DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/23/2026 has been entered.
Response to Amendment
The Examiner was fully affirmed in all rejections by the Patent Trial and Appeal Board on their decision dated 12/22/2025. The amendments entered by Applicant on 2/23/2026 have been accepted. Claims 17, 19, 21, 33 are amended. Claim 34 is new. Claims 18 is canceled. Claims 17 and 19-34 are pending.
Claim Objections
Claims 17, 20, 28-33 are objected to because of the following informalities:
Claim 17 lines 14, 20, 21, 22 each recite “…one or a plurality of first ridges”. Because the claim requires explicitly two first ridges in line 22, the embodiment wherein there is a singular first ridge is not possible in the claim. Because of this, each of the instances of “one or a plurality of first ridges” should be amended to instead read “…a plurality of first ridges”, in lines 14, 20, 21, and 22, to improve clarity of the claim.
The same change should be made in claim 20 line 2, claim 28 line 2, claim 29 lines 2, 3, 5, 6 and 7, claim 30 line 2, claim 31 line 2, claim 32 line 2, claim 33 line 6.
Appropriate correction is required.
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 17 and 19-34 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Each of the independent claims 17 and 34 recite “…the one or the plurality of first ridges are almost parallel to the tire radial direction”, wherein this limitation is considered to be new matter. The written specification is completely silent as to the first ridges being “almost parallel” to the tire radial direction, as the specification only states that the first ridges are parallel to each other [see 0066 in the published PGPUB]. And further, the instant figures do not clearly show to a person of ordinary skill in the art that the first ridges are formed to be “almost parallel” to the tire radial direction, construed as meaning not parallel to the tire radial direction but “close” to parallel to the radial direction. Applicant cites to paragraphs 0062, 0066, and Fig. 6 as providing support for this new limitation, but none of these locations provide support for what is claimed. Claims 19-33 are rejected for relying upon a rejected claim.
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.
Claim 17 and 19-34 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.
Claims 17 and 34 each recite “…the one or the plurality of first ridges are almost parallel to the tire radial direction”. The term “almost” in claims 17 and 34 is a relative term which renders the claim indefinite. The term “almost” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, the claims are considered indefinite as it cannot be determined what is “almost” parallel to the radial direction and what is NOT “almost” parallel to the radial direction. Claims 19-33 are rejected for relying upon a rejected claim. The claims will be examined broadly, such that any angle of the first ridges may be considered to be almost parallel.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 32 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 32 requires for the number of the plurality of first ridges to be two or less, while claim 17 of which this claim depends requires for there to be exactly two first ridges. As such, claim 32 does not provide a further limitation of the subject matter of claim 17. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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 17, 19-20, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlhoff (US2017/0050473A1, of record) in view of Niwa (JPH09249006A, of record) and in view of Duchene (US2019/0135011A1, of record).
Regarding claims 17 and 32, Muhlhoff teaches a pneumatic tire (“1”) comprising: a pair of bead cores having an annular shape (beads are positioned such that the sidewall extends between the bead and the tread [0008]. This would clearly be annular shaped as in Fig. 9. An annotated Fig. 9 is included below to facilitate discussion), a pair of side rubber members respectively provided in side surfaces of the pneumatic tire and covering the carcass ply from an outer side in a tire width direction (in the annotated Fig. 9 below, the side rubber member “3” and carcass ply are annotated as such. The carcass ply extends around both bead cores, and it is located within the side rubber wall surfaces),
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At least one surface of the side surfaces comprising a region of a smooth surface and a two-dimensional code located within the region of the smooth surface (as in Fig. 1 for example, the codex matrix code “4”, which is a 2D code such as a QR code [0016], is provided on a region of the sidewall wherein there are no other protrusions/recesses surrounding the code; there is only the sidewall of the tire. Therefore, the region outside of this code may be considered a smooth surface) and provided with a dot pattern comprising two types of gray scale elements identifiably formed of surface irregularity with respect to the smooth surface (the code is made up of dark parts “40” and light parts “41” which may extend above or below the sidewall [0088]. The dark and light parts “40” and “41” may be considered to be two types of gray scale elements. As in Fig. 7-21, for example, the dark and light parts have surface irregularity compared to the region outside of the code, as they are projecting inward/outward compared to the surrounding surface).
