinforcement, such as in tires (Abstract; Page 1 [01], [04]; Page 4 Industrial Applicability), that may be processed into a woven form (Abstract; Page 2 [03]; Page 3 [08]), wherein the polyvinyl alcohol fibers are provided with a surfactant (i.e., an additive) (Abstract). Moreover, Yamamoto teaches that such PVA fibers have excellent RFL liquid permeability that could not be achieved in the past (Page 3 [09]). Conventionally, in the field of rubber reinforcement, an adhesive such as a resin dispersion composed of a resorcin / formalin condensate and latex (hereinafter sometimes referred to as RFL liquid) is applied to fibers in order to provide adhesion to rubber, and in this treatment, it is important to appropriately permeate the RFL solution between the fibers (Page 1 [02]). In other words, it is known in the art to provide PVA fibers with an RFL solution, and in order to achieve excellent RFL liquid permeability a surfactant is used as an additive with the PVA fibers. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Nagatsu in order to provide the PVA fibers with a surfactant (i.e., additive) for the advantages as discussed above as taught by Yamamoto.
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagatsu et al. (JP 3718340, see machine translation) (of record), [any one of Rigo et al. (US 20180361791) (of record) (Rigo ‘791), Rigo et al. (US 20190358921) (of record) (Rigo ‘921), and/or Chang et al. (US 20130146198) (of record)], and [any one of Taniguchi et al. (US 5419109) (of record) and/or Hirakawa et al. (US 5340650) (of record)] as applied to claim 1 above, and further in view of any of Rigo et al. (US 20180361791) (of record) (Rigo ‘791) and/or Rigo et al. (US 20190358921) (of record) (Rigo ‘921).
Regarding claims 15-16, Rigo ‘791 further teaches that said woven fabric is treated with a conventional adhesive, such as a resorcinol formaldehyde latex ([0018], [0063], [0172]-[0173]). Additionally or alternatively, Rigo ‘921 further teaches that said woven fabric may be treated with a conventional adhesive, such as a resorcinol formaldehyde latex (i.e., RFL) ([0020]).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagatsu et al. (JP 3718340, see machine translation) (of record), [any one of Rigo et al. (US 20180361791) (of record) (Rigo ‘791), Rigo et al. (US 20190358921) (of record) (Rigo ‘921), and/or Chang et al. (US 20130146198) (of record)], and [any one of Taniguchi et al. (US 5419109) (of record) and/or Hirakawa et al. (US 5340650) (of record)] as applied to claim 1 above, and further in view of Kamisaki et al. (JP 2001301412, see updated machine translation provided) (of record).
Regarding claim 18, while Nagatsu does not expressly recite a total fineness of the yarns, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said fineness. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the total fineness of the yarns.
Nevertheless, even if one of ordinary skill in the art would not have found it obvious to optimize the total fineness of the yarns, Kamisaki teaches a bicycle tire comprising a carcass part (i.e., reinforcement ply) with a rope (i.e., yarn) (Abstract), wherein the yarn may be polyvinyl alcohol (Page 2 [0011]), wherein the yarns have a thickness (i.e., total fineness) of 100 to 600 denier (i.e., 111.11 to 666.66 dtex) (Abstract; Page 2 [0011]), which overlaps with the claimed range of 1000 dtex or lower. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the total fineness of the yarns. In this manner, it is possible to improve the running performance of the tire, and it is possible to provide a bicycle which is excellent in terms of flex fatigue ([0008]). Although Kamisaki teaches using the polyvinyl alcohol yarns of the aforementioned fineness in a carcass, one of ordinary skill in the art would have readily recognized, or alternatively found obvious, that such advantages would also be applicable to the polyvinyl alcohol reinforcement ply disclosed by Nagatsu. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Nagatsu in order to provide the yarns with a total fineness in the aforementioned range so as to improve the running performance of the tire and provide a bicycle which is excellent in terms of flex fatigue, as taught by Kamisaki.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagatsu et al. (JP 3718340, see machine translation) (of record), [any one of Rigo et al. (US 20180361791) (of record) (Rigo ‘791), Rigo et al. (US 20190358921) (of record) (Rigo ‘921), and/or Chang et al. (US 20130146198) (of record)], and [any one of Taniguchi et al. (US 5419109) (of record) and/or Hirakawa et al. (US 5340650) (of record)] as applied to claim 1 above, and further in view of Peschek et al. (US 20140216626) (of record).
Regarding claim 19, while Nagatsu does not expressly recite the thickness of the woven fabric, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said thickness. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the thickness of the woven fabric.
