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 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, 5, 6, 9, 10 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Balnis et al. (US20170368874) (of record) in view of applicant’s specification.
Regarding claim 1, Balnis discloses a pneumatic tire, comprising:
the tire being embedded with a transponder ([0029]) covered with a covering layer ([0028]).
Additionally, given that Balnis discloses that the electronic module can be incorporated into the various components of a tire, including a tread, sidewall, carcass ([0079]) and a bead portion ([0005] via “bead filler”) and therefore discloses these components as being inherently part of a tire, Balnis teaches that the pneumatic tire the transponder is incorporated into comprises: a tread portion extending in a tire circumferential direction and having an annular shape; a pair of sidewall portions disposed on both sides of the tread portion; a pair of bead portions disposed on inner sides in a tire radial direction of the pair of sidewall portions; and a carcass layer mounted between the pair of bead portions.
While Balnis does not explicitly disclose that the covering layer has a storage modulus E’c (-20oC) at -20oC ranging from 3 MPa to 5 MPa or has a glass transition temperature Tg being in a range of from -65oC to -45oC, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a1) applicant’s only exemplified instance of the claimed covering layer’s composition in the specification is as “a rubber or an elastomer and 20 phr or more of a white filler” ([0038]) with no further disclosure as to what specific “rubbers” or “elastomers” could be considered (for example, natural rubber, styrene butadiene rubber, butyl rubber, etc.);
a2) Balnis teaches a composition comprising a rubber or elastomer ([0055]) and 20 phr or more of a white filler ([0048]-[0049] in regards to calcium carbonate); and
a3) case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01);
a4) as the composition of Balnis comprises the same components of the composition described in applicant’s specification (rubber or elastomer and 20 phr or more of a white filler), it would also comprise of the same (or similar) intrinsic properties, including a storage modulus E’c (-20oC) at -20oC ranging from 3 MPa to 5 MPa and a glass transition temperature Tg being in a range of from -65oC to -45oC.
Furthermore, examiner notes that the current written specification does not support criticality of the claimed range of storage modulus with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (See MPEP 716.02(d)(II)). As currently written, the specification only comprises one experimental data point within the ranges of claim 1 (Example 3 in Table 1), which does not perform as well in terms of transponder evaluation when in comparison to example 4, which is identical except for the storage modulus.
Regarding claim 3, modified Balnis teaches all limitations of claim 1 as set forth above. Additionally, given that Balnis teaches the same composition as the claimed invention as set forth above and would therefore have the same (or similar) intrinsic properties, Balnis teaches that the covering layer has a relative dielectric constant of 7 or less. Alternatively, Balnis directly teaches that the covering layer has a relative dielectric constant of 7 or less ([0025]).
Regarding claim 5, modified Balnis teaches all limitations of claim 1 as set forth above. Additionally, Balnis teaches that the covering layer is formed of a rubber or an elastomer ([0055]) and 25 phr or more of a white filler ([0048-49], which is within the claimed range of 20 phr or more with calcium carbonate being a white filler).
Regarding claim 6, modified Balnis teaches all limitations of claim 5 as set forth above. Additionally, Balnis teaches that the white filler comprises from 25 phr to 50 phr of calcium carbonate ([0048-49], which is within the claimed range of 20 phr to 55 phr).
Regarding claim 9, modified Balnis teaches all limitations of claim 1 as set forth above. Additionally, given that Balnis teaches that that thickness of the covering layer can be greater than 1 mm ([0027]) and incorporated within the tire component structures ([0079]), Balnis discloses that a distance between a cross-sectional center of the transponder and a tire surface is 1 mm or more.
Regarding claim 10, modified Balnis teaches all limitations of claim 1 as set forth above. Additionally, Balnis teaches that a thickness of the covering layer ranges from 0.5 mm to 3.0 mm ([0027]).
Regarding claim 21, Balnis discloses a pneumatic tire, comprising:
the tire being embedded with a transponder ([0029]) covered with a covering layer ([0028]),
wherein the covering layer includes no carbon black ([0036], in that the composition generally comprises of fillers, [0040], in that the composition can comprise of no free carbon black, and [0046] in that “the rubber composition according to the first, second and third embodiments disclosed herein comprise no more than about 100 phr total carbon black”, a range that include 0 phr total carbon black.), and
the covering layer includes no silica ([0036], in that while “it is well known to those skilled in the art that tires are prepared from natural and synthetic rubbers that are generally compounded using fillers including carbon black and sometimes also including silica” (underline added for emphasis), the teaching is not limiting the types of fillers generally compounded to just carbon black and/or silica, meaning other fillers could be used while neither carbon black or silica are used).
