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 .
Response to Amendment
The amendments entered on 3/4/2026 have been accepted. Claims 1 and 7 are amended. Claim 25 is new. Claim 19 is canceled. Claims 1-18 and 20-25 are pending, and claims 7-15 are withdrawn from consideration. Applicant’s amendments to the claims have overcome the 112(b) rejections previously set forth in the non-final office action mailed 12/04/2025.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 final paragraph should read “…each of splice portions of the sidewall rubber layers, the rim cushion rubber layers and the carcass layer”, because there are two of each of these layers.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The 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 1-6, 16-17, 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over De Cancellis (US2020/0317891A1, of record), in view of Uehara (US2009/0015415A1, of record), and in view of Battocchio (US2013/0112324A1, of record) and Pulford (US2019/0184771A1, of record).
Regarding claim 1, De Cancellis teaches a pneumatic tire (tire “100”) comprising:
A tread portion extending in a tire circumferential direction and having an annular shape (tread band “109” as in Fig. 1 which would necessarily extend in the circumferential direction as Fig. 1 is a cross-section thereof [0295-0298]),
A pair of sidewall portions respectively on both sides of the tread portion (sidewall portions “108” are formed on both edges of the tire [0299-0303]),
A pair of bead portions disposed on an inner side of the pair of sidewall portions (as in Fig. 1, the bead portion is considered the area surrounding the bead core “102” which provides the structure for connecting the tire to the rim. This is clearly located radially inwards of the sidewall “108”),
A sidewall rubber layer disposed in the sidewall portion (the sidewall rubber layer may be considered to be “108” as in Fig. 1),
A rim cushion rubber layer disposed in the bead portion (the rim cushion rubber layer may be considered “105” as in Fig. 1 which would be located against the rim when the tire is mounted onto a tire),
A carcass layer mounted between the pair of bead portions (as in Fig. 1, the carcass “101” runs between respective bead cores [0279]).
De Cancellis does not explicitly show a transponder embedded outside of the carcass layer. It is extremely well known and conventional, though, that transponders are commonly included in modern day tire constructions in order to provide information during manufacture and transportation of tires, as well as measurements, such as pressure and temperature, during running. Uehara provides one example of such a conventional transponder embedded in a tire construction (Abstract and [0001-0005]). The transponder is embedded in the tire at a position above a rim-flange contact portion in a tire shoulder portion [0006, 0014], such that the general disclosure of Uehara suggests a placement axially outside of a carcass. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to include a well-known transponder in the tire of De Cancellis for the benefits detailed above.
De Cancellis teaches the structure of Fig. 1 with the multiple rubber layers as detailed above. De Cancellis is specifically tied to its inventive tire component and its associated composition and properties [see Abstract, 0008-0022]. De Cancellis’s tire component may be utilized in a wide variety of tire locations, including preferably being located in the tread band, sidewall, mini-sidewall, bead filling, antiabrasive strip, sub-layer, etc. [0265]. Therefore, De Cancellis explicitly suggests the use of its inventive tire component/composition in each of these locations, such that a person of ordinary skill in the art would have found it obvious to utilize this tire component in each of the locations listed, so as to obtain a working tire with a reasonable expectation of success. And with the utilization of these tire components/compositions, one would have realized a balance of wet/snow properties and improved braking on dry surfaces [0022]. Therefore upon the disclosure of De Cancellis, it would have been obvious to situate each of the rubber layers of De Cancellis (including “108”, “105”, and “104”) with this tire component/composition of De Cancellis in order to achieve these improved properties, as De Cancellis states that the composition may be utilized in any/all of these locations as a preferred embodiment.
