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Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method for manufacturing a profiled element (Group II) and a method for manufacturing a tire (Group III), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/16/2025. The traversal is on the ground(s) that the Abad reference does not disclose a first elastomeric compound that forms a sublayer, and instead only teaches forming trenches in a second elastomeric compound. Applicant further argues that Rouby fails to teach the use of a pre-scraper and scraper to create a trench in a sublayer and in a second elastomeric compound applied onto the sublayer with the aim of depositing a third compound in the trench to form the insert. Applicant also argues that all independent claims inherently require that the third elastomeric compound making the insert must be in contact with both the first and second elastomeric compounds, and Abad entirely lacks the sublayer first elastomeric compound, and Rouby only discloses the trenches are formed in the second elastomeric compound, thereby the third elastomeric compound does not contact the sub-layer. This is not found persuasive because the technical features are known in the prior art as evidenced by the prior art rejection below. The examiner notes that the method claims are broader than the coextrusion installation claims and thus do not include all of the subject matter of the installation claims.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The abstract of the disclosure is objected to because of legal phraseology (i.e., “said”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 1 is objected to because of the following informalities: the phrase “in terms of thickness along a direction referred to as ‘vertical direction’” in lines 6-7 should be written as –in terms of a thickness along a vertical direction— for grammatical clarity and ease of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “in terms of width along a direction referred to as ‘lateral direction’” in line 8 should be written as –in terms of a width along a lateral direction— for grammatical clarity and ease of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “the flow direction” in line 10 should be written as –the shared flow direction— for consistency in claim language. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “-first of all a first head portion” in line 11 should be written as –a first head portion— for grammatical clarity and ease of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “a first, predetermined non-zero distance from the receiving surface, referred to as ‘pre-scraping thickness’” in lines 16-17 should be written as –a pre-scraping thickness which is a first, predetermined non-zero distance from the receiving surface— for grammatical clarity and ease of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “the pre-scraper” in lines 18, 21, 22, 24, and 29 should be written as –the at least one pre-scraper— for consistency in claim language. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “the scraper” in lines 33, 36, 38-39, and 43 should be written as –the at least one scraper— for consistency in claim language. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “a trench referred to as ‘embedding trench’” in lines 18-19 should be written as –an embedding trench— for grammatical clarity and ease of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “elastomeric compound, - then a second head portion” in lines 25-26 should be written as –elastomeric compound; a second head portion– for grammatical clarity and ease of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “a second vertical distance from the receiving surface, referred to as ‘scraping thickness’” in lines 31-32 should be written as –a scraping thickness which is a second vertical distance from the receiving surface— for grammatical clarity and ease of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “the embedding trench, - and then a third head portion” in lines 41-42 should be written as –the embedding trench; and a third head portion— for grammatical clarity and ease of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “the injector” in line 45 should be written as –the at least one injector— for consistency in claim language. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “a predetermined length referred to as ‘confluence length’” in lines 46-47 should be written as –a predetermined confluence length— for grammatical clarity and ease of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the examiner suggests Applicant remove the references to characters in parentheses for ease of reading the claims, i.e., lines 23 and 49. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: the phrase “the scraper” in line 2 should be written as –the at least one scraper— for consistency in claim language. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: the phrase “the injector” in line 4 should be written as –the at least one injector— for consistency in claim language. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: the phrase “the injector” in line 1 should be written as –the at least one injector— for consistency in claim language. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: the phrase “a non-zero vertical distance from the covering wall, referred to as ‘embedding depth’” in lines 3-4 should be written as –an embedding depth which is a non-zero vertical distance from the covering wall— for grammatical clarity. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: the phrase “wherein confluence length” in line 1 should be written as –wherein the confluence length— for grammatical clarity. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: the phrase “the pre-scraper” in line 2 should be written as –the at least one pre-scraper— for consistency in claim language. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the phrase “the scraper” in line 2 should be written as –the at least one scraper— for consistency in claim language. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the phrase “the injector” in line 2 should be written as –the at least one injector— for consistency in claim language. Appropriate correction is required.
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 1-9 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.
Regarding claim 1, the phrases “the longitudinal direction” in line 3, “the cross section” in line 6, the stream” in line 18, “the one part” in line 19, “the other part” in lines 22-23, “the longitudinal continuation” in line 29, “the one part” in line 43, “the longitudinal continuation” in lines 56-57, and “the outlet” in line 61 lack sufficient antecedent basis.
Regarding claim 1, the phrase "such as" in line 5 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-9 are indefinite by dependence on claim 1.
Regarding claim 3, the phrases “the point” in line 2, “the apex” in line 3, and “the space” in line 6 lack sufficient antecedent basis.
Claim 4 is indefinite by dependence on claim 3.
Regarding claim 6, the phrase “the width” in line 2 lacks sufficient antecedent basis.
Regarding claim 7, the phrase “the width” in line 2 lacks sufficient antecedent basis.
Regarding claim 8, the phrases “the resultant cross section” in line 2, “the base” in line 3, and “the apex” in line 3 lack sufficient antecedent basis.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-2 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bessac et al. (FR 3046104, see US 20210197438 as English equivalent).
