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 .
This action is in response to applicant’s amendments and arguments filed 11/24/2025. Claims 1-19 are currently pending for examination on the merits.
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 following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4-5, 7-8, 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tanno (US 2016/0297260) (Tanno '260) (of record) in view of Kim et al. (US 2015/0306922) (Kim) (of record).
Regarding claim 1, Tanno ‘260 discloses a pneumatic tire (title) comprising: a tread portion (1) extending in a tire circumferential direction and having an annular shape (see Fig. 1; [0023]); a pair of sidewall portions (2) disposed on opposite sides of the tread portion (1) (see Fig. 1); and a pair of bead portions (3) disposed toward the inside of the sidewall portions (2) in a tire radial direction (see Fig. 1); wherein a sound absorbing member (6) is fixed via an adhesive layer (5) to an inner surface (4) of the tread portion (1) along the tire circumferential direction (see Fig. 1; [0026]). Tanno ‘260 further discloses that the sound absorbing member (6) is made of a porous material with open cells ([0026]). Furthermore, Tanno ‘260 nowhere mentions that the sound absorbing member (6) contains water repellent, suggesting the limitation that the sound absorbing member does not contain water repellent. Tanno ‘260 fails to explicitly disclose, however, that when a temperature t of the sound absorbing member (6) is in a range from -20oC to 80oC, an elongation at break y and the temperature t of the sound absorbing member (6) satisfy both of the relationships: y
≥
t + 100 and y
≤
2t +440 at all temperatures of the range.
Kim teaches a similar tire (title) comprising a sound absorbing member (5) fixed to an inner surface of a tread portion (1) along the tire circumferential direction (see Fig. 1). Kim further teaches that the sound absorbing member (5) has an elongation at break y of more than 340% ([0087]). Kim further teaches in an exemplary embodiment that the sound absorbing member (5) has an elongation at break y of 343% at -20oC (see Exemplary Embodiment 1, Fig. 12; [0092]). Kim further teaches that the sound absorbing member (5) should have similar properties at room temperature (25o) and high temperature (80oC) ([0089]-[0091]; [0097]; [0104]; [0008]). Thus, Kim suggests that when a temperature t of the sound absorbing member (5) is in a range from -20oC to 80oC, an elongation at break y of the sound absorbing member (5) is greater than 340%, which at least overlaps the claimed relationships, y
≥
t + 100 and y
≤
2t +440, at low temperature (y
≥
80; y
≤
400), at room temperature (y
≥
125; y
≤
490), and at high temperature (y
≥
180; y
≤
600). In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Furthermore, because Kim teaches that the sound absorbing member (5) should have these properties at high, room, and low temperatures, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the sound absorbing member (5) to satisfy the claimed relationships at all temperatures of the range -20oC to 80oC. Kim further teaches that configuring the sound absorbing member (5) in this way helps to enhance the durability of the sound absorbing member (5) under various environmental conditions in the high temperature and low temperature regions, thus, allowing performance of the cavity noise reduction properties of the sound absorbing member (5) to be maintained consistently ([0104]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the sound absorbing member disclosed by Tanno ‘260 to meet the claimed elongation and temperature relationships in claim 1, as suggested by Kim, because they would have had a reasonable expectation that doing so would help to enhance the durability of the sound absorbing member under various environmental conditions in the high temperature and low temperature regions.
Regarding claim 2, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 1. Modified Tanno ‘260 further discloses that the hardness x of the sound absorbing member (Tanno ‘260: 6) is preferably from 60 to 170 N (Tanno ‘260: [0036]). In exemplary embodiments, modified Tanno ‘260 discloses that the hardness x of the sound absorbing member (Tanno ‘260: 6) is 91 N (Tanno ‘260: see Table 2, Working Examples 6-10). Additionally, as set forth above, modified Tanno ‘260 includes the teachings from Kim that the sound absorbing member (Tanno ‘260: 6) has an elongation at break y of 343% (Kim: see Exemplary Embodiment 1, Fig. 12). Thus, given the hardness x of 91 N and the elongation at break y of 343%, modified Tanno ‘260 suggests the claimed relationships: 130
≤
y
≤
500, y
≤
-21x + 2770 (859 in this case), and x
>
80. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Tanno ‘260 to satisfy all of the limitations in claim 2.
