DETAILED CORRESPONDENCE
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/26/2026 has been entered.
Response to Amendment
Claims 17 and 19 are cancelled. Claims 16, 18, and 20-33 are pending in this application.
Withdrawn Rejections
The AIA 35 U.S.C. § 112(a) rejection of claims 16, 18, and 20-33 as being directed to failing to comply with the written description requirement, made of record on page 3, paragraph 5 of the office action mailed 30 September 2025 has been withdrawn due to Applicant's amendments in the response filed 26 January 2026.
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.
Claims 16, 18, 20-25, 27, 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (US 2014/0190610 A1 – of record), in view of Tadiello et al. (US 2019/0270866 A1 – of record as WO 2018078480A1).
Regarding claims 16, 18, 22, 24-25, 31, Hayashi discloses a run flat tire 2 – (construed as a self-supporting tire for vehicle wheels). The tire to include the structure of a carcass structure 14 having opposing side edges associated with respective annular anchoring structures 12; a belt structure 18 applied in a position radially external to the carcass structure; a tread band 4 applied in a position radially external to the belt structure; a pair of sidewall structures 8, wherein each includes a sidewall extended in a position axially external to the carcass structure and extends radially between one of the annular anchor structures and an axially external portion of the tread band; and at least one pair of load support layers 16 – (construed as sidewall reinforcement inserts), wherein each insert is embedded in the respective sidewall structure, at a position axially internal to each of the sidewalls, see at least FIG. 2, [0027]. Further with respect to “a pair of sidewall structures and at least one pair of sidewall reinforcement inserts”, Hayashi illustrates one half of the tire in cross-sectional view taken along the equatorial plane eq of the tire. Under the broadest reasonable interpretation afforded the examiner, the side not depicted is considered to be symmetrical in structure and composition with the depicted side. Moreover, Hayashi clear introduces the sidewalls and load support layers in plural form, see [0027]; thus, one would reasonably consider the “sidewalls” are representative of a pair of sidewalls and the “load supporting structures” are representative of a pair of sidewall reinforcement inserts; and where both have the same thicknesses.
While disclosing the general use of sidewall inserts Hayashi does not explicitly disclose a composition thereof prompting one to look to exemplary configurations.
Tadiello discloses an elastomeric composition having favorable properties when used as a composition for a sidewall insert, see at least [0344], [0368]. The composition being an elastomeric compound whose dynamic mechanical properties were evaluated at a shear modulus value G', measured at 70°C, 10 Hz, deformation of 0.1% to 10% - (construed as and overlaps 9% strain) according to a rubber process analyzer (RPA) method, see [0338], [0366]; and where G’(9%) was measured at 0.94 MPa, see Table 6, Ex. 7b – (corresponds to and overlaps the claimed less than 1.25 MPa; and less than 1.20 MPa; and less than 0.95 MPa). And the tire component is a green tire component according to the one through fifth aspects of the inventive composition. It being understood a green tire component has not been vulcanized, see at least [0049] – (construed as wherein the elastomeric compound of the sidewall reinforcement inserts, before vulcanization, comprises an elastomeric composition comprising). The “green composition” to include: 100 phr of at least one diene elastomeric polymer, see at least [0041]; silica 1165 in an amount of 30 phr, where the total composition has a weight of 153.9 which gives the silica 1165 a weight percentage of 19.5%, see [0051] and Table 6 Ex 7b - (construed as and overlaps one or more reinforcing fillers, wherein the total amount of the reinforcing fillers is from 5% to 30% by weight with respect to the total weight of the composition, and wherein the reinforcing fillers are selected from the group consisting of white fillers, silicate fibers, derivatives thereof and mixtures thereof, optionally in admixture with carbon black; and the elastomeric composition comprises at least one reinforcing filler in a total amount of less than 27%, by weight relative to the total weight of the composition); at least 0.1 phr of at least one vulcanizing agent, see [0045] – (construed as and overlaps at least 0.1 phr of at least one vulcanizing agent).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hayashi’s pair of load supporting layers/sidewall inserts wherein both have a composition under the disclosed conditions as taught by Tadiello to form load supporting layers/sidewall inserts which provides a means for reducing the incorporated amount of reinforcement material while obtaining materials with desirable moduli properties as suggested by Tadiello [0368]. Concerning the claimed ranges: it has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists”, see MPEP § 2144.05(I).
