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 10/10/2025. Claims 1-2, 4-7, and 9-13 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, 4, and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tanno (US 2016/0297260) (Tanno '260) (of record) in view of Yukawa (US 2009/0038726) (of record) and Hosoda et al. (US 2020/0055288) (Hosoda) (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 hardness x of the sound absorbing member (6) is preferably from 60 to 170 N ([0036]). Furthermore, in exemplary embodiments, Tanno ‘260 discloses that the hardness x of the sound absorbing member (6) is 91 N (see Table 2, Working Examples 6-10), suggesting the claimed range of 80 < x < 120. Tanno ‘260 further discloses that the hardness x of the sound absorbing member (6) is measured by a method D of the Japanese Industrial Standard K6400 ([0012]). 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, a specific elongation at break y of the sound absorbing member (6).
Yukawa teaches a similar tire (title) comprising a sound absorbing member (4) fixed to an inner surface (3i) of a tread portion (3t) along the tire circumferential direction (see Figs. 1 and 2; [0051]). Yukawa further teaches that the sound absorbing member (4) has an elongation at break y of 200% or more ([0050]). Furthermore, in an exemplary embodiment, Yukawa teaches that the sound absorbing member (4) has an elongation at break y of 280% (see Table 2, Ex. 1), suggesting the claimed range of 140
≤
y
≤
490. Yukawa further teaches that configuring the sound absorbing member (4) in this way helps to prevent the generation of cracks ([0050]).
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 have the elongation at break taught by Yukawa because they would have had a reasonable expectation that doing so would help prevent the generation of cracks in the sound absorbing member.
Thus, as set forth above, modified Tanno ‘260 discloses a sound absorbing member (Tanno ‘260: 6) with a hardness x of 91 N (Tanno ‘260: see Table 2, Working Examples 6-10) and an elongation at break y of 280% (Yukawa: see Table 2, Ex. 1), thereby suggesting the claimed relationships: 140
≤
y
≤
490, y
≤
-21x + 2700 (789 in this case), and 80 < x < 120. Modified Tanno ‘260 further discloses that the adhesive layer (Tanno ‘260: 5) comprises a double-sided adhesive tape (Tanno ‘260: [0026]). However, modified Tanno ‘260 fails to disclose that the adhesive layer (Tanno ‘260: 5) has a total thickness of from 10 μm to 150 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 range of from 10 μm to 150 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.
Regarding the claimed volume range of 10% to 18% of a cavity volume of the pneumatic tire, Tanno ‘260 further discloses that the sound absorbing member (Tanno ‘260: 6) has a volume of greater than 20% of a cavity volume of the tire (Tanno ‘260: [0035]; [0011]), which is substantially close to the claimed range of 10% to 18%. 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. Examiner also notes that the volume ratio of 20% or more is disclosed as a preferred range only (Tanno ‘260: [0035]), and Tanno ‘260 fails to disclose any negative property associated with ratios of less than 20%. Indeed, Tanno ‘260 only discloses that values greater than 20% lead to “excellent” noise reduction (Tanno ‘260: [0035]). It is well taken that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. See MPEP 2123. Thus, given Tanno ‘260’s disclosure, the claimed range would have been within the purview of one of ordinary skill in the art since they would have viewed values less than 20% as still accomplishing suitable noise reduction, albeit in a non-preferred manner. Alternatively, Yukawa further teaches that the sound absorbing member (Yukawa: 4) has a volume (Yukawa: V2) of 0.4 to 20% of a cavity volume (Yukawa: V1) of the pneumatic tire (Yukawa: [0026]), encompassing the claimed range of 10% to 18%. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Yukawa further teaches that configuring the sound absorbing member (Yukawa: 4) with this volume helps to balance the noise-reducing effect of the sound absorbing member (Yukawa: 4) and the cost and weight of the sound absorbing member (Yukawa: 4) (Yukawa: [0026]-[0027]).
Therefore, 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 in modified Tanno ‘260 to have satisfied the claimed range based on the substantially close range disclosed by Tanno ‘260. Alternatively, 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 modified Tanno ‘260 to have a volume within the claimed range, as suggested by Yukawa, because they would have had a reasonable expectation that doing so would help to balance the noise-reducing effect of the sound absorbing member and the cost and weight of the sound absorbing member. Thus, modified Tanno ‘260 satisfies all of the limitations in claim 1.
Regarding claim 4, 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 6, 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 claim 7, 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 missing portion (Tanno ‘260: 6A) in the tire circumferential direction (Tanno ‘260: see Fig. 3; [0027]), suggesting the limitations in claim 7.