Muhlhoff does not explicitly have a tire with a cross-sectional height of 80mm or less, but Muhlhoff does not limit the inventive tire to a specific cross-sectional height. As such, it would be obvious to use any specific tire size with the inventive tire of Muhlhoff in order to have a working vehicle tire to be compatible with a host of vehicles. Niwa, for example, teaches flat tires with a cross-sectional height of 90mm or less [pg. 1 of machine translation], such as a tire with a size of 225/35R17 where the height of the tire cross-section is 79mm [pg. 5 of machine translation]. Therefore, it would have been obvious to choose any type of tire size, including tire sizes which result in a cross-sectional height of 80mm or less such as 225/35R17, and thereby provide a tire suitable for vehicles. Case law holds that the selection of a known material based on suitability for its intended use support prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045)". See MPEP 2144.07.
Muhlhoff does not explicitly show one or a plurality of first ridges projecting with respect to a smooth surface. Duchene teaches a pneumatic tire which has digital code patterns “20”, such as a QR code, on the sidewall of the tire [0018]. The code “20” is surrounded by a quiet zone “26” in order to completely surround the code so as to be free of markings, indicia, or other features [0021]. The code is also surrounded by a physical frame “34” that is formed on the tire sidewall outside the quiet zone [0023]. The frame may be formed as two portions [0023, Fig. 2], and the frame may be formed of any convenient geometric shape that designates the quiet zone [0023]. The frame may be formed as partial lines that form sides of the code [0023]. When the frame has two portions which may be formed as lines to mark the sides of the code as suggested by Duchene, there would be formed two portions which are formed on opposite sides of the frame so as to delineate the quiet zone. The frame may clearly have members which are parallel to each other (see Fig. 2), and also as the frame is arranged to mark the side of the code via a line (and wherein Duchene suggests the use of two portions and wherein the portions may be formed as lines on the side of the code, and because the QR code would be a 2D code with parallel sides), the frame would further clearly be arranged parallel to each other [0023]. The frame may be made so as to recess into the sidewall, or to protrude outboard past the sidewall surface [0027]. It is noted that in either case, the frame would “project” with respect to the smooth surface. The frame would clearly be located well within a length of 50% of a width of the two-dimensional code in a circumferential direction, see Fig. 2 for example. And further, Duchene explicitly suggests dimensions of its code and frame “34”, such that a QR code has a width of 16.25mm and a quiet zone with a length of approximately 2.9mm [0030]. As the frame/ridge portion is located outside the quiet zone, such that the beginning of the frame/ridge would be located at a length of approximately 2.9mm from the length of the QR code. As 50% of the length of the width of the code would be a length of 9.125mm, the length suggested by Duchene of its frame/ridge placement would be well within 50%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the code of Muhlhoff in order to have the quiet zone and frame surrounding the code, as suggested by Duchene. One would have found it obvious to have the frame marked as two portions which are lines which mark the outer portions of the code, as Duchene specifically suggests that two portions may be utilized and that the shape of the frame may be formed of a convenient geometric shape to designate the quiet zone such as lines on the side of the code [0023]. One would have been motivated in order to optimize the ability to read and acquire the code and to delineate and secure the quiet zone and the external boundary of said quiet zone [0021, 0023, 0027]. In modifying Muhlhoff with Duchene, the code of Muhlhoff would be surrounded by a quiet zone region and a frame comprising two portions formed on the sides of the code which would surround the quiet zone and demarcate it as such. In this frame, two first ridges would be the two portions of this frame that primarily extend in the tire radial direction (and as previously stated, project from the sidewall surface), such that they would be considered to be “almost parallel” to the radial direction. It being noted that as the frame is formed on a tire which has its outer wall curved, any such frame would necessarily have its ridges formed as “almost parallel” to the tire radial direction. The frame as applied to the code, as in at least Fig. 1 of Muhlhoff, would be well within the 50% width of the two-dimensional code, and as stated previously, the rest of the area would be a smooth surface as the surface of the sidewall of the tire. And as applied above, as Duchene explicitly suggests the presence of two portions wherein the portions may be formed as lines marking the sides of the code [0023], there would clearly be only these two ridges within the range between the edges and the positions.