Regarding claim 20, modified Hayashi discloses an embodiment which uses polybutadiene in an amount of 0 to 60 phr, see at least [0183], [0185] – (overlaps an amount less than 50 phr).
Regarding claim 21, modified Hayashi discloses an embodiment which uses SLR 4630, this being a SBR based elastomer, see at least [0306], Table 2 Ex. 7b – (construed as does not use polybutadiene).
Regarding claim 23, modified Hayashi discloses the use of sepiolite, see [0012], [0057] and silicate fibers [0229]. And it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Hayashi’s sidewall insert to use both sepiolite and silicate fiber to provide a tire with improved driveability as suggested by Tadiello [0012].
Regarding claim 27, modified Hayashi discloses the elastomeric compound of the inserts has a Tan Delta value of 0.073, see Table 6 Ex. 7b – (corresponds to and overlaps not more than 0.080 measured at 70°C, 10 Hz according to the RPA method).
Regarding claim 30, modified Hayashi discloses the sidewall reinforcement inserts have a thickness of 3 mm to 20 mm, see Hayashi [0040] – (construed as and overlaps a maximum axial extension ranging from 3 mm to 14 mm, as measured in a direction perpendicular to the plane Ti tangent to the outer surface of the sidewall reinforcement insert).
Regarding claims 32-33, modified Hayashi discloses the use of an inner liner 22 disposed adjacent the inner cavity of the tire opposite the tread and the use of an under-liner, see at least FIG. 2, [0045] and [0236] – (construed as a layer of an air impermeable elastomeric material called liner, at the most radially inner position of the tire and extending at least at the tread band; and a layer of elastomeric material called under-liner, at a position radially external to the liner, radially internal to the carcass structure, axially internal to the sidewall reinforcement inserts, and extending, no further than the extension of the liner, wherein the under-liner comprises the elastomeric compound). It being considered that one of ordinary skill, as a matter of routine experimentation provide the under-liner in the claimed orientation. As Hayashi and Tadiello clearly contemplates the use of thereof and this would predictably extend Hayashi’s air blocking functionality, see Hayashi [0045].
Claims 26, 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (US 2014/0190610 A1 – of record), in view of Tadiello et al. (US 2019/0270866 A1 – of record as WO 2018078480A1), as applied to claim 16 above, and further in view of Albizzati et al. (WO 201809661 A1 – of record).
Regarding claim 26, 28-29, 33, modified Hayashi does not explicitly disclose the claimed measurements. However, it has been held that compositions suitable for their intended purpose supports a prima facie case of obviousness: Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Albizzati discloses a sidewall insert composition to include a dynamic compression elastic modulus value E' of 6.50 and 6.88, see Table 6 – (corresponds to and overlaps less than 7.50 MPa), as measured at 23°C, 10 Hz with an lnstron model 1341 dynamic devices in the traction compression mode, see page 29 lines 8-23; and have an elongation at break AR (%) value of 420.0, 411.4, see Table 6 – (corresponds to and overlaps greater than 150%), as measured according to ISO37 UNI 6065 method, see page 29 lines 4-7; and has a breaking load value CR [MPa] (%) of 12.87, 13.17, see Table 6 – (corresponds to and overlaps at least 5.0 MPa), as measured according to ISO 37 UNI6065 method, see page 29 lines 4-7. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Hayashi to have the claimed properties as disclosed by Albizzati to provide the tire with a sidewall insert having good tear propagation. Concerning the claimed ranges: It has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' with sufficient specificity”, then the claimed range is anticipated, see MPEP § 2131.03(II).
Response to Arguments
Applicant' s arguments, with respect to the rejections of claims 16, 18, 20-33 under U.S.C. 103 have been fully considered and are not persuasive.