Because of the modifications as above, the rubber member with the largest storage modulus at 20C of rubber members located on an outer side and an inner side of the transponder, in each case, would therefore be the rubber layer with the composition as suggested by De Cancellis. De Cancellis further shows that its components compositions experience a dynamic modulus of elasticity/storage modulus (E’) increasing with lower temperatures [0358, 0444, Table 3]. See the graph below which uses the data from Table 3 to graph the change in E’ with temperature. From this data, a trendline is established for each example used over the various temperatures. Note that to calculate a trendline, a value of 50 was added to each temperature to ensure that no x values were less than 0. So for example, a temperature of -10C in Table 3 is graphed with an x value of 40C in the Graph. From this, trendlines for each of the 4 testing examples were found, with equations for the trendlines shown on the graph below. It is noted that each of the R^2 values are above 0.98 showing a high degree of correlation.
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From the highly correlated trendlines, approximate values/relations of E’ at -20C and at 0C can be compared. A table is shown below of the calculated values based upon the trendline for the temperature at -20C, and it is highlighted below the expected ratio of E’(0C)/E’(-20C). The ratio of E’(0C)/E’(-20C) ranges from 0.74 to 0.80, well within the claimed range of 0.50 to 0.95.
E'(0C)
E'(-20C)
E'(0C)/E'(-20C)
E'(-40C)
E'(-20C)/E'(-40C)
Ex1
8.34
10.41
0.80
16.79
0.62
Ex2
9.53
12.93
0.74
24.92
0.52
Ex3
8.49
11.07
0.77
19.61
0.56
Ex4
11.51
15.51
0.74
29.42
0.53
Because of such a relationship, wherein tire rubber compounds would be expected to behave similarly with respect to a change in temperature, it would be expected that for the inner/outer rubber layers of modified De Cancellis that they would both have ratios E’(0C)/E’(-20) ranging from approximately 0.74 to 0.80, thus suggesting the claimed range. 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).
De Cancellis does not explicitly disclose the center of the transponder disposed at least 10mm in the circumferential direction for each of splices of the sidewall/rim cushion/carcass layer. However, it is very well understood in the art of tires and transponders that transponders should be placed far away from splice portions of tire components so as to improve communications, such that this would have been obvious to the person of ordinary skill in the art. 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.
Pulford, which is similarly directed to a tire with a transponder, 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.
Therefore, in view of Battocchio/Pulford, it is clear that it is well understood in the art for transponders to be located far away from any splice portions of the other surrounding components, such that one of ordinary skill in the art would have found it obvious to arrange the transponder far away from each of the respective splice portions so as to be at least 10mm away there from. Additionally, Applicant has not provided a conclusive showing of unexpected results for the claimed configuration (none of the inventive examples in Tables 1 and 2 provide any testing results comparing a circumferential distance of the transponder to any of the splice portions). It is further noted that the claims are directed to absolute dimensions and it is well taken that tire dimensions are a function of the intended tire use and ultimately the tire size (larger tires, for example, have greater circumferences and thus spacings between splice portions, for example, would be expected to be greater).
Regarding claim 2, modified De Cancellis makes obvious a tire wherein the largest storage modulus rubber on the outer side of the transponder has a value E’out(-20C)/E’out(-40C) from 0.4 to 0.7, and the largest storage modulus on the inner side of the transponder has a value E’in(-20C)/E’in(-40C) from 0.2 to 0.7 (as detailed in the rejection of claim 1 above, each of the rubbers in this region would have the rubber composition as suggested by De Cancellis. As in De Cancellis and the chart/data listed in the rejection of claim 1 above, a predictive trendline with a very high R^2 value may be utilized to find the modulus values at specific temperature. With reference to the graph and chart of values in the rejection of claim 1 above, the expected values of the ratio E’(-20C)/E’(-40C) would range from 0.52 to 0.62, which is entirely within the claimed ranges of 0.4 to 0.7 and 0.2 to 0.7. Therefore, based on this evidence, one of ordinary skill in the art would have reasonably concluded that the inner/outer rubber layers of modified De Cancellis would have a ratio E’-20C/E’-40C significantly overlapping within the claimed ranges of 0.4 to 0.7 and 0.2 to 0.7, thus suggesting the claimed ratios. 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).
