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, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/10/2025 has been entered.
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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, 3-4, 8, 12, 14, and 20 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wei et al. (US 20170355238).
Regarding claim 1, Wei discloses a pneumatic tire, comprising: an information display unit configured to display, in a tire surface (Figs. 5A-5C: 500, 503) ([0073]), information relating to attachment of a sensor unit (Figs. 5A-5C: 510, 517) configured to acquire tire information (Figs. 5A-5C: see how 518 has a hole indicating and informing where to attach the sensor unit) ([0001], [0039]), the information display unit comprising one or more alphanumerics, numerals, symbols or patterns for discriminating a specification of the sensor unit (Figs. 5A-5C: see how 518 has a hole/symbol of a particular size corresponding to a specific type of sensor unit), wherein the information display unit is disposed in a tire inner surface (Figs. 5A-5C), the information display unit comprises an indicator (Figs. 5A-5C: 518) being an indication of an attachment region of the sensor unit, a platform (Figs. 5A-5C: 518) corresponding to the attachment region of the sensor unit is formed as the indicator, the platform being formed of a protrusion portion or a recess portion (Figs. 5A-5C: see how 518 is both protruding from the tire surface and has a recess portion) and the sensor unit (Figs. 5A-5C: 510, 517) being attached to the protrusion portion or the recess portion (Figs. 5A-5C), and a root portion of the platform having a curvature in a tire cross-sectional view, the root portion being a transition from the tire inner surface surrounding the platform to platform walls defining the protrusion portion or the recess portion of the platform (Figs. 5A-5C: see walls of protruding portion of 518 transitioning to tire inner surface, as well as walls of recess within 518, all of which have curvature).
The examiner notes that the claim limitations of “information relating to attachment of a sensor unit” and “the information display unit comprising one or more alphanumerics, numerals, symbols or patterns for discriminating a specification of the sensor unit” are very broad limitations and are thereby satisfied by Wei as discussed above.
Regarding claim 3, Wei further discloses the information display unit (Figs. 5A-5C: 518) is formed of a protrusion portion and/or a recess portion (Figs. 5A-5C).
Regarding claim 4, Wei further discloses a root portion of the protrusion portion and/or the recess portion constituting the information display unit has curvature (Figs. 5A-5C).
Regarding claim 8, Wei further discloses the tire further comprises at least one additional sensor unit and at least one of the sensor unit or the at least one additional sensor unit corresponding to information of the information display unit is fixed to a tire inner surface ([0060]).
Regarding claim 12, Wei further discloses the sensor unit (Figs. 5A-5C: 510) is disposed in an inner side of a ground contact edge in a tire width direction (Fig. 5A).
Regarding claim 14, Wei further discloses a base (Figs. 5A-5C: 510, 512) is inserted between the sensor unit (Figs. 5A-5C: 517) and an adhesive layer ([0040]).
Regarding claim 20, the examiner notes that the claim limitation "the information display unit is a laser engraving on the tire surface" is a product-by-process limitation wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In this case, the claim limitation does not require a process step, but rather the structure that is implied by the step (i.e., an information display unit recessed in the tire surface). Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. The structure that is implied by the step (i.e., an information display unit recessed in the tire surface) is clearly present in Wei as discussed above because Wei discloses a tire comprising an information display unit recessed in the tire surface (Figs. 5A-5C). One of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found it obvious, that Wei is at least capable of providing the information display unit is a laser engraving on the tire surface, especially because Wei discloses the cavity in the information display unit may be formed by cutting away material ([0035]-[0036], [0077]).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 20170355238) as applied to claim 1 above, and further in view of Soini et al. (US 20210039451) (of record).
Regarding claim 15, while Wei does not explicitly disclose the value for the roughness of the tire inner surface in a fixing region of the sensor unit, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said roughness. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the roughness of the tire inner surface in a fixing region of the sensor unit in order to properly and efficiently fix the sensor to the inner surface of the tire. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the roughness of the tire inner surface in a fixing region of the sensor unit.
Nevertheless, even if it would not have been obvious for one of ordinary skill in the art to optimize the roughness, Soini teaches a tire comprising a sensor unit (Figs. 3a-3b), wherein the roughness value of the surface roughness of surfaces coming into contact with the sensor may be at least 5 µm, which overlaps with the claimed ranges of from 0.3 µm to 15.0 µm and from 2.5 µm to 60.0 µm, so as to provide increased friction or grip between the sensor and the surface to which the sensor is in contact/fixed ([0109]). 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. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the roughness of the tire inner surface in a fixing region of the sensor unit. Moreover, Soini teaches that the surface roughness correlates to how well the sensor grips the surface to which it is fixed, and is thereby considered to be a result effective variable that will affect the friction and grip of the sensor to the inner surface. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Wei in order to provide a roughness (average and maximum) of the tire inner surface in a fixing region of the sensor unit in the aforementioned range so as to provide increased friction or grip between the sensor and the surface to which the sensor is in contact/fixed, as taught by Soini.