Regarding claim 1, Bessac discloses a coextrusion installation intended for generating a profiled element by conjointly extruding a plurality of elastomeric compounds along a shared flow direction which corresponds to a longitudinal direction of the profiled element (Figs. 2-8), the installation comprising an extrusion head (Figs. 4-8: 50) which feeds the elastomeric compounds ([0040], [0044]), and a receiving surface (Fig. 4: 54) ([0050]), which is positioned facing the extrusion head (Fig. 4: 50) in order to define a gap serving to shape the cross section of the profiled element (Fig. 4: see gap between surfaces of 54 and 50), in terms of thickness along a vertical direction, which is perpendicular to the longitudinal direction and to the receiving surface, and in terms of width along a lateral direction, which is perpendicular to the longitudinal direction and to the vertical direction, wherein the extrusion head comprises, from upstream to downstream along the shared flow direction ([0051]): a first head portion (Figs. 4-8: 60), which is provided with one or more first intake channels (Figs. 5-8: 60, 60-1, 60-2, 60-3, 60-4) leading into the gap in order to bring a first elastomeric compound, intended to form a sublayer (Figs. 2-3: 22) of the profiled element ([0039]-[0040], [0057]-[0058]), into contact with the receiving surface, the first head portion also comprising at least one pre-scraper (Figs. 5-8: 62, 62-1, 62-2, 62-3; see also 72, 72-1, 72-2, 72-3) which projects vertically into the gap with delimitation, along the lateral direction, by a first lateral face and a second lateral face, and, along the vertical direction, by a lower face which faces towards the receiving surface with positioning at pre-scraping thickness which is a first predetermined, non-zero distance from the receiving surface, such that the at least one pre-scraper can reserve, within a stream of the first elastomeric compound, an embedding trench (Figs. 2-3: D20) which is bordered for the one part laterally by a first lateral substream of the first elastomeric compound and by a second lateral substream of the first elastomeric compound, which first and second lateral substreams flow on either side of the at least one pre-scraper (Figs. 5-8: see how flow from 60 is formed on both sides of 62/72), along the first lateral face and along the second lateral face of the at least one pre-scraper, respectively, and for the other part vertically by a bottom substream which flows between the receiving surface and the lower face of the at least one pre-scraper, in the pre-scraping thickness, to form a residual layer of first elastomeric compound ([0051], [0058]); a second head portion (Figs. 4-8: 64) which is provided with one or more second intake channels (Figs. 5-8: 64, 64-1, 64-2, 64-3, 64-4) which lead into the gap in order to feed a second elastomeric compound intended to cover the sublayer of first elastomeric compound coming from the first head portion, the second head portion comprising at least one scraper (Figs. 5-8: 66, 66-1, 66-2, 66-3; see also 72, 72-1, 72-2, 72-3) which extends in a longitudinal continuation of the at least one pre-scraper (Figs. 5-8: 62, 62-1, 62-2, 62-3; see also 72, 72-1, 72-2, 72-3), and which projects vertically into the gap so as to have a first lateral face, a second lateral face, and a lower face which faces towards the receiving surface, at a scraping thickness which is a second vertical distance from the receiving surface which is strictly less than the pre-scraping thickness, such that, for the one part, the at least one scraper can laterally preserve the embedding trench by making the stream of second elastomeric compound form a first lateral substream of second elastomeric compound and a second lateral substream of second elastomeric compound (Figs. 5-8: see flow from 64 on both sides of 66/72), which flow along the first lateral face and along the second lateral face, respectively, of the scraper and which form an added thickness of the first and the second lateral substream of first elastomeric compound, respectively, which come from the first head portion, whereas, for the other part, the scraper makes it possible to vertically deepen the embedding trench with a reduction, in accordance with the scraping thickness, in the thickness of the residual layer of first elastomeric compound at the bottom of the embedding trench (Figs. 2-3: see how there is a trench formed in layers 22 and 24; Figs. 5-8: see components of scraper and how they must function at the claimed thicknesses in order to form the trenches in Figs. 2-3); and a third head portion (Figs. 4, 6, 8: 68) comprising at least one injector (Figs. 6, 8: 70, 70-1, 70-2, 70-3) which projects into the gap, in a longitudinal continuation of the at least one scraper (Figs. 5-8: 66, 66-1, 66-2, 66-3; see also 72, 72-1, 72-2, 72-3), and which has an injection opening (Figs. 6, 8: 70, 70-1, 70-2, 70-3) intended to inject a third elastomeric compound, distinct from the second elastomeric compound, so as to form an insert (Figs. 2-3: 28) in the embedding trench (Figs. 2-3: D20), the third head portion moreover comprising, following the at least one injector in the longitudinal direction, a covering wall (Figs. 5-8: 74) which extends over a predetermined confluence length along the longitudinal direction, from the injection opening (Figs. 6, 8: 70, 70-1, 70-2, 70-3) to an outlet of the gap, in order that the flow of the profiled element below the covering wall allows the first and second lateral substreams of second elastomeric compound to close up over the insert (Figs. 5-8: see flows from 64 on both sides of 66/72 and insert provided within at 70), thus filling the embedding trench (Figs. 2-3) ([0042]-[0048], [0051]-[0064]).
