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 .
Request to Withdraw Finality
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of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn. Accordingly, prosecution herein is reopened with respect to all pending claims.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 03/06/2026 is in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Withdrawal of Allowability
The indicated allowability of claims 21-22, 27, 33-35, 42-43, 49, 54, 56, 58-60, 64, 67-68, 71, 81, 83-88, 90, 97-100, 102-106, 109, and 111-137 is withdrawn in view of the newly submitted reference(s) to Wilson et al. Rejections based primarily on the newly cited reference(s) follow.
Objection – Claims
Claim 117 is objected to because of the following informalities: in line 2, “wirelessly” should presumably read –wireless-- (cf., claim 114).
Claim 126 is objected to because of the following informalities: the word “at” in line 1 appears superfluous and should be deleted (i.e., “wherein [[at]] the bluetooth element is configured …; cf., claim 123).
Appropriate correction of the aforementioned claims is required.
Claim Rejections – 35 U.S.C. 112
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 67-69, 71, 74, 107-108 and 110 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.
Regarding Claim 67, the claim provides the limitation to “the flexible article tire” in line 8. There is no proper and sufficient antecedent basis for this limitation in the claim. In this regard, note that claim 67 provides precedent only for “[a] flexible article” in line 1. Deletion of "tire" in claim 67 is suggested to address this aspect of the rejection.
Dependent claims 68-69, 71 and 74 inherit the indefiniteness ascribed to independent claim 67 above.
Regarding Claim 107, the reference to "[t]he assembly of claim 67" engenders confusion as to
the subject matter to which the parent claim is directed; namely, a flexible article comprising an
assembly, and not the assembly per se. Amending the claim by replacing "assembly" with --flexible
article-- (cf., claim 127) is suggested to address this aspect of the rejection.
Regarding Claim 108, the claim provides the limitation to "the second layer of flexible material"
in line 2. There is no proper and sufficient antecedent basis for this limitation in the claim, nor in parent
claim 81. In this regard, note that claim 81 provides precedent only for "a second layer of material" (cf.,
line 5). Deletion of "flexible" (second occurrence) in claim 108 is suggested to address this aspect of
the rejection.
Regarding Claim 110, the claim provides the limitations to "the first portion of flexible material"
and "the second portion of flexible material" in lines 1-2. There is no proper and sufficient antecedent
basis for either limitation in the claim, nor in parent claim 81. And while an amendment replacing
"portion" (both occurrences) with --layer-- and deleting "flexible" (second occurrence) would address
the antecedent basis issue, the resulting claim would be substantially duplicative of prior claim 108 in
violation of 37 CFR 1.75(b). Therefore, further amendment to claim 110 to avoid co-extensiveness with
claim 108, or, in the alternative, cancellation of one of claims 110 and 108, is required.
Claims 21-22, 27-35, 37, 41-43, 56, 64, 71, 81, 83-88, 90, 97, 99-100, 102-104, 108-120 and 130-137 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.
Regarding Claims 21, 33, 43, 56, 64, 71, 81, 99, 123 and 129; each claim contains the term “bluetooth,” which is a trademark as evidenced by Bluetooth® Brand Usage Guide (see especially pp. 4-8). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe wireless communication technology and, accordingly, the identification/description is indefinite.
Dependent claims 22, 27-32, 34-35, 37, 41-42, 83-88, 90, 97, 100, 102-104, 108-120 and 130-137 inherit the indefiniteness ascribed to claims 21, 33, 43, 81, and 99 above, as they incorporate by reference the aforementioned trademark as recited in each of the latter independent claims.
Claim Rejections – 35 U.S.C. 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 21-22, 27, 29, 30-31, 33-35, 42-43, 81, 83, 97, 99-100, 102-104, 109, 111-120 and 130-137 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson, et al (US 7009506 B2) (hereinafter, ‘Wilson’) in view of Chong, et al (WO 2015/194930 A1; relying on 06/19/2014 International Filing Date) (hereinafter, ‘Chong’).
At the outset, it is noted that each of the pending independent claims has been annotated below with reference notation solely for ease of discussion.
Regarding Claim 21, the claim is drawn to an assembly for attachment with a vulcanized rubber article, the assembly comprising:
1a) an outer layer of flexible material having a display indicia comprising at least one of a
symbol, logo, and shape used to provide at least one of identification, purpose, and function;
1b) an adhesive layer connected with the outer layer, wherein at least a portion of the outer
layer adjacent the adhesive layer comprises a material composition that absorbs shock from the
vulcanized rubber article and that includes one or more property of having elastomeric expansion and/or contraction properties compatible with the vulcanized rubber article, and mitigating migration of a material from the vulcanized rubber article is protective, and wherein the adhesive layer is capable of being bonded with a surface of a vulcanized rubber article;
1c) a formed cavity disposed in or on a portion of the assembly, the formed cavity having an opening that extends along a portion of an outer surface of the assembly for accessing the formed cavity from outside of the assembly; and
1d) an object or element within the formed cavity, wherein at least a portion of the object or element is visible from outside of the assembly, wherein the formed cavity is in at least part of the outer layer and is constructed to accommodate the object or element without causing damage to the object or element during use of the vulcanized rubber article, wherein the object or element comprises a functional device, and wherein the functional device comprises an electrical element having bluetooth functionality.
As to the claim preamble, Wilson discloses an electronic monitoring device and patch assembly (see, Title). The patch assembly includes a rubber patch with an attached dual cure bonding layer (col. 3, ll. 35-42; col. 4, ll. 1-10 and Fig. 1). The patch assembly disclosed therein is the claimed “assembly”. Wilson in Figure 2 depicts a patch assembly “assembled to the innerliner 75 of tire 71” (col. 4, ll. 26-27). Wilson further discloses a preferred embodiment wherein, “the rubber patch is vulcanized and then assembled to the vulcanized tire” (col. 3, ll. 42-44). Thus, Wilson discloses “[a]n assembly for attachment with a vulcanized rubber article” as recited in the preamble.
As to limitation 1a), the rubber patch 10 of the patch assembly 60 of Wilson (see, Fig. 1) is the outer layer of the assembly and may be a rubber selected from EPDM rubber, butyl rubber, natural rubber, neoprene and mixtures thereof (col. 3, ll. 49-52). The present specification confirms that useful material for forming the display layer of the claimed assembly include, inter alia, vulcanized rubber, natural rubber, SBR, nitrile rubber, neoprene rubber (see para [0026] of as-filed specification). Given the extensive overlap in mutually disclosed rubber materials, Wilson is considered to disclose an “outer layer” that is intrinsically a “flexible material” as claimed. In addition, Wilson discloses various embodiments in which the rubber patch is configured with particular design features, such as slots 144 and rings 146 configured to receive the tabs 132 on a monitoring device 130 (see, Fig. 9). Such disclosed features are considered to fall within the ambit of “display indicia comprising at least one of a … shape used to provide at least one of … purpose and function” as claimed. All of the patch embodiments disclosed in Wilson are functionally equivalent and intended to be configured and attached to a tire in the same manner as patch 10 described for Figure 1 of Wilson. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in implementing any of the describes patches as part of Wilson’s patch assembly. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of effective filing to incorporate the features of Wilson Figure 9 into the base patch assembly embodiment described in Figures 1 and 2 of Wilson.
