Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 25, 2025 has been entered. Claims 1, 2, 4, 5 and 7-19 remain pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The examiner could not find any mention in the original disclosure that the “angle between the outer wall and the base wall is greater than 90 degrees”.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4, 5 and 7-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the shoulder region" in line 14. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the adjacent shoulder rib" in line 17. There is insufficient antecedent basis for this limitation in the claim.
Claims 2, 4, 5 and 7-18 are rejected due to dependency on claim 1.
Claim 19 recites the limitation "the shoulder region" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the adjacent shoulder rib" in lines 16-17. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102/103
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1, 2, 7, 8 and 16-19 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by US 2005/0051250 (Gojo) or, in the alternative, under 35 U.S.C. 103 as obvious over US 2005/0051250 (Gojo) in view of US 8,381,783 (Miyake).
Regarding claim 1, Gojo discloses a tire comprising:
A first sidewall and a second sidewall (4) joined to each other in an axially spaced relation along a rotational axis of the tire by a circumferentially extending ground engaging surface (tread 2) (see Figure 1, paragraph 0027); and
A circumferentially extending decoupling groove (8) extending radially inward toward the rotational axis of the tire (see Figure 3A, paragraph 0027), the decoupling groove formed by inner (11a) and outer walls (8c) axially spaced from each other (see Figure 3A), wherein the inner and outer walls are nonparallel to each other and diverge from each other so that the width between the inner and outer walls increases from a radially inner portion to a radially outer portion of the decoupling groove (see Figure 3A), a base wall (8a, 8b, flat portion) interconnecting inner radial portions of the inner and outer walls (see Figure 3A), wherein the base wall has a flat portion (see annotated Figure 3A below), and
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Wherein the circumferentially extending decoupling groove (8) is located in a shoulder region (see Figure 3A, paragraph 0027), and wherein the shoulder region includes a decoupling shoulder (5) wherein a portion of the decoupling shoulder is formed by the outer wall (8c) of the circumferentially extending decoupling groove, and wherein the decoupling shoulder has a radial height less than the adjacent shoulder rib (7) (see Figure 3A).
Gojo does not specifically state the angle at which the inner wall extends from a radial plane disposed perpendicular to the rotational axis of the tire; however, the extension in the radial direction shown in Figure 3A can be broadly viewed as being “approximately 5 degrees”, absent a specific definition of “approximately 5 degrees”.
Alternatively, Miyake teaches that providing the inner wall of a decoupling groove with an angle of 3-7 degrees (approximately 5 degrees) reduces partial wear and prevents cracks from being generated on the groove bottom (see column 4, lines 7-31). It would have been obvious to one having ordinary skill in the art before the effective filing date to position the decoupling groove inner wall of Gojo at an angle of approximately 5 degrees in order to reduce partial wear and prevent cracks, as taught by Miyake.
Regarding claim 2, Gojo in view of Miyake also discloses that the outer wall of the circumferentially extending decoupling groove is angle with respect to the radial direction (see Miyake column 4, lines 7-31).
Regarding claim 7, Gojo also discloses that the base wall is located radially outward of a non-skid line of the tire (see Figures 1 and 3A).
Regarding claim 8, Gojo also discloses that the decoupling groove includes an undercut region in the inner wall (see Figure 3A).
Regarding claim 16, Gojo also discloses that the flat portion of the base wall extends in the axial direction (see annotated Figure 3A above, showing the base wall extends in the axial direction as well as the radial direction).
Regarding claim 17, Gojo also discloses that the outer wall (8c) has a linear portion (see Figure 3A).
Regarding claim 18, while Gojo does not specifically state that discloses an angle between the outer wall (8c) and the base wall (8a, 8b, flat portion) is greater than 90 degrees, this claimed feature would have been obvious to one having ordinary skill in the art before the effective filing date since Figure 3A shows that the angle between the outer wall (8c) and the base wall (8a, 8b, flat portion) is on the order of greater than 90 degrees. While patent drawings are not to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining patentability of claims. See In re Mraz, 173 USPQ 25 (CCPA 1972).
Regarding claim 19, Gojo discloses a tire comprising:
A first sidewall and a second sidewall (4) joined to each other in an axially spaced relation along a rotational axis of the tire by a circumferentially extending ground engaging surface (tread 2) (see Figure 1, paragraph 0027); and
A circumferentially extending decoupling groove (8) extending radially inward toward the rotational axis of the tire (see Figure 3A, paragraph 0027), wherein the circumferentially extending decoupling groove is located in the shoulder region (see Figure 3A, paragraph 0027), wherein the decoupling groove is formed by inner (11a) and outer walls (8c) axially spaced from each other (see Figure 3A), wherein the inner and outer walls are nonparallel to each other and diverge from each other so that the width between the inner and outer walls increases from a radially inner portion to a radially outer portion of the decoupling groove (see Figure 3A), a base wall (8a, 8b, flat portion) interconnecting inner radial portions of the inner and outer walls (see Figure 3A), wherein the base wall has a flat portion (see annotated Figure 3A below), and
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Wherein the circumferentially extending decoupling groove (8) is located in a shoulder region (see Figure 3A, paragraph 0027), and wherein the shoulder region includes a decoupling shoulder (5) wherein a portion of the decoupling shoulder is formed by the outer wall (8c) of the circumferentially extending decoupling groove, and wherein the decoupling shoulder has a radial height less than the adjacent shoulder rib (7) (see Figure 3A).
Gojo does not specifically state the angle at which the inner wall extends from a radial plane disposed perpendicular to the rotational axis of the tire; however, the extension in the radial direction shown in Figure 3A can be broadly viewed as being “approximately 5 degrees”, absent a specific definition of “approximately 5 degrees”.
Alternatively, Miyake teaches that providing the inner wall of a decoupling groove with an angle of 3-7 degrees (approximately 5 degrees) reduces partial wear and prevents cracks from being generated on the groove bottom (see column 4, lines 7-31). It would have been obvious to one having ordinary skill in the art before the effective filing date to position the decoupling groove inner wall of Gojo at an angle of approximately 5 degrees in order to reduce partial wear and prevent cracks, as taught by Miyake.
Response to Arguments
Applicant’s arguments 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.
Allowable Subject Matter
Claims 9-15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art of record does not disclose or suggest that the base wall of the decoupling groove has a greater axial dimension than a minimum spacing between the inner wall and the outer wall above the undercut region, as recited in claim 9. The closest prior art of record is Gojo; however, the axial dimension of the base wall of the decoupling groove of Gojo is shown in Figure 3A to be the same axial dimension as the minimum spacing between the inner wall and outer wall above the undercut region. Figure 4A shows an alternative embodiment where the axial dimension of the base wall is greater than a minimum spacing between the inner wall and the outer wall above the undercut region; however, in this embodiment the inner and outer walls do not diverge so that a width between the inner and outer walls increases from a radially inner portion to a radially outer portion. No other prior art that anticipates of suggests fairly the instant claims has been located as of the date of this action. Claims 10-15 depend from claim 9, therefore claims 9-15 are allowed over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENDY L BOSS whose telephone number is (571)272-7466. The examiner can normally be reached 8:30-6:30.
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/WENDY L BOSS/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749