DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 3 November 2025 has been entered.
Claim Rejections - 35 USC § 112
Claims 1-9 and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1 and the recently amended limitation of “said noise damper comprises brominated copolymer of isobutylene with paramethylstyrene having 0.47 to 0.92 mol% benzylic bromine”, the originally submitted specification does not disclose any specific benzylic bromine composition ranges nor disclose why said ranges are critical for practicing the claimed invention. Additionally, the recently amended limitation of “wherein the radially inner layer and noise damper are free of any adhesives” broadly reads on the exclusion of adhesive before and after curing; however, the specification only mentions adhesives in terms of their usage “post-cure” (p.9 L8-9), which does not exclude use of adhesives prior to curing.
As claims 2-9 and 11 are dependent on claim 1, they stand as rejected for similar reasons.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5, 7, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Agostini (US20070137752) (of record) in view of Waddell (NPL) (of record) and ExxonMobil (NPL).
Regarding claims 1, Agostini discloses a tire (Fig 2) comprising:
a supporting tire carcass having one or more layers of ply (“carcass” (12)) ([0030]),
an outer circumferential tread (“tread” (13)), and
a radially inner layer (“innerliner layer” (16)),
a pair of beads (“bead” (15)),
sidewalls extending radially inward from the axial outer edges of a tread portion to join the respective beads (“sidewall” (11)), and
an intrinsic cellular noise damper as the innermost layer attached to innerliner (“foamed structure” (18)) ([0030]-[0031]),
wherein said noise damper has a density ranging from about 0.1 to about 1 g/cm3 ([0016]), which overlaps with the claimed range of less than .13 g/cm3; and
wherein the radially inner layer and noise damper are free of any adhesives ([0013], in that the foamed structure is “integral with the tire construction, instead of a being a simple laminate that is glued”).
Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the density of the noise damper.
While Agostini does not explicitly teach that the noise damper comprises a brominated copolymer of isobutylene with paramethylstyrene having 0.47 to 0.92 mol% benzylic bromine, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to do so as;
A) Agostini discloses that the foamed structure can be of various cured or vulcanized rubbers such as natural rubber and synthetic rubber and their mixtures or blends, including bromo butyl rubber ([0020]);
B) Waddell, which is within the rubber compounding art, teaches that a brominated copolymer of isobutylene with paramethylstyrene (“brominated isobutylene-co-para-methyl-styrene (BIMSM)”) can be used to replace bromo butyl rubber, in tire applications and innerliners in particular, for improved tensile strength, heat aging, aged flex resistance, air permeability, and tire weight (p.485); and
C1) ExxonMobil (NPL) discloses a brominated copolymer of isobutylene and paramethylstyrene in the form of Exxpro3035, which has a benzylic bromine content of 0.42 to .052 mol%, which overlaps the claimed range of 0.47 to 0.92; and
C2) case holds that the selection of a known material based on its suitability for its intended use is prima facie obvious (See MPEP 2144.07).
Regarding claim 2, modified Agostini teaches all limitations of claim 1 as set forth above. Additionally, Agostini teaches that the noise damper can have a density of about 0.1 to about 1 g/cm3 ([0016]), which overlaps with the claimed range of 0.1 g/cm3 or less. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the density of the noise damper.
Regarding claim 3, modified Agostini teaches all limitations of claim 1 as set forth above. Additionally, Agostini teaches that said noise damper has a density between about 0.1 g/cm3 and about 1 g/cm3 ([0016]), which overlaps with the claimed range of 0.02 g/cm3 to 0.12 g/cm3. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the density of the noise damper.
Regarding claim 4, modified Agostini teaches all limitations of claim 1 as set forth above. It would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to have the noise damper have a non-black color, as Agostini teaches the use of pigments in the rubber composition ([0021]). Furthermore, it has been held that “matters relating to ornamentation [(e.g. component color)] which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see MPEP 2144.04(I)).
Regarding claim 5, modified Agostini teaches all limitations of claim 1 as set forth above. Additionally, Agostini teaches that the noise damper comprises of carbon black filler ([0016]). In regards to the limitation that the noise damper has a black color from the carbon black filler, examiner notes that it has been held that “matters relating to ornamentation [(e.g. component color)] which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see MPEP 2144.04(I)).
Regarding claim 7, modified Agostini teaches all limitations of claim 1 as set forth above. Additionally, Agostini teaches that the noise damper comprises of conductive black ([0016] in that carbon black is conductive). In regards to the limitation that the noise damper has a black color from the conductive black filler, examiner notes that it has been held that “matters relating ornamentation [(e.g. component color)] which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see MPEP 2144.04(I)).