Claim(s) 15 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 20170355238) as applied to claim 1 above, and further in view of Sakakibara (JP 2015116689, see machine translation) (of record).
Regarding claims 15 and 19, while Wei does not explicitly disclose the value for the roughness of the tire inner surface in a fixing region of the sensor unit, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said roughness. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the roughness of the tire inner surface in a fixing region of the sensor unit in order to properly and efficiently fix the sensor to the inner surface of the tire. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the roughness of the tire inner surface in a fixing region of the sensor unit.
Sakakibara teaches a method of attaching components to an inner surface of a tire ([0001]), wherein the surface of the tire in an attachment area is set to 30 µm or less ([0009]-[0010], [0012]-[0013], [0021], [0024]-[0026]), which overlaps with the claimed ranges of from 0.3 µm to 15.0 µm, from 0.3 µm to 4.5 µm, and from 2.5 µm to 60.0 µm. 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. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the roughness of the tire inner surface in a fixing region of the sensor unit. In this manner, the adhesive strength of the adhesive layer can be improved, enabling the member to be reliably applied to the inner surface of the tire ([0010], [0013]). If the roughness exceeds 30 µm, the adhesiveness of the adhesive layer is hindered, resulting in poor adhesion durability ([0024]). Although Sakakibara teaches the attached component is a sound absorbing member, rather than a sensor unit, both Sakakibara and modified Wei disclose attaching a tire component via an adhesive layer to a tire inner surface. Thus, the advantage of improving adhesiveness of an adhesive layer between a tire inner surface and a tire component as taught by Sakakibara is also applicable and advantageous to the tire comprising a tire component (i.e., sensor unit) adhered to a tire inner surface via an adhesive layer as disclosed by modified Wei. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Wei in order to provide a roughness (average and maximum) of the tire inner surface in a fixing region of the sensor unit in the aforementioned range so as to improve the adhesive strength of the adhesive layer, thereby enabling the member to be reliably applied to the inner surface of the tire, as taught by Sakakibara.
Allowable Subject Matter
Claims 9-11 and 21-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 9, no prior art of record is considered to teach or suggest the combination of limitations of claims 1 and 9. In particular, the limitation “the sensor unit is bonded to a tire inner surface via an adhesive layer.”
Claims 10-11 would be allowable by dependence on claim 9.
Regarding claim 21, no prior art of record is considered to teach or suggest the combination of limitations of claims 1 and 21. In particular, the limitation “a sensor attachment location for attachment of the sensor unit, the sensor attachment location being discrete and spaced apart from the information display unit.”
Regarding claim 22, no prior art of record is considered to teach or suggest the combination of limitations of claims 1 and 22. In particular, the limitation “the information display unit comprising one or more of the alphanumerics or the numerals.”
The closest prior art of record is considered to be Wei et al. (US 20170355238).
Wei discloses the claim limitations of claim 1, as discussed in the detailed rejection above. However, Wei does not teach or suggest bonding the sensor unit to the tire inner surface via an adhesive layer. Instead, Wei discloses that prior art devices may be adhered directly to a tire’s interior surface using adhesive, thus creating a lamination between the device, a device patch, a device base, or the like, and the tire's interior surface. During use of the tire, the tire's interior surface undergoes many deformations in each revolution of the tire (cycle of the tire). A tire may undergo a very large number of cycles in its lifetime—perhaps several million cycles. As a result, the lamination between the device, in whatever manner, and the tire's interior surface may undergo a very high number of cycles that may place any of strain on the lamination, deformation of the lamination, force within the lamination attempting to pull the device and the tire away from one another, and the like ([0097]). Attachment of a device and/or fastener to the tire in the manner described above, wherein a cavity is oriented within, or on an inner surface of, the tire, which is engaged by a protrusion extending from the fastener, eliminates many of the forces, strains, deformations, and the like found in the lamination between prior art devices and the tire interior surface when those devices are used ([0098]). In other words, Wei discloses a structure for attaching a sensor unit to a tire inner surface that eliminates the need to use adhesive, and further teaches away from directly attaching the sensor unit to the tire via an adhesive for its undesirable effects. Furthermore, Wei displays information for where to attach a sensor unit in the form of the protrusion and cavity indicating where to attach the sensor unit. Accordingly, Wei does not disclose a sensor attachment location that is discrete and spaced apart from the information display unit, nor does it disclose the information display unit comprising one or more of the alphanumerics or the numerals. One of ordinary skill in the art before the effective filing date of the claimed invention would not have found it obvious to modify the prior art contrary to its express disclosure, especially without any teaching or motivation to do so.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-4, 8-12, 14-15, and 19-22 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE (née AYALP) whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KATELYN SMITH (née WHATLEY) 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. The fax phone number for the examiner is (571) 273-5031.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749