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 .
Claim Objections
Claim 20 is objected to because of the following informalities: the phrase “a circumferential protruding shoulder” in line 2 should be written as –the circumferential protruding shoulder—for consistency in claim language. Moreover, the examiner suggests removing the limitation “wherein the ring further comprises [the] circumferential protruding shoulder, which protrudes laterally outwards from the ring and is embedded in the base film; and” in lines 1-3 as it is already exactly disclosed in amended claim 1. Appropriate correction is required.
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) 1-3 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US 0612016) and any of Yamagiwa et al. (US 20020097147) (of record) and/or Broadfield (US 20210300130) (of record).
Regarding claims 1-2 and 12, Clark discloses an assembly for an inner tube for a tire or of an inner tube for a tire (Figs. 1-2: B), comprising: a base film (Figs. 1-3, 5: F), which forms a part of the inner tube or is configured to be attached to an exterior surface of the inner tube (Figs. 1-2: see how F is provided on and as part of B) (Page 1 lines 78-82); a ring (Figs. 1-6: D), which is inserted into a hole through the base film/inner tube, said ring comprising: internal threads of a fastening mechanism (Figs. 2, 4-6: 7) (Page 1 lines 45-55); and a circumferential protruding shoulder (Figs. 2-6: 9), wherein the shoulder protrudes laterally outwards from the ring (Figs. 2-6: D) and is embedded in the base film (Figs. 2-3, 5: F) (Page 1 lines 56-68); a solid plug (Figs. 1-5: C), which is removably insertable in the ring, said solid plug comprising: external threads of the fastening mechanism (Figs. 2, 4-5) (Page 1 lines 45-55), a first end having a first surface adapted to face outwards of a cavity of the inner tube when inflated (Figs. 1-2: see end of C facing away from cavity inside of inner tube B, i.e., the end that extends outside of tube B and tire A), and a second end having a second surface adapted to face inwards of the cavity of the inner tube (Figs. 1-2: see end of C facing toward the cavity inside of inner tube B, i.e., the end within tire A); a cover (Figs. 1-5: 1) covering the first surface of the solid plug and the ring (Page 1 lines 42-43); and an O-ring (Figs. 2, 4-5, 7: E) situated between the ring (Figs. 2, 4-5: D) and the solid plug (Figs. 2, 4-5: 1, C); wherein the O-ring is seated in a groove of the internal threads of the ring or in a groove of the external threads of the plug (Fig. 6: 8) (Page 1 lines 68-78), and wherein the ring and the solid plug form an airtight structure (Page 1 lines 8-17, 68-78, 99-102; Page 2 lines 1-5).
Clark further discloses an inner tube for a tire (Figs. 1-2: B), comprising: an interior surface, which defines a cavity when the inner tube is inflated (Figs. 1-2: see cavity of tube B); and a base film (Figs. 1-2:F) forming an exterior surface of the inner tube (Figs. 1-2: B).
However, Clark does not expressly recite the second end having the second surface adapted for attaching a module comprising an electronic device/sensor.
Yamagiwa teaches a tire and a tire inner tube comprising a valve (Fig. 4), wherein an air pressure sensor (Fig. 4: 55) is integrally fitted on the air valve (Fig. 4: 47) facing the cavity of the inner tube (Fig. 4: 43) for detecting air pressure ([0034], [0036], [0038]). In this manner, it is possible to detect the tire pressure and make it possible to check the tire pressure even during the operation of the vehicle which provides effective driving information ([0003], [0039]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Clark in order to provide a pressure sensor (i.e., electronic device) to the second surface facing inwards of the cavity of the inner tube so as to detect the tire pressure on the valve/plug and make it possible to check the tire pressure even during the operation of the vehicle which provides effective driving information, as taught by Yamagiwa.
Additionally or alternatively, Broadfield teaches a vehicle wheel monitoring system, wherein a tire pressure monitoring system may be provided on a valve structure ([0086]-[0088]). In this manner, tire pressure sensor modules may be fitted to a valve or other inlet of a pneumatic tyre, and in systems comprising such tire pressure sensor modules, an electronic device is be used to obtain a reading from a tire pressure sensor module wirelessly ([0002]). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Clark in order to provide that the second surface, including the valve, is adapted for attaching a module comprising an electronic device/sensor so as to wirelessly monitor the pressure of the inner tube, as taught by Broadfield.