As to limitation 1b), Wilson discloses that the patch assembly 60 comprises a dual cure bonding layer 20 that is affixed to the second side 18 of the vulcanized tire patch (col. 4, ll. 1-6 and Fig. 1). Wilson further discloses that the dual cure bonding layer may be any material which can be activated and cured to the vulcanized rubber of the tire innerliner and the vulcanized patch, but “[p]referably … is natural rubber” (col. 4, ll. 16-20). Natural rubber is the same material disclosed by the Applicant as useful for forming the intermediate or barrier layer capable of acting as a barrier to minimize or prevent the migration of any unwanted constituents of the adhesive layer and/or the vulcanized rubber article (cf., para [0028] of as-filed specification). Wilson further discloses that the patch assembly is assembled to the inner liner of a tire by applying activating cement to the second side 22 of the dual cure bonding layer 20, stitching the patch assembly onto the innerliner of the tire, and allowing the patch assembly/tire assembly “to cure for a sufficient time and temperature to form a strong bond between the tire and the tire patch” (col. 4, ll. 26-32). Thus, the dual cure bonding layer 20 in Wilson is the claimed “adhesive layer … wherein the adhesive layer is capable of being bonded with a surface of a vulcanized rubber article”.
As to limitation 1c), Wilson discloses a formed cavity disposed in or on a portion of the assembly, the formed cavity having an opening that extends along a portion of an outer surface of the assembly for accessing the formed cavity from outside of the assembly (col. 3, ll. 36-41 and Fig. 1: cavity 16; and col. 7, ll. 15-18, 53-55 and Figs. 12-13: cavity 210).
As to limitation 1d), Wilson discloses embodiments in which a tag assembly comprising an electronic monitoring device is configured to fit within the contour of the cavity, e.g., cavity 16 (col. 5, ll. 7-11). As illustrated in various figures of Wilson (e.g., Figs. 1, 6, 11, 15 and 19), the formed cavity is formed in at least part of the outer layer and is constructed to accommodate the object or element without causing damage to the object or element during use of the vulcanized rubber article.
Further as to limitation 1b), although Wilson is silent as to claimed properties of the “material composition” of the adhesive layer (i.e., “elastomeric expansion and/or contraction properties compatible with the vulcanized rubber article, and mitigating migration of a material from the vulcanized rubber article is protective …”; see claim 21), Wilson indicates preference for the same rubber material identified herein as suitable for forming said composition as discussed above. Therefore, the claimed properties are reasonably presumed to implicitly result from implementation of natural rubber as the dual cure bonding layer of the assembly of Wilson. Where, as here, the prior art teaches the identical chemical composition as claimed, the properties applicants disclose and/or claim are necessarily present therein. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Further as to limitation 1d), it is acknowledged that Wilson does not disclose the claimed feature “wherein the functional comprises an electrical element having bluetooth functionality”. However, in the same technical field, Chong describes an invention that relates to a wireless tire monitoring system, more particularly to a wireless tire pressure and temperature monitoring system for a vehicle (p. 1, ll. 4-5). As broadly disclosed, the wireless tire monitoring system includes: a) at least one sensor unit disposed at each tire of the vehicle for measuring at least one parameter relating to the condition of the tire; a mobile communication unit in communication with either the sensor unit or in-car unit; and an internet cloud for storing all information relating to encryption key, user information/identities, or the parameters concerning to the condition of the tire measured by the sensor unit (p. 4, ll. 4-9). In a preferred embodiment, the mobile communication unit is wirelessly in communication with either the sensor or the in-car unit (p. 4, ll. 11-15). With respect to the sensor unit, Chong teaches a preferred exemplary where the sensor unit includes a Bluetooth chip with pairing capability, and the sensor unit is preferably battery powered and also provided with Bluetooth antenna (p. 5, ll. 22-25). Chung further teaches that the sensor unit may be disposed inside the tire or at a valve stem of the tire and is enabled to provide a reading or parameter relating to, e.g., tire pressure, temperature, wheel speed, acceleration and/or distance information of the vehicle (p. 8, ll. 20-25).
At the time of effective filing, it would have been obvious to one of ordinary skill in the art to modify the patch assembly of Wilson by utilizing as the electronic monitoring device, a sensor unit having Bluetooth functionality as part of a wireless communication system as taught by Chong. The motivation to do so and a reasonable expectation of success comes from the predictable facilitation of transmission of operational parameters of a tire to a remote location, such as a maintenance facility.
Regarding Claim 22, the rubber patch 10 of the patch assembly 60 of Wilson (see, Fig. 1), which is the outer layer of the claimed assembly, may be a rubber selected from EPDM rubber, butyl rubber, natural rubber, neoprene and mixtures thereof (col. 3, ll. 49-52). All of the disclosed rubber types are well-known “elastomeric material[s]” as claimed.
Regarding Claim 27, Wilson in view of Chong renders obvious the assembly as recited in claim 21. Wilson further discloses wherein the vulcanized rubber article is a vehicle tire (e.g., large truck tire as per col. 1, ll. 37-40) and the assembly is configured for attachment with a surface of the vehicle tire; in particular, a surface of a vulcanized tire innerliner (col. 4, ll. 26-27 and Fig. 2).
Regarding Claim 29, Wilson in view of Chong renders obvious the assembly as recited in claim 21. Wilson further discloses the assembly comprising an intermediate layer interposed between the outer layer and the adhesive layer. That is, Wilson teaches to apply a non-curing cement to the second side 18 (opposite outer side 12) of the vulcanized rubber patch in order to hold the dual cure bonding layer 20 onto the patch (col. 4, ll. 8-10). So-applying the non-curing cement would provide an additional layer interposed between the second side 18 of the rubber patch 10 (taken as “the outer layer”) and the dual cure bonding layer 20 (taken as “the adhesive layer”).
Regarding Claims 30/31, Wilson in view of Chong renders obvious the assembly as recited in claim 21. Wilson further discloses an embodiment in which the electronic monitoring device 34 is encapsulated in a potting material 40 which solidifies into a rigid tag material as shown in Fig. 3 of Wilson (col. 4, ll. 39-41). As two preferred potting materials, Wilson identifies epoxy and urethane (col. 4, ll. 56-57). In a preferred embodiment, a battery 68 is attached to the tag to form a tag assembly 70 (col. 4, ll. 65-67). Wilson teaches that the tag assembly 70 may be of any configuration which allows it to fit within the cavity 16 as shown in Fig. 6 (col. 5, ll. 7-11). Once fitted within the cavity, it is considered that the potting material provides an outer layer disposed over the rubber patch 10 (taken as “the outer layer”) opposite the dual cure bonding layer 20 (taken as “the adhesive layer”), and that the potting material layer is a material composition that is not identical to the rubber patch 10 (taken as “the outer layer flexible material”) in at least one characteristic; specifically, composition (e.g., epoxy vs. rubber patch material) and rigidity [for claim 30]. In addition, by forming a rigid material encapsulating the electronic monitoring device 34 as shown in Figure 3 of Wilson, one of ordinary skill in the art would understand and recognize that the potting material necessarily serves as a “protective layer” surrounding that device [for claim 31].