Regarding claim 19, modified Muhlhoff makes obvious a tire wherein a separation distance from each of the two first ridges to an edge of the two dimensional code closest to each of the two first ridges is identical for the two first ridges (as in the rejection of claim 17, it would be obvious to have a quiet zone surrounding the square code and two ridges surrounding this quiet zone to demarcate it as such to help with delineation. In doing so, the separation distance would be equivalent from each of the first ridges on either circumferential side of the code to the code. Additionally, this is suggested by Fig. 2 of Duchene, wherein the frame is placed at the end of the quiet zone, with the quiet zone arranged evenly on either side of the code. Alternatively, Duchene defines “L” as the circumferential length of the quiet zone and “H” as the radial height of the quiet zone. The arrangement of the quiet zone, for a typical QR code, may be 22mm by 22mm, as an example [0030]. A quiet zone at these dimensions helps allow for the code to be centered within the quiet zone. When the code is centered within said quiet zone, the separation distance from the frame (and thus the two first edges) to the edge of the code would clearly be identical).
Regarding claim 20, modified Muhlhoff makes obvious a tire wherein the first ridge has a projection height of from 0.3 to 1.0mm from the smooth surface (the frame of Duchene may protrude outboardly past the sidewall surface, and the height of the protrusion of the frame is preferably 0.2mm or more [0027]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlhoff (US2017/0050473A1, of record) in view Niwa (JPH09249006A, of record) and in view of Duchene (US2019/0135011A1, of record), as applied to claim 17 above, and further in view of Suganuma (JP2004136617A, of record).
Regarding claims 28-29, Muhlhoff does not explicitly have a vent hold projection trace (spew) at an end of the first ridge in the radial direction. Muhlhoff in view of Duchene does not expressly limit the height nor outward profile of the frame, and it is silent as to occurrence of preferred vulcanization and vent hole projection traces. Suganuma teaches a pneumatic tire [title] which has a series of projections present on a tire sidewall [Fig. 3]. The projections “32” extend in the tire radial direction from a radial inner to a radial outer side. The projection “32” gradually increases in height from one end “32a” to the other end “32b” while continuously changing the projection height [Fig. 3b, 0024]. A gas vent communicates with the deepest part of the groove [0008], where the deepest part of the groove would be the portion “32b” which has the highest projection height. Having the vent holes (gas vent passages) communicating with the deepest portion of the groove allows the vent holes to penetrate the upper and lower molds, such that the gas collected at the deepest portions of the grooves may be discharged from the vent holes to the outside [0022]. When the projections are situated as such, only one cutting mark “33” is formed on the surface of the deepest (highest) end “32b”, from which the spew formed immediately after vulcanization is removed remains [0024]. In other words, the vent hole projection trace is provided at the deepest end of the projection after vulcanization. The teachings of Suganuma are applicable to a wide variety of protrusion types on a sidewall surface, such as numbers, letters, design elements, etc. [0035, see Figs. 7-10], and the teachings are also applicable when the protrusion intersects with another groove [Fig. 13].