Additionally, given that Balnis discloses that the electronic module can be incorporated into the various components of a tire, including a tread, sidewall, carcass ([0079]) and a bead portion ([0005] via “bead filler”) and therefore discloses these components as being inherently part of a tire, Balnis teaches that the pneumatic tire the transponder is incorporated into comprises: a tread portion extending in a tire circumferential direction and having an annular shape; a pair of sidewall portions disposed on both sides of the tread portion; a pair of bead portions disposed on inner sides in a tire radial direction of the pair of sidewall portions; and a carcass layer mounted between the pair of bead portions.
While Balnis does not explicitly disclose that the covering layer has a storage modulus E’c (-20oC) at -20oC ranging from 3 MPa to 17 MPa and has a glass transition temperature Tg being in a range of from -65oC to -45oC, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a1) applicant’s only exemplified instance of the claimed covering layer’s composition in the specification is as “a rubber or an elastomer and 20 phr or more of a white filler” ([0038]) with no further disclosure as to what specific “rubbers” or “elastomers” could be considered (for example, natural rubber, styrene butadiene rubber, butyl rubber, etc.)
a2) Balnis teaches a composition comprising a rubber or elastomer ([0055]) and 20 phr or more of a white filler ([0048]-[0049] in regards to calcium carbonate); and
a3) case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01);
a4) as the composition of Balnis comprises the same components of the composition described in applicant’s specification (rubber or elastomer and 20 phr or more of a white filler), it would also comprise of the same (or similar) intrinsic properties, including a storage modulus E’c (-20oC) at -20oC ranging from 3 MPa to 17 MPa and a glass transition temperature Tg being in a range of from -65oC to -45oC.
Furthermore, examiner notes that the current written specification does not support criticality of the claimed range of storage modulus with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (See MPEP 716.02(d)(II)). As currently written, outside of Example 1, the specification only comprises experimental data points within the claimed range of both the storage modulus and the glass transition temperature (Examples 2-13 in Table 1).
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Balnis et al. (US20170368874) (of record) and applicant’s specification in further view of Pulford et al. (US20190184771) (of record).
Regarding claim 7, modified Balnis teaches all limitations of claim 1 as set forth above. While modified Balnis does not explicitly teach that a center of the transponder is disposed 10 mm or more spaced from a splice portion of a tire component in the tire circumferential direction, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Pulford, which is within the tire modules art, teaches that the placement of sensors at the ends of a tire belt component (which would include locations where a splice exists) may lead to the creation of stress risers, which can decrease the fatigue resistance of the tire ([0007]). A person of ordinary skill in the art, to avoid negatively impacting the tire’s fatigue resistance, would be motivated to place the transponder at a location other than at a splice portion, which includes the claimed range of 10 mm or more from said splice.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Balnis et al. (US20170368874) (of record) and applicant’s specification in further view of Adamson et al. ‘736 (US20080289736) (of record).
Regarding 8, modified Balnis teaches all limitations of claim 1 as set forth above. While modified Balnis does not explicitly teach that the transponder is disposed between a position on an outer side in the tire radial direction by 15 mm of an upper end of a bead core of a bead portion of the pair of bead portions and a tire maximum width position, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Adamson ‘736, which is within the tire module art, teaches that a transponder (“RFID transponder”) is placed at least 15 mm radially outwards from the free end of a carcass ply for the benefit of avoiding amplifying a tire structure singularity, which may negatively impact the mechanical endurance of the tire ([0019], [0020]). Given that the free end of the carcass ply is located above the upper end of a bead core, Adamson ‘736’s teaching overlaps with the claimed range of 15 mm on an outer side in the tire radial direction from an upper end of a bead core of a bead portion of the pair of bead portions and a tire maximum width position.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Balnis et al. (US20170368874) (of record) and applicant’s specification in further view of Myatt (US20040189456) (of record).
