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 .
Response to Amendment
The amendments entered on 9/30/2025 have been accepted. Claims 1, 11, and 23 are amended. Claim 26 is new. Claims 10, 19, and 21 are canceled. Claims 1-9, 11-18, 20, 22-26 are pending. Applicant’s amendments to the claims have overcome the objections previously set forth.
Claim Objections
Claims 7-8, 12, and 24 are objected to because of the following informalities:
Claim 7 should recite “…wherein the bending stiffness value of each steel cord”, because this bending stiffness was introduced in claim 6 of which this claim depends.
Claim 8 should recite “…wherein the bending stiffness value of each steel cord”, because this bending stiffness was introduced in claim 6 of which this claim depends.
Claim 12 should read “…wherein organic acid cobalt is contained in the coating rubber of the belt layer”, because this coating rubber is now introduced in claim 1 of which this claim depends.
Claim 24 should read “…the rubber composition forming the tread portion has the complex elastic modulus E*”, because this modulus was introduced in claim 1 of which this depends.
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, 11-18, 20, 22-26 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 1 recites the limitation “the product (FR x E*) is 15 x 10^-3 or less”. There is insufficient antecedent basis for this limitation in the claim. Specifically, the claim has not previously introduced “the product”, nor “FR”, so as to be able to readily determine how to calculate the product. Claims 2-9, 11-18, 20, 22-26 are rejected for relying upon a rejected claim. The claim will be examined as if the product and FR were introduced as in claim 9, such that claim 1 reads “a product (FR x E*) of a bending stiffness value FR of each steel cord and the complex elastic modulus E* (MPa) of the rubber composition is 15 x 10--3 (MPa N m) or less”.
Claim 9 requires a product (FR x E*) to be 25 x 10^-3 or less. Claim 1, of which claim 9 depends, newly requires for this same product to be 15 x 10^-3 or less. Therefore, the range of claim 9 falls outside of the scope of claim 1, thus rendering the scope of claim 9 unclear. The claim is considered indefinite as it is not clear which range should be utilized.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 requires the product (FR x E*) to be 25 x 10^-3 or less, while claim 1 of which claim 9 depends requires the product to be 15 x 10^-3 or less. Therefore, claim 9 fails to specify a further limitation because claim 9 recites the product range outside of the product range claimed in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9, 11, 14-16, 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (US2014/0251520A, of record), in view of Iwasa (JP2013216306A, of record), in view of Ozaki (WO2020032208A1), in view of Vasseur (US2014/0024745A1), and in view of either Tomita (US2020/0254818A1, of record) or Nanni (US2001/0047840A1, of record).
Regarding claim 1, Nishimura teaches a motorcycle tire [title] comprising
a carcass extending from a tread portion to a bead core of a bead portion via a sidewall portion (carcass “6” extending between the bead portions “4” through the tread portion “2” and the sidewall portion “3” [0024]), and a belt layer arranged outside the carcass and inside the tread portion in the tire radial direction (belt “7” comprising plies 7A and 7B, which is clearly radially outside th3e carcass [0028, Fig. 1]), wherein
the belt layer is a steel belt layer having steel cords (steel cords make up the cords of the plies 7A and 7B [0029]),
the steel cord is a steel cord having an m x n configuration in which n strands have m steel filaments twisted together and m is 1-3 and n is 2-6 (the steel cords have a 3x3 construction made of 3 strands and 3 steel filaments [0012]. Note Fig. 2 of Nishimura, which is the same arrangement and Figure as Fig. 3 of the instant application also showing a 3x3 construction),
the diameter of the steel filaments is 0.15 or more and 0.25mm or less (the diameter of the steel filaments is 0.17mm [0012]).
Nishimura does not explicitly disclose the modulus/composition of its tread portion. However, it would have been obvious for one of ordinary skill in the art to look to other motorcycle tires with ideal rubber compositions of the tread portion so as to obtain a working tire within improved characteristics. Iwasa, for example, teaches a motorcycle tire and a composition for said motorcycle tire [title, Fig. 1]. At 60C, the complex elastic modulus E* is 6.9MPa or more [pg. 1 of machine translation], wherein there is not explicit upper limit provided for the modulus. The modulus is measured using the Eplexer manufactured by GABO [pg. 4 of machine translation], wherein it is noted that the instant application’s modulus was measured under the same testing equipment [0228]. The modulus is taken at conditions of frequency 10Hz, temperature 60C, dynamic strain 1.0%, static strain 3.0% [pg. 4 of machine translation]. The modulus is taken at 60C as opposed to 70C, but given that the modulus decreases at higher temperatures as well known in the art and that Iwasa teaches that the modulus at 30C is to be 9.6MPa or more [pg. 1 of machine translation], an approximation of the modulus at 70C may be calculated based upon these two points. The method results in the modulus at 70C being 6.0MPa or more. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have been motivated to modify the tread rubber of Nishimura to have the modulus/composition as in Iwasa. One would have been motivated in order to have a tire excellent in both braking performance on wet/dry road and a sense of rigidity at the time of turning to reduce fuel consumption [pg. 1, 3 of machine translation]. Because Iwasa suggests that the modulus is 6.9MPa or greater at a temperature of 60C (and given that a decrease at 70C would be expected such that a modulus would be ~6.0MPa or more), it is reasonably suggested by Iwasa that the complex elastic modulus E* is within the range of 5.0 to 6.6MPa at 70C. And as the testing conditions of Iwasa and the instant application are substantially similar (given the overlap in the testing machine and manufacturer, frequency, dynamic strain rate, etc.), one of ordinary skill in the art would expect for the results of Iwasa to be particularly relevant and pertinent to the complex elastic modulus as claimed.