Regarding claim 3, Clark further discloses the base film (Figs. 1-3, 5: F) is cemented to the inner tube (Figs. 1-2: B) (Page 1 lines 78-82). In other words, the base film is combined with the inner tube to become a whole (i.e., is an integrated part). Additionally, case law holds that the use of a one piece construction instead of a structure comprising several parts disclosed in the prior art would be merely a matter of obvious engineering choice. MPEP 2144.04.
Regarding claim 11, Clark further discloses the assembly is located at a location on the surface of the inner tube (Figs. 1-2: B), whereby a direction of an axis of the ring (Figs. 1-2: D), said direction being directed from the first surface to the second surface, intersects and forms an angle with a rotational axis of the inner tube (Figs. 1-2: B), said angle being perpendicular (i.e., 90 degrees) (Figs. 1-2), which falls within the claimed range of at least 85 degrees. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for said angle.
Claim(s) 6 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US 0612016) and any of Yamagiwa et al. (US 20020097147) (of record) and/or Broadfield (US 20210300130) (of record) as applied to claim 1 above, and further in view of Rickman (US 621849) (of record).
Regarding claims 6 and 18, Clark does not expressly recite the material of the ring and/or plug.
Rickman teaches a valve for tires including a ring (Fig. 2: E) and a solid plug (Fig. 2: I), wherein the ring (Fig. 2: E) for the solid plug is formed from brass or other suitable metal (Page 1 lines 93-94). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a suitable ring material known in the substantially similar tire valve art, such as brass, as taught by Rickman, especially because Clark is silent as to the materials of the components.
Claim(s) 7 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US 0612016) and any of Yamagiwa et al. (US 20020097147) (of record) and/or Broadfield (US 20210300130) (of record) as applied to claim 1 above, and further in view of Ciancio et al. (WO 2019130197) (of record) and optionally Nahmias Nanni et al. (US 20110259496) (of record).
Regarding claims 7 and 19, modified Clark does not expressly recite the diameter of the ring, measured from the outmost edge of the ring.
Ciancio also teaches an assembly (Figs. 2, 3, 4, 4a, 4b: 4) for a tire (Fig. 3: 1), comprising: a ring (Figs. 2-4: 9) (Page 25 lines 8-10), which is inserted into a hole, said ring comprising: internal threads (Figs. 2-3: 12) of a fastening mechanism (Page 23 lines 15-19); and a solid plug (Figs. 2-3: 22) (Page 25 line 31), which is removably insertable in the ring (Fig. 3: see arrow indicating movement of plug) (Page 25 line 31; Page 26 lines 1-2), said solid plug comprising: external threads (Figs. 2-3: 29) of the fastening mechanism (Page 26 lines 3-5), a first end having a first surface (Figs. 2-3: see surface on opposite end of 22 with surface including 28) adapted to face outwards of a cavity, a second end having a second surface (Figs. 2-3: see end of 22 with surface including 28) adapted to face inwards of the cavity and adapted for attaching a module (Figs. 4, 4a, 4b: 5) comprising an electronic device (Page 22 lines 2-16; Page 23 lines 9-10). Ciancio further teaches that the ring (Figs. 2-3: 9) has a diameter (Fig. 3: Ta), measured from the outmost edge of the ring, between 40 and 50 mm so as to achieve the advantageous technical effect of obtaining optimal compromise between the transversal dimensions of the assembly and the sturdiness characteristics of the assembly (Page 12 lines 11-12; Page 25 lines 11-18), which overlaps with the claimed range of no more than 40 mm. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Moreover, Ciancio discloses that the diameter is preferably within the aforementioned range, which is merely a preferable example and does not explicitly limit the disclosure to such a limitation. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123. The range taught by Ciancio approaches the claimed range of no more than 30 mm. Case law holds that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. One of ordinary skill in the art would reasonably expect a diameter of 30 mm to behave in substantially the same way as a diameter of 40 mm. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the diameter of the ring measured from the outmost edge of the ring. Although Ciancio teaches a ring provided against a tire inner surface, rather than an inner tube, one of ordinary skill in the art would readily recognize, or alternatively find obvious, that the same advantages of discussed above for the diameter of the ring in Ciancio would also be applicable to the diameter of the ring in Clark. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Clark in order to provide the ring with a diameter in the aforementioned range so as to achieve the advantageous technical effect of obtaining optimal compromise between the transversal dimensions of the assembly and the sturdiness characteristics of the assembly, as taught by Ciancio.
