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 Amendment filed February 26, 2026 has been entered. Claims 1, 8 and 12-17 remain pending in the application.
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.
Claims 1, 8, 12, 13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0108670 (Nagayoshi) in view of US 2017/0368875 (Balnis et al.) further in view of JP 2020-152244 (Matsumoto), machine translation previously provided.
Regarding claim 1, Nagayoshi discloses a tire mounted on a moving means (see paragraph 0044), the tire comprising:
A tire body including a tread region (12) configured to face a road surface during at least driving of the moving means (see paragraph 0031, Figure 1); and
An electronic element unit (40) disposed in the tire body and configured to transmit or receive one or more signals (see paragraph 0041),
Wherein the electronic element unit includes a cover layer (43) disposed in the tire body (see paragraph 0052, Figures 1 and 8B),
Wherein the cover layer includes:
A rubber-based base material (see paragraph 0054),
Wherein the electronic element unit includes at least one electronic element (RFID chip), and the cover layer includes a first layer (431) and a second layer (432) disposed on opposite sides of the electronic element (41) (see paragraphs 0054, Figure 8B),
Wherein the first layer and the second layer are in contact with each other in a region in which the electronic element is not disposed such that the electronic element is encapsulated within a closed enclosure formed by the first and second layers (see paragraph 0051, Figure 8B), wherein the electronic element comprises an IC chip (RFID chip) and at least one antenna portion (42) connected to the IC chip, and wherein the first layer and the second layer form the closed enclosure that encapsulates both the IC chip and the at least one antenna portion (see paragraph 0054, Figure 8B),
And the radio wave control cover layer is positioned between a bead filler portion of the tire and a body ply of the tire, and is in direct physical contact with both the bead filler portion and the body ply (see Figures 1-4).
Nagayoshi does not disclose that the rubber-based material is a radio wave control material that is a resistance control material; however, in the analogous field of electronic elements in tires, Balnis discloses a rubber-based material for use as a radio wave control cover layer for electronic elements (see paragraph 0024). Balnis teaches that the radio wave control cover layer improves the readability of radio devices upon incorporating them into a tire (see paragraph 0019). It would have been obvious to one having ordinary skill in the art before the effective filing date to use the rubber-based radio wave control cover layer of Balnis as the rubber-based material of Nagayoshi in order to improve the readability of the Nagayoshi radio device, as taught by Balnis.
The rubber-based material of Balnis includes a resistance control material configured to limit overall electrical resistance reduction of the radio wave control cover layer, the resistance control material comprising an oxide-based insulating material (silica) (see paragraph 0027),
A carbon black based material (see paragraph 0027), and
A reinforcing material (resin) configured to enhance a coupling force with the rubber-based base material and a tensile strength of the radio wave control cover layer (see paragraph 0048),
Wherein the radio wave control cover layer includes 35 weight percent of the oxide-based insulating material (silica) (see Table 1, Example 2), which is within the claimed range of 25-45 weight percent, and 1 weight percent of the resin-based material (see Table 1, Example 2), which is within the claimed range of 0.5-5 weight percent, relative to the rubber-based base material,
Wherein the carbon black based material has a smaller weight percentage than the resistance control material (35 phr), and the resin-based material has a smaller weight percentage (1 phr) than the carbon black based material (see paragraph 0065 where it is stated 5 phr of carbon black may be included in Example 2).
Balnis does not specify that the reinforcing resin is a phenol based resin, coumarin-indene based resin or cresol-formaldehyde resin; however, Matsumoto teaches that phenol based resin, and coumarin-indene based resin are all commonly used resins in the tire industry in an amount from 1 part by mass or more (see lines 266-280 machine translation). It would have been obvious to one having ordinary skill in the art before the effective filing date to use any commonly used resin as the resin additive in Balnis, including phenol based resin or coumarin-indene based resin.
While the embodiment disclosed in Table 1 of Balnis include stearic acid, paragraph 50 states that other vulcanizing activators such as zinc oxide may be used instead. Further, it is stated that a cure package only occurs “in certain embodiments”; which would have suggested to one having ordinary skill in the art that an embodiment is possible with no cure package (stearic acid).
Balnis does not state the electrical resistance of the radio wave control cover layer; however, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Thus, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 8, Nagayoshi in view of Balnis also discloses that the oxide-based insulating material includes a silicon oxide-based material (see Balnis paragraph 0027, Table 1).
Regarding claim 12, Nagayoshi in view Balnis and Matsumoto also discloses that the radio wave control cover layer includes 1 weight percent of the reinforcing material (resin) (see Balnis Table 1), which is within the claimed range of 0.5-2 weight percent.
Regarding claim 13, Nagayoshi in view of Balnis and Matsumoto also discloses that the phenol based resin may comprise an alky phenol based resin (see lines 266-275 Matsumoto machine translation).
Regarding claim 15, Nagayoshi in view of Balnis and Matsumoto also discloses that the reinforcing material (resin) may be included in an amount of 1 part by mass or more to 30 parts by mass or less (see lines 266-280 Matsumoto machine translation), which overlaps the claimed range of greater than 1 weight percent and equal or less than 5 weight percent relative to the rubber-based base material. In the case where the claimed ranges "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).
Regarding claim 16, Nagayoshi also discloses an inner liner (10) disposed on an inner side of the body ply (3), and the electronic element faces the inner liner in a region overlapping the bead portion (see Figure 9).
Regarding claim 17, Nagayoshi also discloses an embodiment where the first layer and the second layer has a width of 8-12 mm (0.8-1.2 cm) (see paragraph 0036), which is within the claimed range of 0.5-2 cm, and a length of 60-80 mm (6-8 cm) (see paragraph 0036), which overlaps the claimed range of 5-6 cm. In the case where the claimed ranges "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).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0108670 (Nagayoshi) in view of US 2017/0368875 (Balnis et al.) further in view of JP 2020-152244 (Matsumoto) further in view of US 10,626,254 (Delville et al.).
Nagayoshi in view of Balnis and Matsumoto discloses a tire as discussed above. The references do not state that the alkylphenol based resin comprises alkyl phenol-formaldehyde resin; however, Delville teaches that alkyl phenol-formaldehyde resin is a known alkylphenol resin used in tire rubber compositions (see column 3, line 52 through column 4, line 11). It would have been obvious to one having ordinary skill in art before the effective filing date to use any known alkylphenol resin as the resin additive in Balnis, including alkyl phenol-formaldehyde resin.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 WENDY L BOSS whose telephone number is (571)272-7466. The examiner can normally be reached 8:30-6:30.
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/WENDY L BOSS/Examiner, Art Unit 1749
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749
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