Regarding claims 3 and 4, modified De Cancellis makes obvious a tire wherein the transponder is covered with a coating layer (the transponder of Uehara is covered with a rubber sheet with a specific composition [0006, 0008], wherein this covering layer is considered the coating layer), and a storage modulus of the coating layer E’c and a storage modulus of a rubber member adjacent to the outer side of the coating layer E’a have a relationship E’C(0C)/E’a(0C) ranging from 0.15 to 1.30 and E’C(-20C)/E’a(-20C) ranging from 0.15 to 1.30 (because the rubbers of De Cancellis of the sidewall/apex/etc. each have the composition as suggested by De Cancellis, these rubbers would be located respectively adjacent on an inner and outer side of the coating layer/transponder. At 23C, this modulus may range from 6.72MPa to 9.01MPa [see Table 3]. The modulus of the coating rubber as suggested by Uehara may range from 2 to 12MPa at 20C [0008, 0021], in order to prevent the tire from breaking during large flexing [0008]. Therefore, the modulus of the outer layer and the coating layer may have the same value (such as when both moduli are near the middle of their respective ranges at 7MPa), which would result in a ratio of 1.0. Although these respective moduli values are taken at room temperature (20C/23C), because both moduli would experience an increase in E’ with decreasing temperature (see De Cancellis chart in the rejection of claim 1 above, as well as the well understood relatiosnhip between modulus and temperature for rubbers), it would be reasonably expected that the moduli would both increase when taken at 0C and at -20C and would still be well within the claimed range of 0.15 to 1.30 with respect to each other. For example, based upon the increasing E’ values as suggested De Cancellis, a 6MPa rubber member would expect a E’ at 0C of approximately 8.5MPa and at -20C of approximately 11MPa. 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). Additionally, no evidence of criticality to the claimed range has been shown.).
Regarding claim 5, modified De Cancellis makes obvious a tire wherein the transponder is covered with a coating layer (the transponder of Uehara is covered with a rubber sheet with a specific composition [0006, 0008], wherein this covering layer is considered the coating layer), and a storage modulus -20C ranges from 3MPa to 17MPa (the storage modulus of the coating rubber layer ranges from 2 to 12MPa at 20C [0008, 0021] as suggested by Uehara. Based upon the data/charts/equations of De Cancellis as in the rejection of claim 1 above, a modulus of 6MPa at 20C would be expected to increase to ~11MPa at -20C, well within the claimed range. Additionally, as the suggested value of E’ of the coating layer at 20C is down to 2MPa [0008], there would be a wide range of values that would be expected to be significantly within the very wide claimed range. 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). Additionally, no evidence of criticality to the claimed range has been shown.).
Regarding claim 6, modified De Cancellis makes obvious a tire wherein the transponder is covered with a coating layer (the transponder of Uehara is covered with a rubber sheet with a specific composition [0006, 0008], wherein this covering layer is considered the coating layer), and a storage modulus at 0C to -20C of the coating layer has a relationship of E’C(0C)/E’C(-20C) ranging from 0.50 to 0.95 (as in the rejection of claim 1 above, it is well understood in the art of tires that the rubber has an increase in E’ with decreasing temperatures. Further, as in De Cancellis in the rejection of claim 1 above, a predictive trendline is utilized with a very high R^2 to predict the expected E’ values at 0C compared to -20C (wherein De Cancellis would be relevant because it is similarly tied to tire rubber component compositions). The ratio of E’(0C)/E’(-20C) suggested by De Cancellis ranges from 0.74 to 0.80, well within the claimed range of 0.50 to 0.95. Therefore, it is reasonably suggested to a person of ordinary skill in the art that the coating layer would have E’(0C)/E’(-20C) ratio values overlapping with the claimed range of 0.50 to 0.95. 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). Additioanlly, no evidence of criticality to the claimed range has been demonstrated by Applicant).
