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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 15 August 2025 has been entered.
Claim Objections
Claim 41 is objected to because of the following informalities: wherein the plurality of reinforcing elements have a density….
Appropriate correction is required.
Applicant is advised that should claim 34 be found allowable, claim 41 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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) 26-30, 33-38 and 40-42 are rejected under 35 U.S.C. 103 as being unpatentable over Sakakibara (JP2014118078) (Machine Translation) in view of Shinmura (US20070146124) (of record) as evidenced by Wikipedia (NPL) (of record) and Nitto (NPL) (of record), and Sakamoto ‘016 et al. (JP2016022868) (with US20170166016 as English equivalent).
Regarding claim 26, Sakakibara discloses a tire ([0001]) comprising:
an inner surface (“tire inner surface” (T1), Fig 1-3) and an electronic unit ([0012] with regards to “device”),
wherein the electronic unit is in a securing device (“device attachment member” (P1)), wherein the securing device comprises a base formed by a single layer of elastomeric material (“cushion layer” (B1)) and a module (“mounting base” (A1)) comprising the electronic unit, wherein:
the base comprises an upper surface (Fig 1-3) and a lower surface (Fig 1-3);
the module comprises a lower surface glued to the upper surface of the base by an adhesive (“adhesive layer” (c2)) [0030]);
the lower surface of the base is coated with an adhesive (“adhesive layer” (c1), [0030], Fig 1-3); and
the lower surface of the base has a greater area than an area of the lower surface of the module (Fig 1-3),
and the securing device is fixed to the inner surface of the tyre by the lower surface of the base and the adhesive ([0030]).
Examiner notes that the broadest reasonable interpretation of the limitation of “the securing device comprises a base formed by a single layer of elastomeric material” only requires that the base have at least one layer of elastomeric material and does not exclude the presence of other layers. Solely for purposes of demonstration, examiner notes a limitation along the lines of “the securing device comprises a base consisting of a single layer of elastomeric material and a plurality of reinforcing elements” would limit the base to only these two components.
While Sakakibara does not explicitly teach what “adhesive layers” (c1, c2) are made of, specifically that the lower surface of the module is glued to the upper surface of the base by a structural adhesive and that the lower surface of the base is coated with a pressure-sensitive adhesive, or that the elastomeric material comprises a plurality of reinforcing elements and the plurality of reinforcing elements comprise textile cords or metallic cords, 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:
a1) case law holds that the selection of a known material based on its suitability for its intended use is prima facie obvious (See MPEP 2144.07);
a2) Shinmura, which is within the tire sensor art, teaches that the attachment between the various components of a securing device (“radio tag-mounting member” (14)) and the inner surface of a tire (“rim-mounted side surface” (10a)) can be achieved through the use of various adhesives, including a structural adhesive ([0076], which teaches the use of an adhesive agent, with the adhesive agent being a rubber adhesive in an organic solvent [0050]--this adhesive agent is considered a structural adhesive since, as evidenced by Wikipedia, structural adhesives form bonds via “evaporation of solvent”) and/or a pressure sensitive adhesive ([0085] via “double-side adhesive tape”, which includes Nitto Denko Inc 5000NS [0103], a tape that uses acrylic adhesives and noted for its strong “re-peeling” (evidenced by Nitto, p. 20)) for the predictable result of securing the various components of the securing device to each other and to the inner surface of the tire; and
b) Sakamoto ‘016, which is within the tire sensor art, teaches that as part of a securing device that comprises a base layer with elastomeric material (“fiber reinforced member” (7)), said base layer can comprise of a plurality of reinforcing elements (“fiber bundles” (8)) comprising of textile fibers ([0076]) for the benefit of improved durability ([0065]-[0066]).
Regarding claim 27, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakakibara teaches that the securing device is fixed to the inner surface (Fig 1-3) and Sakamoto ‘016 teaches that the reinforcing elements are arranged at angle greater than or equal to 15o and less than or equal to 75o ([0071], which overlaps with the limitation of “substantially according to a circumferential direction of the tyre”, which p.8 of the applicant’s specification defines as “within an angle of approximately ± 25o with respect to the circumferential direction”).
Regarding claim 28, modified Sakakibara teaches all limitations of claim 26 as set forth above. Sakakibara also teaches that the securing device is fixed to the inner surface (Fig 1-3). Additionally, given that Sakakibara teaches that the cushion layer can have the same shape as that of the mounting base ([0021]), the mounting base can comprise of a wide variety shapes ([0038], [0041], [0042], [0045], [0048], [0051], [0054], [0062], [0065], [0069]) including an elongated shape (Fig 20), and that the limited number of orientations for a greater dimension of the lower surface of the module (either according to an axial direction, a circumferential direction or at a 45o angle from both the axial and circumferential direction) presents a finite number of options that are immediately recognizable to a person of ordinary skill in the art that does not present new or unexpected results for the predictable result of attaching the mounting base to the inner surface of the tire (See MPEP2143(I)(E)), it would have been obvious to one of ordinary skill at the earliest effective priority date of the instant application for the base to have an elongated shape wherein a greater dimension of the base is arranged substantially according to a circumferential direction of the tyre.