Regarding Claim 102, Wilson in view of Chong renders obvious the assembly as recited in claim 21. Wilson further teaches, in describing the embodiments illustrated in Figures 11-13 and 16-17, that the proper alignment of the monitoring device (204, 304) within the cavity is important in terms of better functioning of the device’s antenna (218, 307), as well as several other considerations as detailed at column 7, line 59 to column 8, line 61. Wilson thus recognizes the positioning of the formed cavity is a result-effective parameter affecting performance and functioning of the monitoring device placed within the cavity. Accordingly, those of ordinary skill in the art would have been led to ascertain, via routine experimentation, the optimum position of the formed cavity in the patch assembly of Wilson depending on the particular monitoring device (i.e., claimed “element or object”) placed within the cavity and an intended purpose and/or function thereof. Discovery of an optimum value for an art-recognized result effective variable is ordinarily within the skill of the art, In re Boesch, 205 USPQ 215, 219 (CCPA 1980). The subject matter of claim 102 is therefore held to have been prima facie obvious to one of ordinary skill in the art given the teachings of Wilson taken in view of Chong.
Regarding Claim 112, Wilson in view of Chong renders obvious the assembly as recited in claim 21. Chong further teaches a wireless tire monitoring system (100) wherein the wireless communication between the mobile communication unit (400) and the internet cloud (500) may be by way of WiFi, near filed communication (NFC) or any other wireless or Radio Frequency (RF) connection (p. 10, ll. 15-19; emphasis added). Chung’s teaching thus generically encompasses common RFID elements such as Bluetooth RFID readers, as would be recognized by those of ordinary skill in the art. To further modify the patch assembly of Wilson by utilizing as the electronic monitoring device, a sensor unit having Bluetooth functionality interfaced with an RFID element as part of a wireless communication system as suggested by Chong would have been obvious to one of ordinary skill in the art, as such modification merely involves the straightforward use of a known element (RFID) to perform its previously established function (enhancing wireless connectivity). Indeed, the selection of a known element/material based on its suitability for its intended use has been held to be prima facie obvious (see MPEP § 2144.07).
Regarding Claim 113, Wilson in view of Chong renders obvious the assembly as recited in claim 112. When adapting the patch assembly of Wilson to incorporate the wireless tire monitoring system of Chung comprising a RFID element, it would have been obvious to one of ordinary skill in the art to configure the element to enable wireless control by a separate component, since Chung explicitly teaches adapting various types of such components (e.g., cellular or mobile phone) for monitoring, observing and/or controlling wireless communication between the mobile communication unit (400) and the sensor unit(s) (200) (p. 9, ll. 3-10).
Regarding Claim 114, Wilson in view of Chong renders obvious the assembly as recited in claim 21. Chong further teaches wherein the Bluetooth element is configured to enable wireless control by a separate component, i.e., mobile communication unit (400) (p. 9, ll. 20-22).
Regarding Claim 33, the claim is drawn to a method for attaching an assembly to a surface of a vulcanized rubber comprising the steps of;
2a) placing the assembly into contact with a surface of the vulcanized rubber article, wherein
the assembly comprises an outer layer of flexible material that is connected with an adhesive
layer interposed between the surface and the assembly, and wherein the outer layer has a display
indicia comprising at least one of a symbol, logo, and shape used to provide at least one of
identification, purpose, and function, wherein the outer layer comprises a material composition at
least adjacent the adhesive layer that absorbs shock from the vulcanized rubber article and that
includes one or more property of having elastomeric expansion and/or contraction properties compatible with the vulcanized rubber article, and mitigating migration of a material from the
vulcanized rubber article, wherein the assembly comprises a formed cavity disposed in or on a
portion of the assembly, the formed cavity having an opening that extends along a portion of an
outer surface of the outer layer for accessing the formed cavity from outside of the assembly;
2b) bonding the assembly to the vulcanized rubber article; and
2c) placing an object or element in the formed cavity before or after the step of bonding,
wherein at least a portion of the object or element is visible from outside of the assembly,
wherein the object or element comprises a functional device, and wherein the functional device
comprises an electrical element having bluetooth functionality.
As to the claim preamble, Wilson discloses that "the rubber patch is vulcanized and then
assembled to the vulcanized tire" (col. 3, ll. 42-44). Wilson discloses that the vulcanized rubber patch is assembled to the vulcanized tire after the vulcanized patch is formed into a "patch assembly," wherein a dual cure bonding layer is affixed onto the patch (col. 4, ll. 1-8). Wilson further discloses that after the "patch assembly 60" has been constructed, it "is then assembled to the innerliner 75 of a tire 71" (col. 4, ll. 26-27) using an "[a]ctivating cement [that] is first applied to the second side of dual cure bonding layer 20" and the patch is "stitched to the inner liner of the vulcanized tire and the patch assembly/tire assembly is allowed to cure for a sufficient time and temperature to form a strong bond between the tire and the patch assembly" (col. 4, ll. 26-32). Accordingly, Wilson discloses “a method for attaching an assembly to a surface of a vulcanized rubber” as recited in the preamble.
As to limitation 2a), Wilson discloses placing the patch assembly into contact with a surface of the vulcanized rubber article (col. 4, ll. 26-27). The outer layer of the patch assembly is considered an intrinsically “flexible material” as claimed, based on the reasoning set out above in regards to the corresponding feature of claim 21. Further, the rubber patch in Wilson may be configured with particular design features, such as slots 144 and rings 146 configured to receive the tabs 132 on a monitoring device 130 (see, Fig. 9). Such disclosed features are considered to fall within the ambit of “display indicia comprising at least one of a … shape used to provide at least one of … purpose and function” as claimed. All of the patch embodiments disclosed in Wilson are functionally equivalent and intended to be configured and attached to a tire in the same manner as patch 10 described for Figure 1 of Wilson. It would have been obvious to one of ordinary skill in the art at the time of effective filing to incorporate the features of Wilson Figure 9 into the base patch assembly embodiment described in Figures 1 and 2 of Wilson, based on the reasoning set out above in regards to the corresponding feature of claim 21. In addition, as to the claimed material composition at least adjacent the adhesive layer, Wilson discloses that the rubber material of its patch assembly may be a rubber selected from EPDM rubber, butyl rubber, natural rubber, neoprene and mixtures thereof (col. 3, ll. 49-52). In view of the physical and chemical nature of the disclosed rubbers, those of ordinary skill would have understood that the rubber material of Wilson's rubber patch would necessarily impede (to at least some degree) the free flow of materials within Wilson's patch assembly and thereby impair the migration of such
materials when the patch is bonded to a vulcanized tire. Similarly, the rubber patch material would also necessarily serve to impede the flow of liquids within the patch assembly at least by acting as a diffusion barrier, such that it would impair the migration of chemical constituents that may be present in the tire or dual cure bonding layer from reaching outer surface 12 of the patch assembly. Wilson further discloses that a formed cavity is disposed in or on a portion of the assembly, the formed cavity having an opening that extends along a portion of an outer surface of the assembly for accessing the formed cavity from outside of the assembly (col. 3, ll. 36-41 and Fig. 1: cavity 16; and col. 7, ll. 15-18, 53-55 and Figs. 12-13: cavity 210).
As to limitation 2b), Wilson discloses claimed step of bonding the assembly to the vulcanized rubber article (col. 4, ll. 26-32).
As to limitation 2c), Wilson discloses claimed step of placing an object or element in the formed cavity before or after the step of bonding (col. 5, ll. 13-16), wherein at least a portion of the object or element is visible from outside of the assembly (Fig. 18 depicts antenna 307 of tag assembly 308 as visible from outside of assembly 202), wherein the object or element comprises a functional device, and wherein the functional device comprises an electrical element (e.g., electrical monitoring device, see col. 4, ll. 38-44).