Nevertheless, even if one of ordinary skill in the art would not have found it obvious to optimize the thickness of the woven fabric, Peschek teaches a tire comprising a stabilizing woven fabric comprising PVA and having a thickness preferably between 600 µm and 1000 µm (i.e., 0.60 mm to 1.00 mm) ([0057], [0070], [0092]), which overlaps with the claimed range of 0.10 to 1.00 mm. In this manner, the layer has a suitable thickness which gives it processability and performance ([0092]). Although Peschek does not expressly recite that the reinforcing ply is used in a bicycle tire, one of ordinary skill would readily recognize that the same advantages discussed above would also be beneficial for use in the two-wheeled vehicle tire of Nagatsu. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Nagatsu in order to provide the woven fabric with a thickness in the aforementioned range so as to give the ply a suitable thickness which gives it processability and performance, as taught by Peschek.
Response to Arguments
Applicant's arguments filed 10/22/2025 have been fully considered but they are not persuasive.
On page 7 of the Remarks, Applicant argues improved puncture resistance for a saponified PVA-series fiber yarn having an average fiber diameter of 45 µm or smaller and a warp density of 45 to 90 yarns/2.54 cm. Applicant cited Table 2 of Applicant’s specification to demonstrate unexpected results and criticality for the claimed fiber yarn. In particular, Applicant notes the same saponified PVA-series polymer (Vinylon) has a greater load as compared to Comparative Example 5 having an average fiber diameter of 50 µm. Applicant further notes that in view of the amendments to the claim to recite a warp density of 45-90 yarns/2.54 cm, Example 6 should not be considered as inventive. Applicant further argues that the declaration of named inventor Toshiaki Kobayashi discloses that the degree of saponification of the PVA-series fiber yarns in Examples 1-3, 5, 6, and Comparative Example 5 was 99.9 mol%, which is within the claimed range of 98 mol% or higher.
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. The burden is on Applicant to establish that the results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." See MPEP 716.02(b). Applicant has the burden of explaining any data they proffer as evidence of non-obviousness. See MPEP 716.02(b)(II). Moreover, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 715.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(II).
In this case, neither Table 1 nor Table 2 in the originally filed disclosure provides data for a saponification value of PVA fibers. Applicant has provided a declaration by the named inventor, stating that Examples 1-3, 5, 6, and Comparative Example 5 was 99.9 mol%. However, in order to show criticality for the claimed saponification degree range of 98 mol% or higher, data must be provided both inside and outside the claimed range (i.e., data points between 98 mol% to 100 mol%, and data points less than 98 mol%) in order to determine criticality of the claimed range. Here, the tables do not disclose any data points on saponification degree, and Applicant has only provided a declaration for one saponification degree value (i.e., 99.9 mol%). This is insufficient data to determine criticality of the claimed range for the saponification degree. The examiner further notes that only Examples 1-3, 5-6, and Comparative Example 5 were recited as having a saponification degree of 99.9 mol%, and thus it is unclear what saponification degree the remaining Examples and Comparative Examples have. Furthermore, the claimed range for the average fiber diameter is 45 µm or less. There is only one Comparative Example 5 that provides a data point outside of this claimed range. This is insufficient data to determine criticality of the claimed range for the warp density. Moreover, the claimed range for the warp density of the woven fabric is 45 to 90 yarns/2.54 cm. However, Tables 1-2 do not provide any data points for values above 90 yarns/2.54 cm, and there is only one Example 6 below 45 yarns/2.54 cm and no comparative examples with data points outside the claimed range. This is insufficient data to determine criticality of the claimed range for the warp density.
The examiner further notes that Table 1 provides Comparative Example 4 comprising Kevlar, an average single fiber diameter of 12 µm (within the claimed range of 45 µm or less), a warp density of 58 yarns/2.54 cm (within the claimed range of 45 to 90 yarns/2.54 cm), and having a maximum load of 14.9, which is higher than Examples 2, 3, and 5, all of which are Vinylon with an average single fiber diameter within the claimed range and a warp density within the claimed range. This demonstrates that the asserted performance is not uniquely attributable to the claimed parameter range, but rather depends on material selection.
The examiner also notes that Applicant’s argument that Example 6 should not be considered as inventive in view of the amendments to the claim to recite a warp density of 45-90 yarns/2.54 cm is not persuasive. Example 6 is part of Applicant’s own disclosure and demonstrates operability of the invention at values outside the presently claimed range. The exclusion of Applicant’s own disclosed embodiment undermines the assertion that the amended range is critical rather than an arbitrary selection made to avoid disclosed data that does not support patentability. Criticality cannot be established by claim drafting alone, and where Applicant’s own disclosure shows that the invention operates outside the claimed range, Applicant must explain, with supporting evidence, why such values are materially inferior or technically distinct. No such explanation or comparative data has been provided.