When Nishimura is in view of Iwasa, the steel filaments would have a diameter of 0.17mm and the tread rubber composition would have a complex elastic modulus E* of approximately 6.0MPa or greater. The filament diameter of 0.17mm with a construction of 3x3 would lead to a total cross-sectional area of the steel filaments of 0.204mm2 (by calculating the area of a single filament times 9 for the 3x3 construction). The resultant product (SxE*) for a modulus E* of 6.0MPa would be 1.224, which is clearly less than 2.00. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Nishimura in view of Iwasa further suggest the product FR x E* is 15 x 10^-3 or less (Nishimura suggests a bending rigidity, recognized as synonymous with bending stiffness, of 10 to 12 gcm [0013], wherein this is equivalent to 0.00098Nm to 0.001177Nm. The modulus of the tread rubber is approximately 6.0MPa or greater at 70C as suggested by Iwasa. This equates to a range of 0.00588 to 0.007062 (MPa N m) at this modulus value of 6.00MPa. This range is well below the claimed inequality. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Nishimura teaches that the belt cords/plies may have a rubber composition which is applied to it [0039]. Nishimura teaches that the rubber composition may be as in Table 2, but Nishimura also explicitly states that “…the topping rubber is not limited to this composition. Various rubber compositions used as topping rubber for belt cords can be used in this invention” [0039]. Therefore, one of ordinary skill in the art would have found it obvious to look within the art for a variety of rubber compositions for the belts which were cited to provide beneficial aspects. Ozaki, for example, teaches a tire which is not explicitly limited to a specific type of vehicle (such that it would be reasonably pertinent to a variety of vehicles including motorcycle tires), wherein the belt is provided with belt coating rubber [pgs. 16-17 of machine translation]. The belt coating rubber includes phenol resin, which may be a modified phenol resin [pg. 18 of machine translation]. The instant specification as originally filed pgs. 54-55 specifically consider modified phenol resin to be a curable resin. Ozaki further states that this resin may be included in the rubber composition at 2 to 10 parts by mass with respect to 100 parts by mass of the rubber component [see bottom of pg. 18 of machine translation].
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the belt rubber composition to have the modified phenolic resin of Ozaki. One would have been motivated so as to improve the durability of the belt and suppress deterioration of the rolling resistance [Ozaki, pg. 18 of machine translation].
Nishimura in view of Iwasa does not explicitly suggest a plasticizer component in the tread composition. However, it is well known within the art to include a plasticizer component at the claimed compositions. Vasseur teaches a pneumatic tire with an inventive tread composition which may be used for motorcycles [0015]. The composition of the tread includes a plasticizer with components A and B, wherein together the composition of the plasticizer is 40phr or greater [0070]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The component A of the plasticizer is from 5 to 60phr [0070], and it is a hydrocarbon resin [0070], i.e., a resin component. The component B of the plasticizer is from 5 to 60phr [0070], and it may be a liquid polymer [0077-0080].
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the tread composition to include the plasticizer as suggested by Vasseur. One would have been motivated so as to improve the grip of the tread [0001-0014], and obtaining an improvement in road behavior while maintaining rolling resistance [abstract, 0116-0124, Table 1].
Nishimura does not explicitly disclose an inner and outer region wherein the outer region has a higher carbon black amount than the inner region. Nishimura/Iwasa do not specifically limit the amount of carbon black in the tire nor have preferred ranges, such that it would have been obvious for one to look to other tires within the art to improve the properties of the motorcycle tire. It is conventional in the art to situate a motorcycle tire to have a higher carbon black content on an outside of the tire compared to the inner portion. Tomita, for example, teaches a motorcycle tire (title) which has a tread rubber with a center rubber 9A and a pair of shoulder portions which sandwich the center [see Fig. 1, 0017]. The center region is made to have carbon black from 1-15 parts, while the shoulders have 15-40parts [0057, 0105, 0012]. One of ordinary skill in the art would have found it obvious to modify the tire of Nishimura to have differing carbon black amounts in the tread in the center vs. shoulder regions as suggested by Tomita. One would have been motivated so as to improve braking performance, dry grip, abrasion resistance, ice performance, color tone, and good dispersibility [0012, 0057, 0105].
In the alternate regarding the carbon black amounts, Nanni teaches a motorcycle tire [Fig. 2, 0067]. The tread is divided into a first portion which is located on the shoulders “A” and a second portion which is located in the center of the tread “B” [see Fig. 2]. The first portion (shoulder portions) comprise carbon black at least 40% by weight [0030], while the second portion (center portion) comprises preferably no carbon black and instead while filler [0028, 0030, 0051-0054, Claim 34]. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the tire of Nishimura to have differing amounts of carbon black amounts in the tread center vs. shoulder regions as suggested by Nanni. One would have been motivated so as to lower the temperature of the tire [0030] as well as improve performance on dry roads
Regarding claim 2, modified Nishimura makes obvious a tire wherein the complex elastic modulus E* is 6.5 MPa or more (as in the rejection of claim 1 above, the complex elastic modulus at 70C is approximately 6.0MPa or more. This suggestion from the composition of Iwasa would thus overlap with the claimed range of greater than 6.5MPa. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 3, modified Nishimura makes obvious a tire wherein (S x E*) is less than 1.70 (as in the rejection of claim 1 above, the product of the area of the cord as suggested by Nishimura and the modulus as suggested by Iwasa is 1.224 or more. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 4, modified Nishimura makes obvious a tire wherein the steel cord has a compression stiffness value of 65 N/mm or less (Nishimura does not explicitly give the compression stiffness value of its steel cords. However, Nishimura explicitly discloses that the cords of its belt layer are to be composed of steel [0007] with a filament diameter of 0.17mm [0012] with a 3x3 construction [0012], a bending rigidity of the steel cords is 10.0 to 12.0 gcm (equivalent to 0.00098Nm to 0.001177Nm), and wherein Nishimura specifically states that its invention improves the resistance to compression fatigue [0029]. In the instant application, the factors which affect the compression stiffness value are noted to be the material of the cord [0047] (i.e., steel), the diameter of the filaments [0052] (i.e., preferably between 0.15mm and 0.25mm so as to appropriately set compression stiffness), and the construction of the cord [0051] (i.e., 3x3 construction, in order to set compression stiffness). Because the cords of Nishimura satisfy each of the preferred ranges of the instant application which are noted so as to affect the compression stiffness value, it is reasonable to expect that the cords of Nishimura would similarly have a compression stiffness value of 65 N/mm or less. In other words, it is considered that the claimed compression stiffness value would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II.)
