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 26, 2026 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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-33 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 16 includes the limitations that the first and second rubber compounds are selected and spatially arranged in the rubber rim strip such that an adjustment of rebound resilience of the first rubber compound alters a lateral stiffness of the vehicle tire without causing a corresponding deterioration in rolling resistance, and an adjustment of Shore hardness of the first rubber compound alters rolling resistance without causing a corresponding reduction in lateral stiffness. However, the specification does not specify the spatial arrangement necessary to achieve the beneficial results, and it is noted that the specification does not specify if the inventive embodiments are based on figure 1, figure 2, or another configuration. Accordingly, it is unclear what exactly these limitations require. Further, the claimed “altering” appears to be with respect to an alternative unclaimed tire, and the claim is directed to a tire, not the relationship between the claimed tire and some alternative unclaimed tire. Claims 17-33 are also rejected as depending upon claim 16.
Claims 34-36 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 34 includes the limitations that the first rubber compound has a Shore A hardness in the range of 73 to 90, a rebound elasticity of 73 to 40, a carbon black of 55 to 70, and the tire has a lateral stiffness of 100 percent to 125 percent and a rolling resistance of 98 percent to 100 percent. These limitations are not described in the specification and are therefore new matter. It is noted that different ranges are set forth in the Specification for some of these ranges, such as first rubber Shore A hardness of 60 to 80, and first rubber rebound elasticity of above 65% to 80%. Claims 35-36 are also rejected as depending upon claim 34. It is noted that two embodiments are set forth in table 2, but these are two individual embodiments, not ranges.
Claims 34-36 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 34 includes the limitations that the tire has a lateral stiffness of 100 percent to 125 percent and a rolling resistance of 98 percent to 100 percent. However, these percentages appear to be taken from table 2, in which the inventive tires are compared to a non-inventive tire, but the claim does not define what these percentages are, and the claim is directed to a tire, not to the relationship between the claimed tire and some alternative unclaimed tire. Claims 35-36 are also rejected as depending upon claim 16.
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 16-17 and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Moldenhauer (US Pub. No. 2016/0121665).
Regarding claims 16 and 31, Moldenhauer teaches a pneumatic vehicle tire having a radial type construction, the tire comprising a bead region having a bead core, a carcass insert 4 running around the bead core and comprising a carcass turn-up 4a extending in a direction of sidewalls (paragraph [0014]; figure 1), a rubber rim strip 7 that forms an outer surface of the bead region (paragraph [0015]; figure 1), the rubber rim strip comprising a first rubber rim strip 7a consisting of a first rubber compound and runs along the carcass turn-up, extending in a direction of the sidewall beyond a ring flange of the rim, a second rubber rim strip 7b consisting of a second rubber compound and 1s at least partially positioned between the bead core and a rim, and the first rubber compound has a rebound resilience at 20°C according to DIN 53512 in the range of 40% and 80%, and the hysteresis/rebound resilience of the second rubber compound is not important, that this compound is optimized with regard to high electrical conductivity (paragraphs [0017]-[0018]; figure 1), such disclosure suggesting that the rebound resilience of the second rubber compound differs from the rebound resilience of the first rubber compound, because tire compositions are a tradeoff between properties, therefore optimizing for high conductivity without being concerned with hysteresis/rebound resilience would tend to lead to a rubber compound with higher hysteresis/lower rebound resilience. Additionally, measuring figure 1 of Moldenhauer results in about a 12 mm width of the first rubber strip and a length of about 70 mm, resulting in a ratio of 0.17 (12/70), falling within the claimed range of that ratio for claims 16 and 31. While patent drawings are not to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of claims. See In re Mraz, 173 USPQ 25 (CCPA 1972). Further, Moldenhauer illustrates substantially the same portion of a tire as the instant application, with a first rubber strip having a substantially similar height as the instant application, suggesting that such a first rubber strip would have a ratio of its height to the nominal height of the tire within the claimed ranges of 1:1 to 1:10 and 1:3 to 1:7, and suggesting that an adjustment of rebound resilience of the first rubber compound alters a lateral stiffness of the tire without causing a deterioration in rolling resistance, and an adjustment of Shore hardness of the first rubber compound alters rolling resistance without causing a corresponding reduction in lateral stiffness.
Regarding claim 17, Moldenhauer teaches that it is an object of the invention to provide a tire wherein a reliable electrically conductive connection is maintained in the bead regions (i.e., the first and second bead regions) by the rim rubber and at the same time the rolling resistance of the tire can be reduced (paragraph [0004]), and in order for such an object to be achieved the second bead region would also need first and second rubber rim strips as set forth above.
Regarding claim 32, Moldenhauer teaches that the rubber resilience of the second rubber compound is not important (paragraph [0018]), suggesting that the rubber resilience of the first compound is configured to provide a selected rolling resistance of the tire independent of the rubber resilience of the second compound.