Regarding claims 4 and 17, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 1. Modified Tanno ‘260 further discloses that the sound absorbing member (Tanno ‘260: 6) has a volume of 25% of a cavity volume of the pneumatic tire (Tanno ‘260: [0043]), suggesting the claimed ranges of 10% to 30% and 22% to 30%.
Regarding claim 5, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 1. Modified Tanno ‘260 further discloses that the sound absorbing member (Tanno ‘260: 6) comprises a single band-like body having a rectangular cross-sectional shape (Tanno ‘260: see Figs. 1, 2, and 8; [0034]), and the band-like body forming the sound absorbing member (Tanno ‘260: 6) is disposed straddling a tire equator (Tanno ‘260: see Fig. 2).
Regarding claim 7, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 1. Modified Tanno ‘260 further discloses that the adhesive layer (Tanno ‘260: 5) comprises a double-sided adhesive tape (Tanno ‘260: [0026]).
Regarding claims 8 and 18, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 1. Modified Tanno ‘260 further discloses that the sound absorbing member (Tanno ‘260: 6) comprises three missing portions (Tanno ‘260: 6A) in the tire circumferential direction (Tanno ‘260: see Fig. 8), suggesting all of the limitations in claims 8 and 18.
Regarding claim 19, Tanno ‘260 in view of Kim discloses all of the limitations in claim 19 present in claim 1, as set forth above. As set forth above, Kim teaches that the sound absorbing member (Kim: 5) has an elongation at break y of more than 340% (Kim: [0087]), which is substantially close to the claimed range of from 130% to 330%. A prima facie case of obviousness exists where the claimed range does not overlap with the prior art but is merely close. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality for the claimed range, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Tanno ‘260 to have satisfied the claimed range based on the substantially close range taught by Kim. Thus, modified Tanno ‘260 satisfies all of the limitations in claim 19.
Claims 3 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tanno (US 2016/0297260) (Tanno '260) (of record) in view of Kim et al. (US 2015/0306922) (Kim) (of record) as applied to claims 1 and 2 above, and further in view of Tanno et al. (US 2009/0053492) (Tanno '492) (of record).
Regarding claims 3 and 9, modified Tanno ‘260 discloses all of the limitations as set forth above for claims 1 and 2, respectively. Modified Tanno ‘260 fails to disclose, however, that the sound absorbing member (Tanno ‘260: 6) has a density of from 10 kg/m3 to 30 kg/m3 and that a number of the open cells of the sound absorbing member (Tanno ‘260: 6) is from 30 cells/25 mm to 80 cells/25 mm.
Tanno ‘492 teaches a substantially similar pneumatic tire ([0002]) comprising a tread portion (1) and a sound absorbing member (5) fixed via an adhesive to an inner surface of the tread portion (1) ([0040]). Tanno ‘492 further teaches that the sound absorbing member (5) has a density of from 10 to 30 kg/m3, suggesting the claimed density range of from 10 kg/m3 to 30 kg/m3, in order to effectively suppress damages to the sound absorbing member (5) ([0018]). Tanno ‘492 further teaches that the number of cells of the sound absorbing member (5) is from 40 cells/25 mm to 100 cells/25 mm, which overlaps the claimed range of from 30 cells/25 mm to 80 cells/25 mm, in order to balance a reduction in tear strength of the sound absorbing member (5) with lowered production stability ([0026]). In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the sound absorbing member as disclosed by modified Tanno ‘260 to have the density and number of cells of the sound absorbing member as taught by Tanno ‘492 because they would have had a reasonable expectation that doing so would effectively suppress damages to the sound absorbing member and balance a reduction in tear strength of the sound absorbing member with lowered production stability.