Additionally, it is noted that the testing examples 10-14 in Table 3 of the instant specification each have the exact same details as the cords of Nishimura. Namely, Examples 10-14 are each in a 3x3 construction made of steel with a diameter of the filament at 0.17mm (wherein as previously stated, Nishimura teaches this exact cord). Each of the examples have a compression stiffness that is below 65N/mm. Because it is recognized that the configuration of the cord directly affects the physical property of the compression stiffness (N/mm), and because the same construction as Nishimura is shown to have a compression stiffness of below 65N/mm in Table 3, it is additionally reasonable to expect that the claimed compression stiffness value of less than 65N/mm is made obvious by the tire of modified Nishimura.
Regarding claim 5, modified Nishimura makes obvious a tire wherein the steel cord is a steel cord having no buckling point (Nishimura does not explicitly state that the steel cords have no buckling point. However, Nishimura explicitly discloses that the cords of its belt layer are to be composed of steel [0007] with a filament diameter of 0.17mm [0012] with a 3x3 construction [0012], a bending rigidity of the steel cords is 10.0 to 12.0 gcm (equivalent to 0.00098Nm to 0.001177Nm, within the claimed bending stiffness values of less than 1.5x10^-3), and wherein Nishimura specifically states that its invention improves the resistance to compression fatigue [0029]. And as noted in the rejection of claim 4, the cords of Nishimura reasonably make obvious the claimed compression stiffness value of 65N/mm or less. Additionally, Nishimura is view of Matsumura suggest cords wherein the product of the bending stiffness value FR and the complex elastic modulus E* is less than 10x10^-3 (see rejections of claims 9-11 below). The buckling point depends upon the material of the cord, including upon the compression stiffness value and bending stiffness value. Because the cords of Nishimura satisfy the preferred ranges of the material of the cord, the diameter of the filament, the cord construction, the bending stiffness value of the steel cord, the compression stiffness value (as explained in the rejection of claim 4 above), and that Nishimura is specifically designed to resist compression fatigue, it is reasonable to expect that the cords of Nishimura would similarly have no buckling point. In other words, it is considered that the claimed compression stiffness value would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II.)
Additionally, it is noted that the testing examples 10-14 in Table 3 of the instant specification each have the exact same details as the cords of Nishimura. Namely, Examples 10-14 are each in a 3x3 construction made of steel with a diameter of the filament at 0.17mm (wherein as previously stated, Nishimura teaches this exact cord). Each of the examples have a cord that is devoid of a buckling point. Because of this and the substantial similarity between the cords of Nishimura and of the testing examples of the instant application examples 10-14, it is further reasonable to expect that the cords of Nishimura would not have a buckling point.
Regarding claims 6-8, modified Nishimura makes obvious a tire wherein the bending stiffness value of the steel cord is 2.5x10^-3 or less, 2.0x10^-3 or less, and 1.5x10^-3 or less (Nishimura suggests a bending rigidity, recognized as synonymous with bending stiffness, of 10 to 12 gcm [0013], wherein this is equivalent to 0.00098Nm to 0.001177Nm. The lower bound 0.00098Nm is lower than each of the claimed ranges. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claims 9 and 11, modified Nishimura makes obvious a tire wherein the product (FR x E*) of the bending stiffness value of the steel cord and the complex elastic modulus E* of the tread is 25x10^-3 or less and 10x10^-3 or less (as in the rejection of claim 1 above, Nishimura suggests a bending rigidity, recognized as synonymous with bending stiffness, of 10 to 12 gcm [0013], wherein this is equivalent to 0.00098Nm to 0.001177Nm. As in the rejection of claim 1 above, the modulus of the tread rubber is approximately 6.0MPa or greater at 70C as suggested by Iwasa. This equates to a range of 0.00588 to 0.007062 (MPa N m) at this modulus value of 6.00MPa. This range is below each of the claimed inequalities. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 14, modified Nishimura makes obvious a tire wherein the belt layer is multi-layered; and an average distance D between steel cords in a pair adjacent to each other is 0.6mm or less (as in Fig. 1, there are two belt plies 7A and 7B which are directly adjacent and stacked upon one another. There is no gap between these belt plies and no other belt layer or rubber present therein, such that the distance between the two belt plies (defined as the distance from the radially outer portion of the innermost belt and the radially innermost portion of the outermost belt) would clearly be well below 0.6mm and would be expected to be substantially 0mm).
Regarding claims 15-16, modified Nishimura makes obvious a tire wherein the belt layer is multi-layered, and the angle formed by the steel cords is 65 and 60deg or less with respect to the circ direction (the tire has two belt plies 7A and 7B as in fig. 1. The steel cords of each of the plies are from 10 to 30degrees with respect to the circumferential direction [0011], which is clearly within the claimed range).