The examiner notes that the claim language does not require the first and second lateral substreams of second elastomeric compound to close up over the insert and fill the embedding trench by completely and entirely embedding the insert within the second elastomeric compound. Bessac discloses that the second elastomeric compound is closed up over a top side of the insert and it is embedded in the second elastomeric compound (Figs. 2-3), even if not completely and fully embedded on all sides to particular depth within the second compound so as to not be exposed to the tread surface. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize, or alternatively find obvious, that Bessac discloses that the covering wall allows the first and second lateral substreams of second elastomeric compound to close up over the insert, thus filling the embedding trench.
Regarding claim 2, Bessac further discloses the scraping distance is zero, such that, in the second head portion, the scraper rubs against the receiving surface so as to eliminate the residual layer of first elastomeric compound at the bottom of the embedding trench, in order to allow the injector of the third head portion to place the insert made of third elastomeric compound in contact with the receiving surface (Figs. 2-3: see how the insert 28 is in contact with the bottom surface and thereby necessarily in contact with the receiving surface; see also Figs. 5-8: wherein the extruders and scrapers illustrate the path taken by the elastomeric compounds that are extruded onto the receiving surface) ([0042]-[0048], [0051]-[0069]).
Regarding claim 6, Bessac further discloses in the first head portion (Figs. 4-8: 60), the width of the pre-scraper (Figs. 7-8: 62, 62-1, 62-2, 62-3; see also 72, 72-1, 72-2, 72-3), considered along the lateral direction, increases from upstream to downstream in the flow direction (Figs. 7-8).
Furthermore, case law holds that changes in shape are matters of design choice that a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed invention is significant. See MPEP 2144.04. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the shape of the pre-scraper to have a tapered width so as to correspond to a desired profile element shape.
Regarding claim 7, Bessac further discloses in the second head portion (Figs. 4-8: 64), the scraper (Figs. 7-8: 66, 66-1, 66-2, 66-3; see also 72, 72-1, 72-2, 72-3) has a convergent portion which connects to the injector and the width of which, considered along the lateral direction, narrows from upstream to downstream in the flow direction (Figs. 7-8).
Furthermore, case law holds that changes in shape are matters of design choice that a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed invention is significant. See MPEP 2144.04. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the shape of the scraper to have a tapered width so as to correspond to a desired profile element shape.
Regarding claim 8, Bessac further discloses the injection opening (Figs. 6, 8: 70, 70-1, 70-2, 70-3), and consequently the resultant cross section of the insert (Figs. 2-3: 28), has a triangular shape, of which the base is oriented towards the receiving surface and the apex is oriented towards the extrusion head (Figs 4-8).
Regarding claim 9, Bessac further discloses the receiving surface is formed by a roller (Fig. 4: 54) which is driven in rotation in relation to the extrusion head (Fig. 4: 50), about its central axis which is parallel to the lateral direction ([0050], [0064], [0093]-[0094]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bessac et al. (FR 3046104, see US 20210197438 as English equivalent) as applied to claim 1 above.
Regarding claim 5, while Bessac does not explicitly disclose the value for the confluence length covered by the covering wall, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said length. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the confluence length covered by the covering wall in order to efficiently form and position the elastomeric compounds and inserts into the desired tread profile.
Allowable Subject Matter
Claims 3-4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 3, no prior art of record is considered to teach or suggest the combination of limitations of claims 1 and 3. In particular, the limitations “the injector is arranged so as to position the point of the injection opening that is furthest away from the receiving surface, along the vertical direction, and that thus corresponds to the apex of the insert, at a non-zero vertical distance from the covering wall, referred to as "embedding depth", such that the first lateral stream of second elastomeric compound and the second lateral stream of second elastomeric compound can meet and fuse in the space which is vertically comprised between the apex of the insert and the covering wall, in order to embed the insert in the second elastomeric compound at the embedding depth.”
Claim 4 would be allowable by dependence on claim 3.
The closest prior art of record is considered to be Bessac et al. (FR 3046104, see US 20210197438 as English equivalent).
Bessac discloses the claim limitations of claim 1 as discussed in the detailed rejection above. However, Bessac does not expressly recite that “the injector is arranged so as to position the point of the injection opening that is furthest away from the receiving surface, along the vertical direction, and that thus corresponds to the apex of the insert, at a non-zero vertical distance from the covering wall, referred to as "embedding depth", such that the first lateral stream of second elastomeric compound and the second lateral stream of second elastomeric compound can meet and fuse in the space which is vertically comprised between the apex of the insert and the covering wall, in order to embed the insert in the second elastomeric compound at the embedding depth.” Instead, Bessac discloses embedding the insert on one side with the apex ending at the tread surface (Figs. 2-3: 28). One of ordinary skill in the art before the effective filing date of the claimed invention would not have found it obvious to modify Bessac contrary to its disclosure, especially without a teaching or motivation to do so.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE (née AYALP) whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KATELYN SMITH (née WHATLEY) 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. The fax phone number for the examiner is (571) 273-5031.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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