Regarding claim 10, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 9. Modified Tanno ‘260 further discloses all of the limitations in claim 10 as set forth above for claim 4, which has the same subject matter as claim 10.
Regarding claim 11, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 10. Modified Tanno ‘260 further discloses all of the limitations in claim 11 as set forth above for claim 5, which has the same subject matter as claim 11.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tanno (US 2016/0297260) (Tanno '260) (of record) in view of Kim et al. (US 2015/0306922) (Kim) (of record) as applied to claim 1 above, and further in view of Yugawa (JP 2005-262920 with English Machine Translation) (of record).
Regarding claim 6, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 1. Modified Tanno ‘260 further discloses a center land portion disposed on the tread portion (Tanno ‘260: 1) on a tire equator and continuously extending around the tread portion (Tanno ‘260: 1) around an entire tire circumference (see Modified Figure 2 below; [0023]). Modified Tanno ‘260 fails to disclose, however, that the sound absorbing member (Tanno ‘260: 6) comprises a first band-like body and a second band-like body, each one having a rectangular cross-sectional shape; the first band-like body forming the sound absorbing member (Tanno ‘260: 6) is disposed on one side in a tire lateral direction with respect to a position of 40% of a width of the venter land portion from one end portion of the center land portion on the one side in the tire lateral direction to the other side in the tire lateral direction; the second band-like body forming the sound absorbing member (Tanno ‘260: 6) is disposed on the other side in the tire lateral direction with respect to a position of 40% of the width of the center land portion from one end portion of the center land portion on the other side in the tire lateral direction to the one side in the tire lateral direction; and the first band-like body forming the sound absorbing member (Tanno ‘260: 6) and the second band-like body forming the sound absorbing member (Tanno ‘260: 6) are separated from each other by 60% or greater of the width of the center land portion.
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media_image1.png
355
779
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Greyscale
Modified Figure 2, Tanno ‘260
Yugawa teaches a substantially similar pneumatic tire (title) comprising a tread portion (2t) and a sound absorbing member (9) fixed via an adhesive layer to an inner surface (2ti) of the tread portion (2t) along the tire circumferential direction ([0034]; see Fig. 4). Yugawa further teaches that a center land portion (see Modified Figure 8 below) is disposed on the tread portion (2t) on a tire equator (C) and continuously extends around the tread portion (2t) around an entire tire circumference ([0020]). Yugawa further teaches that the sound absorbing member (9) comprises a first band-like body (see Modified Figure 8 below) and a second band-like body (see Modified Figure 8 below), each one having a rectangular cross-sectional shape (see Modified Figure 8 below; [0030]); the first band-like body forming the sound absorbing member (9) is disposed on one side in a tire lateral direction with respect to a position of 40% of the width of the center land portion from one end portion of the center land portion on the one side in the tire lateral direction to the other side in the tire lateral direction (see Modified Figure 8 below); the second band-like body forming the sound absorbing member (9) is disposed on the other side in the tire lateral direction with respect to a position of 40% of a width of the center land portion from one end portion of the center land portion on the other side in the tire lateral direction to the one side in the tire lateral direction (see Modified Figure 8 below); and the first band-like body forming the sound absorbing member (9) and the second band-like body forming the sound absorbing member (9) are separated from each other by 60% or greater of the width of the center land portion (see Modified Figure 8 below). Yugawa further teaches that this configuration of a first band-like body and a second band-like body as shown in Fig. 8 reduces the noise level of the tire while running and improves the high-speed durability of the tire by mitigating local and rapid temperature rise ([0049]; [0026]).