Regarding claim 11, modified Balnis teaches all limitations of claim 1 as set forth above. Additionally, Balnis teaches that the transponder comprises an IC substrate that stores data ([0029], “suitable radio device known in the art capable of storing information”) and an antenna that transmits and receives data ([0029], “antenna”). While modified Balnis does not explicitly teach that the antenna has a helical shape, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Myatt, which is within the tire module art, teaches that the antenna (“antenna” (14)) of a transponder (“radio device” (12)) can be a helical shape for the benefit of longitudinal extensibility and bending flexibility of the antenna ([0020]).
Claim(s) 1, 3-6, 9, 10, 13-15 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al. (US20090015415) (of record) in view of applicant’s specification and alternatively in view of Rodgers (NPL) (of record).
Regarding claim 1, Uehara discloses a pneumatic tire comprising:
a tread portion extending in a tire circumferential direction and having an annular shape ([0003] with regards to placing transponders in a tire’s tread area);
a pair of sidewall portions disposed on both sides of the tread portion ([0008] with regards to “side portion of a tire”);
a pair of bead portions disposed on an inner side in a tire radial direction of the sidewall portions ([0008] with regards to a “bead portion of the tire”);
the tire being embedded with a transponder covered with a covering layer ([0005]).
While Uehara does not explicitly disclose that the covering layer has a storage modulus E’c (-20oC) at -20oC ranging from 3 MPa to 5 MPa and has a glass transition temperature Tg being in a range of from -65oC to -45oC, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a) applicant’s only exemplified instance of the claimed covering layer’s composition in the specification is as “a rubber or an elastomer and 20 phr or more of a white filler” ([0038]) with no further disclosure as to what specific “rubbers” or “elastomers” could be considered (for example, natural rubber, styrene butadiene rubber, butyl rubber, etc);
b1) Uehara teaches a composition comprising a rubber or elastomer ([0010]) and 5 to 55 phr or more of a white filler ([0012], which overlaps with 20 phr or more); or alternatively
b2a) Uehara teaches that “other various types of compounding agents compounded for general use and tire rubber” ([0015]) can be included in the covering layer; and
b2b) Rodgers, which is within the rubber compounding art, teaches that calcium carbonate is a known filler as a result effective variable for imparting hardness to rubber compounds (p.631); and as such, the discovering of an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05) that one would have been motivated to do to modify the hardness of the covering layer;
c) case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01);
d) as the composition of Uehara comprises the same components of the composition described in applicant’s specification (rubber or elastomer and 20 phr or more of a white filler), it would also comprise of the same (or similar) intrinsic properties, including a storage modulus E’c (-20oC) at -20oC ranging from 3 MPa to 5 MPa and a glass transition temperature Tg being in a range of from -65oC to -45oC.
Furthermore, examiner notes that the current written specification does not support criticality of the claimed range of storage modulus with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (See MPEP 716.02(d)(II)). As currently written, the specification only comprises one experimental data point within the ranges of claim 1 (Example 3 in Table 1), which does not perform as well in terms of transponder evaluation when in comparison to example 4, which is identical except for the storage modulus.
Regarding claim 3, modified Uehara teaches all limitations of claim 1 as set forth above. Additionally, given that Uehara teaches the same composition as the claimed invention as set forth above and would therefore have the same (or similar) intrinsic properties, Uehara teaches that the covering layer has a relative dielectric constant of 7 or less. Alternatively, Uehara directly teaches that the covering layer has a relative dielectric constant of 7 or less ([0012] with regards to “permittivity”).
Regarding claim 4, modified Uehara teaches all limitations of claim 1 as set forth above. Additionally, Uehara teaches that the transponder is embedded on an outer side in a tire width direction of a carcass layer ([0008]). While Uehara does not explicitly teach that the storage modulus of the covering layer at -20oC E'c (-20°C) and of a rubber member at -20oC E'out (-20°C), with the rubber member having a largest storage modulus at 20oC of rubber member located on the outer side in the tire width direction of the transponder, satisfy a relationship of 0.1 ≤ E'c (-20°C)/E'out (-20°C) ≤ 1.5, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that
a) Uehara teaches that the modulus of elasticity (“dynamic modulus) for a sidewall (“side portion”) of about 5 to 7 MPa at 20oC ([0008], [0012]), the covering layer of the module (“covering rubber composition”) has a dynamic modulus of about 2 to 12 MPa at 20oC ([0008], [0012]) for the benefit of preventing tire breakage ([0008]);
b) the ranges in Uehara includes instances where both the rubber member and the covering layer have the same modulus at least at 20oC ([0008]) and absent a showing of unexpected results when the modulus of the rubber member and the covering layer is considered at -20oC, a person of ordinary skill in the art would assume that two rubber compositions with the same modulus of elasticity at a given temperature would have similar modulus of elasticities at a different temperature for the predictable result of preventing tire breakage.