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the first ridges as in Muhlhoff in view of Duchene to have an increasing ridge height from one radial side to the other radial side, as suggested by Suganuma. In applying this change in depth, the ridge would have a deepest portion, which would be the location used for gas vent passages, and the vent hold projection trace would be provided at the end of the ridge with the higher projection height. One would have been motivated in order to reduce the number of gas vent passages and reduce the occurrence of spews, in addition to discharging all of the gas from the mold to ensure vulcanization [0007, 0026-0027]
Regarding claim 30, Muhlhoff in view of Suganuma further makes obvious a difference in the projection height between one end and the other end of the first ridge is from 0.2 to 0.5mm (the frame of Duchene may protrude outboardly past the sidewall surface, and the height of the protrusion of the frame is preferably 0.2mm or more [0027], with no specified upper limit. Suganuma suggests that the groove depth of its protrusions may range from 0.1 to 5.0mm [0042]. One would work within the range of groove depths as suggested by Suganuma in order to ensure unvulcanized rubber can flow smoothly into the groove during vulcanization such that gas is effectively discharged, and in order to have a preferable appearance [0042]. Therefore, given the suggestion that Suganuma provides a continuously increasing protruding height towards one side, there would be numerous embodiments where the claimed range was satisfied. One example would be when a first ridge has a lower height end at 0.2mm, and a higher height end at 0.5mm. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Claims 31, 33 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlhoff (US2017/0050473A1, of record) in view of Niwa (JPH09249006A, of record) and in view of Duchene (US2019/0135011A1, of record), as applied to claim 17 above, and further in view of Miyazaki (JP2019026142A, of record).
Regarding claim 31, Muhlhoff does not explicitly disclose a tread rubber member of the pneumatic tire. Muhlhoff does not limit the placement of its code “4” to any particular portion of the sidewall. Miyazaki teaches that a sidewall rubber and a tread rubber constituting the tread portion will be made of different rubber material with different physical properties because the required performance is different for a tread rubber compared to a sidewall rubber [0005]. Because there are separate rubbers between the tread and sidewall portions, there exists a rubber interface “30” between them, with an outer end portion “31” which is on the outer surface of the tire [0031]. Miyazaki has groove portions “40” which are formed so as to intermittently cross the interface “30” and the outer end portion “31” such that at least a portion of it is formed over the boundary “30” portion [Fig. 2, Fig. 4-5]. Said another way, the plurality of groove forming protrusions during vulcanization are formed over the boundary between the tread rubber layer and side rubber layer [0014, 0022].
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the tire of Muhlhoff such that it had a separate tread rubber from the side rubber and that the first ridges were made to straddle a boundary between the rubbers, as suggested by the tire of Miyazaki. One would have been motivated to have a separate tread rubber in order to have different rubber materials with different physical properties for the different areas of the tire, because the required performance is different for a tread rubber compared to a sidewall rubber [Miyazaki, 0005]. One would have been motivated to place the first ridges (and respectively the code as well) at this boundary portion, as this would result, during the time of vulcanization, for the green tire to be intermittently pressed in the tire circumferential direction by the interface crossing portions, which leads to adhesion of the rubber boundary to be improved and for peeling between the tread and sidewall rubbers to be suppressed [0040]. It is additionally noted, as stated in the rejection of claim 17 above, that the frame as in Muhlhoff in view of Duchene may project inward from the smooth surface (recessing into the tire sidewall) in addition to projecting outward from the smooth surface, making the teachings of Miyazaki’s groove and protrusion portions particularly relevant and applicable.
Regarding claim 33, modified Muhlhoff further makes obvious a tire wherein a tread rubber member configured to form a boundary portion with a buttress region of the pair of side rubber members (as in the rejection of claim 31 above, the presence of the tread rubber, which is of a different rubber from the sidewall rubber, means that there is an interface “30” between the two rubber members. This interface may be considered the boundary portion between the two rubbers, and this area of the tire (between tread and sidewall) may be considered to be a buttress region), the smooth surface is provided straddling the boundary portion and the first ridges are straddling the boundary portion (as in the rejection of claim 31 above, when Muhlhoff is in view of Miyazaki, one would have found it obvious to place the first ridges on a boundary between the rubber portions, as suggested by Miyazaki. One would have been motivated to place the first ridges (and respectively the code and the smooth surface as well) at this boundary portion, as this would result, during the time of vulcanization, for the green tire to be intermittently pressed in the tire circumferential direction by the interface crossing portions, which leads to adhesion of the rubber boundary to be improved and for peeling between the tread and sidewall rubbers to be suppressed [0040]. The placement of the symbol of Muhlhoff is not particularly limited as it may range across the length of the tire sidewall up to the tread (see Fig. 1, 0008), such that the symbol may readily be placed in such a boundary region between the rubbers. As it would be obvious to place the ridges to straddle this boundary portion for the effects listed above, the code which is located between the respective ridges (so as to delineate this area) would clearly also be obvious to situate at this same position so as to straddle the boundary portion. It is additionally noted, as stated in the rejection of claim 17 above, that the frame as in Muhlhoff in view of Duchene may project inward from the smooth surface (recessing into the tire sidewall) in addition to projecting outward from the smooth surface, making the teachings of Miyazaki’s groove and protrusion portions particularly relevant and applicable).
