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 .
Claim Objections
Claim 41 is again objected to because of the following informalities: wherein the plurality of reinforcing elements have a density….
Appropriate correction is required.
Applicant is again 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.
Claims 26, 28-30, 33, 35, 38 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Shinmura (US20070146124) (of record) as evidenced by Wikipedia (NPL) (of record) and Nitto (NPL) (of record) in view of Koch et al ‘894 (US6477894) (of record).
Regarding claim 26, Shinmura discloses a tire (“pneumatic tire” (10)) comprising:
an inner surface (Fig 1) and an electronic unit (“sensor portion” (16a), Fig 4),
wherein the electronic unit is in a securing device, wherein the securing device comprises a base formed by a single layer of elastomeric material (“sponge material” (15), [0015]) and a module (“RFID tag” (16) that contains “sensor portion” (16a), Fig 4) comprising the electronic unit, wherein:
the base comprises an upper surface (“fixed surface” (15b)) and a lower surface (“fixed surface” (15a));
the module comprises a lower surface glued to the upper surface of the base by 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”);
the lower surface of the base is coated with 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)); and
the lower surface of the base has a greater area than an area of the lower surface of the module (Fig 3),
and the securing device is fixed to the inner surface of the tyre by the lower surface of the base and the pressure sensitive adhesive ([0085]).
Examiner notes that the broadest reasonable interpretation of the limitation of the “base formed by a single layer of elastomer material” does not impart any specific structure in terms of size, shape or construction to the base as a layer can be interpreted as the placement of one material on top of another, and is not limited to, for example, a sheet of constant thickness across the entire layer.
While Shinmura does disclose that the layer of elastomeric material comprises a plurality of reinforcing elements ([0014]), Shinmura does not disclose that elastomeric material comprises a plurality of reinforcing elements (separate from the fibers taught in [0014]) comprised of textile or metallic cords. However, 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 Koch ‘894, which is within the tire sensor art, teaches that a base (“layer of cured rubber” (62)) for a module (“electronic monitoring device” (10)) can comprise of a plurality of reinforcing elements (in that “layer of cured rubber” (62) is shown in Fig 12 to have an identical structure to “layer of cured rubber” (22) in Fig 8, which comprises of “cords” (30), C4 L56-60, C6 L18-20) that are comprised of textile cords for the benefit of reinforcing the base’s composition (C4 L56-60).
Regarding claim 28, modified Shinmura teaches all limitations of claim 26 as set forth above. Additionally, Shinmura teaches that the base has an elongated shape (Fig 3), and the securing device is fixed to the inner surface ([0085], Fig 1-2), and wherein a greater dimension of the base is disposed substantially according to a circumferential direction of the tyre ([0075]).
Regarding claim 29, modified Shinmura teaches all limitations of claim 26 as set forth above. Additionally, Shinmura teaches that the base has an elongated shape (Fig 3) and that the securing device is fixed to the inner surface (Fig 1). Furthermore, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to have a greater dimension of the lower surface of the module be arranged substantially according to an axial direction of the tyre as Shinmura explicitly teaches a second embodiment of the same invention in which a greater dimension of the lower surface of the module is taught to be arranged either according to a circumferential direction or in an axial direction of the tyre ([0088], Fig 5A, 5B), recognizing the greater dimension of the lower surface being in the axial direction as an alternative to the greater dimension of the lower surface being in the circumferential direction.
Regarding claim 30, modified Shinmura teaches all limitations of claim 26 as set forth above. Additionally, Shinmura teaches that the securing device is fixed to a portion of the inner surface opposite to a tread of the tyre (Fig 1).
Regarding claim 33, modified Shinmura teaches all limitations of claim 26 as set forth above. Additionally, Koch ‘894 teaches that the textile cords are made of one or more of the following materials: aramid, polyester or nylon (C4 L56-60).
Regarding claim 35, modified Shinmura teaches all limitations of claim 26 as set forth above. Additionally, Shinmura teaches that the base has a circular or oval shape ([0075]).
Regarding claim 38, modified Shinmura teaches all limitations of claim 26 as set forth above. Additionally, Shinmura teaches that the module comprises a rigid body or an elastomeric body for housing the electronic unit ([0014-15]).
Regarding claim 40, modified Shinmura teaches all limitations of claim 26 as set forth above. Additionally, given that Shimura teaches a trapezoidal shape (Fig 1) with a thickness that can be greater than .05 mm between the free surface (15b) and the fixed surface (15a) ([0043]-[0044]), such a shape would include a thickness of 0.5 mm along the angled sides for at least one point, modified Shinmura teaches that the base has a thickness of 0.5 mm.
