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 .
Election/Restrictions
Claims 31-36 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 14, 2025.
Applicant’s election of the species wherein the at least one reinforcing filler is silicate fibers in the reply filed on June 30, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 29 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 30, 2025 (see paragraph 3 above).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The amendment filed January 18, 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the incorporation by reference to the foreign priority documents and the international application constitute new matter because the amendment was made subsequent to the filing date of this national stage application which is the June 16, 2021 filing date of the international application (see for example MPEP 608.01(p)(I)(B) last paragraph).
Applicant is required to cancel the new matter in the reply to this Office Action.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities: in the specification Tables 2-4 do not comply with 37 CFR 1.58(b) (see MPEP 608.01(I), Tables 2-4 improperly split between pages).
Appropriate correction is required.
Claim Interpretation
Applicant has used the term “sidewall reinforcement inserts” to mean elastomeric run-flat sidewall reinforcement inserts providing the self-supporting property to the tire as set forth in specification p. 2 lines 5-19 and p. 3 lines 21-24, which usage controls the broadest reasonable interpretation of the term in the claims (MPEP 2111, 2111.01).
Applicant has used the term textile as being distinct from metal in the definitions (specification p. 8 lines 29-31), which usage controls the broadest reasonable interpretation of the term in the claims (MPEP 2111, 2111.01).
Claim Rejections - 35 USC § 112
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 19-28 and 30 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.
In the claims applicant recites that the elastic dynamic shear modulus G′ is measured at 70°C, 10 Hz, and 9% strain, the elastic dynamic compression modulus E′ is measured at 70°C, 10 Hz, and 9% strain, and the loss tangent Tan Delta is measured at 70°C and 10 Hz; however, a review of the specification reveals contradictory disclosure as to the measurement conditions and discloses two different loss tangent Tan Delta parameters, one for the compression modulus and one for the shear modulus: the Example 2 compounds in Table 2 were evaluated as set forth in specification p. 41 line 21 - p. 46 line 9 wherein the compression modulus and associated Tanδ are measured at 23°C, 10 Hz, and ±3.5% strain according to the recited method and the shear modulus and associated Tanδ are measured at 70°C, 10 Hz, and 9% strain according to a different method, namely the recited “Rubber Process Analyser” method, but this is not consistent with specification p. 27 line 16-p.28 line 6 (which also does not specify which Tanδ is being recited). One of ordinary skill in the art would have understood the measurement conditions in the examples to be the correct conditions, but clarification is required.
In claim 19, to provide proper antecedent basis and to clarify the vague “in correspondence with” language, applicant should amend the claim such that in line 2 “comprising at least one carcass ply” is changed to -- comprising a carcass ply -- (this does not exclude the presence of any additional carcass ply), in lines 10-11 “at least in correspondence with” is changed to -- at least along the entire axial extent of -- , in lines 13-14 “in correspondence with” is changed to -- along the entire radial extent of -- , and last line “a rubber process analyzer (RPA) method” is changed to -- the rubber process analyzer (RPA) method -- (defined in the specification p. 42 lines 4-33).
In claim 21, to eliminate confusing duplicative language and apply consistent terminology, applicant should amend the claim such that in lines 2-3 “at least one sidewall reinforcement insert of the pair of sidewall reinforcement inserts comprises a” is deleted, in line 3 “having” is changed to -- has -- , and in line 5 “deformation” is changed to -- strain -- .
In claim 22, to apply consistent terminology, applicant should amend the claim such that in line 4 “deformation” is changed to -- strain -- .
In claim 23, to apply consistent terminology and to clarify the measurement conditions as noted above, applicant should amend the claim such that in line 3 after “2.50” is inserted -- MPa -- and in lines 3-4 “70°C, 10 Hz, 9% deformation according to the RPA method” is changed to -- 23°C, 10 Hz, ±3.5% strain -- .
In claim 24 line 3, as noted above, if the recited Tan Delta is associated with the shear modulus after “10 Hz” should be inserted -- , 9% strain -- but if the recited Tan Delta is associated with the compression modulus “70°C, 10 Hz according to the RPA method” should be changed to -- 23°C, 10 Hz, ±3.5% strain -- .