Regarding claim 9, modified Agostini teaches all limitations of claim 1 as set forth above. Additionally, Agostini teaches that said noise damper comprises a rubber selected from halobutyl rubber, bromobutyl rubber, chlorobutyl rubber, butyl rubber, and ethylene propylene diene monomer, and combinations thereof ([0020]).
Regarding claim 11, modified Agostini teaches all limitations of claim 1 as set forth above. Additionally, Agostini teaches that the noise damper comprises carbon black ([0016]).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Agostini (US20070137752) (of record), Waddell (NPL) (of record) and ExxonMobil (NPL) in further view of Graphene Magazine (NPL) (of record).
Regarding claim 6, modified Agostini teaches all limitations of claim 1 as set forth above. While modified Agostini does not explicitly teaches that the noise damper comprises of conductive graphite, it would have been obvious to one of ordinary skill to use conductive graphite, as Graphene Magazine teaches that the use of graphene (which is a single layer of graphite that is conductive) with tires and rubber components for the benefit of improved flexibility, stretchability and durability (Table 1). In regards to the limitation that the noise damper has a black color from the conductive graphite, examiner notes that it has been held that “matters relating to ornamentation [(e.g. component color)] which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see MPEP 2144.04(I)).
Claim(s) 1-5, 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kanz et al (US20060144496) (of record) in view of Waddell (NPL) (of record), ExxonMobil (NPL) and Bormann et al (US20120125507) (of record).
Regarding claim 1, Kanz discloses a tire comprising:
a supporting tire carcass having one or more layers of ply (“carcass” (12)) ([0015]),
an outer circumferential tread (“tread” (13)), and
a radially inner layer (“first innerliner layer” (16)),
a pair of beads (Fig 1),
sidewalls extending radially inward from the axial outer edges of a tread portion to join the respective beads (Fig 1),
an intrinsic cellular noise damper as the innermost layer attached to innerliner (“second innerliner layer” (18), [0016]-[0017]); and
wherein the radially inner layer and noise damper are free of any adhesives ([0017], in that there is no explicitly disclosed use of adhesives).
While Kanz does not explicitly disclose that the noise damper has a density of less than 0.13 g/cm3 and that it comprises brominated copolymer of isobutylene with paramethylstyrene having 0.47 to 0.92 mol% benzylic bromine, 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:
A) Kanz teaches that the noise damper (“second innerliner layer” (18)) can comprise of different rubber compositions, including bromobutyl rubber ([0015]-[0016]);
B) Waddell, which is within the rubber compounding art, teaches that a brominated copolymer of isobutylene with paramethylstyrene (“brominated isobutylene-co-para-methyl-styrene”) can be used to replace bromo butyl rubber, in tire applications and innerliners in particular, for improved tensile strength, heat aging, aged flex resistance, air permeability, and tire weight (p.485);
C1) ExxonMobil (NPL) discloses a brominated copolymer of isobutylene and paramethylstyrene in the form of Exxpro3035, which has a benzylic bromine content of 0.42 to .052 mol%, which overlaps the claimed range of 0.47 to 0.92;
C2) Case holds that the selection of a known material based on its suitability for its intended use is prima facie obvious (See MPEP 2144.07);
D1) Bormann, within the tire manufacturing arts, teaches that the density of a noise damper (“noise damper” (18)) on a tire’s inner surface is between about 0.01 g/cm3 to about 0.4 g/cm3 ([0024]), which overlaps the claimed range of less than 0.13 g/cm3, to ensure the noise damper can effectively dampen noise ([0023]); and
D2) case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the density of the noise damper.
Regarding claim 2, modified Kanz teaches all limitations of claim 1 as set forth above. Additionally, Bormann teaches that the density of the noise damper is between about 0.01 g/cm3 to about 0.4 g/cm3 )[0024]), which overlaps with the claimed range of 0.1 g/cm3 or less. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the density of the noise damper.
Regarding claim 3, modified Kanz teaches all limitations of claim 1 as set forth above. Additionally, Bormann teaches that the density of the noise damper is between about 0.01 g/cm3 to about 0.4 g/cm3 ([0024]), which overlaps with the claimed range between 0.02 g/cm3 and 0.12 g/cm3. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the density of the noise damper.
Regarding claim 4, modified Kanz teaches all limitations of claim 1 as set forth above. In regards to the limitation that the noise damper has a non-black color, examiner notes that it has been held that “matters relating to ornamentation [(e.g. component color)] which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see MPEP 2144.04(I)).