Claim(s) 27, 34, 41 and 42 are rejected under 35 U.S.C. 103 as being unpatentable Shinmura (US20070146124) (of record), Wikipedia (NPL) (of record), Nitto (NPL) (of record) and Koch et al. ‘894 (US6477894) (of record) in further view of Sakamoto ‘016 (US20170166016) (of record).
Regarding claim 27, modified Shinmura teaches all limitations of claim 26 as set forth above. Additionally, Shinmura teaches that the securing device is fixed to the inner surface (Fig 1, 2). While modified Shinmura does not explicitly teach that the plurality of reinforcing elements are arranged substantially according to a circumferential direction of the tyre, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to do so, given that Sakamoto ‘016, which is within the tire manufacturing art, teaches that for a plurality of reinforcing elements (“fiber bundles” (8)) within a layer of material, 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”) for the benefit of reducing stress caused by distortion ([0071]).
Regarding claim 34, modified Shimura teaches all limitations of claim 26 as set forth above. While Koch ‘894 does not explicitly teach that the plurality of reinforcing elements are arranged in the base and have a density between 30 cords/dm and 500 cords/dm, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to do so as Sakamoto ‘016, which is within the tire manufacturing arts, teaches that for a plurality of reinforcing elements (“fiber bundles” (8)) within a layer of material, 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) for the benefit of ensuring attachment strength while minimizing the difference in rigidity between the two surfaces being adhered ([0059]).
While not relied upon for the basis of the rejection as set forth, examiner notes that outside of a general statement of preference on p.7 L7-9 and the only two examples on p.17-18 having the same density of 110 cords/dm, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range of lower surface base area to lower surface module area, as 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)).
Regarding claim 41, modified Shimura teaches all limitations of claim 26 as set forth above. While Koch ‘894 does not explicitly teach that the plurality of reinforcing elements are arranged in the base and have a density between 30 cords/dm and 500 cords/dm, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to do so as Sakamoto ‘016, which is within the tire manufacturing arts, teaches that for a plurality of reinforcing elements (“fiber bundles” (8)) within a layer of material, 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) for the benefit of ensuring attachment strength while minimizing the difference in rigidity between the two surfaces being adhered ([0059]).
While not relied upon for the basis of the rejection as set forth, examiner notes that outside of a general statement of preference on p.7 L7-9 and the only two examples on p.17-18 having the same density of 110 cords/dm, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range of lower surface base area to lower surface module area, as 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)).
Regarding claim 42, modified Shinmura teaches all limitations of claim 26 as set forth above. Additionally, Koch ‘894 teaches that the reinforcing cords 30 can be linearly disposed (C4 L59-60) and that the cords are illustrated as being more or less evenly spaced apart from one another (Fig 2, 4, 6-8, 12), the combination of teachings would lead one of ordinary skill prior to the earliest effective priority date of the instant application to recognize, or at least find obvious, that the cords are arranged parallel to one another. Nevertheless, it is also generally known in the substantially similar art that such cords may be disposed in parallel, as Sakamoto ‘016, which is within the tire art, teaches that for a set of reinforcing elements (“fiber bundles” (8)) linearly arranged within a layer of material can be arranged in a variety of configurations, including a weave fabric, a cord fabric or a sheet with fibers laid in parallel (Fig 2a, [0076]), recognizing laying the reinforcing elements in parallel as a known configuration that is an interchangeable equivalent for the same purpose (See MPEP 2144.06).
Claim(s) 39 is rejected under 35 U.S.C. 103 as being unpatentable over Shinmura (US20070146124) (of record), Wikipedia (NPL) (of record), Nitto (NPL) (of record) and Koch et al. ‘894 (US6477894) (of record) in view of Koch et al. ‘046 (US5971046) (of record).
Regarding claim 39, modified Shinmura 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 an adhesive agent ([0050, 0076]), modified Shinmura 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).
Claim(s) 26-30 and 33-42 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (JP2007099048) (machine translation) (of record) 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) (of record).
Regarding claim 26, Watanabe discloses a tyre comprising:
an inner surface (Fig 6, “inner liner” (7)) and
an electronic unit ([0011] regarding “electronic components”),
wherein the electronic unit is in a securing device, wherein the securing device comprises a base formed by a single layer of elastomeric material (“first base member” (25), [0042]) and a module comprising the electronic unit (“transponder” (11) with “second base member” (27)), wherein:
the base comprises an upper surface (“bottom surface” (29b)) and a lower surface (“first mounting surface” (25m));
the module comprises a lower surface (“joining surface” (27b)) glued to the upper surface of the base by a structural adhesive ([0048] with regards to “cyanoacrylate”);
the lower surface of the base comprises an adhesive ([0049] where an adhesive is applied); and
the lower surface of the base has a greater area than an area of the lower surface of the module (Fig 1),
and the securing device is fixed to the inner surface of the tyre by the lower surface of the base and the adhesive ([0049]).