Regarding claim 22, modified Nishimura makes obvious a tire wherein the product (S x E*) is 1.32 or less (as in the rejection of claim 1 above, the value of S would be suggested by Nishimura, wherein at a filament diameter of 0.17mm with a 3x3 construction the total cross-sectional area S would be 0.204mm2. And as in the rejection of claim 1 above, Iwasa suggests that the elastic modulus E* would be 6.0MPa or greater at 70C. Therefore, the product (S x E*) would have a value of 1.224 or greater. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 23, modified Nishimura makes obvious a tire wherein the product (SxE*) is 1.20 or less (as in the rejection of claim 1 above, the suggested product of (SxE*) would be approximately 1.224 or greater. This product suggested by the prior art is substantially close to the claimed value of 1.20 or less. The percent difference between the claimed value and the prior art suggested value is only 1.98%. As set forth in MPEP 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, In re Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Namely, because the product values are so substantially close to that which is claimed, a prima facie case of obviousness has been established as one skilled in the art would have expected them to have substantially the same properties. Additionally, no concrete showing of unexpected results or criticality have been shown).
Regarding claim 24, modified Nishimura makes obvious a tire wherein the rubber composition forming the tread portion has a complex elastic modulus E* of 5-5.9MPa (as in the rejection of claim 1 above, Iwasa suggests the elastic modulus E* being approximately 6.0MPa at 70C. This suggested value is substantially close to the claimed upper range of 5.9MPa. The percent difference between the claimed value and the prior art suggested value is only 1.68%. As set forth in MPEP 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, In re Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Namely, because the product values are so substantially close to that which is claimed, a prima facie case of obviousness has been established as one skilled in the art would have expected them to have substantially the same properties. Additionally, no concrete showing of unexpected results or criticality have been shown).
Regarding claim 25, modified Nishimura suggests a tire wherein the difference in carbon black content from the outer region and the inner region is 20% by mass or more (as applied to the rejection of claim 1 above, Tomita suggests having the inner region at 1-15 parts [0057] and the outer region at 15-40parts [0105]. This would lead to a difference of at least 20% in a multitude of cases, such as when both are at their maximum values of 15 and 40 (for a difference of 25%). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). And when Nishimura is in view of Nanni, the outer region would be at least 40% carbon black while the inner region has no carbon black [0028-0030, claim 34]. Therefore, when in view of Nanni, the difference would also necessarily be above 20%).
Regarding claim 26, modified Nishimura suggests a tire wherein the rubber composition forming the tread portion contains an oil as the plasticizer component (the plasticizer in the tread portion as suggested by Vasseur may include a wide variety of oil components [0081, 0119]).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (US2014/0251520A, of record), in view of Iwasa (JP2013216306A, of record), in view of Ozaki (WO2020032208A1), in view of Vasseur (US2014/0024745A1), and in view of either Tomita (US2020/0254818A1, of record) or Nanni (US2001/0047840A1, of record), as applied to claim 1 above, and further in view of Sakaki (US2016/0075863A1, of record).
Regarding claims 12-13, Nishimura has a topping rubber of its belt plies but Nishimura does not limit the composition of its topping rubber such that various rubber compositions may be used [0039]. Sakaki teaches a rubber composition for breaker toppings (wherein “breaker” is a synonym for a belt component in a tire), where the rubber composition preferably contains an organic acid cobalt [0242]. Possible examples include cobalt stearate [0243], wherein this is one of the preferred examples per the instant specification [0071]. The amount of organic acid cobalt is preferably 0.05 parts by mass or more to 100 parts by mass of the rubber component [0244].
One of ordinary skill in the art would have been motivated to modify the topping rubber of the cords of Nishimura to have organic acid cobalt as suggested by Sakaki. One would have been motivated in order to improve adhesion between the cord and the rubber in sufficient amounts [0242-0244].
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (US2014/0251520A, of record), in view of Iwasa (JP2013216306A, of record), in view of Ozaki (WO2020032208A1), in view of Vasseur (US2014/0024745A1), and in view of either Tomita (US2020/0254818A1, of record) or Nanni (US2001/0047840A1, of record), as applied to claim 1 above, and further in view of Iio (US2006/0070691A1, of record).
Regarding claim 17, Nishimura discloses that the belt layer is multi-layered with belt plies 7A and 7B [0028]. Nishimura’s specification is silent as to any width details of its belt plies. Iio teaches a motorcycle tire [title] where the belt comprises 3 belts “32”, “30”, and” 28” [Figs. 1, 3]. The radially outermost belt “32” is made to have a wider width W3 in the tire axial direction than that of the adjacent belt “30”’s width W2. Similarly, the middle belt “30” has a width in the axial direction W2 that is longer than the innermost belt “28” width [0037].
One of ordinary skill in the art would have found it obvious to modify the belt layers of Nishimura to have the radially outermost belt longer in the width direction compared to the innermost belt. One would have been motivated in order improve straight running stability and cornering performance [0037]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (US2014/0251520A, of record), in view of Iwasa (JP2013216306A, of record), in view of Ozaki (WO2020032208A1), in view of Vasseur (US2014/0024745A1), and in view of either Tomita (US2020/0254818A1, of record) or Nanni (US2001/0047840A1, of record), as applied to claim 1 above, and further in view of Goodyear (NPL: “Solution Styrene Butadiene Rubber (SSBR)” https://www.goodyearchemical.com/products/solution-styrene-butadiene-rubber, of record) and in view of Ikai (EP3915807A1, of record).
Regarding claims 18 and 20, Nishimura in view of Iwasa has a tire with a tread composition which contain varying amounts of S-SBR (see Examples 1-8). Wherein, Example 6 contains 30 parts by mass of S-SBR compared to 100 parts of rubber component [pg. 8 of machine translation]. It is not explicitly given what the content of styrene in the S-SBR is so as to determine the percentage of styrene in the rubber component. However, various formulations of S-SBR are conventionally known in the art which specify the amount of styrene. Goodyear, for example, lists 4 products which they sell which have varying amounts of styrene % from 16% to 33%.
