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 Rejections - 35 USC § 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.
Claims 1, 10, 14, 15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Destraves (FR3059605, with English equivalent US 20200079159) in view of Merino Lopez (US 20150075691), Hanada (US 5221385), and Inagaki (JP 2014-118507, with English machine translation) and optionally, as evidenced by Hicks (US 2020/0384811) and Pereira (US 2001/0020507).
Regarding claim 1, Destraves discloses:
A pneumatic tire (see tire, [0065], Fig. 4), comprising:
a tread portion extending in a tire circumferential direction and having an annular shape (tread 89);
a pair of sidewall portions disposed on both sides of the tread portion (sidewalls 83);
and a pair of bead portions disposed on an inner side in a tire radial direction of the sidewall portions (beads 84);
the tire being embedded with a transponder covered with a covering layer (see radiofrequency transponder embedded in mass 112; [0033,0064], Fig. 3; embedded at various locations, Fig. 5).
Regarding the secant modulus of elasticity at 10% deformation at 20C of the covering layer being in a range of from 0.5 MPa to 2.5 MPa, Destraves discloses the transponder is embedded in a flexible mass 112 made of electrically insulating elastomer ([0033]). Destraves teaches that the elastic modulus of the encapsulating rubber is lower than or equal to the elastic modulus of the adjacent rubber blends so that the encapsulating rubber deforms under mechanical stress without transmitting excessively high forces to the electronic unit ([0035,0037]), wherein the elastic modulus is obtained when applying uniaxial extension stress of 10% at 22C, [0036]). Destraves discloses the transponder as embedded between adjacent rubber layers in Fig. 5 but does not disclose the modulus of these layers or the modulus of the covering layer as 0.5 to 2.5 MPa.
In the same field of tires, Merino Lopez discloses the secant modulus at 10% of filling, outer strip, and protector rubber compounds in a tire bead portion is preferably 5 to 15MPa to provide low hysteresis and improve rolling resistance ([0028-0029,0092]; modulus at 10% elongation means secant modulus in extension at 10%, [0093]).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the secant modulus at 10% of the covering layer as 0.5 to 2.5 MPa since (1) Destraves teaches that the elastic modulus of the encapsulating rubber is lower than or equal to the elastic modulus of the adjacent rubber blends so that the encapsulating rubber deforms under mechanical stress without transmitting excessively high forces to the electronic unit ([0035,0037]) wherein the transponder is embedded between rubbers of the bead as depicted in Fig. 5; and (2) Merino Lopez discloses rubber layers of a tire bead preferably have a secant modulus at 10% elongation of 5 to 15 MPa to provide low hysteresis and enhanced rolling resistance ([0028-0029,0092-0093]). One would have been motivated to configure the rubber bead layers in Destraves with secant modulus at 10% of 5 to 15MPa to improve rolling resistance and to configure the covering rubber of the transponder with modulus less than 5 to 15MPa to improve mechanical endurance of the electronic unit.
Additionally, it would have been obvious to one having ordinary skill in the art prior to the effective filing date to configure the secant modulus at 10% as 0.5 to 2.5 MPa, since it has been held that discovering an optimum value of a result effective variable involves only routing skill in the art. See MPEP 2144.05(II). One would have been motivated to control the deformation of the encapsulating rubber and prevent the transmission of high forces to the electronic unit, thereby improving mechanical endurance of the unit ([0037]).
Destraves disclosure that the elastic modulus is obtained when applying a uniaxial extension stress of 10% after an accommodation cycle is considered to refer to a secant modulus of elasticity at 10% deformation. As optionally applied evidence, a 'modulus' or 'modulus of elongation' measured in similar terms is conventionally described as a secant modulus in the prior art (see Hicks, [0019]; Pereira, [0012]; Merino Lopez, [0093]). As evidenced by Hicks, Pereira, and Merino Lopez, Destraves's definition of an elastic modulus obtained by applying uniaxial extension stress of 10% is consistent with a secant modulus at 10% deformation.