Claims 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tanno (US 2016/0297260) (Tanno '260) (of record) in view of Yukawa (US 2009/0038726) (of record) and Hosoda et al. (US 2020/0055288) (Hosoda) (of record) as applied to claim 1 above, and further in view of Tanno et al. (US 2009/0053492) (Tanno '492) (of record).
Regarding claim 2, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 1. 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 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 9, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 2. 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).
Claims 5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tanno (US 2016/0297260) (Tanno '260) (of record) in view of Yukawa (US 2009/0038726) (of record) and Hosoda et al. (US 2020/0055288) (Hosoda) (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 5, 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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355
779
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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 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 (see Modified Figure 8 below; [0020]). Yugawa further teaches that the sound absorbing member (9) comprises a first band-like body (10) and a second band-like body (10), each one having a rectangular cross-sectional shape (see Modified Figure 8 below; [0030]); the first band-like body (10) 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 (10) 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 (10) forming the sound absorbing member (9) and the second band-like body (10) 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 (10) and a second band-like body (10) 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]).
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389
728
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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.
Regarding claim 13, Tanno ‘260 in view of Yukawa and Hosoda discloses all of the limitations in claim 13 present in claim 1, as set forth above. 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 above; [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 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, 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, 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, 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) each overlap the center land portion, an overlap amount of each of the first band-like body and the second band-like body with the center land portion being from greater than 0% of the width of the center land portion to 40% or less of the width of the center land portion.
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 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 (see Modified Figure 4 below; [0020]). Yugawa further teaches that the sound absorbing member (9) comprises a first band-like body (10A) and a second band-like body (10A) (see Modified Figure 4 below), each one having a rectangular cross-sectional shape (see Modified Figure 4 below; [0030]). Yugawa further teaches that each of the first band-like body (10A) and the second band-like body (10A) are provided symmetrically at the center lines (CL1) of center main grooves (8A) defining the center land portion (see Fig. 4; [0028]). Yugawa further teaches that each of the first and second band-like bodies (10A) can have a width (Ws) of 15 mm (see Fig. 9). Yugawa further teaches that the groove widths (Wg) of the main grooves (8A) are 10 mm, and the width of the center land portion is 18 mm (see Fig. 10; [0021]). Thus, it is clear that each of the first and second band-like bodies (10A) overlap with the center land portion over a distance of 2.5 mm ((15-10)/2), or 13.8% ((2.5/18)*100) of the width of the center land portion, leading to a sum of an overlap amount of 27.6% (13.8*2), which suggests the claimed range of greater than 0% to 40% or less. Thus, the first band-like body (10A) is also necessarily on one side in a 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 one side in the tire lateral direction to the other side in the tire lateral direction, and the second band-like body (10A) 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 (see Modified Figure 4 below). Furthermore, given the above dimensions, it is clear that the first and second band-like bodies (10A) are separated by a distance of 13 mm (18-5), or 72% ((13/18)*100) of the width of the center land portion, suggesting the claimed range of 60% or greater. Yugawa further teaches that this configuration of a first band-like body (10A) and a second band-like body (10A) as shown in Fig. 4 helps to prevent the deterioration of tire uniformity while improving the high-speed durability of the sound absorbing member (9) ([0026]-[0028]).
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318
626
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Modified Figure 4, 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 help prevent the deterioration of tire uniformity while improving the high-speed durability of the sound absorbing member.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tanno (US 2016/0297260) (Tanno '260) (of record) in view of Yukawa (US 2009/0038726) (of record) and Hosoda et al. (US 2020/0055288) (Hosoda) (of record) as applied to claim 1 above, and further in view of Tanno et al. (US 2009/0053492) (Tanno '492) (of record) as applied to claim 2 above, and further in view of Yugawa (JP 2005-262920 with English Machine Translation) (of record).
Regarding claim 10, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 2. Modified Tanno ‘260 in view of Yugawa further satisfies all of the limitations in claim 10 as set forth above for claim 5, 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 that the adhesive layer (Tanno ‘260: 5) comprises a double-sided adhesive tape (Tanno ‘260: [0026]).
Regarding claim 12, modified Tanno ‘260 discloses all of the limitations as set forth above for claim 11. Modified Tanno ‘260 further discloses that the sound absorbing member (Tanno ‘260: 6) comprises a missing portion (Tanno ‘260: 6A) in the tire circumferential direction (Tanno ‘260: see Fig. 3; [0027]), suggesting the limitations in claim 12.