One of ordinary skill in the art would have found it obvious to modify the tire of Nishimura to have a styrene % of S-SBR ranging from 16-33% as suggested by Goodyear. One would have been motivated in order to obtain a working tire with conventionally available S-SBR. In making this modification, the 30 parts by mass of S-SBR compared to 100parts of rubber in example 6 of Iwasa would lead to a composition with a Styrene content ranging from 4.8 to 9.9 parts by mass to 100parts of rubber. In other words, the amount of Styrene would range from 4.8% to 9.9% of the rubber component, such that the amount of styrene is less than the claimed 25%.
Modified Nishimura does not explicitly suggest a Tg of its rubber composition. Ikai teaches a motorcycle tire with a rubber composition with a diene-based rubber (such as SBR as suggested by Iwasa). The rubber composition has a Tg of less than or equal to -8C [0087]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have been motivated to modify the rubber composition of Nishimura so as to have a Tg less than -8C as suggested by Ikai (overlapping with greater than -18C). One would have been motivated in order to achieve both dry grip performance and sag resistance [0088].
Claims 1-9, 11, 14-16, 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (US2014/0251520A, of record), in view of Laurent (US2016/0101652A1, of record), in view of Ozaki (WO2020032208A1), in view of Vasseur (US2014/0024745A1), and in view of either Tomita (US2020/0254818A1, of record) or Nanni (US2001/0047840A1, of record).
Regarding claim 1, Nishimura teaches a motorcycle tire [title] comprising
a carcass extending from a tread portion to a bead core of a bead portion via a sidewall portion (carcass “6” extending between the bead portions “4” through the tread portion “2” and the sidewall portion “3” [0024]), and a belt layer arranged outside the carcass and inside the tread portion in the tire radial direction (belt “7” comprising plies 7A and 7B, which is clearly radially outside th3e carcass [0028, Fig. 1]), wherein
the belt layer is a steel belt layer having steel cords (steel cords make up the cords of the plies 7A and 7B [0029]),
the steel cord is a steel cord having an m x n configuration in which n strands have m steel filaments twisted together and m is 1-3 and n is 2-6 (the steel cords have a 3x3 construction made of 3 strands and 3 steel filaments [0012]. Note Fig. 2 of Nishimura, which is the same arrangement and Figure as Fig. 3 of the instant application also showing a 3x3 construction),
the diameter of the steel filaments is 0.15 or more and 0.25mm or less (the diameter of the steel filaments is 0.17mm [0012]).
Nishimura does not explicitly disclose the modulus of its tread portion. However, it would have been obvious for one of ordinary skill in the art to look to other motorcycle tires so as to obtain a working tire within improved characteristics. Laurent teaches a pneumatic tire for motorcycles [see title, Fig. 1]. The tread of the motorcycle is made to have an elastic modulus that is from 6.5 to 9MPa at 23C, and from 5MPa to 6MPa at 100C [0045]. Using the modulus values at 23C and 100C, an approximate range of modulus values at 70C may be calculated (as it is well understood in the art that the modulus decreases at higher temperatures. At 70C, the elastic modulus would be expected to be range from 5.6 to 7.2MPa (depending on whether the lower/higher range of modulus values are used). This would clearly overlap with the claimed range of 5MPa to 6.6MPa. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have found it obvious to modify the tread rubber of Nishimura to have the rubber modulus as suggested by Laurent. One would have been motivated so as to improve stiffness and cornering performance [0043]. Because Laurent suggests elastic modulus values of 6.5 to 9MPa at 23C and values from 5-6MPa at 100C, it would be reasonably suggested by Laurent that the elastic modulus would be within the claimed range at 70C.
When Nishimura is in view of Laurent, the steel filaments would have a diameter of 0.17mm and the tread rubber composition would have a complex elastic modulus of approximately 5.6 to 7.2MPa (a value of 5.6MPa will be utilized for the calculation). The filament diameter of 0.17mm with a construction of 3x3 would lead to a total cross-sectional area of the steel filaments of 0.204mm2 (by calculating the area of a single filament times 9 for the 3x3 construction). The resultant product (SxE*) for a modulus E* of 5.6MPa would be 1.14, which is clearly less than 2.00. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Modified Nishimura further makes obvious the product (FR x E*) of 15 x 10^-3 or less (Nishimura suggests a bending rigidity, recognized as synonymous with bending stiffness, of 10 to 12 gcm [0013], wherein this is equivalent to 0.00098Nm to 0.001177Nm. As above, the modulus of the tread rubber is approximately 5.6MPa or greater at 70C as suggested by Laurent. This equates to a range of 0.005488 to 0.0065912 (MPa N m) at this modulus value of 5.6MPa. This range is below the claimed inequalities. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Nishimura teaches that the belt cords/plies may have a rubber composition which is applied to it [0039]. Nishimura teaches that the rubber composition may be as in Table 2, but Nishimura also explicitly states that “…the topping rubber is not limited to this composition. Various rubber compositions used as topping rubber for belt cords can be used in this invention” [0039]. Therefore, one of ordinary skill in the art would have found it obvious to look within the art for a variety of rubber compositions for the belts which were cited to provide beneficial aspects. Ozaki, for example, teaches a tire which is not explicitly limited to a specific type of vehicle (such that it would be reasonably pertinent to a variety of vehicles including motorcycle tires), wherein the belt is provided with belt coating rubber [pgs. 16-17 of machine translation]. The belt coating rubber includes phenol resin, which may be a modified phenol resin [pg. 18 of machine translation]. The instant specification as originally filed pgs. 54-55 specifically consider modified phenol resin to be a curable resin. Ozaki further states that this resin may be included in the rubber composition at 2 to 10 parts by mass with respect to 100 parts by mass of the rubber component [see bottom of pg. 18 of machine translation].