Furthermore, examiner notes that the current written specification does not support criticality of the claimed range of storage modulus relationship with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (See MPEP 716.02(d)(II)). As currently written, the specification only comprises of experimental data points within the claimed storage modulus relationship range (Table 1).
Regarding claim 5, modified Uehara teaches all limitations of claim 1 as set forth above. Additionally, as set forth in the rejection of claim 1 above, Uehara teaches that the covering layer is formed of a rubber or an elastomer and 5 to 55 phr of a white filler (which includes the claimed range of 20 phr or more).
Regarding claim 6, modified Uehara teaches all limitations of claim 5 as set forth above. Additionally, as it has been held that the discovering of an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05) and Rodgers recognizes calcium carbonate as a result effective variable for the purpose of adjusting the hardness of the rubber compound (p.631), Uehara in view of Rodgers teaches that the white filler comprises from 20 phr to 55 phr of calcium carbonate.
Regarding claim 9, modified Uehara teaches all limitations of claim 1 as set forth above. Additionally, given that Uehara teaches that the thickness of the covering layer can be from 0.2 to 2 mm ([0006], which overlaps the claimed range of 1 mm or more) and that the transponder is incorporated within the tire structure ([0008]), modified Uehara teaches that a distance between a cross-sectional center of the transponder and a tire surface is 1 mm or more.
Regarding claim 10, modified Uehara teaches all limitations of claim 1 as set forth above. Additionally, Uehara teaches that a thickness of the covering layer range from 0.2 to 2.0 mm ([0006], which overlaps with the claimed range of 0.5 to 3.0 mm).
Regarding claim 13, modified Uehara teaches all limitations of claim 3 as set forth above. Additionally, Uehara teaches that the transponder is embedded on an outer side in a tire width direction of a carcass layer ([0008]). While Uehara does not explicitly teach that the storage modulus of the covering layer at -20oC E'c (-20°C) and of a rubber member at -20oC E'out (-20°C), with the rubber member having a largest storage modulus at 20oC of rubber member located on the outer side in the tire width direction of the transponder, satisfy a relationship of 0.1 ≤ E'c (-20°C)/E'out (-20°C) ≤ 1.5, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given
a) Uehara teaches that the modulus of elasticity (“dynamic modulus) for a sidewall (“side portion”) of about 5 to 7 MPa at 20oC ([0008], [0012]), the covering layer of the module (“covering rubber composition”) has a dynamic modulus of about 2 to 12 MPa at 20oC ([0008], [0012]) for the benefit of preventing tire breakage ([0008]);
b) the ranges in Uehara includes instances where both the rubber member and the covering layer have the same modulus at least at 20oC ([0008]) and absent a showing of unexpected results when the modulus of the rubber member and the covering layer is considered at -20oC, a person of ordinary skill in the art would assume that two rubber compositions with the same modulus of elasticity at a given temperature would have similar modulus of elasticities at a different temperature for the predictable result of preventing tire breakage.
Furthermore, examiner notes that the current written specification does not support criticality of the claimed range of storage modulus relationship with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (See MPEP 716.02(d)(II)). As currently written, the specification only comprises of experimental data points within the claimed storage modulus relationship range (Table 1).
Regarding claim 14, modified Uehara teaches all limitations of claim 13 as set forth above. Additionally, as set forth in the rejection of claim 1 above, Uehara teaches that the covering layer is formed of a rubber or an elastomer and 5 to 55 phr of a white filler (which overlaps with the claimed range of 20 phr or more).
Regarding claim 15, modified Uehara teaches all limitations of claim 14 as set forth above. Additionally, as it has been held that the discovering of an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05) and Rodgers recognizes calcium carbonate as a result effective variable for the purpose of adjusting the hardness of the rubber compound (p.631), Uehara in view of Rodger teaches that the white filler comprises from 20 phr to 55 phr of calcium carbonate.