Response to Arguments
Applicant’s amendments to the claims have overcome the 112(a) rejection previously set forth in the Non-Final Office Action mailed 07/10/2025.
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive.
Regarding applicant’s arguments that the cited prior art fails to make obvious the limitation in claim 1 excluding water repellent, examiner respectfully disagrees. Specifically, applicant argues that Tanno 260’s failure to mention water repellency is not an inherent or implicit disclosure of a lack of water repellency; thus, one of ordinary skill in the art would have necessarily used the water repellent taught by Yukawa since there is no teaching, suggestion, or motivation in any of the references to provide a sound absorbing member without water repellency. However, examiner notes 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 taught by Tanno ‘260, one of ordinary skill in the art would not have applied a water repellent to the sound absorbing member (6) unless Tanno ‘260 explicitly mentioned doing so. As it stands, Tanno ‘260 nowhere states that the sound absorbing member (6) contains any water repellency; thus, one of ordinary skill in the art would have implicitly viewed the sound absorbing member (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 (6) 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. This is underscored by the Yukawa’s teaching that “it is preferable to provide the spongy material with a water repellency” ([0025]). This statement would be unnecessary if the skilled artisan assumed that sound absorbing members already had water repellency. Thus, in the context of the tire art, sound absorbers either have water repellency, or they do not. In this case, Tanno ‘260’s silence as to water repellency would be understood by the skilled artisan that Tanno ‘260’s sound absorber does not contain any water repellency.
Applicant further argues that it would not have been obvious to combine Yukawa only to implement a non-preferred embodiment, and that examiner disregards MPEP 2141.02(VI) in failing to consider Yukawa in its entirety. However, applicant’s arguments are in direct contradiction to the MPEP and fail to take into account the level of ordinary skill in the art. Examiner emphasizes that “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (see MPEP 2123(I)), and that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (see MPEP 2123(II)). Thus, it is well within the ability of one of ordinary skill in the art to combine non-preferred embodiments of inventions. What’s more, in considering Yukawa entirely in accordance with MPEP 2141.02(VI), one of ordinary skill in the art would have found that Yukawa does not teach away or discourage sound absorbing members without water repellency. Even more, Yukawa’s teaching of water repellency is only mentioned once in the reference and only as an optional preference ([0025]), not as an integral component in achieving Yukawa’s objective of providing a sound absorber “capable of reducing a road noise over a long term, while preventing peeling and damages” ([0006]). Therefore, viewing Yukawa as a whole, one of ordinary skill in the art would have understood Yukawa’s sound absorbing member as broadly encompassing sound absorbing members with and without water repellency.
Regarding applicant’s argument that examiner cannot disregard teachings of Yukawa simply because examiner only intends to combine a feature of Yukawa favorable for the rejection while disregarding teachings of Yukawa that would lead away from the claimed invention, examiner disagrees. Indeed, “a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton," and “a person of ordinary skill in the art will be able fit the teachings of multiple patents together like pieces of a puzzle,” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420, 421, 82 USPQ2d 1385, 1397 (2007). Thus, in fitting “the teachings of multiple patents together like pieces of a puzzle,” one of ordinary skill in the art is clearly capable of choosing some features of the Yukawa reference to combine with the Tanno ‘260 reference without needing to incorporate all of Yukawa’s teachings, especially when these teachings are unrelated to each other. In this case, the rejection relies on Yukawa to teach an elongation at break of the sound absorbing member, which prevents the generation of cracks in the sound absorber ([0050]). While Yukawa also teaches water repellency, one of ordinary skill in the art need not also incorporate this teaching to achieve a desired prevention of cracks because Yukawa’s water repellency has no bearing on this desired result. Thus, because applicant’s arguments fail to take into account the level of one of ordinary skill in the art, applicant’s arguments against the combination of Tanno ‘260 and Yukawa are not persuasive.