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the belt rubber composition to have the modified phenolic resin of Ozaki. One would have been motivated so as to improve the durability of the belt and suppress deterioration of the rolling resistance [Ozaki, pg. 18 of machine translation].
Nishimura in view of Laurent does not explicitly suggest a plasticizer component in the tread composition. However, it is well known within the art to include a plasticizer component at the claimed compositions. Vasseur teaches a pneumatic tire with an inventive tread composition which may be used for motorcycles [0015]. The composition of the tread includes a plasticizer with components A and B, wherein together the composition of the plasticizer is 40phr or greater [0070]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The component A of the plasticizer is from 5 to 60phr [0070], and it is a hydrocarbon resin [0070], i.e., a resin component. The component B of the plasticizer is from 5 to 60phr [0070], and it may be a liquid polymer [0077-0080].
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the tread composition to include the plasticizer as suggested by Vasseur. One would have been motivated so as to improve the grip of the tread [0001-0014], and obtaining an improvement in road behavior while maintaining rolling resistance [abstract, 0116-0124, Table 1].
Nishimura and Laurent do not explicitly disclose an inner and outer region wherein the outer region has a higher carbon black amount than the inner region. Nishimura/Laurent do not specifically limit the amount of carbon black in the tire nor have preferred ranges, such that it would have been obvious for one to look to other tires within the art to improve the properties of the motorcycle tire. It is conventional in the art to situate a motorcycle tire to have a higher carbon black content on an outside of the tire compared to the inner portion. Tomita, for example, teaches a motorcycle tire (title) which has a tread rubber with a center rubber 9A and a pair of shoulder portions which sandwich the center [see Fig. 1, 0017]. The center region is made to have carbon black from 1-15 parts, while the shoulders have 15-40parts [0057, 0105, 0012]. One of ordinary skill in the art would have found it obvious to modify the tire of Nishimura to have differing carbon black amounts in the tread in the center vs. shoulder regions as suggested by Tomita. One would have been motivated so as to improve braking performance, dry grip, abrasion resistance, ice performance, color tone, and good dispersibility [0012, 0057, 0105].
In the alternate regarding the carbon black amounts, Nanni teaches a motorcycle tire [Fig. 2, 0067]. The tread is divided into a first portion which is located on the shoulders “A” and a second portion which is located in the center of the tread “B” [see Fig. 2]. The first portion (shoulder portions) comprise carbon black at least 40% by weight [0030], while the second portion (center portion) comprises preferably no carbon black and instead while filler [0028, 0030, 0051-0054, Claim 34]. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the tire of Nishimura to have differing amounts of carbon black amounts in the tread center vs. shoulder regions as suggested by Nanni. One would have been motivated so as to lower the temperature of the tire [0030] as well as improve performance on dry roads
Regarding claim 2, modified Nishimura makes obvious a tire wherein the complex elastic modulus E* is 6.5 MPa or more (as in the rejection of claim 1 above, the complex elastic modulus at 70C may range from approximately 5.6 to 7.2MPa. This suggestion from the composition of Laurent would thus overlap with the claimed range of greater than 6.5MPa. At a value of 6.6MPa for example, the product SxE would be 1.326 and still below the required range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 3, modified Nishimura makes obvious a tire wherein (S x E*) is less than 1.70 (as in the rejection of claim 1 above, the product of the area of the cord as suggested by Nishimura and the modulus as suggested by Laurent is 1.14 with a modulus value of 5.6MPa. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 4, modified Nishimura makes obvious a tire wherein the steel cord has a compression stiffness value of 65 N/mm or less (Nishimura does not explicitly give the compression stiffness value of its steel cords. However, Nishimura explicitly discloses that the cords of its belt layer are to be composed of steel [0007] with a filament diameter of 0.17mm [0012] with a 3x3 construction [0012], a bending rigidity of the steel cords is 10.0 to 12.0 gcm (equivalent to 0.00098Nm to 0.001177Nm), and wherein Nishimura specifically states that its invention improves the resistance to compression fatigue [0029]. In the instant application, the factors which affect the compression stiffness value are noted to be the material of the cord [0047] (i.e., steel), the diameter of the filaments [0052] (i.e., preferably between 0.15mm and 0.25mm so as to appropriately set compression stiffness), and the construction of the cord [0051] (i.e., 3x3 construction, in order to set compression stiffness). Because the cords of Nishimura satisfy each of the preferred ranges of the instant application which are noted so as to affect the compression stiffness value, it is reasonable to expect that the cords of Nishimura would similarly have a compression stiffness value of 65 N/mm or less. In other words, it is considered that the claimed compression stiffness value would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II.)
Additionally, it is noted that the testing examples 10-14 in Table 3 of the instant specification each have the exact same details as the cords of Nishimura. Namely, Examples 10-14 are each in a 3x3 construction made of steel with a diameter of the filament at 0.17mm (wherein as previously stated, Nishimura teaches this exact cord). Each of the examples have a compression stiffness that is below 65N/mm. Because it is recognized that the configuration of the cord directly affects the physical property of the compression stiffness (N/mm), and because the same construction as Nishimura is shown to have a compression stiffness of below 65N/mm in Table 3, it is additionally reasonable to expect that the claimed compression stiffness value of less than 65N/mm is made obvious by the tire of modified Nishimura.