Claim(s) 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al. (US20090015415) (of record), applicant’s specification (and alternatively in view of Rodgers (NPL) (of record)) in further view of Pulford et al. (US20190184771) (of record).
Regarding claim 7, modified Uehara teaches all limitations of claim 1 as set forth above. While modified Uehara does not explicitly teach that a center of the transponder is disposed 10 mm or more spaced from a splice portion of a tire component in the tire circumferential direction, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Pulford, which is within the tire modules art, teaches that the placement of sensors at the ends of a tire belt component (which would include locations where a splice exists) may lead to the creation of stress risers, which can decrease the fatigue resistance of the tire ([0007]). A person of ordinary skill in the art, to avoid negatively impacting the tire’s fatigue resistance, would be motivated to place the transponder at a location other than at a splice portion, which includes the claimed range of 10 mm or more from said splice.
Regarding claim 16, modified Uehara teaches all limitations of claim 15 as set forth above. While modified Uehara does not explicitly teach that a center of the transponder is disposed 10 mm or more spaced from a splice portion of a tire component in the tire circumferential direction, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Pulford, which is within the tire modules art, teaches that the placement of sensors at the ends of a tire belt component (which would include locations where a splice exists) may lead to the creation of stress risers, which can decrease the fatigue resistance of the tire ([0007]). A person of ordinary skill in the art, to avoid negatively impacting the tire’s fatigue resistance, would be motivated to place the transponder at a location other than at a splice portion, which includes the claimed range of 10 mm or more from said splice.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al. (US20090015415) (of record), applicant’s specification (and alternatively in view of Rodgers (NPL) (of record)) in further view of Adamson et al. ‘736 (US20080289736) (of record).
Regarding 8, modified Uehara teaches all limitations of claim 1 as set forth above. While modified Uehara does not explicitly teach that the transponder is disposed between a position on an outer side in the tire radial direction by 15 mm of an upper end of a bead core of a bead portion of the pair of bead portions and a tire maximum width position, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Adamson ‘736, which is within the tire module art, teaches that a transponder (“RFID transponder”) is placed at least 15 mm radially outwards from the free end of a carcass ply for the benefit of avoiding amplifying a tire structure singularity, which may negatively impact the mechanical endurance of the tire ([0019], [0020]). Given that the free end of the carcass ply is located above the upper end of a bead core, Adamson ‘736’s teaching overlaps with the claimed range of 15 mm on an outer side in the tire radial direction from an upper end of a bead core of a bead portion of the pair of bead portions and a tire maximum width position.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al. (US20090015415) (of record), applicant’s specification (and alternatively in view of Rodgers (NPL) (of record)) and in further view of Myatt (US20040189456) (of record).
Regarding claim 11, modified Uehara teaches all limitations of claim 1 as set forth above. Additionally, Uehara teaches that the transponder comprises an IC substrate that stores data and an antenna that transmits and receives data ([0002] via RFID tags/modules). While modified Uehara does not explicitly teach that the antenna has a helical shape, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Myatt, which is within the tire module art, teaches that the antenna (“antenna” (14)) of a transponder (“radio device” (12)) can be a helical shape for the benefit of longitudinal extensibility and bending flexibility of the antenna ([0020]).
Claim(s) 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al. (US20090015415) (of record), applicant’s specification (and alternatively in view of Rodgers (NPL) (of record)) and Pulford et al. (US20190184771) (of record) in further view of Adamson et al. ‘736 (US20080289736) (of record).
Regarding 17, modified Uehara teaches all limitations of claim 16 as set forth above. While modified Uehara does not explicitly teach that the transponder is disposed between a position on an outer side in the tire radial direction by 15 mm of an upper end of a bead core of a bead portion of the pair of bead portions and a tire maximum width position, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Adamson ‘736, which is within the tire module art, teaches that a transponder (“RFID transponder”) is placed at least 15 mm radially outwards from the free end of a carcass ply for the benefit of avoiding amplifying a tire structure singularity, which may negatively impact the mechanical endurance of the tire ([0019], [0020]). Given that the free end of the carcass ply is located above the upper end of a bead core, Adamson ‘736’s teaching overlaps with the claimed range of 15 mm on an outer side in the tire radial direction from an upper end of a bead core of a bead portion of the pair of bead portions and a tire maximum width position.