Further as to limitation 2c), it is acknowledged that Wilson does not disclose the claimed feature “wherein the functional comprises an electrical element having bluetooth functionality”. However, for the same reasoning set out above with respect to the corresponding feature of claim 22, it would have been obvious to one of ordinary skill in the art to modify the method of Wilson by utilizing as the electronic monitoring device of the disclosed patch assembly, a sensor unit having Bluetooth functionality as part of a wireless communication system as taught by Chong. The motivation to do so and a reasonable expectation of success comes from the predictable facilitation of transmission of operational parameters of a tire to a remote location, such as a maintenance facility.
Regarding Claims 34-35, Wilson in view of Chong renders obvious the method as recited in claim 33 as discussed above. Wilson further discloses wherein after the step of placing the assembly, the assembly is bonded to the contact surface of the vulcanized rubber article, and wherein during or after placing the assembly at least one of heat [for claim 35], pressure [for claim 34], or time is used to strengthen the bond (col. 4, ll. 29-37: vulcanized tire and the patch assembly/tire assembly is allowed to cure for a sufficient time and temperature to form a strong bond between the tire and the patch assembly. To ensure a strong bond, the patch assembly optionally may be clamped to the tire innerliner 75 (thereby creating pressure), until the curing cycle is completed).
Regarding Claim 42, Wilson in view of Chong renders obvious the method as recited in claim 33 as discussed above. Wilson further discloses an “intermediate layer (formed by applying non-curing cement to side 18 of the patch to hold the dual cure bonding layer 20 onto the patch, col. 4, ll. 8-10) interposed between the outer layer (rubber patch 10) and the adhesive layer (dual cure bonding layer 20)” as claimed.
Regarding Claim 97, Wilson in view of Chong renders obvious the method of claim 33 as discussed above. Wilson further discloses that after the "patch assembly 60" has been constructed, it "is then assembled to the innerliner 75 of a tire 71" (col. 4, ll. 26-27) using an "[a]ctivating cement [that] is first applied to the second side of dual cure bonding layer 20" and the patch is "stitched to the inner liner of the vulcanized tire and the patch assembly/tire assembly is allowed to cure for a sufficient time and temperature to form a strong bond between the tire and the patch assembly" (col. 4, ll. 26-32). Accordingly, Wilson discloses “prior to the step of placing, applying an adhesive material [activating cement] to at least one of the assembly or the surface of the vulcanized rubber article,” as claimed.
Regarding Claim 103, Wilson in view of Chong renders obvious the method of claim 33 as discussed above. Further, Wilson’s teachings (see col. 7, line 59 to col. 8, line 61) render obvious the subject matter of claim 103 for the same reasons discussed above with respect to corresponding subject matter of claim 102.
Regarding Claim 115, Wilson in view of Chong renders obvious the method as recited in claim 33 as discussed above. Further, Chong’s teachings (see p. 10, ll. 15-19) render obvious the subject matter of claim 115 for the same reasons discussed above with respect to corresponding subject matter of claim 112.
Regarding Claim 116, Wilson in view of Chong renders obvious the method as recited in claim 115. Further, Chong’s teachings (see p. 9, ll. 3-10) render obvious the subject matter of claim 116 for the same reasons discussed above with respect to corresponding subject matter of claim 113.
Regarding Claim 117, Wilson in view of Chong renders obvious the method as recited in claim 33. Further, Chong’s teachings (see p. 9, ll. 20-22) render obvious the subject matter of claim 117 for the same reasons discussed above with respect to corresponding subject matter of claim 114.
Regarding Claim 43, the claim is drawn to a vulcanized rubber tire comprising:
3a) a target surface disposed along a portion of the vulcanized rubber tire article; and
3b) an assembly bonded to the target surface and comprising:
an outer layer of flexible material having a display indicia comprising at least one of a symbol,
logo, and shape used to provide at least one of identification, purpose, and function; and
an adhesive layer interposed between the outer layer and the target surface, wherein at least a
portion of the outer layer adjacent the adhesive layer comprises a material composition that
absorbs shock from the vulcanized rubber tire and that includes one or more property of having
elastomeric expansion and/or contraction properties compatible with the vulcanized rubber tire,
and mitigating migration of a material from the vulcanized rubber tire, wherein the adhesive
layer is capable of being attached to the target surface of the vulcanized rubber article;
3c) a formed cavity disposed in or on a portion of the assembly, the formed cavity having an
opening that extends along a portion of an outer surface of the outer layer for accessing the
formed cavity from outside of the assembly; and
3d) an object or element within the formed cavity, wherein at least a portion of the object or
element is visible from outside of the assembly, wherein the object or element comprises a
functional device, and wherein the functional device comprises an electrical element having
bluetooth functionality.
As to the claim preamble, Wilson discloses the subject matter of the preamble for the same reasons discussed above for the preamble of claim 22.
As to limitation 3a), Wilson discloses that the "patch assembly" is "assembled to the innerliner 74 of the tire 71" (col. 4, ll. 26-28). Thus, Wilson identifies a surface of the vulcanized rubber article as the surface of the innerliner of the vulcanized tire. Between applying the activating cement and stitching the patch assembly to the inner liner, a location on the surface of the innerliner must be identified, hence “targeted,” for attachment/bonding of the patch assembly of Wilson.
As to limitation 3b), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding features of claim 33 (i.e., limitation 2a).
At to limitation 3c), Wilson further discloses that a formed cavity is disposed in or on a portion of the assembly, the formed cavity having an opening that extends along a portion of an outer surface of the assembly for accessing the formed cavity from outside of the assembly (col. 3, ll. 36-41 and Fig. 1: cavity 16; and col. 7, ll. 15-18, 53-55 and Figs. 12-13: cavity 210).
As to limitation 3d), Wilson discloses an object or element within the formed cavity (col. 5, ll. 13-16), wherein at least a portion of the object or element is visible from outside of the assembly (Fig. 18 depicts antenna 307 of tag assembly 308 as visible from outside of assembly 202), wherein the object or element comprises a functional device, and wherein the functional device comprises an electrical element (e.g., electrical monitoring device, see col. 4, ll. 38-44).
Further as to limitation 3d), it is acknowledged that Wilson does not disclose the claimed feature “wherein the functional comprises an electrical element having bluetooth functionality”. However, for the same reasoning set out above with respect to the corresponding feature of claim 22, it would have been obvious to one of ordinary skill in the art to modify the method of Wilson by utilizing as the electronic monitoring device of the disclosed patch assembly, a sensor unit having Bluetooth functionality as part of a wireless communication system as taught by Chong. The motivation to do so and a reasonable expectation of success comes from the predictable facilitation of transmission of operational parameters of a tire to a remote location, such as a maintenance facility.
Regarding Claim 104, Wilson in view of Chong renders obvious the vulcanized rubber tire of claim 43 as discussed above. Further, Wilson’s teachings (see col. 7, line 59 to col. 8, line 61) render obvious the subject matter of claim 104 for the same reasons discussed above with respect to corresponding subject matter of claim 102.
Regarding Claim 118, Wilson in view of Chong renders obvious the vulcanized rubber tire as recited in claim 43. Further, Chong’s teachings (see p. 10, ll. 15-19) render obvious the subject matter of claim 118 for the same reasons discussed above with respect to corresponding subject matter of claim 112.
Regarding Claim 119, Wilson in view of Chong renders obvious the vulcanized rubber tire as recited in claim 118. Further, Chong’s teachings (see p. 9, ll. 3-10) render obvious the subject matter of claim 119 for the same reasons discussed above with respect to corresponding subject matter of claim 113.
