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 .
Reopening Prosecution After Appeal Brief
In view of the appeal brief filed on 25 November 2025, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. The application does not contain any figures showing the structure of the claimed cured tire. Therefore, the cured tire including a cured inner liner with its upper and lower surface, a rubber-containing film, a release surface comprising polysiloxane moieties, a noise barrier and an adhesive must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 31-40, 42 and 43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular, claim 31 requires the limitation “wherein the rubber-containing film consists of a non-adhesive and adhesion film”, however, the originally filed specification [0020] discloses that “the rubber-containing film is non-adhesive. However, the rubber-containing film also has the property of being an adhesion film in that it is capable of having a separate adhesive (e.g., a PSA) adhered to it” (underline added for emphasis), meaning that the rubber-containing film is a non-adhesive with the property of an adhesion film, as opposed to only having a non-adhesive component as well as a separate adhesion film component as currently claimed.
As claims 32-40, 42 and 43 are directly/indirectly dependent on claim 31, they stand as rejected for similar reasons.
Claim 31-40, 42 and 43 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 31, the limitation “wherein the rubber-containing film consists of a non-adhesive and adhesion film”. It is unclear whether the “non-adhesive” and the “adhesion film” are two separate components of the “rubber-containing film” or whether they are describing the same “rubber-containing film”, in which case it is unclear how the same component can be “non-adhesive” as defined in [0063] of the originally submitted specification as “generally-non-sticky to the touch (at room temperature)” but also an “adhesion film” which “increases the adherability of the lower surface of the cured inner liner” ([0063] of specification). Put in other words, it is unclear how the rubber-containing film can both not be adhesive but also help with adhesion.
Furthermore, with regards to the definition of “non-adhesive” being “generally-non-sticky to the touch (at room temperature)” in the specification, “generally non-sticky” is a relative term with no clear measurable attribute as to inform a person of ordinary skill in the art at which point an object can be considered “sticky”.
For purposes of examination, the rubber-containing film will be interpreted to consist of a non-adhesive.
As claims 32-40, 42 and 43 are directly/indirectly dependent on claim 31, they stand as rejected for similar reasons.
Claim Rejections - 35 USC § 103
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) 31-33, 36-38, 42 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Berenguer et al. (US20170036408) in view of any one of Izuka et al. (US20140246136) (of record), Kato et al. (US20090242094) (of record) or Kitano et al. (US20140096882) (of record), and Halladay et al. (US20040068036) (of record).
Regarding claim 31, Berenguer teaches a cured tired (Fig 2) comprising:
a cured inner liner comprising rubber (“impermeable layer of elastomer” (112), [0178]) wherein the cured inner liner has an upper surface and a lower surface with the lower surface positioned radially inward within the tire (Fig 2) and the lower surface including a release surface comprising polysiloxane moieties ([0051] via “non-cross-linkable polysiloxane composition B”, [0185] in that portions of the inner liner where a component is to be attached is free of composition B while composition B is applied to the rest of the inner liner) and a noise barrier position radially inward of the cured inner liner (Fig 2, “sound absorbent layer” (301)) using an adhesive comprising at least one of a pressure-sensitive adhesive or a pressure-sensitive adhesive tape ([0180]).
While Berenguer does not explicitly disclose that the cured inner liner comprises a majority of butyl rubber (optionally halogenated) and a thickness of 0.5 to 2.0 mm, that the lower surface includes a rubber-containing film thereupon with the noise barrier adhered to it, that the rubber-containing film has a thickness of about 0.1 to about 15 micrometers, comprises at least one conjugated diene monomer-containing rubber and consists of a non-adhesive film, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a) as evidenced by Iizuka ([0004]), Kato ([0003]) and/or Kitano ([0002]), it is well known for tires to comprises of a cured inner liner with an upper and lower surface comprising a majority of butyl rubber (optionally halogenated) with a thickness range that overlaps the claimed range of 0.5 to 2 mm; and
b1) Halladay, which is within the elastomer manufacturing art, teaches that the inner surface of a cured tire, including the inner liner ([0243], [0234]), can comprise of a rubber-containing film comprising of at least one conjugated diene monomer-containing rubber ([0043]-[0044]) with a thickness of 2.45 μm to 127 μm ([0233], which overlaps with the claimed range of about 0.1 to about 15 μm) and be a non-adhesive ([0233] in that the coating dries into a film) for the benefit of improving air impermeability ([0243]); and
b2) given that the rubber-containing film of Halladay would be an impermeable layer of elastomeric material applied onto the inner liner of cured tire (as taught in b1) above) and Berenguer teaches that the auxiliary component that is the sound absorbent layer is adhered to “the radially inner surface 113 of the impermeable elastomeric material layer” ([0179]), it would have been obvious to a person of ordinary skill in the art to have the noise barrier be adhered to the rubber-containing film for the predictable result of securing the noise barrier to the tire.
Regarding claim 32, modified Berenguer teaches all limitations of claim 31 as set forth above. Additionally, Halladay teaches that the rubber containing film comprises at least one of butyl rubber, polyisoprene ([0044]) or ethylene propylene diene monomer rubber (EPDM) ([0045]).
Regarding claim 33, modified Berenguer teaches all limitations of claim 31 as set forth above. Additionally, Halladay teaches that the rubber-containing film comprises of a combination of butyl rubber ([0044]) and EPDM ([0045]).
Regarding claim 36, modified Berenguer teaches all limitations of claim 31 as set forth above. Additionally, Berenguer teaches that the noise barrier is a foam noise barrier ([0179]).