In claim 25, to provide proper antecedent basis, applicant should rewrite the claim as --
25. (Currently amended) The self-supporting tire for vehicle wheels according to claim 19, wherein the at least one sidewall reinforcement insert of the pair of sidewall reinforcement inserts comprising the vulcanised elastomeric compound is
In claim 27 line 2, to clarify that the group of alternatives is a closed group, after “selected from” applicant should insert -- the group consisting of -- (as in original claim 9).
In claim 28 line 2, to clarify that the group of alternatives is a closed group, after “selected from” applicant should insert -- the group consisting of -- (as in original claim 10).
In claim 30 line 3, to clarify that the claim further limits claim 20, before “30%” applicant should insert -- less than -- .
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.
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.
Claim(s) 19, 21, 22, and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published PCT Application WO 2019/086785 A1 cited by applicant in view of Published PCT Application WO 2020/128943 A1 cited by applicant, Published PCT Application WO 2018/051032 A1 cited by applicant (equivalent to US Patent Application Publication 2019/0248184 A1cited by applicant), and Mlinar (3,060,973).
See the Written Opinion of the International Searching Authority (PCT/ISA/237) filed in this application December 9, 2022 and the English machine translation of WO 2019/086785 A1, with Mlinar added to further show that the claimed hybrid reinforcing cords are well known to be suitable as tire carcass cords (embodiment of Figs. 4-6, col. 1 line 8 - col. 7 line 62, reduces friction and heating during flexing and increases tensile strength due to each yarn having the high tensile strength synthetic fiber monofilament core (monofilament textile thread)) embedded in the sheath (multifilament textile yarn). It is noted that applicant is not yet claiming the narrower G′ range of equal to or lower than 0.74 MPa (support for 0.74 in specification Table 2).
Claim(s) 20, 23, 27, 28, and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published PCT Application WO 2019/086785 A1 cited by applicant in view of Published PCT Application WO 2020/128943 A1 cited by applicant, Published PCT Application WO 2018/051032 A1 cited by applicant (equivalent to US Patent Application Publication 2019/0248184 A1cited by applicant), and Mlinar (3,060,973) as applied to claims 19, 21, 22, and 24-26 above, and further in view of Published PCT Application WO 2019/106562 A1 cited by applicant.
WO ‘562 teaches that the claimed elastomeric compositions with the elected silicate fiber species provide properties suitable for use in tire sidewall reinforcement inserts (p. 1 line 7 - p. 29 line 17, especially p. 19 line 11- p. 20 line 9 with fiber concentration values of 15 phr, 20 phr, 25 phr, and 27 phr disclosed with sufficient specificity and p. 29 lines 7-17 putting the composition in a tire sidewall insert); it would therefore have been obvious to one of ordinary skill in the art to use such art-recognized suitable elastomeric compositions in the sidewall reinforcement inserts of the above tire absent unexpected results (data in specification does not constitute a convincing showing of unexpected results at least because the results are not commensurate in scope with the scope of the claimed invention and are not unexpected in view of the prior art). As to claim 23, the close correspondence of structure, composition, and function between the above sidewall reinforcement inserts and the claimed sidewall reinforcement inserts provides sufficient basis for the examiner to infer that the above sidewall reinforcement inserts also meet the compression modulus E′ limitation; burden is thus shifted to applicant to show an unobvious difference (MPEP 2112, 2112.01).
Conclusion
Applicant is urged to maintain a patentable line of demarcation between the claims in this application and the claims in copending applications 18/001,334 and 18/258,002.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrienne C. Johnstone whose telephone number is (571)272-1218. The examiner can normally be reached M-F 1PM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 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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ADRIENNE C. JOHNSTONE
Primary Examiner
Art Unit 1749
Adrienne Johnstone /ADRIENNE C. JOHNSTONE/ Primary Examiner, Art Unit 1749 January 24, 2026