On page 7, Applicant argues there is no disclosure or suggestion in the cited art of an advantageous increase in puncture resistance by selection of a saponified PVA-series fiber yarn having an average fiber diameter of 45 µm or smaller and a warp density of 45 to 90 yarns/2.54 cm as claimed.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, each of the secondary references discussed in the detailed rejection above discloses a teaching and motivation for why one of ordinary skill in the art would have found it obvious to modify Nagatsu. The examiner further notes that it is not necessary that the prior art suggest to achieve the same advantage or result discovered by Applicant.
On page 8 of the Remarks, Applicant argues that a woven fabric comprising PVA-series fiber yarns having a specific saponification degree of a PVA-series polymer and having a specific warp density can further improve puncture resistance to sharp objects. Applicant cites Examples 1 and 6 of the specification, wherein Example 1 having a specific warp density has higher puncture resistance than that of Example 6 having less warp density, even with the same saponification degree and average fiber diameter in Table 2.
Although Examples 1 and 6 share the same saponification degree and average single fiber diameter, the data shows only that a reduction in warp density results in a corresponding reduction in maximum load, indicating a gradual and predictable relationship rather than a difference in kind at the claimed boundary. Applicant has not provided comparative evidence demonstrating a performance discontinuity at or near the amended warp density limit or explaining why excluded Example 6 is materially inferior. Accordingly, Applicant has not established criticality or unexpected results for the amended warp density range.
On page 8 of the Remarks, Applicant argues Taniguchi describes PVA yarn having a saponification degree of 99 mol% or higher, but does not describe a woven fabric produced using the PVA yarn or a warp density of the woven fabric. Applicant further argues Taniguchi is silent on puncture resistance to sharp objects, and thus one skilled in the art would not have been motivated from Taniguchi to use a woven fabric having a specific warp density in order to improve puncture resistance.
Taniguchi is not relied upon to teach a woven fabric produced using the PVA yarn or a warp density of the woven fabric. Instead, primary reference Nagatsu discloses these limitations as discussed in the detailed rejection above. Taniguchi was relied upon to teach a PVA yarn having a saponification degree of 99 mol% or higher and the known advantages associated with such highly saponified PVA yarn. Similarly, Hirakawa was relied upon additionally or alternatively to Taniguchi, wherein Hirakawa was relied upon to teach a PVA yarn having a saponification degree of 98.5 mol% or higher and the known advantages associated with such highly saponified PVA yarn. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Taniguchi and Hirakawa teach advantages to having a PVA yarn with high saponification (i.e., 99 mol% or higher and/or 98.5 mol% or higher). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the woven fabric comprising PVA yarns having a warp density overlapping with the claimed range of Nagatsu with known PVA yarns having high saponification degrees for the advantages as taught by Taniguchi and Hirakawa. Taniguchi and Hirakawa do not need to teach each and every limitation of the claim, nor do they need to teach the same advantage for the saponification degree as the claimed invention.
On page 8 of the Remarks, Applicant argues the outstanding office action relies on Nagatsu for former claim 11 which discloses the woven fabric has a warp density of 41 yarns/cm (104 yarns/2.54 cm), which is outside of the amended range for claim 1. Applicant further argues Nagatsu is silent on a specific warp density for the woven fabric using a specific PVA-series fiber yarn.
While Nagatsu teaches an example having a warp density of 41 yarns/cm, this is merely a preferable example and does not explicitly limit the disclosure to such a limitation. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123. As discussed in the detailed rejection above, Nagatsu also discloses a much broader range for what the warp density may be, which encompasses the claimed range. Accordingly, Nagatsu is not silent on the specific warp density for the woven fabric using a specific PVA-series fiber yarn, as is also evident by Applicant’s admission that Nagatsu discloses an example of the warp density for the woven fabric.
On pages 8-9 of the Remarks, Applicant argues the 09/20/2024 office action cites Saito for having cord fabrics with a warp density of not less than 20 cords per 5 cm (i.e., approximately 10 yarns/2.54 cm). The examiner notes that Saito is not relied upon in the rejection above, and thus the argument is moot.
On pages 9-10, Applicant further summarizes what each reference discloses and fails to disclose (i.e., Rigo ‘791, Rigo ‘921, Chang, Hirakawa, Renken, Tanaka, Yamamoto, etc.), and argues that no single reference has the woven fabric having a specific warp density and comprising the PVA-series fiber yarns having both the specific fiber diameter and saponification degree and thereby the claimed invention is not rendered obvious by the cited art.
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Moreover, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the examiner refers to the detailed rejection above, wherein each secondary reference discloses a motivation and teaching for modifying the primary reference of Nagatsu.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749