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 .
Election/Restrictions
Claims 21-30 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 12, 2023.
Applicant’s election of Group I including the added first alternative in the reply filed on July 23, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 16-20 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. This is a new matter rejection.
In claim 16 lines 13-14 and 19 there is no support in the original disclosure for the oriented fibers parallel to each other in any one composite layer to have a plurality of different angles to the circumferential direction less than or equal to 10° (inner composite layer) or greater than 10° (outer composite layer) (delete the added “or angles”).
In claim 16 lines 26-28 applicant now recites that there is more than one inner composite layer and “fibers” of one of the inner composite layers make “an angle” with the circumferential direction different than “an angle” that “fibers” of another of the inner composite layers make with the circumferential direction, however this is supported by the original disclosure only when the angle of the oriented fibers of one of the inner composite layers with the circumferential direction is different than the angle of the oriented fibers of another of the inner composite layers with the circumferential direction (original specification paragraph 025).
In claim 16 lines 29-31 applicant now recites that there is more than one outer composite layer on each side of the inner composite layer or layers (m is the number of outer composite layers on each side of the inner composite layer or layers) and “fibers” of one of the outer composite layers make “an angle” with the circumferential direction different than “an angle” that “fibers” of another of the outer composite layers make with the circumferential direction, however this is supported by the original disclosure only when on each side of the inner composite layer or layers the angle of the oriented fibers of one of the outer composite layers with the circumferential direction is different than the angle of the oriented fibers of another of the outer composite layers with the circumferential direction (original specification paragraph 025).
In claim 16 lines 31-33 applicant now recites that “fibers” of an inner composite layer make “an angle” with the circumferential direction different than “an angle” that “fibers” of an outer composite layer make with the circumferential direction, however this is supported by the original disclosure only when the angle of the oriented fibers of one of the inner composite layer or layers with the circumferential direction is less than or equal to 10° and the angle of the oriented fibers of one of the outer composite layers with the circumferential direction is greater than 10° (original specification paragraph 015) (which already requires the inner and outer angles to be different, making this alternative redundant once amended to be supported by the original disclosure).
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 16-20 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.
In claim 16 line 4, to provide proper antecedent basis, applicant should change “radially toward an outside of the tire” back to -- radially toward the outside of the tire -- (“radially toward an outside of the tire” previously recited in line 2).
In claim 16 lines 13-14 and 19 the added language is contradictory because the oriented fibers parallel to each other in any one composite layer cannot have a plurality of different angles to the circumferential direction less than or equal to 10° (inner composite layer) or greater than 10° (outer composite layer) (delete the added “or angles”).
In claim 16 lines 26-33 it is not clear if the recited “fibers” and “angle” are the oriented fibers parallel to each other, with the specified angle, recited earlier in the claim (see paragraph 5 above). One way to overcome this rejection would be to recite that the angle of the oriented fibers of one of the inner composite layers with the circumferential direction is different than the angle of the oriented fibers of another of the inner composite layers with the circumferential direction in lines 26-28, recite that on each side of the inner composite layer or layers the angle of the oriented fibers of one of the outer composite layers with the circumferential direction is different than the angle of the oriented fibers of another of the outer composite layers with the circumferential direction in lines 29-31, and delete the superfluous third alternative (angles already required to be different as discussed in paragraph 5 above).
Claims 16-20 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of alternatives 1, 2, and 3 added to claim 16 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the alternatives are not functionally equivalent with a common use because they are further limiting different parts of the reinforcing strip laminate structure (two inner composite layers vs. two outer composite layers vs. one of each).
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Specifically, one way to overcome this rejection would be to transfer the non-elected alternatives to new dependent claims, which would then be non-elected along with the other reinforcing strip structure dependent claims 21-30 as in the restriction requirement mailed April 11, 2023.
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) 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published PCT Application WO 2017/013575 A1 (equivalent to US Patent Application Publication 2018/0207987 A1), European Patent Application 2 781 370 A, Lee (4,688,615), and “Tire Cord”.
These references are combined for the same reasons as set forth in paragraph 7 of the Office action mailed February 27, 2025: contrary to applicant’s arguments, as noted in paragraphs 5 and 7 above the added third alternative is already met by the proposed combination because it meets the earlier limitations that the angle of the oriented fibers of the inner composite layer or layers with the circumferential direction is less than or equal to 10° and the angle of the oriented fibers of the outer composite layers with the circumferential direction is greater than 10°. One way to overcome this rejection would be to limit claim 16 to the elected first alternative.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,642,916 B2 in view of Tiemann (4,108,228), US Patent Application Publication 2003/0205306 A1, and Lee (4,688,615). See paragraph 9 of the Office action mailed February 27, 2025: the added second and third alternatives are met in the patented claims. One way to overcome this rejection would be to limit claim 16 to the elected first alternative.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ADRIENNE C. JOHNSTONE
Primary Examiner
Art Unit 1749
Adrienne Johnstone /ADRIENNE C. JOHNSTONE/ Primary Examiner, Art Unit 1749 November 20, 2025
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