Regarding claim 18, modified Uehara teaches all limitations of claim 17 as set forth above. Additionally, given that Uehara teaches that the thickness of the covering layer can be from 0.2 to 2 mm ([0006], which overlaps the claimed range of 1 mm or more) and that the transponder is incorporated within the tire structure ([0008]), modified Uehara teaches that a distance between a cross-sectional center of the transponder and a tire surface is 1 mm or more.
Regarding claim 19, modified Uehara teaches all limitations of claim 18 as set forth above. Additionally, Uehara teaches that a thickness of the covering layer range from 0.2 to 2.0 mm ([0006], which overlaps with the claimed range of 0.5 to 3.0 mm).
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al. (US20090015415) (of record), applicant’s specification (and alternatively in view of Rodgers (NPL) (of record)), Pulford et al. (US20190184771) (of record) and Adamson et al. ‘736 (US20080289736) (of record) in further view of Myatt (US20040189456) (of record).
Regarding claim 20, modified Uehara teaches all limitations of claim 19 as set forth above. Additionally, Uehara teaches that the transponder comprises an IC substrate that stores data and an antenna that transmits and receives data ([0002] via RFID tags/modules). While modified Uehara does not explicitly teach that the antenna has a helical shape, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Myatt, which is within the tire module art, teaches that the antenna (“antenna” (14)) of a transponder (“radio device” (12)) can be a helical shape for the benefit of longitudinal extensibility and bending flexibility of the antenna ([0020]).
Response to Arguments
Applicant's arguments filed 18 December 2025 have been fully considered but they are not persuasive.
Regarding applicant’s remarks on p. 7, applicant argues that examiner’s calculations used in previous office actions show that Uehara does not teach the claimed modulus and cannot intrinsically satisfy what is claimed. Examiner notes that as the most recent office action (Non-Final Rejection filed on 18 September 2025) did not rely on said calculations, such arguments are moot. However, for the benefit of expediting prosecution, examiner will respond to said arguments, noting that examiner’s calculations were based on determining a trendline in Excel using the data given in Table 3 of De Cancellis et al. (US20200317891A1) (of record), which only represents a preferred embodiment (as opposed to a general teaching) and as such, the reference is not restricted to the teachings of a preferred embodiment (including when teaching of said preferred embodiments may teach away from claimed values) unless said references explicitly teach away from the claimed values based on the general teaching.
Regarding applicant’s remarks on p. 7-8, applicant argues that Uehara is clear evidence that the claimed modulus is not necessarily satisfied and that the examiner has not provided a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings with regards to the storage modulus or the glass transition temperature. Examiner disagrees, noting that examiner’s basis relies on the fact that based on the applicant’s own specification in comparison to the composition taught in either reference Ueda or Balnis would be identical, and case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01). With regards to arguments towards Uehara as clear evidence, please refer to the response to applicant’s remarks on p.7 as set forth in the previous paragraph.
Regarding applicant’s remarks on p. 9, applicant argues that Balnis teaches that the ground cured rubber will include carbon black or silica and therefore does not meet the limitations of claim 21, citing passages [0051] and [0039]. Examiner disagrees, noting that [0036] of Balnis discloses that “it is well known to those skilled in the art that tires are prepared from natural and synthetic rubbers that are generally compounded using fillers including carbon black and sometimes also including silica” (underlined for emphasis). Balnis’s disclosure does not limit the types of fillers generally compounded in the tire art to just carbon black and/or silica, instead noting that the group of fillers include, but are not limited to, carbon black and/or silica, meaning other fillers could be used. The cited passages of [0039] and [0051] do not teach away from that taught in [0036].
Applicant’s arguments, see p.9, filed 18 December 2025, with respect to the 35 USC 103 rejection of claim 21 in view of Uehara and how Uehara requires the presence of silica have been fully considered and are persuasive. The 35 USC 103 rejection of claim 21 in view of Uehara et al. (US20090015415) (of record) in view of applicant’s specification and alternatively in view of Rodgers (NPL) (of record) has been withdrawn.
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 ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749