Regarding Claims 120 and 136, Wilson in view of Chong renders obvious the vulcanized rubber tire as recited in claims 43 and 104, respectively. Further, Chong’s teachings (see p. 9, ll. 20-22) render obvious the subject matters of claims 120 and 136 for the same reasons discussed above with respect to corresponding subject matter of claim 114.
Regarding Claim 81, the claim is drawn to an assembly for attachment with a vulcanized rubber article, the assembly comprising:
4a) a first layer of flexible material having an outer surface and a formed cavity with an
opening that extends along a portion of the outer surface;
4b) a second layer of material connected with the first layer of flexible material opposite the
outer surface, wherein the second layer of material has a material construction not identical to the
first layer of flexible material in at least one characteristic, and wherein the second layer is
capable of being adhesively connected with a surface of the vulcanized rubber article; and
4c) an object or element within the formed cavity, wherein at least a portion of the object or
element is visible from outside of the assembly, wherein the object or element comprises a
functional device, and wherein the functional device comprises an electrical element having bluetooth functionality;
4d) wherein at least a portion of the first layer of flexible material adjacent the second layer
comprises a material composition that absorbs shock from the vulcanized rubber article and that
includes one or more property of having elastomeric expansion and/or contraction properties
compatible with the vulcanized rubber article, and mitigating migration of a material from the
vulcanized rubber article.
As to the claim preamble, Wilson discloses the subject matter of the preamble for the same reasons discussed above for the preamble of claim 22.
As to limitation 4a), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding features of claim 22 (i.e., limitations 1a)/1c)).
As to limitation 4b), Wilson discloses that the dual cure bonding layer 20 is affixed to the second side 18 of the patch 10, and is capable of being adhesively connected with a surface of the vulcanized rubber article (col. 4, ll. 1-3, 27-32). Wilson further discloses preferred embodiments where the dual cure bonding rubber is natural rubber and the patch 10 is a mixture of chlorobutyl rubber and natural rubber, or a mixture of SBR and natural rubber (col. 3, ll. 52-55). Following the disclosed preferences of Wilson, it would have been obvious to one of ordinary skill in the art to have selected natural rubber as the dual cure bonding rubber and a mixture of natural rubber and either chlorobutyl rubber or SBR as the patch rubber in Wilson, thereby resulting in a second layer of material (dual cure bonding layer 20) that has a material construction not identical to the first layer of flexible material (patch 10) in at least one characteristic; namely, composition of respective rubber materials.
As to limitation 4c), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding features of claim 43 (i.e., limitation 3d)), except for claimed feature “wherein the functional device comprises an electrical element having Bluetooth functionality”.
As to limitation 4d), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding “material composition” features of claim 33 (i.e., limitation 2a)).
Further as to limitation 4c), it is acknowledged that Wilson does not disclose the claimed feature “wherein the functional comprises an electrical element having bluetooth functionality”. However, for the same reasoning set out above with respect to the corresponding feature of claim 22, it would have been obvious to one of ordinary skill in the art to modify the patch assembly of Wilson by utilizing as the electronic monitoring device of the disclosed assembly, a sensor unit having Bluetooth functionality as part of a wireless communication system as taught by Chong. The motivation to do so and a reasonable expectation of success comes from the predictable facilitation of transmission of operational parameters of a tire to a remote location, such as a maintenance facility.
Regarding Claim 83, Wilson in view of Chong renders obvious the assembly as recited in claim 81. Wilson further discloses the assembly comprising at least one additional layer of flexible material is connected between the first layer of flexible material opposite the outer surface and the second layer of material. That is, Wilson teaches to apply a non-curing cement to the second side 18 (opposite outer side 12) of the vulcanized rubber patch in order to hold the dual cure bonding layer 20 onto the patch (col. 4, ll. 8-10). Given its non-curing nature, the cement is considered a “flexible material” as claimed. Further, so-applying the non-curing cement would provide an additional layer of flexible material connected between the second side 18 of the rubber patch 10 (taken as “the first layer”) and the dual cure bonding layer 20 (taken as “the second layer”).
Regarding Claim 109, Wilson in view of Chong renders obvious the assembly as recited in claim 81 as discussed above. Further, Wilson’s teachings (see col. 7, line 59 to col. 8, line 61) render obvious the subject matter of claim 109 for the same reasons discussed above with respect to corresponding subject matter of claim 102.
Regarding Claim 130, Wilson in view of Chong renders obvious the assembly as recited in claim 81. Further, Chong’s teachings (see p. 10, ll. 15-19) render obvious the subject matter of claim 130 for the same reasons discussed above with respect to corresponding subject matter of claim 112.
Regarding Claim 131, Wilson in view of Chong renders obvious the assembly as recited in claim 130. Further, Chong’s teachings (see p. 9, ll. 3-10) render obvious the subject matter of claim 131 for the same reasons discussed above with respect to corresponding subject matter of claim 113.
Regarding Claim 132, Wilson in view of Chong renders obvious the assembly as recited in claim 81. Further, Chong’s teachings (see p. 9, ll. 20-22) render obvious the subject matter of claim 132 for the same reasons discussed above with respect to corresponding subject matter of claim 114.
Regarding Claim 99, the claim is drawn to an assembly for attaching with a surface portion of a vulcanized rubber article, the assembly comprising:
5a) a first portion formed from a flexible material and having an outer surface that extends
along an outer portion of the assembly, the outer surface including a formed cavity having an
opening along the outer surface and outer portion of the assembly; and
5b) a second portion connected with the first portion opposite the outer surface, wherein the
second portion is formed from a material that is not identical to the first portion in at least one
characteristic; and
5c) an object or element within the formed cavity, wherein at least a portion of the object or
element is visible from outside of the assembly, wherein the object or element comprises a functional device, and wherein the functional device comprises an electrical element having bluetooth functionality;
5d) wherein at least part of the first portion adjacent the second portion comprises a material
composition that absorbs shock from the vulcanized rubber article and that includes one or more
property of having elastomeric expansion and/or contraction properties compatible with the
vulcanized rubber article, and mitigating migration of a material from the vulcanized rubber
article is protective to the assembly, and wherein the second portion is capable of being
connected with the surface portion of the vulcanized rubber article.
As to the claim preamble, Wilson discloses the subject matter of the preamble for the same reasons discussed above for the preamble of claim 22.
As to limitation 5a), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding features of claim 22 (i.e., limitations 1a)/1c)).
As to limitation 5b), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding features of claim 81 (i.e., limitation 4b)).
As to limitation 5c), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding features of claim 43 (i.e., limitation 3d)), except for claimed feature “wherein the functional device comprises an electrical element having bluetooth functionality”.
As to limitation 5d), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding “material composition” features of claim 33 (i.e., limitation 2a)).
Further as to limitation 5d), it is acknowledged that Wilson does not disclose the claimed feature “wherein the functional comprises an electrical element having bluetooth functionality”. However, for the same reasoning set out above with respect to the corresponding feature of claim 22, it would have been obvious to one of ordinary skill in the art to modify the of Wilson by utilizing as the electronic monitoring device of the disclosed patch assembly, a sensor unit having Bluetooth functionality as part of a wireless communication system as taught by Chong. The motivation to do so and a reasonable expectation of success comes from the predictable facilitation of transmission of operational parameters of a tire to a remote location, such as a maintenance facility.