Optionally, Nahmias Nanni also teaches an assembly for a tire, comprising: a ring (Figs. 2a, 2b: 40), which is anchored into a tire surface, wherein the ring (Figs. 2a, 2b: 40) has a diameter, measured from the outmost edge of the ring, between 31 to 45 mm so as to anchor the ring into the tire surface ([0125]), which overlaps with the claimed range of no more than 40 mm. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Moreover, Nahmias Nanni discloses that the diameter is preferably within the aforementioned range, which is merely a preferable example and does not explicitly limit the disclosure to such a limitation. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123. The range taught by Nahmias Nanni approaches the claimed range of no more than 30 mm. Case law holds that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. One of ordinary skill in the art would reasonably expect a diameter of 30 mm to behave in substantially the same way as a diameter of 31 mm. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the diameter of the ring measured from the outmost edge of the ring. Although Nahmias Nanni teaches a ring provided against a tire inner surface, rather than an inner tube, one of ordinary skill in the art would readily recognize, or alternatively find obvious, that anchoring a ring with the aforementioned diameter in Nahmias Nanni would also be applicable to anchoring the ring having a diameter in Clark. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Clark in order to provide the ring with a diameter in the aforementioned range as is generally known in the art so as to properly anchor the ring to the inner tube surface, as taught by Nahmias Nanni.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US 0612016) and any of Yamagiwa et al. (US 20020097147) (of record) and/or Broadfield (US 20210300130) (of record) as applied to claim 1 above, and further in view of Ciancio et al. (WO 2019130197) (of record).
Regarding claim 20, Clark discloses the ring further comprises the circumferential protruding shoulder, which protrudes laterally outwards from the ring and is embedded in the base film, as discussed in the rejection of claim 1 above.
However, modified Clark does not expressly recite the circumferential protruding shoulder comprises at least one hole.
Ciancio also teaches an assembly (Figs. 2, 3, 4, 4a, 4b: 4) for a tire (Fig. 3: 1), comprising: a ring (Figs. 2-4: 9) (Page 25 lines 8-10), which is inserted into a hole, said ring comprising: internal threads (Figs. 2-3: 12) of a fastening mechanism (Page 23 lines 15-19); and a solid plug (Figs. 2-3: 22) (Page 25 line 31), which is removably insertable in the ring (Fig. 3: see arrow indicating movement of plug) (Page 25 line 31; Page 26 lines 1-2), said solid plug comprising: external threads (Figs. 2-3: 29) of the fastening mechanism (Page 26 lines 3-5), a first end having a first surface (Figs. 2-3: see surface on opposite end of 22 with surface including 28) adapted to face outwards of a cavity, a second end having a second surface (Figs. 2-3: see end of 22 with surface including 28) adapted to face inwards of the cavity and adapted for attaching a module (Figs. 4, 4a, 4b: 5) comprising an electronic device (Page 22 lines 2-16; Page 23 lines 9-10). Ciancio further teaches that the ring comprises a circumferential protruding shoulder (Figs. 5A, 5B: 27) (Page 29 lines 28-30), which protrudes laterally outwards from the ring (Figs. 5A, 5B: 9) and is embedded in the base film (Fig. 3: all of 9 is embedded in the base film and thereby the protruding portions would also necessarily be embedded in the base film as well) (Page 4 lines 27-30), wherein the protruding shoulder (Figs. 5A, 5B: 27) comprises at least one hole (Figs. 5A, 5B: 21) (Page 24 lines 17-20; Page 29 lines 31-32; Page 30 lines 1-3). Ciancio further teaches that the hole(s) promote the integration of the protruding portions of the ring with the adjacent portions of the tire (Page 24 lines 17-20; Page 29 lines 31-32; Page 30 lines 1-3). Although Ciancio teaches a ring provided against a tire inner surface, rather than an inner tube, one of ordinary skill in the art would readily recognize, or alternatively find obvious, that the same advantages of promoting the integration of the protruding portions of the ring with the adjacent components by providing holes in the circumferential protruding shoulder of the ring in Ciancio would also be applicable to providing holes in the circumferential protruding shoulder of the ring in Clark. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Clark in order to provide that the circumferential protruding shoulder comprises at least one hole so as to promote the integration of the circumferential protruding shoulder of the ring with the adjacent portions of the inner tube, as taught by Ciancio.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US 0612016) and any of Yamagiwa et al. (US 20020097147) (of record) and/or Broadfield (US 20210300130) (of record) as applied to claim 1 above, and further in view of Morris (US 1946806).