Regarding applicant’s arguments against the combination of Tanno ‘260 and Yugawa, examiner respectfully disagrees. Applicant first argues that combining Yugawa’s teaching of multiple sound absorbing members to Tanno ‘260 would reduce the content of the sound absorbing member, leading to a reduction in the noise reducing effect, contrary to the stated motivation for the combination. Applicant also argues that the combination would result in increased manufacturing cost and complexity. However, these arguments are merely speculative and do not find support in the teachings of Tanno ‘260 or Yugawa. For instance, even though Yugawa’s sound absorbing member is separated into strips, the volume occupied by the strips can be substantially the same as the volume occupied by the sound absorbing member disclosed by Tanno ‘260 (compare Tanno ‘260’s volume of greater than 20% in [0035] and Yugawa’s volume of 0.4 to 20% in [0031]). Thus, the content of the sound absorbing member need not be reduced in applying Yugawa’s teaching. Yugawa is also clear that this sound absorber can reduce noise during running ([0005]; [0014]), while also taking cost into consideration ([0031]; [0034]; [0037]). Thus, in combining Yugawa’s teachings to Tanno ‘260, one of ordinary skill in the art would not have necessarily expected a reduction in noise performance or an increase in manufacturing cost. What’s more, Tanno ‘260’s teaching of a single sound absorbing member is clearly stated as a preference only ([0010]; [0034]); thus, one of ordinary skill in the art would not have viewed Tanno ‘260 as teaching away from the configuration taught by Yugawa.
Applicant also argues that since Tanno ‘260 post-dates Yugawa, Tanno ‘260 cannot be combined with Yugawa since it would already be aware of Yugawa’s teachings and would not have expected Yugawa’s teachings to lead to improved performance. However, examiner notes that contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977). Indeed, Tanno ‘260 gives no evidence that it tried and failed to solve the same problem taught by Yugawa. Furthermore, Tanno ‘260’s different priorities from that of Yugawa does not restrict one of ordinary skill in the art at the time of the instant application from combining the teachings of Tanno ‘260 and Yugawa to lead to the desired results taught by both Tanno ‘260 and Yugawa.
Applicant further argues that the rejection of claim 13 inconsistently relies on different embodiments. However, examiner notes that the embodiment shown in Fig. 9 of Yugawa is merely relied upon for its dimensions of the sound absorbing members, which clearly correspond to the dimensions shown in the embodiment shown in Fig. 4, not for the configuration taught in Fig. 9. Furthermore, regarding applicant’s arguments that Yugawa teaches a volume of the sound absorbing member significantly reduced compared to Tanno ‘260, examiner notes that Tanno ‘260 is also combined with Yukawa to have a volume of 0.4 to 20% of a cavity volume (see rejection of claim 1), which is the exact same volume taught by Yugawa ([0031]). This combination of Yukawa’s volume to the sound absorbing member of Tanno ‘260 has been previously argued and affirmed by the Board (see Patent Board Decision filed 04/30/2025). Thus, applicant’s arguments related to the volume of the sound absorbing member are not persuasive.
Applicant further argues that because Tanno ‘260 uses a different tread pattern than Yugawa, the dimensions taught by Yugawa are irrelevant in the combination since the rejection does not combine the center land portion of Yugawa. However, examiner notes that the dimensions in Yugawa are cited in the rejection to show its general teaching regarding the relationship between the widths of the sound absorbing members and the width of the center land portion. Because this relationship is directly related to Yugawa’s teaching of improved high-speed durability ([0026]-[0028]), one of ordinary skill in the art would have easily been able to apply this general relationship to the tire of Tanno ‘260 by appropriately adjusting the widths of the sound absorbing members to the specific tread pattern disclosed by Tanno ‘260. However, given that the specific tread pattern shown in Fig. 2 of Tanno ‘260 is only an example and is not disclosed as limiting, one of ordinary skill in the art could have also combined the tread pattern taught by Yugawa to the tire of Tanno ‘260 without destroying the Tanno ‘260 reference in order to achieve the benefits taught by Yugawa.
Finally, applicant argues that the combination of Yugawa and Tanno ‘260 could not have resulted in the benefits taught by Yugawa for the configuration shown in Fig.4 because Tanno ‘260 discloses a tread pattern that is significantly different than that of Yugawa. However, these arguments are not persuasive because they are based merely on the example tread pattern disclosed by Tanno ‘260 in Fig. 2, and Tanno ‘260 nowhere describes this pattern as limiting nor even important to the overall goal of the invention. Thus, one of ordinary skill in the art would not have seen this non-limiting example as a teaching away of the configuration taught by Yugawa. Furthermore, where Yugawa does teach some importance for the tread pattern in Fig. 4, one of ordinary skill in the art could have easily used the tread pattern taught by Yugawa in the tire of Tanno ‘260 without straying from the overall goal of the Tanno ‘260 reference. Thus, applicant’s arguments against the combination of Tanno ‘260 and Yugawa are not persuasive.
As such, claims 1-2, 4-7, and 9-13 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.
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/B.C.D./Examiner, Art Unit 1749
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749