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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/04/2025 has been entered.
Claim Rejections - 35 USC § 112
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 4 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 4 recites the limitation “wherein the first distance (d1) is from 1.0 to 2.0 mm” in lines 1-2. However, claim 1 already requires that “the first distance (d1) is from 1.2 to 1.5 mm.” Thus, the claimed range in claim 4 represents a broadening of scope of the claimed first distance range in claim 1. Therefore, claim 4 fails to further limit the subject matter of the claim upon which it depends. 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-12, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hosomi (US 2020/0108672) (of record) in view of Masui et al. (US 2015/0075692) (Masui) (of record) and Pedrinelli et al. (US 2022/0088974) (Pedrinelli) (of record).
Regarding claim 1, Hosomi discloses a pneumatic tire (title; [0026]) comprising: a tread portion (12); a pair of sidewall portions (13); a pair of bead portions (11) each having a bead core (21) embedded therein; a carcass (23) extending between the bead cores (21) of the pair of bead portions (11); and an inner liner (29) arranged on an inner side of the carcass (23) (see Fig. 10; [0025]-[0031]), wherein the carcass (23) includes a plurality of carcass cords and a topping rubber layer covering the carcass cords ([0027]), at least one electronic module (40) is disposed between the carcass (23) and the inner liner (29) (see Fig. 10; [0074]), the electronic module (40) includes an electronic component (41) and a cover rubber (44) covering the electronic component (41) (see Figs. 12B and 12C; [0080]; [0034]), the cover rubber (44) includes an inner layer (442) in contact with the inner liner (29) and an outer layer (441) in contact with the topping rubber of the carcass (23) (see Fig. 12C; [0080]-[0081]), and the electronic component (41) is arranged between the inner layer (442) and the outer layer (441) (see Figs. 12B and 12C; [0080]-[0081]). Hosomi fails to explicitly disclose, however, that the inner liner (29) includes a butyl rubber layer and an adhesive rubber layer, the butyl rubber layer forming a tire inner cavity surface, the adhesive rubber layer having an inner side surface in contact with the butyl rubber layer and an outer side surface in contact with the carcass (23).
Masui teaches a similar pneumatic tire (title) comprising: a tread portion (2); a pair of sidewall portions (3); a pair of bead portions (4) each having a bead core (5) embedded therein; a carcass (6) extending between the bead cores (5) of the pair of bead portions (4); and an inner liner (9) arranged on an inner side of the carcass (6) (see Fig. 1; [0026]), wherein the carcass (6) includes a plurality of carcass cords (K) and a topping rubber layer (6a) covering the carcass cords (K) (see Fig. 2; [0028]). Masui further teaches that the inner liner (9) includes a butyl rubber layer (IL1) and an adhesive rubber layer (IL2) (see Fig. 2; [0028]; [0023]), the butyl rubber layer (IL1) forms a tire inner cavity surface, and the adhesive rubber layer (IL2) has an inner side surface in contact with the butyl rubber layer (IL1) and an outer side surface (S) in contact with the carcass (6) (see Fig. 2; [0028]). Masui further teaches that configuring the inner liner (9) with this butyl rubber layer (IL1) and this adhesive rubber layer (IL2) can improve the fuel efficiency of the tire, improve the adhesive strength between the inner liner (9) and the carcass (6), and improve the durability of the tire ([0035]; [0056]; [0017]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the inner liner disclosed by Hosomi to have the claimed butyl rubber layer and adhesive rubber layer, as taught by Masui, because they would have had a reasonable expectation that doing so would improve the fuel efficiency of the tire, the adhesive strength between the inner liner and the carcass, and the durability of the tire.
Masui further teaches that the thickness (Masui: T2) of the adhesive rubber layer (Masui: IL2) is between 0.01 mm and 0.3 mm (Masui: [0068]), which is substantially close to the claimed range of 0.4 to 1.0 mm. A prima facie case of obviousness exists where the claimed range does not overlap with the prior art but is merely close. See MPEP §2144.05. Masui also teaches that a thickness (Masui: L-D/2) of the topping rubber (Masui: 6a) is from 0 to 1 mm (Masui: [0025]), encompassing the claimed range of 0.2 to 0.4 mm. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality for the claimed ranges, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied the claimed ranges based on the substantially close and encompassing ranges disclosed by Masui.