Regarding claim 16, modified De Cancellis makes obvious a tire wherein the transponder is covered with a coating layer (the transponder of Uehara is covered with a rubber sheet with a specific composition [0006, 0008], wherein this covering layer is considered the coating layer), and the coating layer has a dielectric constant of 7 or less (Uehara teaches the covering layer having a relative permittivity of preferably less than 7, such as 3 or 7 [0012]).
Regarding claim 17, modified De Cancellis makes obvious a tire wherein the transponder is covered with a coating layer (the transponder of Uehara is covered with a rubber sheet with a specific composition [0006, 0008], wherein this covering layer is considered the coating layer). Modified De Cancellis further suggests that the covering of the transponder may contain fillers and a variety of different compounds that are used in tires in general amounts [Uehara, 0015], and suggests that fillers such as silicas or other types may be utilized [0011-0013], in amounts ranging from 5-55 parts by weight [0012], wherein silica may be considered to be a “white filler” as it is not carbon black).
Regarding claim 20, modified De Cancellis makes obvious a tire wherein the transponder is disposed between a position 15mm away from and on an outer side in the radial direction of an upper end of a bead core and a tire maximum width position (the disclosure of Uehara which states that the transponder is “above a rim flange” [0014] is seen to encompass the claimed arrangement as De Cancellis/Uehara does not further limit the transponder placement maximum height location as long as it is above the rim flange contact point).
Regarding claim 21, modified De Cancellis makes obvious a tire wherein a distance between a cross-sectional center of the transponder and a tire outer surface is 2mm or more (the coating layer covering the transponder may have a thickness of up to 2mm [0006] or 3mm [0023], wherein the transponder is sandwiched between two such rubber sheets [0023. Therefore, the claim would be satisfied regardless of where the transponder is mounted when the coating layer thickness is 2mm (overlapping with the claimed range). Additionally, it is noted that tire sidewalls are conventionally much larger than 2mm, such that the claimed spacing would be satisfied in any number of sidewall locations even when not taking into account the coating layer thickness. 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)).
Regarding claim 22, modified De Cancellis makes obvious a tire wherein the transponder is covered with a coating layer (the transponder of Uehara is covered with a rubber sheet with a specific composition [0006, 0008], wherein this covering layer is considered the coating layer), and the thickness of the layer is from 0.5 to 3.0mm (the thickness of the transponder cover may be from 0.2 to 2mm thick [0006]).
Claims 17-18 is rejected under 35 U.S.C. 103 as being unpatentable over De Cancellis (US2020/0317891A1, of record), in view of Uehara (US2009/0015415A1, of record), and in view of Battocchio (US2013/0112324A1, of record) and Pulford (US2019/0184771A1, of record), as applied to claim 1 above, and further in view of at least one of Kataoka (US2003/0234067, of record), Okamura (US6197868, of record) and/or Kubo (US3619345, of record).
Regarding claims 17-18, modified De Cancellis makes obvious a tire wherein the transponder is covered with a coating layer (the transponder of Uehara is covered with a rubber sheet with a specific composition [0006, 0008], wherein this covering layer is considered the coating layer). Modified De Cancellis further suggests that the covering of the transponder may contain fillers and a variety of different compounds that are used in tires in general amounts [Uehara, 0015], and suggests that fillers such as silicas or other types may be utilized [0011-0013], in amounts ranging from 5-55 parts by weight [0012], wherein silica may be considered to be a “white filler” as it is not carbon black. A fair reading of Uehara suggests the use of rubber compositions having low carbon black loadings (such as less than 30 parts by weight, 0-10 or 0-5 parts by weight [0012]). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to use any number of non-carbon black fillers in the covering layer of Uehara and such would include calcium carbonate (white filler). It being emphasized that calcium carbonate and silica are commonly disclosed in an alternative manner when disclosing non-carbon black, white fillers, as shown for example by Kataoka [0034], and/or Okamura [Col4 L45+]. Additionally, calcium carbonate and silica are recognized as having low partitivities (e.g., do not absorb electromagnetic waves)- see Kubo [Col2 L4-16]. Thus, the use of silica or calcium carbonate as the white filler in Uehara remains consistent with the desire of Uehara to have low wave absorption and optimized electrical communication. Similarly, the use of these white fillers, as opposed to high carbon black loadings, promotes low modulus compositions. As Uehara teaches a rubber composition designed to have low wave absorption (optimized electrical communication) and low modulus values, one or ordinary skill in the art before the effective filing date of the invention would have found it obvious to use calcium carbonate and/or silica to achieve such a composition and Uehara recognizes the general order of loadings for white fillers (are recognized low absorption rates due to these white fillers, as opposed to carbon black). 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).