Claims 34 and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlhoff (US2017/0050473A1, of record) in view of Niwa (JPH09249006A, of record), in view of Duchene (US2019/0135011A1, of record), and in view of Miyazaki (JP2019026142A, of record).
Regarding claim 34, Muhlhoff teaches a pneumatic tire (“1”) comprising: a pair of bead cores having an annular shape (beads are positioned such that the sidewall extends between the bead and the tread [0008]. This would clearly be annular shaped as in Fig. 9. An annotated Fig. 9 is included below to facilitate discussion), a pair of side rubber members respectively provided in side surfaces of the pneumatic tire and covering the carcass ply from an outer side in a tire width direction (in the annotated Fig. 9 below, the side rubber member “3” and carcass ply are annotated as such. The carcass ply extends around both bead cores, and it is located within the side rubber wall surfaces),
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At least one surface of the side surfaces comprising a region of a smooth surface and a two-dimensional code located within the region of the smooth surface (as in Fig. 1 for example, the codex matrix code “4”, which is a 2D code such as a QR code [0016], is provided on a region of the sidewall wherein there are no other protrusions/recesses surrounding the code; there is only the sidewall of the tire. Therefore, the region outside of this code may be considered a smooth surface) and provided with a dot pattern comprising two types of gray scale elements identifiably formed of surface irregularity with respect to the smooth surface (the code is made up of dark parts “40” and light parts “41” which may extend above or below the sidewall [0088]. The dark and light parts “40” and “41” may be considered to be two types of gray scale elements. As in Fig. 7-21, for example, the dark and light parts have surface irregularity compared to the region outside of the code, as they are projecting inward/outward compared to the surrounding surface).
Muhlhoff does not explicitly have a tire with a cross-sectional height of 80mm or less, but Muhlhoff does not limit the inventive tire to a specific cross-sectional height. As such, it would be obvious to use any specific tire size with the inventive tire of Muhlhoff in order to have a working vehicle tire to be compatible with a host of vehicles. Niwa, for example, teaches flat tires with a cross-sectional height of 90mm or less [pg. 1 of machine translation], such as a tire with a size of 225/35R17 where the height of the tire cross-section is 79mm [pg. 5 of machine translation]. Therefore, it would have been obvious to choose any type of tire size, including tire sizes which result in a cross-sectional height of 80mm or less such as 225/35R17, and thereby provide a tire suitable for vehicles. Case law holds that the selection of a known material based on suitability for its intended use support prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045)". See MPEP 2144.07.