While Watanabe does not explicitly disclose that the base is coated with and fixed to the inner surface of the tyre by a pressure-sensitive adhesive, that the elastomeric material comprises a plurality of reinforcing elements or that the plurality of reinforcing elements comprises textile or metallic cords, it would have been obvious to one of ordinary skill 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]).
Examiner notes that the broadest reasonable interpretation of the limitation of the “base formed by a single layer of elastomer material” does not impart any specific structure in terms of size, shape or construction to the base as a layer can be interpreted as the placement of one material on top of another, and is not limited to, for example, a sheet of constant thickness across its entire area.
Regarding claim 27, modified Watanabe teaches all limitations of claim 26 as set forth above. Additionally, Watanabe teaches that the securing device is fixed to the inner surface ([0049]) 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 Watanabe teaches all limitations of claim 26 as set forth above. Additionally, Watanabe teaches that the base has an elongated shape (Fig 2), and the securing device is fixed to the inner surface ([0049]). Additionally, given an elongated shape and 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 Watanabe teaches all limitations of claim 26 as set forth above. Additionally, Watanabe teaches that the base has an elongated shape (Fig 2), and the securing device is fixed to the inner surface ([0049]). Additionally, given an elongated shape and 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 Watanabe teaches all limitations of claim 26 as set forth above. Additionally, Watanabe teaches that the securing device is fixed to a portion of the inner surface opposite to a tread of the tyre (Fig 6).
Regarding claim 33, modified Watanabe 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 Watanabe 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 and have a density that 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).
While not relied upon for the basis of the rejection as set forth, examiner notes that outside of a general statement of preference on p.7 L7-9 and the only two examples on p.17-18 having the same density of 110 cords/dm, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range of lower surface base area to lower surface module area, as 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)).
Regarding claim 35, modified Watanabe teaches all limitations of claim 26 as set forth above. Additionally, Watanabe teaches that the base has a circular or oval shape (Fig 2).
Regarding claim 36, modified Watanabe teaches all limitations of claim 26 as set forth above. Additionally, Watanabe 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 (Fig 2) and does not exceed 2000% of the area of the lower surface of the module (Fig 2).
While not relied upon for the basis of the rejection as set forth, examiner notes that outside of a general statement of preference on p.4 L18-22 and the two examples on p.17-18 that are within the range, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range of lower surface base area to lower surface module area, 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)).
Regarding claim 37, modified Watanabe teaches all limitations of claim 36 as set forth above. Additionally, Watanabe 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 2).
While not relied upon for the basis of the rejection as set forth, examiner notes that outside of a general statement of preference on p.4 L18-22 and the two examples on p.17-18 that are within the range, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range of lower surface base area to lower surface module area, as 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)).
Regarding claim 38, modified Watanabe teaches all limitations of claim 26 as set forth above. Additionally, Watanabe teaches that the module comprises a rigid body or an elastomeric body for housing the electronic unit (“second base member” (27), [0042]).
Regarding claim 39, modified Watanabe teaches all limitations of claim 26 as set forth above. Additionally, Watanabe teaches that the structural adhesive comprises of a cyanoacrylate-based adhesive ([0048]).
Regarding claim 40, modified Watanabe teaches all limitations of claim 26 as set forth above. Additionally, given that Watanabe teaches a trapezoidal shape (Fig 1) with a minimum thickness of 2 mm between the first mounting surface (25m) and the bottom surface (29b) ([0048]), such a shape would include a thickness of 0.5 mm along the angled sides for at least one point, modified Watanabe teaches that the base has a thickness of 0.5 mm.
While not relied upon as a 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 Watanabe 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).
While not relied upon for the basis of the rejection as set forth, examiner notes that outside of a general statement of preference on p.7 L7-9 and the only two examples on p.17-18 having the same density of 110 cords/dm, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range of lower surface base area to lower surface module area, as 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)).
Regarding claim 42, modified Watanabe 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]).
Response to Arguments
Applicant’s arguments, see p.7-12, filed 4 February 2026, with respect to the 35 USC 103 rejection in view of Sakakibara have been fully considered and are persuasive. The 35 USC 103 rejection of claim 26 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Shinmura (US20070146124) (of record) as the primary and Watanabe et al. (JP2007099048) (machine translation) (of record).