Destraves does not expressly disclose the storage modulus ratio at 20C to 60C for the covering layer. Examiner notes that ratio of storage modulus at 20C vs 60C represents the temperature dependence of the material and a change in stiffness properties as temperature increases. Degradation of material properties as a result of temperature increase is recognized in the tire art as undesirable. In the same field of endeavor of tires, Hanada concerns a rubber layer embedded within the tire sidewall/bead area. Hanada discloses the rubber layer as having a dynamic modulus of elasticity ratio E'(20C)/E'(60C) of 1.2 to 1.4. Hanada discloses that if the ratio is greater than 1.4 the rigidity of the layer is greatly lowered when the temperature increases. Inagaki, similarly directed towards tire rubber compositions, concerns a rubber composition for the tire bead portion and discloses the ratio of storage elastic modulus at 100C to storage elastic modulus at 20C to should be 0.75 or more (i.e., E'(20C)/E'(100C) is less than 1.33) to suppress the temperature dependence of the elastic modulus ([0017]). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the storage modulus ratio as between 1 and 1.5 in view of the disclosures of Hanada and Inagaki which teach storage modulus ratios of less than 1.4 or 1.33 at low vs high temperatures to suppress a decrease in physical properties of the rubber as temperature increases (see citations above). Examiner notes that Destraves discloses the covering and electronic unit as embedded within the bead portion of the tire (see Fig. 5, also see discussion of claim 15 below). Although Hanada and Inagaki disclose different rubbers layers within the bead portion, a person having ordinary skill in the art would have readily appreciated the disclosures' teachings that temperature dependence in rubber storage modulus is undesirable for rubbers within the bead of the tire. One would have been motivated to ensure the physical properties of the electronic unit's covering does not degrade at elevated operating temperatures.
Regarding claim 10, Destraves teaches a relative dielectric permittivity of less than 6.5 ([0064]).
Regarding claim 14, Destraves teaches the transponder is spaced from carcass ply end 881 by at least 10 mm, preferably at least 15 mm ([0021]). The carcass ply end 881 extends above the bead core (Fig. 5) and thus the transponder would be at least 15 mm from the bead core. Also, Fig. 5 shows the transponder 100 as inwards of the tire maximum width position.
Regarding claim 15, Destraves clearly illustrates the transponder as embedded within the bead portion at a distance of 1 mm or more from the tire surface (Fig. 5, see transponder 100 in between apex layers 91 and 92). Examiner notes that the transponder is spaced from the carcass ply end 881 by at least 10 mm ([0021]) and that the helical antenna has outside diameter of 1.4 mm ([0055])--the rubber layers surrounding the transponder are clearly thicker than the transponder (Fig. 5).
Regarding claim 17, Destraves teaches the transponder has a chip on a circuit board and a helical antenna ([0054-0055]).
Regarding claim 18, Destraves discloses:
A pneumatic tire (see tire, [0065], Fig. 4), comprising:
a tread portion extending in a tire circumferential direction and having an annular shape (tread 89);
a pair of sidewall portions disposed on both sides of the tread portion (sidewalls 83);
and a pair of bead portions disposed on an inner side in a tire radial direction of the sidewall portions (beads 84);
the tire being embedded with a transponder covered with a covering layer (see radiofrequency transponder embedded in mass 112; [0033,0064], Fig. 3; embedded at various locations, Fig. 5).
Regarding the secant modulus of elasticity at 10% deformation at 20C of the covering layer being in a range of from 3.7 MPa to 5.0 MPa, Destraves discloses the transponder is embedded in a flexible mass 112 made of electrically insulating elastomer ([0033]). Destraves teaches that the elastic modulus of the encapsulating rubber is lower than or equal to the elastic modulus of the adjacent rubber blends so that the encapsulating rubber deforms under mechanical stress without transmitting excessively high forces to the electronic unit ([0035,0037]), wherein the elastic modulus is obtained when applying uniaxial extension stress of 10% at 22C, [0036]). Destraves discloses the transponder as embedded between adjacent rubber layers in Fig. 5 but does not disclose the modulus of these layers or the modulus of the covering layer as 3.7 MPa to 5.0 MPa.
In the same field of tires, Merino Lopez discloses the secant modulus at 10% of filling, outer strip, and protector rubber compounds in a tire bead portion is preferably 5 to 15MPa to provide low hysteresis and improve rolling resistance ([0028-0029,0092]; modulus at 10% elongation means secant modulus in extension at 10%, [0093]).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the secant modulus at 10% of the covering layer as 3.7 MPa to 5.0 MPa since (1) Destraves teaches that the elastic modulus of the encapsulating rubber is lower than or equal to the elastic modulus of the adjacent rubber blends so that the encapsulating rubber deforms under mechanical stress without transmitting excessively high forces to the electronic unit ([0035,0037]) wherein the transponder is embedded between rubbers of the bead as depicted in Fig. 5; and (2) Merino Lopez discloses rubber layers of a tire bead preferably have a secant modulus at 10% elongation of 5 to 15 MPa to provide low hysteresis and enhanced rolling resistance ([0028-0029,0092-0093]). One would have been motivated to configure the rubber bead layers in Destraves with secant modulus at 10% of 5 to 15MPa to improve rolling resistance and to configure the covering rubber of the transponder with modulus less than 5 to 15MPa to improve mechanical endurance of the electronic unit.