Muhlhoff does not explicitly show one or a plurality of first ridges projecting with respect to a smooth surface. Duchene teaches a pneumatic tire which has digital code patterns “20”, such as a QR code, on the sidewall of the tire [0018]. The code “20” is surrounded by a quiet zone “26” in order to completely surround the code so as to be free of markings, indicia, or other features [0021]. The code is also surrounded by a physical frame “34” that is formed on the tire sidewall outside the quiet zone [0023]. The frame may mark the entire perimeter of the quiet zone [0023]. When the frame marks the entire perimeter of the quiet zone of a QR code as in Fig. 2, the frame would be in a square shape. The frame may surround and clearly set the designation of the external boundary of the quiet zone [0023]. The frame may be made so as to recess into the sidewall, or to protrude outboard past the sidewall surface [0027]. It is noted that in either case, the frame would “project” with respect to the smooth surface. The frame would clearly be located well within a length of 50% of a width of the two-dimensional code in a circumferential direction, see Fig. 2 for example. And further, Duchene explicitly suggests dimensions of its code and frame “34”, such that a QR code has a width of 16.25mm and a quiet zone with a length of approximately 2.9mm [0030]. As the frame/ridge portion is located outside the quiet zone, such that the beginning of the frame/ridge would be located at a length of approximately 2.9mm from the length of the QR code. As 50% of the length of the width of the code would be a length of 9.125mm, the length suggested by Duchene of its frame/ridge placement would be well within 50%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the code of Muhlhoff in order to have the quiet zone and frame surrounding the code, as suggested by Duchene. One would have been motivated in order to optimize the ability to read and acquire the code and to delineate and secure the quiet zone and the external boundary of said quiet zone [0021, 0023, 0027]. In modifying Muhlhoff with Duchene, the code of Muhlhoff would be surrounded by a quiet zone region and a frame comprising two portions formed on the sides of the code which would surround the quiet zone and demarcate it as such. In modifying Muhlhoff with Duchene, the code of Muhlhoff would be surrounded by a quiet zone region and a square/rectangular frame surrounding the entire quiet zone (substantially similar to instant Fig. 4). In this frame, two first ridges would be the two sides of the frame that primarily extend in the tire radial direction (and as previously stated, project from the sidewall surface). As noted in the 112(b) rejections above, it would be reasonably considered that the first ridges are formed “almost parallel” to the radial direction given their extent as any angle may be broadly considered to be almost parallel, and further it being noted that as the frame would be formed on a tire which would necessarily have its outer wall curved, any such frame would necessarily have its ridges formed at an angle to the radial direction (almost parallel) within the broadest reasonable interpretation thereof. The frame as applied to the code, as in at least Fig. 1 of Muhlhoff, would be well within the 50% width of the two-dimensional code, and as stated previously, the rest of the area would be a smooth surface as the surface of the sidewall of the tire.
Muhlhoff does not explicitly disclose a tread rubber member of the pneumatic tire nor the first ridges straddling a boundary between the tread and sidewall rubber members. Muhlhoff does not limit the placement of its code “4” to any particular portion of the sidewall. Miyazaki teaches that a sidewall rubber and a tread rubber constituting the tread portion will be made of different rubber material with different physical properties because the required performance is different for a tread rubber compared to a sidewall rubber [0005]. Because there are separate rubbers between the tread and sidewall portions, there exists a rubber interface “30” between them, with an outer end portion “31” which is on the outer surface of the tire [0031]. Miyazaki has groove portions “40” which are formed so as to intermittently cross the interface “30” and the outer end portion “31” such that at least a portion of it is formed over the boundary “30” portion [Fig. 2, Fig. 4-5]. Said another way, the plurality of groove forming protrusions during vulcanization are formed over the boundary between the tread rubber layer and side rubber layer [0014, 0022].
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the tire of Muhlhoff such that it has a separate tread rubber from the side rubber and that the first ridges were made to straddle a boundary between the rubbers, as suggested by the tire of Miyazaki. One would have been motivated to have a separate tread rubber in order to have different rubber materials with different physical properties for the different areas of the tire, because the required performance is different for a tread rubber compared to a sidewall rubber [Miyazaki, 0005]. One would have been motivated to place the first ridges (and respectively the code as well) at this boundary portion, as this would result, during the time of vulcanization, for the green tire to be intermittently pressed in the tire circumferential direction by the interface crossing portions, which leads to adhesion of the rubber boundary to be improved and for peeling between the tread and sidewall rubbers to be suppressed [0040]. It is additionally noted, as stated above, that the frame as in Muhlhoff in view of Duchene may project inward from the smooth surface (recessing into the tire sidewall) in addition to projecting outward from the smooth surface, making the teachings of Miyazaki’s groove and protrusion portions particularly relevant and applicable.