Regarding claim 21, modified Clark does not expressly recite the material of the cover.
Morris discloses a tire valve cap (Figs. 1-3) that is composed of elastic material (Fig. 3: 9) of rubber or other appropriate elastic material (Page 2 lines 5-7). In this manner, it may be manufactured and sold at a very low cost and is capable of removal and application much more quickly than the usual screwed on metallic tire valve caps may be removed and applied (Page 2 lines 24-28). This device may be removed and applied merely by the application of proper force without resort to screwing or unscrewing action (Page 2 lines 28-30, 76). In the aggregate, by use of these devices, a considerable amount of time is saved whenever it is necessary to charge the tires with air or to remove or adjust the tire valves (Page 2 lines 76-79). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Clark in order to provide the cover is made of elastic material for the advantages as discussed above, as taught by Morris.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US 0612016) and any of Yamagiwa et al. (US 20020097147) (of record) and/or Broadfield (US 20210300130) (of record) as applied to claim 1 above, and further in view of Morris (US 1946806) and Mohammed (US 4754793).
Regarding claim 22, modified Clark does not expressly recite the material of the cover.
Morris discloses a tire valve cap (Figs. 1-3) that is composed of elastic material (Fig. 3: 9) of rubber or other appropriate elastic material (Page 2 lines 5-7). In this manner, it may be manufactured and sold at a very low cost and is capable of removal and application much more quickly than the usual screwed on metallic tire valve caps may be removed and applied (Page 2 lines 24-28). This device may be removed and applied merely by the application of proper force without resort to screwing or unscrewing action (Page 2 lines 28-30, 76). In the aggregate, by use of these devices, a considerable amount of time is saved whenever it is necessary to charge the tires with air or to remove or adjust the tire valves (Page 2 lines 76-79). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Clark in order to provide the cover is made of elastic material for the advantages as discussed above, as taught by Morris.
Furthermore, as taught by Mohammed, butyl rubber is well-known for possessing inherently satisfactory properties as elastomers which has enabled them to find utility in many commercial areas, and among their satisfactory inherent properties are their impermeability to air, high damping of low frequency vibrations, and good resistance to aging, heat, acids, bases, ozones and other chemicals after vulcanization, which renders them well suited for use in a variety of applications including articles requiring low or reduced permeability to air (Col. 1 lines 17-27). Although Mohammed does not expressly recite that one application of butyl rubber is for valve caps, one of ordinary skill in the art would have recognized, or alternatively found obvious, that the advantages discussed above make butyl rubber suitable for sealing applications, such as in the valve cap made of rubber or other appropriate elastic material as taught by Morris. Case holds that the selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Clark in order to provide the rubber/elastic material of the cover is butyl rubber for the advantages discussed above, as taught by Mohammed.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 6-7, 11-12, and 18-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 02/09/2026 have been fully considered but they are not persuasive.
On page 9 of the Remarks, Applicant argues “the present invention is not directed to valves … Moreover, it is typical to not have a layer covering such valves, at least valves that protrude from the tire.”
It is noted that the features upon which applicant relies (i.e., the present invention is not directed to valves) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As the claims are broad and do not require a particular structure for the solid plug, a valve that is plugged into the ring is considered to read on the claim limitations, as discussed in the detailed rejection above. In particular, because the valve is capped/covered and provided in an airtight sealed manner in Clark, which functions as a solid plug. If Applicant intends for a specific or particular structure for the solid plug that would differentiate it from a valve, the examiner suggests providing such supported language into the claims.
Furthermore, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, every claim limitation has been addressed by the prior art as discussed in the detailed rejection above. The examiner further notes that it is not necessary that the prior art suggest to achieve the same advantage, result, or use discovered by Applicant. In this case, the prior art of record discloses all of the current claim limitations as discussed in the detailed rejection above. The reasoning or use in the prior art references does not need to be the same or identical to those discovered by Applicant so long as there is some teaching, suggestion, or motivation to make the combination, which the prior art references provide.
Moreover, the examiner notes that Applicant has not provided any factual support regarding the statement “it is typical to not have a layer covering such valves, at least valves that protrude from the tire,” and thus it is counselor’s opinion. See MPEP 716.01(c)(II), 2145(I).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE (née AYALP) whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KATELYN SMITH (née WHATLEY) can be reached on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The fax phone number for the examiner is (571) 273-5031.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749