PNG
media_image2.png
389
728
media_image2.png
Greyscale
Modified Figure 8, Yugawa
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the sound absorbing member as disclosed by Tanno ‘260 to include the first band-like body and the second band-like body as taught by Yugawa because they would have had a reasonable expectation that doing so would lead a reduction of the noise level of the tire as well as an improved high-speed durability of the tire.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tanno (US 2016/0297260) (Tanno '260) (of record) in view of Kim et al. (US 2015/0306922) (Kim) (of record) as applied to claim 2 above, and further in view of Tanno et al. (US 2009/0053492) (Tanno '492) (of record) as applied to claim 11 above, and further in view of Yugawa (JP 2005-262920 with English Machine Translation) (of record).
Regarding claim 12, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 11. Modified Tanno ‘260 in view of Yugawa further discloses all of the limitations in claim 12 as set forth above for claim 6, which has the same subject matter as claim 12.
Regarding claim 13, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 12. Modified Tanno ‘260 further disclose all of the limitations in claim 13 as set forth above for claim 7, which has the same subject matter as claim 13.
Regarding claim 14, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 13. Modified Tanno ‘260 further discloses all of the limitations in claim 14 as set forth above for claim 8, which has the same subject matter as claim 14.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tanno (US 2016/0297260) (Tanno '260) (of record) in view of Kim et al. (US 2015/0306922) (Kim) (of record) as applied to claim 1 above, and further in view of Hosoda et al. (US 2020/0055288) (Hosoda) (of record).
Regarding claims 15 and 16, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 1. Modified Tanno ‘260 further discloses that the adhesive layer (Tanno ‘260: 5) comprises a double-sided adhesive tape (Tanno ‘260: [0026]). Modified Tanno ‘260 fails to disclose, however, that the adhesive layer (Tanno ‘260: 5) has a total thickness of from 10 μm to 100 μm or from 10 μm to 80 μm.
Hosoda teaches a similar sound absorbing member (100) intended to be adhered to a tire with a pressure-sensitive double-sided adhesive tape layer ([0039]-[0040]). Hosoda further teaches that an effective thickness of the adhesive layer is from 40 μm to 60 μm ([0041]), suggesting the claimed ranges of from 10 μm to 100 μm and from 10 μm to 80 μm.
It would have been obvious to one of ordinary skill in the art, with predictable results, to modify the adhesive layer disclosed by modified Tanno ‘260 to have the thickness taught by Hosoda, with no change to their respective function, for the purpose of adhering the sound absorbing member to the tire. All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination, (i.e. the combination of known elements into a single device) would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Thus, modified Tanno ‘260 satisfies all of the limitations in claims 15 and 16.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant maintains previous arguments that the combination of Tanno ‘260 and Kim would not lead to the limitations in claim 1 requiring open cells and a lack of water repellency. Specifically, applicant argues that the teachings of Kim cannot be reasonably added to Tanno ‘260 because Kim discloses a sound absorbing member with closed cells while Tanno ‘260 discloses open cells, and properties of closed-cell foams are significantly different compared with open-cell foams. Examiner respectfully disagrees. First, examiner disputes applicant’s assertion that Kim discloses a closed-cell sound absorbing member. While Kim does disclose that the area of the sound absorbing member (Kim: 5) being in contact with the tread portion (Kim: 1) has a closed-cell structure (Kim: [0059]), the rest of the sound absorbing member (Kim: 5) disclosed by Kim seems to have an open-cell structure. For instance, Kim discloses that the closed-cell structure of the contacting surface is created by a surface heat treatment (Kim: [0059]). However, if the whole sound absorbing member (Kim: 5) disclosed by Kim already had a closed-cell structure, there would be no need of a surface heat treatment to create a closed-cell structure. Thus, contrary to applicant’s arguments, the sound absorbing member (Kim: 5) disclosed by Kim seems to have an open-cell structure except for the surface being in contact with the tread portion (Kim: 1). Second, examiner notes that applicant has failed to substantiate the allegation that open-cell foams and closed-cell foams have significantly different properties. Applicant’s only evidence to support this is Kim’s disclosure that the elasticity values in KR 2011-0042068 are not suitable for low temperature applications. However, it is clear from Kim that it is the elasticity values of KR 2011-0042068 that lead to decreased performance at low temperatures, not the cell structure (Kim: [0009]; see also [0094] where Kim describes enhanced performance at low temperatures with elasticity values greater than 20%). Any disclosure from KR 2011-0042068 regarding open-cell structures is merely incidental since Kim does not mention that the cell structure leads to decreased performance or even mention the cell structure at all. Examiner also notes that both open-cell and closed-cell foams are capable of having the elasticity values taught by Kim and would, thus, be capable of similar properties at low temperature. Thus, one of ordinary skill in the art would not have viewed the combination of Tanno ‘260 and Kim as unreasonable.