Regarding Claim 100, Wilson in view of Chong renders obvious the assembly of claim 99 as discussed above. Wilson further discloses that after the "patch assembly 60" has been constructed, it "is then assembled to the innerliner 75 of a tire 71" (col. 4, ll. 26-27) using an "[a]ctivating cement [that] is first applied to the second side of dual cure bonding layer 20" and the patch is "stitched to the inner liner of the vulcanized tire and the patch assembly/tire assembly is allowed to cure for a sufficient time and temperature to form a strong bond between the tire and the patch assembly" (col. 4, ll. 26-32). Accordingly, Wilson discloses “the assembly … attached to the surface portion of the vulcanized rubber article (innerliner 75 of tire 71) by an adhesive material (activating cement) that is interposed between the assembly second portion (dual cure bonding layer 20) and the vulcanized rubber article (tire 71)” as claimed.
Regarding Claim 111, Wilson in view of Chong renders obvious the assembly of claim 99 as discussed above. Further, Wilson’s teachings (see col. 7, line 59 to col. 8, line 61) render obvious the subject matter of claim 111 for the same reasons discussed above with respect to corresponding subject matter of claim 102.
Regarding Claim 133, Wilson in view of Chong renders obvious the assembly as recited in claim 99. Further, Chong’s teachings (see p. 10, ll. 15-19) render obvious the subject matter of claim 133 for the same reasons discussed above with respect to corresponding subject matter of claim 112.
Regarding Claim 134, Wilson in view of Chong renders obvious the assembly as recited in claim 133. Further, Chong’s teachings (see p. 9, ll. 3-10) render obvious the subject matter of claim 134 for the same reasons discussed above with respect to corresponding subject matter of claim 113.
Regarding Claim 135, Wilson in view of Chong renders obvious the assembly as recited in claim 99. Further, Chong’s teachings (see p. 9, ll. 20-22) render obvious the subject matter of claim 135 for the same reasons discussed above with respect to corresponding subject matter of claim 114.
Regarding Claim 137, Wilson in view of Chong renders obvious an assembly as recited in claim 99. Added limitations are to an assembly where the vulcanized rubber i) is a vehicle tire and the assembly is bonded to the surface portion of the vehicle tire, ii) wherein the bluetooth element is configured to enable wireless control by a separate component, and iii) wherein the formed cavity is positioned depending on the particular element or object placed within the formed cavity and an intended purpose and/or function of such element or object, and/or a particular end-use application of the vehicle tire. Recited limitations i), ii) and iii) correspond respectively to the subject matters of claims 27, 114, and 102, discussed above, and their combination in the claimed assembly would have been prima facie obvious to one of ordinary skill in the art given their common purpose and with the expectation of obtaining an equivalent assembly displaying similar utility as an attachment to a surface portion of a vulcanized rubber article (viz., a cured tire). See MPEP 2144.06 (combining old or suggested elements taught by prior art to be useful for the same purpose to obtain a combination to be used for the very same purpose is prima facie obvious).
Claims 84-88 and 90 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson in view of Chong as applied to claim 81 above, and further in view of Rensel et al (US 6860303 B2) (hereinafter, ‘Rensel’).
Regarding Claims 84/85, Wilson in view of Chong renders obvious the assembly of claim 81 as discussed above. Neither reference directly discloses the claimed method comprising placing the assembly into contact with a surface of the vulcanized rubber article during a process of manufacturing at least a portion of the vulcanized rubber article. However, in the same technical field relating to a vulcanized rubber patch for attachment with a vulcanized rubber article (col. 1, ll. 20-23; Fig. 2), Rensel teaches a preferred embodiment in which the rubber patch is vulcanized and then assembled to the vulcanized tire (col. 3, ll. 52-53). Rensel further teaches the alternativeness between the rubber patch being assembled to the tire and vulcanized with the tire, or following vulcanization of the rubber patch, permanently assembling the patch to the innerliner of a vulcanized tire, with the latter being described as “much more practical” (col. 2, ll. 30-35). In light of this teaching of equivalency, it would have been obvious to one of ordinary skill to modify the method of Wilson by permanently assembling the patch assembly 60 to the innerliner of a vulcanized tire, thereby resulting in claimed step of “placing the assembly into contact with a surface of the vulcanized rubber article [surface of innerliner 75 of tire 70 of Wilson] during a process of manufacturing at least a portion of the vulcanized rubber article [viz., innerliner portion of the vulcanized tire]” [for claim 84]. And since tire vulcanization routinely takes place in some type of curing chamber, it would have obvious to one of ordinary skill in the art at the time of effective filing to apply (i.e., place) the patch assembly 60 of Wilson to the innerliner 75 after the vulcanized rubber article (tire) has exited a curing chamber [for claim 85], in the expectation of obtaining equivalent results in terms of attachment of the electronic monitoring device to the tire.
Regarding Claims 86-87, Wilson in view of Chong and Rensel renders obvious the method of claim 84 as discussed above. Wilson further discloses that after the "patch assembly 60" has been constructed, it "is then assembled to the innerliner 75 of a tire 71" (col. 4, ll. 26-27) using an "[a]ctivating cement [that] is first applied to the second side of dual cure bonding layer 20" and the patch is "stitched to the inner liner of the vulcanized tire and the patch assembly/tire assembly is allowed to cure for a sufficient time and temperature to form a strong bond between the tire and the patch assembly" (col. 4, ll. 26-32). Accordingly, Wilson discloses “wherein after the step of placing the assembly, the second layer of material (dual cure bonding layer 20) and contact surface of the vulcanized rubber article (innerliner 75 of tire 71) form a bonded connection” [for claim 86]. Further, the activating cement in Wilson is an “additional adhesive” applied to the assembly prior to the step of placing the assembly [for claim 87].
Regarding Claim 88, Wilson in view of Chong and Rensel renders obvious the method of claim 84 as discussed above. Wilson further discloses wherein after the step of placing the assembly, the
assembly is bonded to the contact surface of the vulcanized rubber article, and wherein during or after
placing the assembly at least one of heat, pressure, or time is used to strengthen the bond (col. 4, ll.
29-37: vulcanized tire and the patch assembly/tire assembly is allowed to cure for a sufficient time and
temperature to form a strong bond between the tire and the patch assembly. To ensure a strong
bond, the patch assembly optionally may be clamped to the tire innerliner 75 (thereby creating
pressure), until the curing cycle is completed).
Regarding Claim 90, Wilson in view of Chong and Rensel renders obvious the method of claim 84 as discussed above. Wilson further discloses wherein an electronic monitoring device (tag assembly 70) is placed within the cavity of the rubber patch housing before or after the step of attaching (placing) the rubber patch to the tire innerliner (col. 5, ll. 13-16: sequence of assembling tag assembly 70 (which contains encapsulated electronic monitoring device) into the rubber patch housing may be accomplished either before or after the rubber patch is attached to the tire innerliner).
Claims 49, 51-52, 54, 56, 58-60, 64, 67-68, 71, 74, 98, 105-107 and 121-129 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson, alone, or in view of Chong.
Regarding Claim 49, the claim is drawn to an assembly for attachment with a flexible article, the assembly comprising:
6a) an outer layer of flexible material having a display indicia;
6b) an adhesive layer connected with the outer layer, wherein at least a portion of the outer
layer adjacent the adhesive layer has a material composition that absorbs shock from the flexible
article and that includes one or more property of having elastomeric expansion and/or
contraction properties compatible with the flexible article, and mitigating migration of a material
from the flexible article is protective, and wherein the adhesive layer is capable of being attached
with a surface of the flexible article;
6c) a formed cavity disposed in or on a portion of the assembly, the formed cavity having an
opening that extends along a portion of an outer surface of the outer layer for accessing the
formed cavity from outside of the assembly; and
6d) an object or element within the formed cavity, wherein at least a portion of the object or
element is visible from outside of the assembly, and wherein the object or element comprises a
functional electrical device.
