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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/23/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-9, and 11-17 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.
Claim 1 requires the sensor unit having a non-annular shape which is new matter. There is no literal antecedent basis for this feature in the original specification and FIG. 4 fails to illustrate a sensor unit having a non-annular shape. In FIG. 4, reference character 20 represents the sensor unit and it illustrates an annular shape. The remaining claims are rejected because they are dependent claims of rejected claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-9, and 11-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 requires the sensor unit having a non-annular shape. It is unclear what shapes for the sensor unit are considered to be “non-annular shape” and what shapes are excluded by “non-annular shape” as the instant application is absent of what “non-annular shape” means in the instant application.
Claim 1 require an annular smooth surface formed in a center in a tire width direction on the tire inner surface and extending in a tire circumferential direction. The term “smooth” is a relative term which renders the claim indefinite. The term “smooth” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claimed invention as currently drafted appears to read on the entire inner surface of the tire having “an annular smooth surface” such that there necessarily is a region in a center of a tire width direction on the tire inner surface and extending in a tire circumferential direction having a “smooth surface”. What are the structural requirements of “an annular smooth surface” in claim 1 ?
The remaining claims are rejected as they are dependent claims of rejected claim 1.
Prior Art of Record
JP 2006-035488 discloses “it is preferable to use a highly smooth bladder having a surface unevenness difference of 0.5 mm or less, whereby a product tire having a further improved inner surface appearance and no vulcanization failure can be obtained” (page 4 of machine translation).
Response to Arguments
Applicant's arguments filed 02/23/2026 have been fully considered but they are not persuasive.
On page 6 of the arguments, Applicant argues “The Board has misstated what was argued and has not established that the Lettieri and Koch combination discloses or suggests to create one portion of the liner thinner than another portion”.
In response, Applicant is incorrect. On page 6 of the Patent Board Decision dated 12/22/2025, the Board disagreed with Appellant’s contention that Lettieri does not actually described that any liner material is removed. The Board cited paragraph 27 of Lettieri which discusses removing the remaining layer of charred rubber. The Board agreed with the Examiner’s finding that the tire of Lettieri necessarily has a thickness of the inner liner at the targeted tire surface less than the thickness of the inner liner at a region other than the fixing region.
On page 6 of the arguments, Applicant argues charred and burned rubber from lasering is clearly different from rubber that is simply cut or from rubber that is not processed at all. Cuts in rubber create a different structure than rubber that is not cut.
In response, this argument is unpersuasive because Lettieri et al. teaches using a laser to burn away the surface of rubber containing the release agent, followed by buffing the surface to remove the charred rubber layer left behind ([0027]). Buffing and grinding is the same cutting procedure of the instant application; thus, the final surface of Lettieri et al. upon removal would be the same structural surface as the instant application.
On page 6 of the arguments, the Applicant refers to The Reply Brief that states Lettieri discloses to remove the release agent by laser burning the release agent rubber.
In response, Applicant statement that Lettieri et al. disclose to remove the release agent rubber is incorrect. Lettieri does not disclose a release agent rubber. [0027] of Lettieri et al. states the surface of the liner may be exposed to a laser beam 64 with sufficient intensity to burn away the surface of rubber containing the release agent. The surface of rubber containing the release agent is the surface of the inner liner because the release is applied to the surface of the inner liner [0023], [0025].
On page 7 of the arguments, Applicant disagrees with the Decision because “the thinned portion of the liner for which Koch is cited is only present because of the method”.
In response, this argument is unpersuasive. One of ordinary skill in the art would have no difficulty to arriving at the configuration of affixing a monitoring device within a recess of the innerliner shown by Koch et al. by grinding the inner liner taught by Lettieri to satisfy the claimed limitation: a thickness Wa of the innerliner in the fixing region for the sensor unit ranges from 15% to 95% of a thickness Wb of the innerliner in a region other than the fixing region for the sensor unit.
On page 7 of the arguments, Applicant argues even in a combination of Koch, the liner is not thinner at one position than another.
In response, Applicant is incorrect. See annotated image below.
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On pages 7-8 of the arguments, Applicant states “it is irrelevant to the motivation for the combination if Koch teaches a thickness relationship or affixing a device within a recess because the motivation is to avoid contact which is already present in Lettieri and which is completely unchanged by the combination”.
In response, the Examiner respectfully disagrees with Applicant’s statement. Lettieri et al. does not teach “a thickness Wa of the innerliner in the fixing region for the sensor unit ranges from 15% to 95% of a thickness Wb of the innerliner in a region other than the fixing region for the sensor unit”. However, Koch et al. reasonably teaches this claimed feature, see FIG. 8 of Koch et al. It would have been obvious to place the monitoring device/sensor such that “a thickness Wa of the inner liner in the fixing region for the sensor unit ranges from 15% to 95% of a thickness Wb of the innerliner in a region other than the fixing region for the sensor unit” to obtain the benefits of maintaining the integrity of the monitoring device/sensor and structure of the body ply as disclosed by Koch et al. Koch et al. and Lettieri both are directed to providing an monitoring device/sensor on the interior surface of the tire which makes them relevant prior art and appropriate for combination.
On page 8 of the arguments, Applicant states “Lettieri already contemplates the feature of Koch in using a material to shield the liner from the release agent to avoid the need for lasering/buffing/etc. further confirming non-obviousness of the combination--particularly in view of Lettieri already not allowing for contact between the device and the carcass”.
In response, Applicant’s statement is irrelevant to whether it is obvious to provide the tire of Lettieri with a thickness Wa of the inner liner in the fixing region for the sensor unit 15%-95% of a thickness Wb of the innerliner in a region other than the fixing region of the sensor unit. It remains obvious to one of ordinary skill in the art would to provide said claim limitation to the tire of Lettieri because FIG. 8 of Koch et al. teaches the claimed thickness relationship for the benefits of maintaining the integrity of the monitoring device/sensor and the structure of the body ply.
On page 8 of argument, Applicant argues “the Examiner stated that the innerliner contains the release agent and thus must be removed but the examiner also states that claim 1 is obvious in claiming a sensor unit fixed to an innerliner. Since the Examiner asserts that the liner is removed to remove the release agent, claim 1 cannot be satisfied”.
In response, Applicant mischaracterizes the teaching of Lettieri et al. Lettieri et al. teaches removing the release agent and grinding off a part of the surface of the inner liner, and placing an monitoring device in that position.
The remaining arguments are moot in view of the new grounds of rejection applied in this rejection. No claims allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENDRA LY whose telephone number is (571)270-7060. The examiner can normally be reached Monday-Friday, 8:00-5:00PM.
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/KENDRA LY/Primary Examiner, Art Unit 1749