Applicant's Argument #1
Applicant argues:
Tadiello is directed to utilizing specific derivatized silica in elastomeric compositions to achieve high modulus values with the same or reduced hysteresis. Applicant's claimed subject matter is contrary to what has been taught in the prior art and Tadiello. M.P.E.P. § 2145 (X)(D)(3) (explaining that "The totality of the prior art must be considered, and proceeding contrary to accepted wisdom in the art is evidence of nonobviousness."). That is, Applicant "reduc[esl the rigidity of the sidewall reinforcement inserts - mainly by decreasing their reinforcing filler content . . . [that] led to the maintenance or to a minimum, completely acceptable reduction, of the run-flat distance associated, however, with a considerable and unexpected increase in rolling resistance." Id. at [0033] (emphasis added). Applicant claims the reduced rigidity by reciting that "both sidewall reinforcement inserts comprises an elastomeric compound having a shear modulus value G', measured at 70°C, 10 Hz, 9% strain ... , of less than 1.25 MPa" and "the total amount of the reinforcing fillers is from 5% to 30% by weight with respect to the total weight of the composition .... " Tadiello fails to teach such compositions; Tadiello teaches the opposite.
Examiner's Response #1
Examiner respectfully disagrees. The reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Therefore, modifying Hayashi' s generically disclosed sidewall insert absent of any composition limitations to have a shear modulus value G', measured at 70°C, 10 Hz, deformation of 0.1% to 10% - (construed as and overlaps 9% strain) according to a rubber process analyzer (RPA) method, see [0338], [0366], reasonably suggests a benefit of having shear modulus G' values (less than 1.25 MPa) required for the majority of applications in tires, such as sidewall inserts . Where, it follows that by reducing the incorporated amount of reinforcement material according to the invention, it is possible to obtain materials with moduli still suitable for use, see at least [0368], FIG. 3, Table 6 Ex. 7b.
Moreover, applicant's arguments appear to 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.
Applicant's Argument #2
Applicant argues: the Office miscalculates the reinforcing fillers from Ex. 7b (inventive). That is, the Office indicates that it is just the silica 1165 utilized to calculate "the total amount of reinforcing fillers" resulting in a weight percentage of 19.5%; that is incorrect. The Office must also include the amount of Octamethacrylpropyl-silsesquioxane (MAPOSS) and 3-(trimethoxysilyl)propyl methacrylate (TMMS); those are all elements of the reinforcing fillers. Tadiello at [0081 ], [0106], Table 1. Adding in those additional components to the total amount of reinforcing fillers, Tadiello's Example 7b has a weight percentage is 28% of reinforcing filler.
Examiner's Response #2
Examiner respectfully disagrees. The claim recites in part “one or more reinforcing fillers, wherein the total amount of the reinforcing fillers is from 5% to 30% by weight with respect to the total weight of the composition”. It being noted that for “one reinforcing filler” as silica 1165 in an amount of 30 phr, where the total composition has a weight of 153.9 which gives the silica 1165 a weight percentage of 19.5%, see [0051] and Table 6 Ex 7b. Necessarily meets a claim interpretation of “one reinforcing filler” having a total amount of the reinforcing filler be between 5% - 30% by weight with respect to the total weight of the composition. Moreover, the applicants support for its position still meets the claimed range.
Applicant's Argument #3
Applicant argues:
Additionally, it should also be noted that Tadiello's Example 7a (comparative) also has "a total amount of reinforcing fillers" resulting in a weight percentage of 22% with a shear modulus G' of 0.61. Tadiello at Table 6. Example 7a, however, is a comparator and does not include the inventive derivatized silica of Tadiello. Here, if one were just looking at the shear modulus values and the weight percentages of the reinforcing fillers, one would assume that they fall within Applicant's claims. Tadiello, however, must be considered as a whole. M.P.E.P. § 2141.02(1) (explaining that "In determining the difference between the prior art and the claims, the question under 35 U.S.C. § 103 is not whether the differences [between the claimed invention and the prior art] would have been obvious, but whether the claimed invention as a whole would have been obvious." (emphasis in original)).
Examiner's Response #3
Examiner respectfully disagrees. As Tadiello explicitly discloses its inventive sidewall insert composition provides a benefit of reducing the amount of reinforcement material needed to include having a shear modulus value within the claimed range. There is no reasonable motivation to consider alternatives such as comparative compositions.