In the alternate, claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over De Cancellis (US2020/0317891A1, of record), in view of Uehara (US2009/0015415A1, of record), and in view of Battocchio (US2013/0112324A1, of record) and Pulford (US2019/0184771A1, of record), as applied to claim 1 above, and further in view of Broeker (WO2018224194A1, of record).
Regarding claim 20, Broeker teaches a pneumatic tire with a transponder “1” disposed axially outside of the carcass and radially above the bead core [see Figs. 1-2]. The transponder is disposed at a distance “18” from the top of the bead core, which is made to be preferably at least 7mm [0053]. 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 set the transponder distance from the bead core to be greater than 7mm as suggested by Broeker (and thus overlapping with the claimed range of at least 15mm). One would have been motivated so as to improve the signal transmission of the receiving device [0053-0054].
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over De Cancellis (US2020/0317891A1, of record), in view of Uehara (US2009/0015415A1, of record), and in view of Battocchio (US2013/0112324A1, of record) and Pulford (US2019/0184771A1, of record), as applied to claim 1 above, and further in view of Myatt (US2004/0189456A1, of record).
Regarding claim 23, De Cancellis in view of Uehara suggests the transponder is configured to transmit and store data [0001-0002], such that it is an RFID tag which would necessarily have an IC substrate in order to be capable of accomplishing its use [0001-0004]. De Cancellis does not explicitly have the antenna in a helical shape. Myatt teaches an electronic device for a tire which has an antenna for transmitting and receiving information [0017]. The antenna is arranged to be helical shape [0020]. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to provide the RFID transponder of modified De Cancellis with a helical antenna as suggested by Myatt. One would have been motivated so as to improve the longitudinal extensibility and bending flexibility of the antenna [0020].
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Obrecht (US2015/0031790A1, of record) in view of Hayashi (US5928445A, of record), in view of Uehara (US2009/0015415A1, of record), in view of Battocchio (US2013/0112324A1, of record) and Pulford (US2019/0184771A1, of record).
Regarding claim 24, Obrecht teaches a pneumatic tire (see title and claim 20, wherein the rubber mixtures may be used for pneumatic tires). Obrecht teaches that the rubber may be utilized in the tire in any of locations of rubber components, such that the tire may have tire components including treads, subtreads, carcasses, sidewalls, reinforced sidewalls, etc., which are featured in the pneumatic tire which have the compositions as detailed in Obrecht [claim 20].
Obrecht does not specifically define the placement of these components compared to each other as in the first several lines of the claim, but all of these aspects of the tire are entirely conventional and common in pneumatic tires, such that it would be obvious to have Obrecht’s tire have the conventional tire disclosed. Hayashi, for example, teaches a pneumatic tire “1” which has a tread portion “6” which would necessarily extend in a circumferential portion and have an annular shape (defining aspects of both tires and tread portions), with a pair of sidewall portions on both sides of the tread (see Fig. 1, sidewall is the region of the tire between the tread and the bead portion. And wherein the tire is necessarily symmetric about an equator such that an additional sidewall would be located on the other half of the tire), a pair of bead portions disposed inside of the sidewall portions (bead core “2” and bead filler “4”), with a sidewall rubber layer and rim cushion rubber layer disposed in each bead portion (see Fig. 1, sidewall is considered upper portion and rim cushion rubber is considered bottom portion around where a rim would be mounted), and a carcass layer between the pair of bead portions (carcass “3”). As such, it would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Obrecht’s tire to necessarily include each of the conventional aspects which are known in tires as detailed above so as to make a working tire. And one would have had a reasonable expectation of success, and in addition to conventional benefits of having a working tire, expected benefits of steering stability and ride comfortability [Hayashi, Col1-Col2].