Regarding claim 21, modified Muhlhoff makes obvious a tire wherein the first ridges are two first ridges, one of the two first ridges are provided on either side of the code, and two second ridges extending in the tire circumferential direction and respectively connecting ends of the two first ridges on both sides in the radial direction are provided, and the code is surrounded by two first and two second ridges (as in the rejection of claim 34 above, it is obvious to provide the code of Muhlhoff (as in Fig. 1 for example) with a square/rectangular frame that extends around the entirety of the code and the associated quiet zone. In doing so, two sides of the frame would be two first ridges on either circumferential side of the code (and extending primarily in the radial direction), while the other two sides of the frame would be on either radial side of the code (and extending primarily in the circumferential direction). Given that the frame forms a complete perimeter as suggested by Duchene, the ridges would clearly all be connected to each other and would surround the code [Duchene, 0023]).
Regarding claim 22, modified Muhlhoff makes obvious a tire wherein the first ridges are parallel to each other (as stated previously, because the shape of the frame is square/rectangular as suggested by Duchene, the two first ridges would be parallel to each other).
Regarding claims 23-25, modified Muhlhoff makes obvious a tire wherein a first separation distance from each of the two first ridges to an edge of the code is identical, a second separation distance from each of the two second ridges to an edge of the code is identical, and the first and second separation distance is identical (as in the rejection of claim 1, it would be obvious to have a quiet zone surrounding the square code and a square frame surrounding this quiet zone to demarcate it as such. In doing so, the first separation distance would be equivalent from each of the first ridges on either circumferential side of the code to the code, the second separation distance would be equivalent from each of the second ridges on either radial side of the code to the code, and the first and second separation distances would be equivalent to each other because the frame, quiet zone, and code were all squares. Additionally, this is suggested by Fig. 2 of Duchene, wherein the frame is placed at the end of the quiet zone, with the quiet zone arranged evenly on all sides of the code. Alternatively, Duchene defines “L” as the circumferential length of the quiet zone and “H” as the radial height of the quiet zone. The arrangement of the quiet zone, for a typical QR code, may be 22mm by 22mm, as an example [0030]. For this type of arrangement, the quiet zone would be a square with equal lengths in either direction. A quiet zone at these dimensions helps allow for the code to be centered within the quiet zone [Duchene, 0030]. When the QR code (which is a square) is centered within said quiet zone (which would similarly be a square), the separation distance from the square frame (and thus the two first ridges and two second ridges) to the edge of the code would clearly be identical on all sides).
Regarding claim 26, modified Muhlhoff makes obvious a tire wherein the two second ridges are provided within a range between edges on both sides of the two-dimensional code in the tire radial direction and positions respectively away from the edges along the tire radial direction by a length of 50% of a length of the two-dimensional code along the side surface between an edge on an outer side of the two-dimensional code in the radial direction and an edge on an inner side of the two-dimensional code in the tire radial direction (as can be seen in Fig. 2 of Duchene and as stated in the rejection of claim 34 above, for example, the frame and quiet zone extend in a square-like shape around that of the square QR type code (as in Fig. 1 of Muhlhoff, for example). The frame, as previously stated, may form a square around the entire quiet zone and code, such that it surrounds the perimeter of the two. In this frame, the two second edges would be the radially innermost and outermost sides of the square. The second ridges would clearly be well within the 50% width of the two-dimensional code (given that the associated quiet zone is considerably less than 50% of width of the code), and the rest of the area within the 50% region would be a smooth surface as the surface of the sidewall of the tire as in Muhlhoff).
Regarding claim 27, modified Muhlhoff makes obvious a tire wherein the second ridges have a projection height of from 0.3 to 1.0mm from the smooth surface (the frame of Duchene may protrude outboardly past the sidewall surface, and the height of the protrusion of the frame is preferably 0.2mm or more [0027]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Response to Arguments
The Examiner has fully considered Applicant’s arguments and has found them unpersuasive.