Claims 18-19 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Moldenhauer as applied to claims 16 and 32 above, and further in view of Kanz (US Pub. No. 2007/0054993).
Regarding claims 18-19, Moldenhauer teaches using a second rubber compound with a high Shore A hardness of in particular 65 (paragraph [0020]), but does not specifically disclose the rebound resilience of the second rubber compound, and thus cannot teach a ratio between the rebound resilience of the first to the second rubber compound. Kanz teaches a rubber composition which may include from 1 to 150 phr of carbon black (paragraph [0033]), with a specific embodiment having a Shore A hardness of 66 and a rebound of 36% (paragraph [0054]; table 2, sample 2). It would have been obvious to one of ordinary skill in the art to use a rubber compound having a rebound as taught by Kanz for the second rubber compound of Moldenhauer as a rebound in a rubber compound having approximately the same Shore A hardness (66 vs 65). Such results in a range of ratios of from 1.1:1 (40/36) to 2.2 (80/36), overlapping the claimed ranges.
Regarding claim 33, Moldenhauer teaches first and second rubber rim strip extremely similar to that of the instant invention (compare figure 1 of Moldenhauer to figure 2 of the instant invention), and the configuration set forth above has a rubber resilience of the second compound falling within the disclosed and previously claimed range, and therefore this configuration is taken to meet the claimed limitation that the rubber resilience of the second compound is configured to provide a selected lateral stiffness of the tire independent of the rubber resilience of the first compound.
Claims 18-19, 30 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Moldenhauer as applied to claims 16 and 32 above, and further in view of Stevens (EP 0410311; machine translation relied upon).
Regarding claims 18-19 and 30, Moldenhauer teaches a first rubber compound rebound resilience according to DIN 53512 (claimed rebound elasticity) of at least 40% and up to 80% (paragraph [0018]) and using a second rubber compound with a high Shore A hardness of in particular 65 (paragraph [0020]), but does not specifically disclose the rebound resilience of the second rubber compound, and thus cannot teach a ratio between the rebound resilience of the first to the second rubber compound. Stevens teaches rubber compositions for various tire components, including sidewalls, which are disclosed as subject to high demand on bending stress (machine translation at page 2, first two paragraphs), such being a similar requirement as to a rim strip, the specific sidewall rubber embodiments having Shore A hardness of 55 and 71 and rebound of 38% and 65% (machine translation at pages 5-6). It would have been obvious to one of ordinary skill in the art to use a rubber compound having a rebound as taught by Stevens for the second rubber compound of Moldenhauer as a rebound in a rubber compound subject to high demand on bending stress (see Stevens machine translation at page 2, first two paragraphs). Such results in a range of rebound resilience ratios of from 0.62 (40/65) to 2.1 (80/38), overlapping the claimed ranges of claims 18-19, and a rebound resilience range of the second rubber compound of 38% to 65%, overlapping the range of claim 30.
Regarding claim 33, Moldenhauer teaches first and second rubber rim strip extremely similar to that of the instant invention (compare figure 1 of Moldenhauer to figure 2 of the instant invention), and the configuration set forth above has a rubber resilience of the second compound falling within the claimed range, and therefore this configuration is taken to meet the claimed limitation that the rubber resilience of the second compound is configured to provide a selected lateral stiffness of the tire independent of the rubber resilience of the first compound.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Moldenhauer as applied to claim 16 above, and further in view of Asayama (US Pub. No. 2010/0234448).
Regarding claim 20, Moldenhauer does not specifically disclose the type of rubber of the first and/or second rubber compound. Asayama similarly teaches using first and second rubber compounds, where the first compound is non-conductive and the second compound is conductive, where the rubber can comprise natural rubber and/or a butadiene rubber (paragraph [0028]). It would have been obvious to one of ordinary skill in the art to use natural rubber and/or butadiene rubber as taught by Asayama in the first and second rubber compounds of Moldenhauer as known rubber compounds used in a rim strip (see Asayama at paragraphs [0025] and [0028]).
Claims 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Moldenhauer as applied to claim 16 above, and further in view of Wideman (US Pub. No. 2003/0004243).
Regarding claims 21-22, Moldenhauer does not specifically disclose the amount of filler present in the first and second rubber compounds. Wideman teaches that conventional fillers may be present in a chafer compound from about 30 to 150 phr (paragraphs [0044] and [0056]), such amounts overlapping the claimed ranges, and that the filler can be a commonly employed carbon black (paragraph [0044]). It would have been obvious to one of ordinary skill in the art to use an amount of filler where the filler is carbon black as taught by Wideman in the first and/or second rubber compounds of Moldenhauer as known amounts of filler to use in a chafer with the predictable result of having an appropriately reinforced chafer rubber compound.