Obrecht does not explicitly show a transponder embedded outside of the carcass layer. It is extremely well known and conventional, though, that transponders are commonly included in modern day tire constructions in order to provide information during manufacture and transportation of tires, as well as measurements, such as pressure and temperature, during running. Uehara provides one example of such a conventional transponder embedded in a tire construction (Abstract and [0001-0005]). The transponder is embedded in the tire at a position above a rim-flange contact portion in a tire shoulder portion [0006, 0014], such that the general disclosure of Uehara suggests a placement axially outside of a carcass. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to include a well-known transponder in the tire of Obrecht for the benefits detailed above.
Obrecht as modified suggests the structure of the claimed tire with the multiple rubber layers as detailed above. Obrecht is specifically tied to its inventive tire compositions and properties [0014-0016]. As stated above, Obrecht’s tire may be utilized in a wide variety of tire locations, including as beingstated to be used for any tire component, including tire treads, subtreads, carcasses, sidewalls, reinforced sidewalls, apexes, etc., [claim 20]. Therefore, Obrecht explicitly suggest the use of its inventive tire component/composition in each of these locations, such that a person of ordinary skill in the art would have found it obvious to utilize this tire component in each of the locations listed, so as to obtain a working tire with a reasonable expectation of success. And with the utilization of these tire components/compositions, one would have realized an improvement of ice/snow performance and abrasion resistance and low rolling resistance [0014-0016]. Therefore upon the disclosure of Obrecht, it would have been obvious to situate each of the rubber layers of Obrecht with this tire component/composition in order to achieve these improved properties, as Obrecht states that the composition may be utilized in any/all of these locations as a preferred embodiment.
Because of the modifications as above, the rubber member with the largest storage modulus at 20C of rubber members located on an outer side and an inner side of the transponder, in each case, would therefore be the rubber layer with the composition as suggested by Obrecht. Obrecht’s composition shows that the elastomeric compounds modulus E’ increases with lowering temperatures [see Tables 1.8, 2.8, 3.9, 4.9, 5.9, 6.9]. Each of these tables have E’ values ranging from 0C to -60C, and in every case the E’ increases as the temperature decreases. Using the data from each of these data tables, a box and whisker chart was created to show the range of values for the ratio E’(0C)/E’(-20C). From this, the total range of values of this range ranges from approximately 0.32 to 0.64, with a substantial portion of the values being located within the claimed portion of 0.50 to 0.95. See also examples 1.2-1.7, for example, wherein the modulus ratio is above 0.5 in each of these examples. 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).
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Obrecht does not explicitly disclose the center of the transponder disposed at least 10mm in the circumferential direction for each of splices of the sidewall/rim cushion/carcass layer. However, it is very well understood in the art of tires and transponders that transponders should be placed far away from splice portions of tire components so as to improve communications, such that this would have been obvious to the person of ordinary skill in the art. 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.
Pulford, which is similarly directed to a tire with a transponder, 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.
Therefore, in view of Battocchio/Pulford, it is clear that it is well understood in the art for transponders to be located far away from any splice portions of the other surrounding components, such that one of ordinary skill in the art would have found it obvious to arrange the transponder far away from each of the respective splice portions so as to be at least 10mm away there from. Additionally, Applicant has not provided a conclusive showing of unexpected results for the claimed configuration (none of the inventive examples in Tables 1 and 2 provide any testing results comparing a circumferential distance of the transponder to any of the splice portions). It is further noted that the claims are directed to absolute dimensions and it is well taken that tire dimensions are a function of the intended tire use and ultimately the tire size (larger tires, for example, have greater circumferences and thus spacings between splice portions, for example, would be expected to be greater).