As to the claim preamble, Wilson discloses the subject matter of the preamble for the same reasons discussed above for the preamble of claim 22, with the claimed “flexible article” reading on innerliner 75/tire 71 of Wilson (col. 4, ll. 26-27).
As to limitation 6a), Wilson renders obvious the subject matter of this limitation for the same reasons discussed above with respect to corresponding features of claim 22 (i.e., limitations 1a)/1c)).
As to limitation 6b), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding “material composition” features of claim 33 (i.e., limitation 2a)).
As to limitation 6c), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding features of claim 43 (i.e., limitation 3c)).
As to limitation 6d), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding features of claim 22 (i.e., limitation 1d)).
Regarding Claims 51/52, Wilson alone renders obvious the assembly as recited in claim 49 as discussed above. Wilson further discloses an embodiment in which the electronic monitoring device 34 is encapsulated in a potting material 40 which solidifies into a rigid tag material as shown in Fig. 3 of Wilson (col. 4, ll. 39-41). As two preferred potting materials, Wilson identifies epoxy and urethane (col. 4, ll. 56-57). In a preferred embodiment, a battery 68 is attached to the tag to form a tag assembly 70 (col. 4, ll. 65-67). Wilson teaches that the tag assembly 70 may be of any configuration which allows it to fit within the cavity 16 as shown in Fig. 6 (col. 5, ll. 7-11). Once fitted within the cavity, it is considered that the potting material provides an outer layer disposed over a surface of the rubber patch 10 (taken as “the outer layer”) opposite the dual cure bonding layer 20 (taken as “the adhesive layer”) [for claim 51]. In addition, by forming a rigid material encapsulating the electronic monitoring device 34 as shown in Figure 3 of Wilson, one of ordinary skill in the art would understand and recognize that the potting material necessarily serves as a “protective layer” surrounding that device 34 [for claim 52].
Regarding Claim 54, Wilson alone renders obvious the assembly of claim 49 as discussed above. Further the claimed “flexible article” reads on tire 71 of Wilson, which necessarily comprises an “elastomeric composition” as claimed, as would be implicitly recognized by those of ordinary skill in the art.
Regarding Claim 56, Wilson alone renders obvious the assembly of claim 49 as discussed above. Wilson does not disclose the claimed feature “wherein the functional electrical device has bluetooth functionality.” However, for the same reasoning set out above with respect to the corresponding feature of claim 22, it would have been obvious to one of ordinary skill in the art to modify the method of Wilson by utilizing as the electronic monitoring device of the disclosed patch assembly, a sensor unit having Bluetooth functionality as part of a wireless communication system as taught by Chong. The motivation to do so and a reasonable expectation of success comes from the predictable facilitation of transmission of operational parameters of a tire to a remote location, such as a maintenance facility.
Regarding Claim 105, Wilson alone renders obvious the assembly of claim 49 as discussed above. Further, Wilson’s teachings (see col. 7, line 59 to col. 8, line 61) render obvious the subject matter of claim 105 for the same reasons discussed above with respect to corresponding subject matter of claim 102.
Regarding Claim 121, Wilson alone renders obvious the assembly as recited in claim 49 as discussed above. Further, Chong’s teachings (see p. 10, ll. 15-19) render obvious the subject matter of claim 121 for the same reasons discussed above with respect to corresponding subject matter of claim 112.
Regarding Claim 122, Wilson alone obvious the assembly as recited in claim 121. Further, Chong’s teachings (see p. 9, ll. 3-10) render obvious the subject matter of claim 122 for the same reasons discussed above with respect to corresponding subject matter of claim 113.
Regarding Claim 123, Wilson alone renders obvious the assembly as recited in claim 56. Further, Chong’s teachings (see p. 9, ll. 20-22) render obvious the subject matter of claim 123 for the same reasons discussed above with respect to corresponding subject matter of claim 114.
Regarding Claim 58, the claim is drawn to a method for attaching an assembly to a surface of a flexible article comprising the steps of:
7a) placing the assembly into contact with a surface of the flexible article, wherein the
assembly comprises an outer layer of flexible material, wherein the outer layer has a display
indicia comprising at least one of a symbol, logo, and shape used to provide at least one of
identification, purpose, and function, wherein the assembly comprises a formed cavity disposed
in or on a portion of the assembly, the formed cavity having an opening that extends along a
portion of an outer surface of the outer layer for accessing the formed cavity from outside of the
assembly, wherein the outer layer is connected with an adhesive layer interposed between the
surface and the assembly, and wherein at least a portion of the outer layer adjacent the adhesive
layer comprises a material composition that absorbs shock from the flexible article and that
includes one or more property of having elastomeric expansion and/or contraction properties
compatible with the flexible article, and mitigating migration of a material from the flexible
article;
7b) bonding the assembly to the flexible article; and
7c) placing an object or element within the formed cavity before or after the step of bonding,
wherein at least a portion of the object or element is visible from outside of the assembly,
wherein the object or element comprises a functional device, and wherein the functional device
comprises an electrical element.
As to the claim preamble, Wilson discloses the subject matter of the preamble for the same reasons discussed above for the preamble of claim 22, with the claimed “flexible article” reading on innerliner 75/tire 71 of Wilson (col. 4, ll. 26-27).
As to limitation 7a), Wilson renders obvious the subject matter of this limitation for the same reasons discussed above for the corresponding features of claim 33 (i.e., limitation 2a)).
As to limitation 7b), Wilson discloses claimed step of bonding the assembly to the flexible article, i.e., innerliner 75/tire 71 (col. 4, ll. 26-32).
As to limitation 7c), Wilson discloses the subject matter of this limitation for the same reasons discussed above for the corresponding features of claim 33 (i.e., limitation 2c)).
Regarding Claims 59-60, Wilson alone renders obvious the method as recited in claim 58 as discussed above. Wilson further discloses wherein after the step of placing, the assembly is bonded to the contact surface of the vulcanized rubber article, and wherein during or after placing the assembly at least one of heat [for claim 60], pressure [for claim 59], or time is used to strengthen the bond (col. 4, ll. 29-37: vulcanized tire and the patch assembly/tire assembly is allowed to cure for a sufficient time and temperature to form a strong bond between the tire and the patch assembly. To ensure a strong bond, the patch assembly optionally may be clamped to the tire innerliner 75 (thereby creating pressure), until the curing cycle is completed).
Regarding Claim 64, Wilson alone renders obvious the method as recited in claim 58 as discussed above. Wilson does not disclose the claimed feature “wherein the electrical element has bluetooth functionality.” However, for the same reasoning set out above with respect to the corresponding feature of claim 22, it would have been obvious to one of ordinary skill in the art to modify the method of Wilson by utilizing as the electronic monitoring device of the disclosed patch assembly, a sensor unit having Bluetooth functionality as part of a wireless communication system as taught by Chong. The motivation to do so and a reasonable expectation of success comes from the predictable facilitation of transmission of operational parameters of a tire to a remote location, such as a maintenance facility.