Additionally, it would have been obvious to one having ordinary skill in the art prior to the effective filing date to configure the secant modulus at 10% as 3.7 MPa to 5.0 MPa, since it has been held that discovering an optimum value of a result effective variable involves only routing skill in the art. See MPEP 2144.05(II). One would have been motivated to control the deformation of the encapsulating rubber and prevent the transmission of high forces to the electronic unit, thereby improving mechanical endurance of the unit ([0037]).
Destraves's disclosure that the elastic modulus is obtained when applying a uniaxial extension stress of 10% after an accommodation cycle is considered to refer to a secant modulus of elasticity at 10% deformation. As optionally applied evidence, a 'modulus' or 'modulus of elongation' measured in similar terms is conventionally described as a secant modulus in the prior art (see Hicks, [0019]; Pereira, [0012]; Merino Lopez, [0093]). As evidenced by Hicks, Pereira, and Merino Lopez, Destraves's definition of an elastic modulus obtained by applying uniaxial extension stress of 10% is consistent with a secant modulus at 10% deformation.
Destraves does not expressly disclose the storage modulus ratio at 20C to 60C for the covering layer. Examiner notes that ratio of storage modulus at 20C vs 60C represents the temperature dependence of the material and a change in stiffness properties as temperature increases. Degradation of material properties as a result of temperature increase is recognized in the tire art as undesirable. In the same field of endeavor of tires, Hanada concerns a rubber layer embedded within the tire sidewall/bead area. Hanada discloses the rubber layer as having a dynamic modulus of elasticity ratio E'(20C)/E'(60C) of 1.2 to 1.4. Hanada discloses that if the ratio is greater than 1.4 the rigidity of the layer is greatly lowered when the temperature increases. Inagaki, similarly directed towards tire rubber compositions, concerns a rubber composition for the tire bead portion and discloses the ratio of storage elastic modulus at 100C to storage elastic modulus at 20C to should be 0.75 or more (i.e., E'(20C)/E'(100C) is less than 1.33) to suppress the temperature dependence of the elastic modulus ([0017]). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the storage modulus ratio as between 1 and 1.5 in view of the disclosures of Hanada and Inagaki which teach storage modulus ratios of less than 1.4 or 1.33 at low vs high temperatures to suppress a decrease in physical properties of the rubber as temperature increases (see citations above). Examiner notes that Destraves discloses the covering and electronic unit as embedded within the bead portion of the tire (see Fig. 5, also see discussion of claim 15 below). Although Hanada and Inagaki disclose different rubbers layers within the bead portion, a person having ordinary skill in the art would have readily appreciated the disclosures' teachings that temperature dependence in rubber storage modulus is undesirable for rubbers within the bead of the tire. One would have been motivated to ensure the physical properties of the electronic unit's covering does not degrade at elevated operating temperatures.
Claims 2, 3, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Destraves (FR3059605, with English equivalent US 20200079159) in view of Merino Lopez (US 20150075691), Hanada (US 5221385), and Inagaki (JP 2014-118507, with English machine translation) and optionally, as evidenced by Hicks (US 2020/0384811) and Pereira (US 2001/0020507), as applied to claim 1 above, and further in view of Tsuji (JP2007-230261, with English machine translation).
Regarding claims 2 and 3, Destraves discloses the transponder as embedded in the bead portion with sidewall rubber member located outwards in the tire width direction from the transponder (Fig. 5). Destraves does not disclose the storage modulus at 2MPa to 12MPa or the storage modulus relationship relative a rubber member having a largest storage modulus of rubber members located on the outer side in the tire width direction of the transponder. It would have been obvious, however, to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the covering layer with modulus as claimed since Tsuji, similarly directed towards a tire with transponder, teaches that, generally, the dynamic elastic modulus of a side rubber part is about 5 to 7 MPa and that the dynamic modulus of a coating rubber composition should be about 2 to 12 MPa, preferably 4 to 7 MPa, so that the tire does not break when the sidewall flexes ([0010])--these values lie within the 2 to 12 MPa range of claim 2 and also satisfy the moduli ratio (moduli 4 to 7 / moduli 5 to 7 = 0.6 to 1.4).
Regarding claim 16, Destraves does not expressly disclose the thickness of the covering layer; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date to have configured the layer with thickness of 0.5 to 3.0 mm since Tsuji, similarly directed towards a tire with transponder, teaches configuring the rubber covering layer with thickness of 0.5 to 2 mm to enable communication and enhance durability ([0012,0013]).
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Destraves (FR3059605, with English equivalent US 20200079159) in view of Merino Lopez (US 20150075691), Hanada (US 5221385), and Inagaki (JP 2014-118507, with English machine translation) and optionally, as evidenced by Hicks (US 2020/0384811) and Pereira (US 2001/0020507), as applied to claim 1 above, and further in view of Balnis (US 20170368874).