Regarding claim 5, modified Nishimura makes obvious a tire wherein the steel cord is a steel cord having no buckling point (Nishimura does not explicitly state that the steel cords have no buckling point. However, Nishimura explicitly discloses that the cords of its belt layer are to be composed of steel [0007] with a filament diameter of 0.17mm [0012] with a 3x3 construction [0012], a bending rigidity of the steel cords is 10.0 to 12.0 gcm (equivalent to 0.00098Nm to 0.001177Nm, within the claimed bending stiffness values of less than 1.5x10^-3), and wherein Nishimura specifically states that its invention improves the resistance to compression fatigue [0029]. And as noted in the rejection of claim 4, the cords of Nishimura reasonably make obvious the claimed compression stiffness value of 65N/mm or less. Additionally, Nishimura is view of Matsumura suggest cords wherein the product of the bending stiffness value FR and the complex elastic modulus E* is less than 10x10^-3 (see rejections of claims 9-11 below). The buckling point depends upon the material of the cord, including upon the compression stiffness value and bending stiffness value. Because the cords of Nishimura satisfy the preferred ranges of the material of the cord, the diameter of the filament, the cord construction, the bending stiffness value of the steel cord, the compression stiffness value (as explained in the rejection of claim 4 above), and that Nishimura is specifically designed to resist compression fatigue, it is reasonable to expect that the cords of Nishimura would similarly have no buckling point. In other words, it is considered that the claimed compression stiffness value would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II.)
Additionally, it is noted that the testing examples 10-14 in Table 3 of the instant specification each have the exact same details as the cords of Nishimura. Namely, Examples 10-14 are each in a 3x3 construction made of steel with a diameter of the filament at 0.17mm (wherein as previously stated, Nishimura teaches this exact cord). Each of the examples have a cord that is devoid of a buckling point. Because of this and the substantial similarity between the cords of Nishimura and of the testing examples of the instant application examples 10-14, it is further reasonable to expect that the cords of Nishimura would not have a buckling point.
Regarding claims 6-8, modified Nishimura makes obvious a tire wherein the bending stiffness value of the steel cord is 2.5x10^-3 or less, 2.0x10^-3 or less, and 1.5x10^-3 or less (Nishimura suggests a bending rigidity, recognized as synonymous with bending stiffness, of 10 to 12 gcm [0013], wherein this is equivalent to 0.00098Nm to 0.001177Nm. The lower bound 0.00098Nm is lower than each of the claimed ranges. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claims 9 and 11, modified Nishimura makes obvious a tire wherein the product (FR x E*) of the bending stiffness value of the steel cord and the complex elastic modulus E* of the tread is 25x10^-3 or less, 15x10^-3 or less, and 10x10^-3 or less (Nishimura suggests a bending rigidity, recognized as synonymous with bending stiffness, of 10 to 12 gcm [0013], wherein this is equivalent to 0.00098Nm to 0.001177Nm. As in the rejection of claim 1 above, the modulus of the tread rubber is approximately 5.6MPa or greater at 70C as suggested by Laurent. This equates to a range of 0.005488 to 0.0065912 (MPa N m) at this modulus value of 5.6MPa. This range is below each of the claimed inequalities. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 14, modified Nishimura makes obvious a tire wherein the belt layer is multi-layered; and an average distance D between steel cords in a pair adjacent to each other is 0.6mm or less (as in Fig. 1, there are two belt plies 7A and 7B which are directly adjacent and stacked upon one another. There is no gap between these belt plies and no other belt layer or rubber present therein, such that the distance between the two belt plies (defined as the distance from the radially outer portion of the innermost belt and the radially innermost portion of the outermost belt) would clearly be well below 0.6mm and would be expected to be substantially 0mm).
Regarding claims 15-16, modified Nishimura makes obvious a tire wherein the belt layer is multi-layered, and the angle formed by the steel cords is 65 and 60deg or less with respect to the circ direction (the tire has two belt plies 7A and 7B as in fig. 1. The steel cords of each of the plies are from 10 to 30degrees with respect to the circumferential direction [0011], which is clearly within the claimed range).
Regarding claim 22, modified Nishimura makes obvious a tire wherein the product (S x E*) is 1.32 or less (as in the rejection of claim 1 above, the value of S would be suggested by Nishimura, wherein at a filament diameter of 0.17mm with a 3x3 construction the total cross-sectional area S would be 0.204mm2. And as in the rejection of claim 1 above, Laurent suggests that the elastic modulus E* would be 5.6MPa or greater at 70C. Therefore, the product (S x E*) would have a value of 1.14 at a modulus of 5.6MPa. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 23, modified Nishimura makes obvious a tire wherein the product (SxE*) is 1.20 or less (as in the rejection of claim 1 above, the suggested product of (SxE*) would be approximately 1.14 at a modulus value of 5.6MPa as suggested by Laurent. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 24, modified Nishimura makes obvious a tire wherein the rubber composition forming the tread portion has a complex elastic modulus E* of 5-5.9MPa (as in the rejection of claim 1 above, Laurent suggests the elastic modulus E* being approximately 5.6MPa at 70C. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 25, modified Nishimura suggests a tire wherein the difference in carbon black content from the outer region and the inner region is 20% by mass or more (as applied to the rejection of claim 1 above, Tomita suggests having the inner region at 1-15 parts [0057] and the outer region at 15-40parts [0105]. This would lead to a difference of at least 20% in a multitude of cases, such as when both are at their maximum values of 15 and 40 (for a difference of 25%). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). And when Nishimura is in view of Nanni, the outer region would be at least 40% carbon black while the inner region has no carbon black [0028-0030, claim 34]. Therefore, when in view of Nanni, the difference would also necessarily be above 20%).
Regarding claim 26, modified Nishimura suggests a tire wherein the rubber composition forming the tread portion contains an oil as the plasticizer component (the plasticizer in the tread portion as suggested by Vasseur may include a wide variety of oil components [0081, 0119]).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (US2014/0251520A, of record), in view of Laurent (US2016/0101652A1, of record), in view of Ozaki (WO2020032208A1), in view of Vasseur (US2014/0024745A1), and in view of either Tomita (US2020/0254818A1, of record) or Nanni (US2001/0047840A1, of record), as applied to claim 1 above, and further in view of Sakaki (US2016/0075863A1, of record).