Regarding claims 23-25, Moldenhauer does not specifically disclose using zinc oxide and stearic acid in the first and second rubber compounds, however such compounds are commonly used additive materials to rubber compositions in a tire as is taught by Wideman (see paragraph [0044]), and it would have been obvious to use zinc oxide to be an activator in the vulcanization process to strengthen the rubber and to use stearic acid in order to improve the flow and moldability of rubber compounds and enhance the overall quality and durability of the tire. Regarding claim 24, Wideman teaches that the fatty acid can be stearic acid, and the amount used may range from about 0 phr to about 5 phr (paragraph [0044]), overlapping the claimed range. Regarding claim 25, Wideman teaches that the metal oxide can be zinc oxide, in a range from about 1 to about 14 phr (paragraph [0044]), thus resulting in a range of total zinc oxide and stearic acid of from about 1 phr (0+1) to about 19 phr (5+14), overlapping the claimed range.
Regarding claim 26, Moldenhauer does not specifically disclose the amount of sulfur and additional vulcanizing agents in the first and second rubber compounds. Wideman teaches using a sulfur vulcanizing agent in an amount from about 0.1 to about 5 phr (paragraph [0043]), overlapping the claimed range, and an amount of primary vulcanization accelerator (taken to be the claimed additional vulcanizing agent) in an amount from about 0.5 to about 4 phr (paragraph [0045]), overlapping the claimed range. It would have been obvious to one of ordinary skill in the art to use sulfur and primary vulcanization accelerator amounts as taught by Wideman in the tire of Moldenhauer in order to properly vulcanize the tire.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Moldenhauer as applied to claim 16 above, and further in view of Pingenat (US Pub. No. 2010/0147436).
Regarding claim 27, Moldenhauer does not specifically disclose that the first and second rubber compounds comprise a resin. Pingenat teaches that typical amounts of a tackifier resin, if present, comprise about 0.5 to about 10 phr in a chafer compound (title; paragraph [0034]), overlapping the claimed ranges. It would have been obvious to one of ordinary skill in the art to use resin amounts as taught by Pingenat in the tire of Moldenhauer in order to increase the tack, and/or improve the processability, and/or improve the hardness and strength, and/or the temperature and chemical resistance of the first and second rubber compounds.
Claims 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Moldenhauer as applied to claim 16 above, and further in view of Maruoka (US Pub. No. 2008/0283170).
Regarding claim 28, Moldenhauer teaches a specific embodiment where the second rubber compound has a Shore A hardness of 65 (paragraph [0020]), but does not specifically disclose the hardness of the first rubber compound. Maruoka teaches a chafer 12 existing in substantially the same location as both rim rubber parts of Moldenhauer (compare figure 2 of Maruoka to figure 1 of Moldenhauer), and teaches that the chafer needs a sufficient wear-resistant property and hardness, and has a hardness of preferably 60 or more (paragraph [0071]). It would have been obvious to one of ordinary skill in the art to use a hardness as taught by Maruoka for the first rubber compound of the tire of Moldenhauer in order to ensure that rubber has sufficient wear-resistant property and hardness (see Maruoka at paragraph [0071]).
Regarding claim 29, for the configuration set forth above, the ratio of rubber hardness is 60/65 or greater, or in terms of the claim, 1:1.08 or greater, such overlapping the claimed range.
Response to Arguments
Applicant’s amendments and arguments with respect to the rejection of claims 16-33 under 35 U.S.C. 112(a) have been fully considered and are persuasive. The rejection of claims 16-33 under 35 U.S.C. 112(a) has been withdrawn.
Applicant's other arguments have been fully considered but they are not persuasive.
With respect to the rejection of claims 16-33 under 35 U.S.C. 112(b), Applicant notes that claim 16 has been amended. Claims 16-33 remain rejected under 112(b) for the reasons set forth above.
With respect to the rejection of claims 34-36 under 35 U.S.C. 112(a), Applicant argues that the claim limitations are clearly shown in tables 1-2 and on pages 19-21 of Applicant’s specification. However, it is noted that the specification does not teach the claimed ranges, but merely teaches two embodiments. It is further noted that these embodiments are different from the specific ranges set forth in the specification. Accordingly, this rejection remains proper.
With respect to the rejection of claims 34-36 under 35 U.S.C. 112(b), Applicant argues that claim 34 has been amended. However, the amendment did not touch the claimed percentage limitations described in the 112(b) rejection, and therefore the rejection remains proper.
With respect to the rejections of the claims under 35 U.S.C. 103, Applicant argues that the specification explains the dichotomy between lateral stiffness and rolling resistance, and that the first and second rubber rim strip compounds are tailorable for lateral stiffness and rolling resistance and avoid the noted dichotomy. However, as is set forth above, Moldenhauer teaches or suggests disclosure which lead directly to configurations which have the same first and second rubber rim strip compounds tailorable for avoiding the same dichotomy.
Conclusion
THIS ACTION IS MADE FINAL. 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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/P.N.S/ Examiner, Art Unit 1749 July 31, 2026
/JUSTIN R FISCHER/ Primary Examiner, Art Unit 1749
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