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 .
Response to Amendment
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn. Applicant’s after final amendment, filed January 17, 2025 has been entered.
Response to Arguments
Applicant’s arguments, see applicant’s remarks, filed January 17, 2025, with respect to the rejection(s) of claim(s) 1-3 and 8-12 under 35 U.S.C. 112 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of a) Published PCT Application WO 2020/054799 A1 (equivalent to US Patent Application Publication 2022/0048339 A1) having a publication date of March 19, 2020, an international filing date of September 12, 2019, and a foreign priority date of September 12, 2018 and b) US Patent Application Publication 2008/0053588 A1 in view of South Korean Patent Application 10-2005-0093022 A cited by applicant.
Election/Restrictions
Claims 4-6 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 8, 2023.
Claim Rejections - 35 USC § 102
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 8, and 9 is/are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Published PCT Application WO 2020/054799 A1 (equivalent to US Patent Application Publication 2022/0048339 A1) having a publication date of March 19, 2020, an international filing date of September 12, 2019, and a foreign priority date of September 12, 2018.
See US ‘339 paragraphs 0001-0014, 0047-0057, 0076-0078, 0090-0100, 0106-0108, and 0110: polyurethane foam layer (film or sheet) is laminated (stuck) to the tire sidewall and includes two or more “design substances” which can be thermochromic (temperature-sensitive) pigment, photochromic (light-sensitive) pigment such as ultraviolet light-sensitive pigment, and luminous powder (photoluminescent pigment). Contrary to applicant’s arguments filed September 26, 2023, the polyurethane foam layer is explicitly disclosed as containing the two or more “design substances” and once the polyurethane foam layer containing the two or more “design substances” is laminated (stuck) to the tire sidewall (making the polyurethane foam layer a “separate layer” as claimed, paragraphs 0106-0108) it becomes part of the tire and therefore improves the appearance of the tire (paragraphs 0047-0057). As to claims 8 and 9, tires are either pneumatic or non-pneumatic and so one of ordinary skill in the art would have at once envisaged both species from the generic tire disclosure (MPEP 2131.02(III)).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, 8, and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2008/0053588 A1 in view of South Korean Patent Application 10-2005-0093022 A cited by applicant.
The only difference between the US ‘588 tire and the claimed tire is the presence of an ultraviolet light-sensitive pigment and/or photoluminescent pigment in addition to the temperature-sensitive pigment (embodiment of Fig. 11, paragraphs 0040, 0069-0085, 0090, and 0100-0103, Example 5: temperature-sensitive color-changing material A has the claimed set temperature of 30°C), using the same pigment in the same concentration for both sidewall rubber composition and color seal rubber composition with an exemplary value of 8 phr, however KR ‘022 teaches to provide 5-30 phr UV light-sensitive pigment in such tire sidewall rubber in order to indicate exposure to UV light with exemplary values of 5, 10, and 20 phr resulting in percentages of 62%/38%, 44%/56%, and 28%/71%; it would therefore have been obvious to one of ordinary skill in the art to provide such UV light-sensitive pigment in the above color seal rubber composition in order to indicate exposure to UV light, the two pigments necessarily being different colors so the temperature indication can be differentiated from the UV light indication. As to claim 10, the temperature-sensitive color-changing material can be set at 10°C to indicate low-temperature brittlement condition (paragraph 0076). As to claim 12, it would have been obvious to one of ordinary skill in the art that both temperature-sensitive color-changing materials could be used if both indications were desired (obvious duplication of parts, MPEP 2144.04(VI)(B)).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2008/0053588 A1 in view of South Korean Patent Application 10-2005-0093022 A cited by applicant as applied to claims 1, 2, 8, and 10-12 above, and further in view of South Korean Patent 100771685 B1 cited by applicant.
KR ‘685 teaches to add 0.5-5 phr photoluminescent pigment to such tire sidewall rubber to illuminate the rubber at night, which for 5 phr added to the 8 phr and 5 phr results in pigment percentages of 44%/28%/28%; it would therefore have been obvious to one of ordinary skill in the art to provide such photoluminescent pigment in the above color seal rubber composition in order to illuminate the color seal rubber at night.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2008/0053588 A1 in view of South Korean Patent Application 10-2005-0093022 A cited by applicant as applied to claims 1, 2, 8, and 10-12 above, and further in view of European Patent Application 3 543 036 A1 cited by applicant.
It is well known that such indicators are also useful on non-pneumatic tires, as evidenced for example by EP ‘036 (paragraph 0009); it would therefore have been obvious to one of ordinary skill in the art to use the above color seal as an indicator on a non-pneumatic tire (MPEP 2143(I)(C), use of known technique to improve similar devices (methods or products) in the same way).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrienne C. Johnstone whose telephone number is (571)272-1218. The examiner can normally be reached M-F 1PM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached on 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ADRIENNE C. JOHNSTONE
Primary Examiner
Art Unit 1749
Adrienne Johnstone /ADRIENNE C. JOHNSTONE/ Primary Examiner, Art Unit 1749 March 2, 2025