Regarding claims 12-13, Nishimura has a topping rubber of its belt plies but Nishimura does not limit the composition of its topping rubber such that various rubber compositions may be used [0039]. Sakaki teaches a rubber composition for breaker toppings (wherein “breaker” is a synonym for a belt component in a tire), where the rubber composition preferably contains an organic acid cobalt [0242]. Possible examples include cobalt stearate [0243], wherein this is one of the preferred examples per the instant specification [0071]. The amount of organic acid cobalt is preferably 0.05 parts by mass or more to 100 parts by mass of the rubber component [0244].
One of ordinary skill in the art would have been motivated to modify the topping rubber of the cords of Nishimura to have organic acid cobalt as suggested by Sakaki. One would have been motivated in order to improve adhesion between the cord and the rubber in sufficient amounts [0242-0244].
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (US2014/0251520A, of record), in view of Laurent (US2016/0101652A1, of record), in view of Ozaki (WO2020032208A1), in view of Vasseur (US2014/0024745A1), and in view of either Tomita (US2020/0254818A1, of record) or Nanni (US2001/0047840A1, of record), as applied to claim 1 above, and further in view of Iio (US2006/0070691A1, of record).
Regarding claim 17, Nishimura discloses that the belt layer is multi-layered with belt plies 7A and 7B [0028]. Nishimura’s specification is silent as to any width details of its belt plies. Iio teaches a motorcycle tire [title] where the belt comprises 3 belts “32”, “30”, and” 28” [Figs. 1, 3]. The radially outermost belt “32” is made to have a wider width W3 in the tire axial direction than that of the adjacent belt “30”’s width W2. Similarly, the middle belt “30” has a width in the axial direction W2 that is longer than the innermost belt “28” width [0037].
One of ordinary skill in the art would have found it obvious to modify the belt layers of Nishimura to have the radially outermost belt longer in the width direction compared to the innermost belt. One would have been motivated in order improve straight running stability and cornering performance [0037]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (US2014/0251520A, of record), in view of Laurent (US2016/0101652A1, of record), in view of Ozaki (WO2020032208A1), in view of Vasseur (US2014/0024745A1), and in view of either Tomita (US2020/0254818A1, of record) or Nanni (US2001/0047840A1, of record), as applied to claim 1 above, and further in view of Nanni (US2001/0047840A1, of record) and in view of Ikai (EP3915807A1, of record).
Regarding claims 18 and 20, Nishimura in view of Laurent does not suggest a specific amount of styrene present in the rubber composition. Nanni, which is tied to a pneumatic tire for motorcycles, suggests that a center portion of the tread has SBR in amounts from 50-100% [0021] and 70-100% for the shoulder portions [0096]. The styrene content of the SBR is from 20-60% for both the center and shoulder portions [0022, 0097]. There are thus a multitude of embodiments wherein the styrene content were 25% or less. For example, even if the SBR of the tread rubbers were 100% of the rubber composition, the styrene mass would still be less than 25% when the styrene content % is at the bottom of its suggested range (such as at 20%). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the rubbers of the tread to have 25% or less of styrene as suggested by Nanni. One would have been motivated so as to improve dry grip performance and wet braking performance, and good fuel economy [0022].
Modified Nishimura does not explicitly suggest a Tg of its rubber composition. Ikai teaches a motorcycle tire with a rubber composition with a diene-based rubber (such as SBR). The rubber composition has a Tg of less than or equal to -8C [0087]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have been motivated to modify the rubber composition of Nishimura so as to have a Tg less than -8C as suggested by Ikai (overlapping with greater than -18C). One would have been motivated in order to achieve both dry grip performance and sag resistance [0088].
Response to Arguments
Applicant argues on pgs. 9-10 of their filed Remarks dated 9/30/2025 that the base reference of Nishimura fails to suggest various aspects of the claimed invention.
The Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues on pg. 10 of their Remarks that the cited references fail to suggest the advantageous properties exhibited by the claimed invention.
The Examiner respectfully disagrees. In response to applicant's arguments, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues on pg. 10 that Nishimura/Iwasa do not suggest the ranges of claims 23 or 24.
The Examiner respectfully disagrees. As set forth in MPEP 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, In re Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). As stated in the rejections, the ranges suggested by Nishimura/Iwasa and that of claims 23-24 are extremely close, such that one of ordinary skill in the art would have reasonably expected for the properties to be the same. Applicant has not provided a showing of unexpected results or criticality between the range suggested by Nishimura/Iwasa and as claimed in claims 23-24. Additionally, it is noted that claims 23-24 are also suggested by the combination of Nishimura/Laurent, and Applicant has not provided any arguments against this combination in regards to these claims.
Applicant argues on pgs. 10-11 that the features of claim 14 concerning the average distance between steel cords is not suggested by the prior art, and Applicant notes that claim 1 has been amended to recite a more specific definition of the measurement of the steel cords.
The Examiner respectfully disagrees. First, it is noted that claim 1 has not been amended to include any feature of the average belt distance, nor has claim 14 been amended to recite any additional limitations regarding the measurement method of the distance between steel cords. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regardless, it is noted that the prior art of Nishimura would still suggest the potential amended wording suggested in the Remarks. See Nishimura Fig. 2, which provides a view of the 3x3x0.17 cord structure which is relied upon in the rejections (with the filament diameter of 0.17mm), and wherein the surrounding rubber portions are clearly evident. Given that the filaments extend to the outer section of the cord, and that the cords would be touching each other [Fig. 1], even when considering the surrounding rubber coating the cords the average distance between the steel cords would still be well below the claimed 0.6mm or less.
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.
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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