Regarding claim 29, modified Sakakibara teaches all limitations of claim 26 as set forth above. Sakakibara also teaches that the securing device is fixed to the inner surface (Fig 1-3). Additionally given that Sakakibara teaches that the cushion layer can have the same shape as that of the mounting base ([0021]), the mounting base can comprise of a wide variety shapes ([0038], [0041], [0042], [0045], [0048], [0051], [0054], [0062], [0065], [0069]) including an elongated shape (Fig 20), and that the limited number of orientations for a greater dimension of the lower surface of the module (either according to an axial direction, a circumferential direction or at a 45o angle from both the axial and circumferential direction) presents a finite number of options that are immediately recognizable to a person of ordinary skill in the art that does not present new or unexpected results for the predictable result of attaching the mounting base to the inner surface of the tire (See MPEP2143(I)(E)), it would have been obvious to one of ordinary skill at the earliest effective priority date of the instant application for the base to have an elongated shape wherein a greater dimension of the base is arranged substantially according to an axial direction of the tyre.
Regarding claim 30, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakakibara teaches that the securing device is fixed to a portion of the inner surface opposite to a tread of the tyre (Fig 26-27).
Regarding claim 33, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakamoto ‘016 teaches that the textile cords are made of one or more of the following materials: rayon, polyester and nylon ([0076]).
Regarding claim 34, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakamoto ‘016 teaches that the plurality of reinforcing elements are arranged in the base ([0076]) and the density of the elements should be between 40 cords/dm and 180 cords/dm ([0058-59], which is entirely within the claimed range of 30 cords/dm and 500 cords/dm).
Regarding claim 35, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakakibara teaches that the base has a circular shape (Fig 1).
Regarding claim 36, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakakibara teaches that the area of the lower surface of the base is at least equal to 130% of the area of the lower surface of the module and does not exceed 2000% of the area of the lower surface of the module (Fig 1-3).
Regarding claim 37, modified Sakakibara teaches all limitations of claim 36 as set forth above. Additionally, Sakakibara teaches that the area of the lower surface of the base is at least equal to 200% of the area of the lower surface of the module (Fig 1-3).
Regarding claim 38, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakakibara teaches that the module comprises a rigid body for housing the electronic unit ([0029]).
Regarding claim 40, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakakibara teaches that the base can have a thickness of 0.3 to 10.0 mm ([0033], which includes the claimed thickness of 0.5 mm).
Furthermore, while not currently the basis of a rejection, examiner notes that the current written specification does not support criticality of the claimed thickness with sufficient specificity as to render the claimed thickness non-obvious over the prior art (see MPEP 2131.03(II)). 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)). As currently written, the specification’s only disclosure regarding the base thickness is for the two examples on p.17, both set at 0.5 mm.
Regarding claim 41, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakamoto ‘016 teaches that the density of the elements should be between 40 cords/dm and 180 cords/dm ([0058-59], which is entirely within the claimed range of 30 cords/dm and 500 cords/dm).
Regarding claim 42, modified Sakakibara teaches all limitations of claim 26 as set forth above. Additionally, Sakamoto ‘016 teaches that the plurality of reinforcing elements are arranged parallel to each other in the base of the elastomeric material (Fig 2A, [0076]).
Claim(s) 39 is rejected under 35 U.S.C. 103 as being unpatentable over Sakakibara (JP2014118078) (Machine Translation), Shinmura (US20070146124) (of record) as evidenced by Wikipedia (NPL) (of record) and Nitto (NPL) (of record), and Sakamoto et al. ‘016 (JP2016022868) (with US20170166016 as English equivalent) in further view of Koch et al. ‘046 (US5971046) (of record).
Regarding claim 39, modified Sakakibara teaches all limitations of claim 26 as set forth above. While Shinmura does teach that the module is adhered to the upper surface of the base by a structural adhesive ([0050, 0076]), modified Sakakibara does not explicitly teach that the structural adhesive comprises one or more of a cyanoacrylate-based adhesive, a polyurethane-based adhesive, an epoxy adhesive, and an acrylic adhesive. However, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to do so, as Koch ‘046, which is within the tire manufacturing art, teaches that a module (“tag assembly” (30)) can be adhered to the upper surface of a base (bottom of “recessed cavity” (16)), preferably using an epoxy adhesive (C5 L26-31) for the benefit of permanent adhesion (C5 L26-28).
Response to Arguments
Applicant’s arguments with respect to claim(s) 26 in view of Shinmura (US20070146124) as the primary reference 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Watanabe et al. (JP2007099048) (machine translation) teaches a tyre (“tire” (5)) comprising of a securing device with a base (“first base member” (25)) and a module (“second base member” (27)) attached onto the base (Fig 1), wherein the base comprises of an elastomeric material and the module comprises a rigid material ([0042]).
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/John J DeRusso/Primary Examiner, Art Unit 1744