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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 12, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, 7, 9-10 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (WO 2019/054226; English equivalent US Pub. No. 2020/0247193 relied upon) in view of Adamson II (US Pub. No. 2004/0159383).
Regarding claims 1, 5, 10 and 13-14, Nakajima teaches a pneumatic tire comprising a tread portion 4 extending in a tire circumferential direction and having an annular shape, a pair of sidewall portions 3 respectively disposed on both sides of the tread portion, and a pair of bead portions 2 each disposed on an inner side of the sidewall portions in a tire radial direction (paragraph [0050]; figure 1) and a transponder 34 being disposed in the sidewall portion (paragraphs [0050] and [0072]; figures 1-2B), a longitudinal length of the transponder of preferably 18 cm or less (paragraph [0074]), it being noted that the thickness dimension is expected to be less than the longitudinal length, with a specific embodiment having an IC chip of 3 mm x 3 mm x 0.4 mm along with a 30 mm antenna on both sides of the chip (paragraph [0108]), additionally Nakajima teaches arranging the antenna portion to extend in an orthogonal direction to the cord of the carcass (paragraph [0074]), therefore teaching or suggesting that the antenna extend in the circumferential direction (as claimed) or in the axial direction. Nakajima does not specifically disclose a coating for the transponder, or the dielectric constant of the rubber of the sidewall portions. Adamson II teaches using a coating 22 on a radio frequency device 10 in a tire, where the radio frequency device can be a transponder, that the transponder can be placed in the sidewall, that the dielectric constant of the coating is less than that of the elastomeric material of the tire and is preferably less than 3, that the coating thickness is at least 0.02 mm measured perpendicular to the antenna, that the length of the transponder is much greater than the thickness, and the transponder comprises a radio device 11 (claimed substrate) and antennas 12 extending from both ends of the substrate (paragraphs [0017]-[0021]); figures 1-2). It would have been obvious to one of ordinary skill in the art to use a coating having a dielectric constant and thickness, and a substrate with antennas extending from both ends as taught by Adamson II in the tire of Nakajima in order to allow for very high frequency or higher radio transmission from the antenna (see Adamson II at paragraph [0004]). This combination having a transponder thickness of 0.4 mm and a coating thickness of at least 0.02 mm results in a Gac/Gar ratio of 1.1 (0.44/0.4) or greater, overlapping the claimed ranges of claims 1 and 13. As is set forth above, Adamson II teaches a thickness of the coating perpendicular to the antenna, but does not teach a thickness of the coating parallel to and beyond the antenna, however such an amount of a coating L parallel to and beyond the antenna is a result effective variable, because using too little coating beyond the antenna would not allow for the improvements to the transmission from the antenna in this direction, and too much coating would result in too much weight and/or not fitting within the confines of the tire, and accordingly it would have been obvious to optimize the distance L to arrive at the ranges of claims 1 and 14.
Regarding claim 3, Adamson II teaches a radio device 11 (claimed substrate) and antennas 12 extending from both ends of the substrate (paragraph [0017]); figures 1-2), and Nakajima teaches arranging the antenna portion to extend in an orthogonal direction to the cord of the carcass (paragraph [0074]) as well as a specific embodiment having a tire size 195/65R15 (paragraph [0108]), the R indicating a radial carcass, therefore teaching or suggesting that the antenna extend in the circumferential direction (as claimed) or in the axial direction.
Regarding claims 4 and 9, Adamson II teaches or suggests that the center of the transponder is disposed at a 50% position with respect to the coating thickness (figure 1).
Regarding claim 7, Nakajima teaches a specific embodiment of tire size 195/65R15 (paragraph [0108]), such a tire having section height of 126.8 mm (195 * 0.65), where the transponder is positioned 40% from the bottom of the bead core (paragraph [0116]), such resulting in a positioning 51 mm from the bottom of the bead core, such positioning taken to be substantially greater than the minimum distance of 15 mm required by the claim.
Claims 6 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima in view of Adamson II as applied to claims 1 and 10 above, and further in view of Sams (WO2017/184237).
Regarding claims 6 and 11, Nakajima (combined) does not specifically disclose spacing a center of the transponder 10 mm or more from a splice portion in the circumferential direction. Sams teaches disposing an RFID chip (transponder) not at a splice (paragraphs [31] and [40]). It would have been obvious to one of ordinary skill in the art to dispose a transponder not at a splice as taught by Sams in the tire of Nakajima (combined) as a known location to avoid placing a transponder. Accordingly, one of ordinary skill in the art would be able to determine the distance from a splice to dispose a transponder through routine experimentation, and therefore would have been able to determine an appropriate distance, such as the claimed 10 mm or more.
Regarding claim 12, Nakajima teaches a specific embodiment of tire size 195/65R15 (paragraph [0108]), such a tire having section height of 126.8 mm (195 * 0.65), where the transponder is positioned 40% from the bottom of the bead core (paragraph [0116]), such resulting in a positioning 51 mm from the bottom of the bead core, such positioning taken to be substantially greater than the minimum distance of 15 mm required by the claim.
Response to Arguments
Applicant’s amendments and arguments with respect to the rejections of the claims under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Adamson II.
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 PHILIP N SCHWARTZ whose telephone number is (571)270-1612. The examiner can normally be reached Mon-Fri 9:00-5:30.
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/P.N.S/ Examiner, Art Unit 1749 October 7, 2025
/JUSTIN R FISCHER/ Primary Examiner, Art Unit 1749
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