Regarding applicant’s argument that Tanno ‘260’s silence regarding water repellency is not a disclosure of a lack of water repellency, examiner disagrees. Examiner emphasizes that sound absorbing members in tires do not intrinsically contain water repellent because water repellency is not a necessary component in order to absorb sound. Thus, when recreating the invention disclosed by Tanno ‘260, one of ordinary skill in the art would not have applied a water repellent to the sound absorbing member (Tanno ‘260: 6) unless Tanno ‘260 explicitly mentioned doing so. As it stands, Tanno ‘260 nowhere states that the sound absorbing member (Tanno ‘260: 6) contains any water repellency; thus, one of ordinary skill in the art would have implicitly viewed the sound absorbing member (Tanno ‘260: 6) as not containing water repellent, which suggests the corresponding limitation in claim 1. Indeed, Tanno ‘260 makes no mention of a number of coatings that could be added to the sound absorbing member for various purposes, but unless explicitly identified by Tanno ‘260, one of ordinary skill in the art would have assumed them not to be present. Thus, applicant’s arguments regarding claim 1 are not persuasive.
Regarding applicant’s arguments related to claim 19, examiner respectfully disagrees. Applicant specifically argues that there is no support to use the close-but-non-overlapping rationale from MPEP §2144.05 because there is no evidence that Kim’s disclosure of an elongation at break of more than 340% has the exact same properties of the claimed range of 130% to 330%. Applicant further points to a previous Board decision to supplement this point. With respect to the Board decision, however, examiner notes that Board decisions are not precedential; thus, the facts of the cited decision do not necessarily relate to the instant case, and examiner is not bound by its fact-specific conclusions. Furthermore, applicant misunderstands the thrust of MPEP §2144.05. Indeed, MPEP §2144.05(I) does not require a showing of exact same properties by the examiner in order to use the non-overlapping ranges rationale. Rather, it states that there must be “some noticeable difference” between the qualities of the prior art range and the claimed range, wherein this difference must be provided by applicant in a “showing of unexpected results or criticality.” Thus, the MPEP clearly allows for some type of differences in properties between the ranges as long as these differences are not critical. Moreover, the burden is placed upon applicant to provide evidence of this criticality. To be sure, the thrust of the close-but-non-overlapping ranges rationale in MPEP §2144.05 is based mainly on the proximity of the prior art range and the claimed range, with similar properties assumed based on this proximity. Notwithstanding, Kim gives specific evidence that the claimed range of 130% to 330% would have had similar properties to the disclosed range of more than 340%. For example, Kim discloses Exemplary Embodiment 2 having an elongation at break of 324% that has greater low temperature durability compared with Comparison Example 1 with an elongation at break of 138% (Kim: see Fig. 12). Thus, one of ordinary skill in the art would have expected values close in proximity to the disclosed range of more than 340% to still accomplish the same goals of low temperature durability and, indeed, fall within the same scope as the Kim invention. This is underscored by the fact that applicant has failed to provide any evidence of unexpected results or criticality for the claimed range of 130% to 330%. Therefore, examiner maintains that the claimed range would have been obvious in view of Kim.
As such, claims 1-19 stand rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDON C DARBY whose telephone number is (571)272-1225. The examiner can normally be reached Monday - Friday: 7:30am - 5:00pm.
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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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/B.C.D./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
Prosecution Insights