Regarding claims 11 and 12, Destraves discloses the covering layer as made of elastomer but is silent as to the particular composition. In the same field of endeavor of tire transponders, Balnis discloses a rubber composition for covering a radio device inside tires wherein Balnis discloses the composition as comprising 25 phr or more, including 25 to 40 phr, of non-reinforcing filler ([0048]). The non-reinforcing fillers include a number of white fillers such as titanium dioxide; carbonates including calcium carbonate; and talc ([0049]). Balnis discloses the rubber composition provides improved readability of the radio device ([0081]). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured covering layer of Destraves with the rubber composition disclosed by Balnis, said composition comprising 25 phr or more of a non-reinforcing filler that includes calcium carbonate, for the purpose of improving readability of the transponder ([0048,0049,0081]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Destraves (FR3059605, with English equivalent US 20200079159) in view of Merino Lopez (US 20150075691), Hanada (US 5221385), and Inagaki (JP 2014-118507, with English machine translation) and optionally, as evidenced by Hicks (US 2020/0384811) and Pereira (US 2001/0020507), as applied to claim 1 above, and further in view of Battocchio (US 20130112324).
Regarding claim 13, Destraves does not disclose the transponder's circumferential position relative to a splice; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the transponder's center as 10 mm or more away from a splice since Battocchio, similarly directed towards a tire with transponder, teaches positioning a transponder diametrically opposed to a weld 16 (i.e., splice) of a sidewall component to ensure a good quality of remote radio communication with the transponder ([0057], see Figs. 2, 3). Examiner notes that conventional vehicle tires have circumferences that are orders of magnitude larger than 10 mm and thus the transponder would be further away from the splice by at least 10 mm.
Response to Arguments
Applicant's arguments filed 12/13/2025 have been fully considered but they are not persuasive. Applicant argues that the elastic modulus described by Destraves is a Young's modulus that refers to the slope of the line measured at the origin and not a secant modulus at 10% deformation. Applicant argues that it is not reasonable to interpret Destraves based on other documents that are not part of Destraves. Applicant also argues that Destraves does not teach the amended modulus range.
Applicant's arguments are unpersuasive. Destraves provides a special definition of the term "elastic modulus" where the term is expressly defined as the modulus obtained when an extension stress of 10% is applied ([0036]). Thus, elastic modulus used in Destraves is not measured at the origin as asserted by Applicant and instead corresponds to the claimed secant modulus at 10% deformation. Examiner cited Hick and Pereira as optionally applied evidentiary references to refute Applicant's assertion that "modulus of elasticity" can only refer to a Young's modulus that is measured at the origin. Hicks and Pereira disclose moduli taken at 10% elongation under substantially similar test conditions as described in Destraves are known as secant moduli (Hicks, [0019]; Pereira, [0012]).
As to the amended modulus range, while Destraves discloses the encapsulating/covering layer has a modulus "of the order of 3.2 MPa" ([0064]), Destraves is not limited to this modulus. Destraves's broader disclosure teaches that the elastic modulus of the encapsulating rubber mass is lower than or equal to the elastic modulus of the adjacent rubber blends to control the rigidity of the encapsulating rubber such that it will deform under mechanical stress without transmitting excessively high forces to the electronic unity, thereby improving mechanical endurance of the electronic unit ([0035,0037]). Merino Lopez is cited for disclosing preferable secant modulus values for rubber layers within the bead region. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the covering layer with modulus as claimed since (1) Destraves discloses positioning the encapsulated electronic unit between rubber layers in the bead region (Fig. 5) and that the modulus of the encapsulating rubber is less than or equal to that of the adjacent rubber layers to improve mechanical endurance [0033-0037]) and (2) Merino Lopez discloses configuring the rubber layers in the bead region with secant modulus of 5 to 15MPa to enhance rolling resistance ([0028-0029,0092-0093]), thus one would have been motivated to provide the encapsulating rubber of the electronic unit with modulus of less than 5 to 15 MPa.
Regarding claims 2 and 3, Applicant argues that Tsuji discloses a dynamic modulus of elasticity and does not disclose the storage modulus. In the prior Office Action, Examiner argued that the notation used in Tsuji refers to a storage modulus. Applicant argues that the prior Office action provides no evidence to support this assertion.
Examiner disagrees. Tsuji's use of the term dynamic elastic modulus (E') and the E' notation in paragraphs [0007,0008] and Table 1 represent the storage modulus, which is the elastic component in dynamic mechanical analysis. E' is an extensively used and very conventional notation for storage modulus in dynamic mechanical analysis. For example, see "Storage and Loss Moduli" in Mechanical Behavior of Materials, which states that E' is the tensile storage modulus and "[t]he storage modulus is a measure of the stored energy, i.e., the elastic part" (pg 124-125).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Momper can be reached at (571) 270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
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