Regarding claim 5, modified Kanz teaches all limitations of claim 1 as set forth above. Additionally, Kanz teaches that the noise damper comprises of carbon black filler ([0020]). In regards to the limitation that the noise damper has a black color from carbon black filler, examiner notes that it has been held that “matters relating to ornamentation[(e.g. component color)] which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see MPEP 2144.04(I)).
Regarding claim 8, modified Kanz teaches all limitations of claim 1 as set forth above. Additionally, Kanz teaches that the noise damper may be substantially free of any filler ([0015], in that the addition of “various additives, such as fillers” is an optional component and not a required component of the noise damper).
Regarding claim 11, modified Kanz teaches all limitations of claim 1 as set forth above. Additionally, Kanz teaches that the noise damper comprises carbon black ([0020]).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kanz et al (US2006014496) (of record), Waddell (NPL) (of record), ExxonMobil (NPL) and Bormann et al (US20120125507) (of record) in further view of Graphene Magazine (NPL) (of record).
Regarding claim 6, modified Kanz teaches all limitations of claim 1 as set forth above. While modified Kanz does not explicitly teach that the noise damper comprises of conductive graphite, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to do so, as Graphene Magazine teaches that the use of graphene (which is a single layer of graphite that is conductive) with tires and rubber components for the benefit of improved flexibility, stretchability and durability (Table 1). In regards to the limitation that the noise damper has a black color from the conductive graphite, examiner notes that it has been held that “matters relating to ornamentation [(e.g. component color)] which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see MPEP 2144.04(I)).
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kanz et al (US2006014496) (of record), Waddell (NPL) (of record), ExxonMobil (NPL) and Bormann et al (US20120125507) (of record) as evidenced by Park (US20190160891) (of record).
Regarding claim 7, modified Kanz teaches all limitations of claim 1 as set forth above. It would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application for the noise damper to comprise of conductive black, given that:
A) Kanz teaches that the noise damper can comprise of carbon black ([0020], specifically N550); and
B) Park, within the tire manufacturing art, shows evidence that a wide range of carbon blacks (including N550) have at least some amount of electrically conductivity (Table 2, 3, [0053]) and can be considered “conductive carbon blacks”).
In regards to the limitation that the noise damper has a black color from the conductive black, examiner notes that it has been held that “matters relating to ornamentation [(e.g. component color)] which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (MPEP 2144.04(I)).
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kanz et al (US2006014496) (of record), Waddell (NPL) (of record), ExxonMobil (NPL) and Bormann et al (US20120125507) (of record) as evidenced by Dias et al (NPL) (of record).
Regarding claim 9, Kanz teaches all limitations of claim 1 as set forth above. Additionally, given that Kanz teaches that the noise damper (“second innerliner layer” (18)) can comprise of different rubbers such as butyl rubber and halogen rubber ([0015] and [0016] in that the second innerliner layer can comprise of the same materials as the first innerliner layer (16)) and Dias teaches that it is well known in the rubber industry, which includes the rubber in tire manufacturing, to blend different rubbers together for the benefit of achieving an optimal blend of properties depending on their usage (p. 615), it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application for the noise damper to comprise a halobutyl rubber.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 regarding the benzylic bromine mol% content have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding p.5 of applicant’s remarks, examiner notes that applicant argued that claim 1 was amended “to limit the brominated copolymer of isobutylene with paramethylstyrene to a brominated copolymer of isobutylene with paramethylstyrene having 0.5 to 0.92 mol% benzylic bromine”; however, claim 1 was amended so that the benzylic bromine mol% range is “0.47 to 0.92”.
With regards to p.6 of applicant’s remarks, applicant argues that Bormann teaches the requirement of an adhesive and therefore does not read on the claimed invention. Such argument is considered unpersuasive, as Bormann is not being relied upon for as an entire substitution of the second innerliner layer of Kanz, but for its teaching of foam densities necessary to dampen noise ([0023]-[0024]), which is not taught to be affected by the use of adhesive.
Regarding p.6-7 of applicant’s remarks, applicant argues that the specification discloses that “’intrinsic’ means an adhesive is not used to bond the noise damper to the inner surface of the tire” and therefore excludes the use of adhesives at any point. Examiner disagrees, noting that the exact wording from the originally submitted specification on p.9 L8-9 is “As used herein, the term intrinsic means the foam noise damper is applied prior to cure, rather than a damper affixed to the tire using an adhesive post-cure” (underline for emphasis). As written, the definition excludes the use of an adhesive to affix the damper only after curing, but does not exclude the presence or use of adhesives prior to curing.
Furthermore, examiner notes that, as set forth in the rejections above, neither Agostini nor Kanz disclose and/or require the use of an adhesive to practice their respective inventions.
Conclusion
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/John J DeRusso/Primary Examiner, Art Unit 1744