Regarding Claim 98, Wilson alone renders obvious the method of claim 58 as discussed above. Wilson further discloses that after the "patch assembly 60" has been constructed, it "is then assembled to the innerliner 75 of a tire 71" (col. 4, ll. 26-27) using an "[a]ctivating cement [that] is first applied to the second side of dual cure bonding layer 20" and the patch is "stitched to the inner liner of the vulcanized tire and the patch assembly/tire assembly is allowed to cure for a sufficient time and temperature to form a strong bond between the tire and the patch assembly" (col. 4, ll. 26-32). Accordingly, Wilson discloses “prior to the step of placing, applying an adhesive material [activating cement] to at least one of the assembly or the surface of the vulcanized rubber article,” as claimed.
Regarding Claim 106, Wilson alone renders obvious the method of claim 58 as discussed above. Further, Wilson’s teachings (see col. 7, line 59 to col. 8, line 61) render obvious the subject matter of claim 106 for the same reasons discussed above with respect to corresponding subject matter of claim 102.
Regarding Claim 124, Wilson alone renders obvious the method as recited in claim 58 as discussed above. Further, Chong’s teachings (see p. 10, ll. 15-19) render obvious the subject matter of claim 124 for the same reasons discussed above with respect to corresponding subject matter of claim 112.
Regarding Claim 125, Wilson alone obvious the method as recited in claim 124. Further, Chong’s teachings (see p. 9, ll. 3-10) render obvious the subject matter of claim 125 for the same reasons discussed above with respect to corresponding subject matter of claim 113.
Regarding Claim 126, Wilson alone renders obvious the method as recited in claim 64. Further, Chong’s teachings (see p. 9, ll. 20-22) render obvious the subject matter of claim 126 for the same reasons discussed above with respect to corresponding subject matter of claim 114.
Regarding Claim 67, the claim is drawn to a flexible article comprising:
8a) a target surface disposed along a portion of the flexible article;
8b) an assembly disposed onto the target surface and comprising:
an outer layer of flexible material having a display indicia;
8c) an adhesive layer connected with the outer layer; wherein at least a portion of the outer
layer adjacent the adhesive layer comprises a material composition that absorbs shock from the
flexible article and that includes one or more property of having elastomeric expansion and/or
contraction properties compatible with the flexible article tire, and mitigating migration of a
material from the flexible article;
8d) a formed cavity disposed in or on a portion of the assembly, the formed cavity having an
opening that extends along a portion of an outer surface of the outer layer for accessing the
formed cavity from outside of the assembly; and
8e) an object or element within the formed cavity, wherein at least a portion of the object or
element is visible from outside of the assembly, and wherein the object or element comprises a
functional electrical device.
As to the claim preamble, Wilson discloses the subject matter of the preamble for the same reasons discussed above for the preamble of claim 43, with the claimed “flexible article” reading on innerliner 75/tire 71 of Wilson (col. 4, ll. 26-27).
As to limitation 8a), Wilson discloses the subject matter of this limitation for the same reasons discussed above for the corresponding features of claim 43 (i.e., limitation 3a)), with the claimed “flexible article” reading on Wilson’s innerliner 75/tire 71.
As to limitation 8b), Wilson renders obvious the subject matter of this limitation for the same reasons discussed above for the corresponding features of claim 43 (i.e., limitation 3a)), with the claimed “flexible article” reading on Wilson’s innerliner 75/tire 71.
As to limitation 8c), Wilson discloses the subject matter of this limitation for the same reasons discussed above with respect to corresponding “material composition” features of limitation 3a of claim 33.
As to limitation 8d), Wilson discloses the subject matter of this limitation for the same reasons discussed above for the corresponding features of claim 43 (i.e., limitation 3c)).
As to limitation 8e), Wilson discloses the subject matter of this limitation for the same reasons discussed above for the corresponding features of claim 43 (i.e., limitation 3d)).
Regarding Claim 68, Wilson alone renders obvious the flexible article as recited in claim 67 as discussed above. Further the claimed “flexible article” reads on tire 71 of Wilson, which necessarily comprises an “elastomeric composition” as claimed, as would be implicitly recognized by those of ordinary skill in the art.
Regarding Claim 71, Wilson alone renders obvious the flexible article as recited in claim 67 as discussed above. Wilson does not disclose the claimed feature “wherein the functional electrical device has bluetooth functionality.” However, for the same reasoning set out above with respect to the corresponding feature of claim 22, it would have been obvious to one of ordinary skill in the art to modify the patch assembly/tire assembly of Wilson by utilizing as the electronic monitoring device of the disclosed patch assembly, a sensor unit having Bluetooth functionality as part of a wireless communication system as taught by Chong. The motivation to do so and a reasonable expectation of success comes from the predictable facilitation of transmission of operational parameters of a tire to a remote location, such as a maintenance facility.
Regarding Claim 74, Wilson alone renders obvious the flexible article as recited in claim 67 as discussed above. Wilson further discloses an embodiment in which the electronic monitoring device 34 is encapsulated in a potting material 40 which solidifies into a rigid tag material as shown in Fig. 3 of Wilson (col. 4, ll. 39-41). As two preferred potting materials, Wilson identifies epoxy and urethane (col. 4, ll. 56-57). In a preferred embodiment, a battery 68 is attached to the tag to form a tag assembly 70 (col. 4, ll. 65-67). Wilson teaches that the tag assembly 70 may be of any configuration which allows it to fit within the cavity 16 as shown in Fig. 6 (col. 5, ll. 7-11). Once fitted within the cavity, it is considered that the potting material provides an outer layer disposed above a surface of the rubber patch 10 (taken as “the outer layer”) opposite the dual cure bonding layer 20 (taken as “the adhesive layer”). In addition, by forming a rigid material encapsulating the electronic monitoring device 34 as shown in Figure 3 of Wilson, one of ordinary skill in the art would understand and recognize that the potting material necessarily serves as a “protective layer” surrounding that device 34, as claimed.
Regarding Claim 107, Wilson alone renders obvious the flexible article as recited in claim 67 as discussed above. Further, Wilson’s teachings (see col. 7, line 59 to col. 8, line 61) render obvious the subject matter of claim 107 for the same reasons discussed above with respect to corresponding subject matter of claim 102.
Regarding Claim 127, Wilson alone renders obvious the flexible article as recited in claim 67 as discussed above. Further, Chong’s teachings (see p. 10, ll. 15-19) render obvious the subject matter of claim 127 for the same reasons discussed above with respect to corresponding subject matter of claim 112.
Regarding Claim 128, Wilson alone obvious the flexible article as recited in claim 127. Further, Chong’s teachings (see p. 9, ll. 3-10) render obvious the subject matter of claim 128 for the same reasons discussed above with respect to corresponding subject matter of claim 113.
Regarding Claim 129, Wilson in view of Chong renders obvious the flexible article as recited in claim 71. Further, Chong’s teachings (see p. 9, ll. 20-22) render obvious the subject matter of claim 129 for the same reasons discussed above with respect to corresponding subject matter of claim 114.
Potentially Allowable Subject Matter
Claims 50, 62 and 66 are objected to as being each dependent on a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claim.
Claims 28, 32, 37, 41, 69, 108 and 110 would be allowable if amended or rewritten to overcome the rejections under 35 U.S.C. 112 set forth in this Office action and to include all the limitations of the respective base claims and any intervening claim.
The closest prior art to Wilson, Chong and Rensel, discussed above, does not describe the
inventions of instant claims 28, 32, 37, 41, 50, 62, 66, 69, 108 and 110, or provide proper rationale to modify any of their respective inventions into the invention of any of said claims.
Correspondence
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/04-09-2026
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