Applicant argues that the amendments to claim 17 would overcome the prior references applied, because it is required for there to be two ridges as opposed to four ridges.
The Examiner respectfully disagrees. See the rejections above for greater detail, but the reference of Duchene clearly suggests the presence of the frame which may be situated in any convenient geometric shape, including that of lines that mark the sides of the quiet zone/code, and wherein there may be at least two of such positions present [Duchene, 0023]. As such, it would have been obvious to apply this shape to the code of Muhlhoff so as to delineate the code for easy readability. Additionally, it must be noted that in a similar modification (that of applying a square/rectangular frame of Duchene to Muhlhoff), the Patent Trial and Appeal Board found the modification and rejection convincing and were not persuaded by any of Applicant’s many arguments. The modification of the Examiner herein is along the same lines of reasoning and rationale that the Board found so convincing, wherein Duchene suggests a shape of the frame which would have been obvious to apply around the code of Muhlhoff. See Patent Board Decision pgs. 4-8.
Applicant argues that the amendments to claim 33 overcome the prior references applied because they do not suggest the smooth surface straddling the boundary portion.
The Examiner respectfully disagrees. As detailed in the rejections above, it would have been obvious to modify Muhlhoff so as to have the ridges be located straddling the boundary portion because of the teachings from Miyazaki, and such a modification to the ridges would clearly also have the code/smooth surface be formed straddling the boundary portion because the code/smooth surface is located between the two ridges. See rejections above for details. Additionally, see Patent Board Decision pg. 9, wherein the Board under the same fact patterns affirmed the Examiner’s rejection which combined the reference of Muhlhoff with Miyazaki so as to suggest the tire comprising ridges/smooth surface straddling the boundary portion. Additionally, see Final Rejection dated 6/17/2024 (of which the Board Affirmed), wherein the Examiner stated that the smooth surface/code would have similarly been found to be straddling the boundary portion via this modification.
Applicant argues that new claim 34 overcomes the prior art because Miyazaki states that the groove portion 41 extends obliquely at an inclination angle with respect to the circumferential direction, such that Miyazaki would be incompatible with claims 34 requirement for the ridges to be almost parallel to the radial direction.
The Examiner respectfully disagrees. First, it is noted that Applicant’s new amendments regarding “almost parallel” are both indefinite and unsupported by their specification, such that this limitation must be treated broadly such that any angle of the ridge may be considered to be almost parallel. Further, Applicant’s arguments regarding Miyazaki are unconvincing. The aspects of Miyazaki and motivation from Miyazaki to provide the groove on the boundary between the sidewall/tread rubber portion [0040, for example] is not tied to any specific angle of the groove or other aspects of the groove. Miyazaki’s groove angle is treated as a preference by Miyazaki [0016, “preferably”, and see claim 1], such that this groove angle is considered to be an optional/preferable aspect of Miyazaki that is not required to achieve the aspects of the invention that is being relied upon in the rejection. 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 Merc & Co v. Biocraft Labs, Inc., 874 F 2d 804,807 10 USPQ 2nd 1843, 1846 (Fed. Cir.). Therefore, it is reasonably considered that one of ordinary skill in the art would have found it obvious to modify the location of ridges so as to be located straddling a boundary between side rubber/tread rubber members, as suggested by Miyazaki, so as to improve adhesion of the rubber.
Additionally, it must be noted that the Patent Trial and Appeal Board affirmed the rejection of claim 33 and the modification that was relied upon in this rejection (utilizing Miyazaki). The PTAB were unpersuaded by all of the Appellant’s arguments, and found that the modification of Miyazaki was reasonable. This is essentially the same case as what was argued therein, where the positions of the ridges/smooth surface are made to be straddling the boundary between tread rubber and sidewall rubber. Because the Patent Trial and Appeal Board found this modification and rejection convincing, the Examiner similarly finds these rejections utilizing the same line of reasoning convincing. See Patent Board Decision pg. 9.
Conclusion
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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