Regarding claim 37, modified Berenguer teaches all limitations of claim 36 as set forth above. Additionally, Halladay teaches that the rubber containing film comprises at least one of butyl rubber, polyisoprene ([0044]) or ethylene propylene diene monomer rubber (EPDM) ([0045]).
Regarding claim 38, modified Berenguer teaches all limitations of claim 36 as set forth above. Additionally, Halladay teaches that the rubber-containing film comprises of a combination of butyl rubber ([0044]) and EPDM ([0045]).
Regarding claim 42, modified Berenguer teaches all limitations of claim 31 as set forth above. Additionally, given that Halladay teaches the inclusion of polyurethane is optional and is not required for practicing the rubber-containing film ([0167]), modified Berenguer teaches that less than 2 phr of polyurethane is present in the rubber-containing film.
Regarding claim 43, Berenguer teaches a cured tired (Fig 2) comprising:
a cured inner liner comprising rubber (“impermeable layer of elastomer” (112), [0178]) wherein the cured inner liner has an upper surface and a lower surface with the lower surface positioned radially inward within the tire (Fig 2) and the lower surface including a release surface comprising polysiloxane moieties ([0051] via “non-cross-linkable polysiloxane composition B”, [0185] in that portions of the inner liner where a component is to be attached is free of composition B while the rest of the inner liner comprises composition B) and a noise barrier position radially inward of the cured inner liner (Fig 2, “sound absorbent layer” (301)) using an adhesive comprising at least one of a pressure-sensitive adhesive or a pressure-sensitive adhesive tape ([0180]).
While Berenguer does not explicitly disclose that the cured inner liner comprises a majority of butyl rubber (optionally halogenated) and a thickness of 0.5 to 2.0 mm, that the lower surface includes a rubber-containing film thereupon with the noise barrier adhered to it, that the rubber-containing film has a thickness of about 0.1 to about 15 micrometers, comprises at least one conjugated diene monomer-containing rubber, comprises a combination of butyl rubber, halogenated butyl rubber and EPDM rubber and consists of a non-adhesive film, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a) as evidenced by Iizuka ([0004]), Kato ([0003]) and/or Kitano ([0002]), it is well known for tires to comprises of a cured inner liner with an upper and lower surface comprising a majority of butyl rubber (optionally halogenated) with a thickness range that overlaps the claimed range of 0.5 to 2 mm; and
b) Halladay, which is within the elastomer manufacturing art, teaches that the inner surface of a cured tire, including the inner liner ([0243], [0234]), can comprise of a rubber-containing film comprising of at least one conjugated diene monomer-containing rubber ([0043]-[0044]) and comprising a combination of butyl rubber ([0044]) and EPDM rubber ([0045]) with a thickness of 2.45 μm to 127 μm ([0233], which overlaps with the claimed range of about 0.1 to about 15 μm) and be a non-adhesive ([0233] in that the coating dries into a film) for the benefit of improving air impermeability ([0243]); and
b2) given that the rubber-containing film of Halladay would be an impermeable layer of elastomeric material applied onto the inner liner of cured tire (as taught in b1) above) and Berenguer teaches that the auxiliary component that is the sound absorbent layer is adhered to “the radially inner surface 113 of the impermeable elastomeric material layer” ([0179]), it would have been obvious to a person of ordinary skill in the art to have the noise barrier be adhered to the rubber-containing film for the predictable result of securing the noise barrier to the tire.
Claim(s) 34 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Berenguer et al. (US20170036408) in view of any one of Izuka et al. (US20140246136) (of record), Kato et al. (US20090242094) (of record) or Kitano et al. (US20140096882) (of record), and Halladay et al. (US20040068036) (of record) as set forth in claim 31 above and in further view of Rodgers (NPL) (of record).
Regarding claim 34, modified Berenguer teaches all limitations of claim 31 as set forth above. While modified Berenguer does not explicitly teach that the rubber-containing film further comprises at least one tackifier, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Rodgers teaches that tackifier are known components added to rubber compounds (p.613) for the benefit of improved tire building (p.664).
Regarding claim 39, modified Berenguer teaches all limitations of claim 36 as set forth above. While modified Berenguer does not explicitly teach that the rubber-containing film further comprises at least one tackifier, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Rodgers teaches that tackifier are known components added to rubber compounds (p.613) for the benefit of improved tire building (p.664).
Claim(s) 35 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Berenguer et al. (US20170036408) in view of any one of Izuka et al. (US20140246136) (of record), Kato et al. (US20090242094) (of record) or Kitano et al. (US20140096882) (of record), and Halladay et al. (US20040068036) (of record) as set forth in claim 31 above and in further view of Rodgers (NPL) (of record) and SpecialChem (NPL) (of record).
Regarding claim 35, modified Ueda teaches all limitations of claim 31 as set forth above. While modified Ueda does not explicitly teach that the rubber-containing film further comprises at least one terpene, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
A) Rodgers teaches that tackifier are known components added to rubber compounds (p.613) for the benefit of improved tire building (p.664) and “the selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination” (see MPEP 2144.07); and
B) SpecialChem teaches that terpenes are known universal tackifiers with the benefit of excellent heat resistance (NPL).
Regarding claim 40, modified Ueda teaches all limitations of claim 36 as set forth above. While modified Ueda does not explicitly teach that the rubber-containing film further comprises at least one terpene, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
A) Rodgers teaches that tackifier are known components added to rubber compounds (p.613) for the benefit of improved tire building (p.664) and “the selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination” (see MPEP 2144.07); and
B) SpecialChem teaches that terpenes are known universal tackifiers with the benefit of excellent heat resistance (NPL).
Response to Arguments
Applicant’s arguments with respect to claim(s) 31, 33 and 38 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
Prosecution Insights