Applicant's Argument #4
Applicant argues:
That is, Example 7 is just an illustration of the use of the specifically derivatized silicas, not a teaching to a person of ordinary skill in the art to use low shear modulus elastomeric compounds in the reinforcing inserts with specific weight percentages of the reinforcing filler. In fact, Tadiello says as much. The only difference in the materials of Example 7 are the derivatized silicas as the reinforcing fillers. Example 7 demonstrates the impact of Tadiello's specifically derivatized silica and is not directed to Applicant's claimed subject matter.
Given that some examples have a low shear moduli including the comparator (7a) and the inventive example (7b) according to Applicant's claimed subject matter, and the other inventive example (7c) is outside the recited shear modulus, the data evidence that Tadiello teaches in a different direction towards high moduli and not the shear modulus G' recited in Applicant's claimed subject matter, i.e., reducing rigidity. There is nothing in Tadiello's description or examples that teaches the use of the recited low shear modulus G' ("less than 1.25 MPa), i.e., reduced rigidity, by decreasing the amount of reinforcing filler. Instead, Tadiello's specifically derivatized silica results in materials with "high moduli associated with low hysteresis values." Tadiello at Abstract, [0024], [0026], [0239], [0344], [0346]. Tadiello fails to cure the admitted deficiencies of Hayashi. As a result, the Office fails to establish a prima facie case of obviousness of independent claim 16.
Examiner's Response #4
Examiner respectfully disagrees. As discussed above, the reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Moreover, Tadiello’s sidewall insert composition explicitly discloses the claimed shear modulus range and environment measured at, see at least [0368], FIG. 3, Table 6 Ex. 7b.
Applicant's Argument #5
Applicant argues: a person of ordinary skill in the art would not select Hayashi as a starting point to reduce the rigidity of the sidewall insert. Even assuming for the sake of the argument, that Hayashi was selected, Hayashi is still deficient. That is, Hayashi's tire (in addition to the dimples) utilizes a support layer 16 "formed from a highly hard cross/inked rubber." Id. at [0035] (emphasis added). This hard crosslinked rubber allows for "suppression of vertical distortion in a punctured state." Id. at [0037]. Given that context, there are hurdles combining with the teachings of Tadiello and arriving at the claimed subject matter. Namely, when using Hayashi's structural insert with a high hardness and Tadiello's new compositions with high moduli associated with low hysteresis, a person of ordinary skill in the art is not directed to the claimed subject matter, i.e., a low shear modulus. Instead, at best, a person of ordinary skill in the art would have been directed to high rigidity of the insert and in the elastomeric composition. As discussed by Applicant in the specification, the art (including Hayashi and Tadiello) taught in a different direction ("it is necessary to have rather rigid sidewall reinforcement inserts in order to guarantee sufficient self-supporting capacity." Applicant's Published Specification at [0029]) away from Applicant's use of the recited low shear modulus G' ("less than 1.25 MPa"), i.e., reduced rigidity, by decreasing the amount of reinforcing filler. Likewise, there is no motivation to modify Hayashi's inserts of a high hardness by using Applicant's soft inserts with a low shear modulus and low amounts of reinforcing fillers, as recited.
Examiner's Response #5
Examiner respectfully disagrees. Hayashi while generically disclosing the use of sidewall inserts does not detail the composition thereof in any meaningful way. This would lead one of ordinary skill in the art to consider exemplary sidewall insert compositions. Tadiello provides such a composition wherein doing so provides a benefit of the ability to reduce the amount of reinforcement material needed, see at least [0368]. The applicant appears to overly narrow Hayashi and Tadiello for what the combination reasonably provides. With respect to Hayashi’s dimples and hard crosslinked rubber comments. Hayashi’s inventive dimples are not germane to the functionality of or presence of the sidewall insert. It is also well-known and conventional in the art that tire component rubber is crosslinked by the vulcanizing process. And as Tadiello discloses its sidewall insert composition is favorable in promoting optimal cross-linking, see at least [0027] – [0028]. One of ordinary skill would readily consider Tadiello’s sidewall insert composition in updating Hayashi’s crosslinked sidewall insert composition to gain the aforementioned benefits of Tadiello.
The rejections are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEDRICK WILLIAMS whose telephone number is (571) 272-9776. The examiner can normally be reached on Monday - Thursday 8:00AM--5:00 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached on 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEDRICK S WILLIAMS/Primary Examiner, Art Unit 1749