Response to Arguments
Applicant’s arguments have been considered but they are not persuasive.
Applicant argues on pgs. 9-10 that Uehara’s coating rubber would not be obvious to include a white filler or calcium carbonate because this would result in different properties. Applicant argues that the requirements of Uehara could not be satisfied when calcium carbonate is used instead of silica. Applicant indicates that these arguments are in regards to claim 1.
The Examiner respectfully disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. a coating layer with a presence of certain filler) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regarding claim 1, it is noted that the tire is not required in any way to have a coating layer, and this feature is only expanded upon in some of the dependents. Applicant only specifically refers to claim 1 in these arguments [see pg. 10 2nd full paragraph], wherein these arguments are not tied to any specific limitations that are in claim 1. Applicant does not detail what dependent claims are being argued nor specifically which limitations are being argued, such that these arguments are found wholly unconvincing. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. It is not clear how these arguments pertain to an alleged nonobviousness of independent claim 1.
Regarding these arguments, it may appear that at least some of the arguments are arguing in regards to the dependent claims of 17 and 18. First, it is noted that silica may be considered to be a white filler, as noted in the rejections of record, because it is a filler that is not carbon black. It is commonly understood in the art that silica may be considered to be a type of white filler, and no evidence is found to dispute this finding. Any arguments that may potentially be tied to claim 17 (although any specific claims are not specified by Applicant) are not found convincing.
And as to claim 18 requiring calcium carbonate, the Examiner respectfully disagrees. As laid out in the rejection of record, a fair reading of Uehara suggests the use of rubber compositions having low carbon black loadings (such as less than 30 parts by weight, 0-10 or 0-5 parts by weight [0012]). While Uehara may not specifically suggest the use of calcium carbonate in its coating layer, it would have been a simple substitution of calcium carbonate to obtain predictable results, or an obvious modification of the coating layer composition to include calcium carbonate, as calcium carbonate and silica are both art recognized as having low partitivities (e.g., do not absorb electromagnetic waves)- see Kubo [Col2 L4-16]. And as both components are recognized as common alternatives for fillers of coating layers (as shown for example by Kataoka [0034], and/or Okamura [Col4 L45+]), the use of silica or calcium carbonate as the white filler in Uehara remains consistent with the desire of Uehara to have low wave absorption and optimized electrical communication. As Uehara teaches a rubber composition designed to have low wave absorption (optimized electrical communication) and low modulus values, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to use calcium carbonate and/or silica to achieve such a composition and Uehara recognizes the general order of loadings for white fillers (are recognized low absorption rates due to these white fillers, as opposed to carbon black). As detailed, calcium carbonate and silica are well recognized as having low permittivity and thus, the replacement or inclusion of calcium carbonate in the rubber composition of Uehara remains consistent with the desire of Uehara to minimize wave interference. It is also noted that the covering composition of Uehara can include additional reinforcing fillers [0015]. Applicant cites to two webpages detailing supposed details of different types of fillers. First, it is noted that if Applicant wishes additional references to be considered, the NPL must be provided in PDF form and an IDS must be filed. Additionally, it is not clear what the publication date of these references are and if they provide a view of the art at or before the effective filing date of the invention (Applicant only cites a date where the NPL was accessed which is well after an effective filing date of the invention). For these reasons, the NPL has not been fully considered (although it is noted given the teachings of Kubo, Kataoka, Okamura, it appears fully suggested to a person of ordinary skill in the art to utilize calcium carbonate in a coating layer with or in lieu of silica as detailed above). And regarding Applicant’s arguments related to a modulus of elasticity of a coating layer, it is noted that claim 18 does not require any specific modulus, such that the claims do not include limitations wherein a modulus of a coating layer and a calcium carbonate component are required in the same embodiment, such that any specific arguments tied to this argument are unconvincing for at least this reason.
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.
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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