As the arguments regarding the 35 USC 103 rejection in view of Shinmura (US20070146124) as the primary reference were made in the remarks filed 15 August 205 but not responded to as a different prior art combination rejection was made, the examiner will now respond to those arguments below:
Regarding p.7-9 of applicant’s remarks, applicant argues that the interpretation of “a base formed by a single layer of elastomeric material” as requiring the base be made of one single piece that covers a surface. As set forth in the 35 USC 103 rejection above, examiner has updated their interpretation of “a base formed by a single layer of elastomeric material”, which does exclude the structure taught in Sakakibara (JP2014118078) (machine translation) used in the office action filed 21 October 2025 as it needs to be a single layer. However, examiner notes that neither the claims nor the specification impart any specific structure in terms of size, shape or construction to the base, and as such, can be interpreted as the placement of one material on top of another, and is not limited to, for example, a sheet of constant thickness across the entire layer.
With regards to applicant’s arguments on p.11, applicant argues that Shinmura is not a single layer of elastomeric material as the sponge material houses the radio tag. Examiner disagrees, noting that the current claim limitations makes no requirement regarding what can and can’t be considered “housing” and furthermore, the 35 USC 103 rejection above has been updated to specify that the electronic unit is the “sensor portion” (16a) located within “RFID tag” (16), as shown in Fig 4.
In response to applicant's arguments on 12 regarding the incorporation of a plurality of reinforcing elements into the sponge of Shinmura, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's arguments against the references individually on p.14, 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).
Regarding applicant’s remarks on p.15-18, applicant argues that the layer of cured rubber (62) in Koch ‘894 is not comparable to the base in the claimed invention or in Shinmura, nor does Koch ‘894 teach the use of reinforcing elements within the base as the reinforcing elements are cited as being taught in C4 L56-60 for a removable cover. Examiner disagrees, first noting that as the layer of cured rubber (62) part of a structure used to secure a “electronic monitoring device” (10) to the inner surface of a tire (Fig 12), it is comparable for any teachings associated with said structure, which includes Shinmura’s “sponge material” (15) and the claimed invention. With regards to reinforcing elements, examiner notes that C4 L56-60 of Koch ‘894 teach “cover 22 preferably is reinforced with a plurality of fibers or cords 30 that may be fabricated from nylon, polyester, aramide, or other fibers that can be used to reinforce rubber. Reinforcing cords 30 may be linearly disposed or may be disposed in a mesh” (bold for emphasis) and represents said reinforcing cords the cover in Fig 2, 4, 6-8 as small circles/dots. Additionally, Koch ‘894 teaches in C6 L18-20 that “attachment patch 60 includes a layer of cured rubber 62 connected to a layer of uncured rubber 64” (bold for emphasis), which, given C4 L56-60 teaches that rubber can be reinforced, the layer of cured rubber 62 is available for reinforcing. Furthermore, while the written description never explicitly states the layer of cured rubber 62 has the reinforcing cords, Fig 12 represents the layer of cured rubber 62 in the same manner that cover 22 is represented in Fig 2, 4, 6-8 (as a layer of material with small circles/dot along its length), which a person of ordinary skill in the art could reasonably assume are the reinforcing cords and would operate in a similar manner.
With regards to applicant’s remarks on p.19, applicant argues that as Shinmura in [0044] teaches that the thickness of the base is “not less than 10 mm and favorable not less than 15 mm”, Shinmura would not read upon claim 40. Examiner disagrees, noting that the current language of claim 40 does not require the entire base to have the same thickness, just that at least one point has the thickness of 0.5 mm. Additionally, while true Shimura teaches that “when the thickness T of the sponge material is too small, the effect of the sponge material of decreasing the road noise tends to decrease”, “in view of these standpoints, the thickness T of the sponge material is set to favorably not less than 10 mm and more favorably not less than 15 mm” and that “if the thickness T of the sponge material is inconstant, a maximum thickness T satisfies the above-described numerical range” ([0044]) (bold for emphasis), Shinmura does not teach that having a thickness less than 10 mm renders the taught invention inoperable, only that “the effect of the sponge material of decreasing road noise tends to decrease” (bold for emphasis) meaning the effect of decreasing the road noise with a decreasing thickness would not render the sponge material incapable of decreasing the road noise to the point of being unsatisfactory for its intended purpose (see MPEP 2143.01(V)), and therefore would not be considered to teach away from the taught invention (see MPEP 2145(X)(D)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fujita (JP2010260412) (machine translation) teaches that a sound absorber (100) can comprise of a thickness from 0.1 mm to 1mm, and more preferably 0.3 to 0.5 mm ([0034]).
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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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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