Modified Hosomi still fails to explicitly disclose, however, the claimed first distance, second distance, maximum thickness of the outer layer (Hosomi: 441), and maximum thickness of the inner layer (Hosomi: 442).
Pedrinelli teaches a similar pneumatic tire (title) comprising: a tread portion (7); a pair of sidewall portions (11); a pair of bead portions (4) each having a bead core (5) embedded therein; a carcass (3) extending between the bead cores (5) of the pair of bead portions (4); and an inner liner layer (10) arranged on an inner side of the carcass (3) (see Figs. 1 and 5; [0022]-[0026]). Pedrinelli further teaches that the tire comprises an electronic module (13) disposed between the carcass (3) and the inner liner layer (10) (see Fig. 5; [0039]), wherein the electronic module (13) includes an electronic component (14) and a cover rubber (17) covering the electronic component (14) (see Figs. 3 and 4; [0033]), and the cover rubber (17) includes an inner layer (18) and an outer layer (18) (see Figs. 3 and 4; [0033]). Pedrinelli further teaches that a total thickness (T) of the inner layer (18) and the outer layer (18) is between 0.6 and 2 mm ([0035]), making the thickness of each layer be between 0.3 and 1 mm since each layer (18) has about the same thickness (see Figs. 3 and 4), overlapping the claimed ranges of 1.0 to 1.2 mm for the outer layer and 0.3 to 1.2 mm for the inner layer. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Pedrinelli further teaches that configuring the electronic module (13) in this way can be inexpensive to implement ([0013]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the inner layer and the outer layer of the cover rubber disclosed by modified Hosomi to have the thicknesses taught by Pedrinelli because they would have had a reasonable expectation that doing so would be consistent with similar electronic modules in the art and would be inexpensive to implement.
Furthermore, given all of the above dimensions, it is clear that modified Hosomi discloses that a first distance from the boundary surface (Hosomi: S) to a virtual carcass cord reference surface is between 0.3 mm (0.3+0) and 2 mm (1+1), encompassing the claimed range of 1.2 to 1.5 mm. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Additionally, modified Hosomi discloses that a second distance from the boundary surface (Hosomi: S) to the butyl rubber layer (Masui: IL1) is between 0.31 mm (0.3+0.01) and 1.3 mm (1+0.3), overlapping the claimed range of 1.0 to 2.2 mm. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Finally, modified Hosomi also necessarily discloses that a ratio between the first distance and the second distance is from 0.23 (0.3/1.3) to 6.45 (2/0.31), encompassing the claimed range of 0.50 to 1.50. Therefore, absent any showing of unexpected results or criticality for the claimed ranges, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied the claimed ranges based on the encompassing and overlapping ranges disclosed by modified Hosomi. Thus, modified Hosomi satisfies all of the limitations in claim 1.
Regarding claim 3, modified Hosomi discloses all of the limitations as set forth above for claim 1. As set forth above, modified Hosomi discloses that a ratio between the first distance and the second distance is from 0.23 (0.3/1.3) to 6.45 (2/0.31), encompassing the claimed range of 0.85 to 1.15. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied the claimed range based on the encompassing range disclosed by modified Hosomi.
Regarding claims 4 and 5, modified Hosomi discloses all of the limitations as set forth above for claim 1. As set forth above, modified Hosomi discloses that a first distance from the boundary surface (Hosomi: S) to a virtual carcass cord reference surface is between 0.3 mm (0.3+0) and 2 mm (1+1), encompassing the claimed range of 1.0 to 2.0 mm. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Additionally, modified Hosomi discloses that a second distance from the boundary surface (Hosomi: S) to the butyl rubber layer (Masui: IL1) is between 0.31 mm (0.3+0.01) and 1.3 mm (1+0.3), overlapping the claimed range of 1.0 to 2.0 mm. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied all of the limitations in claims 4 and 5 based on the encompassing and overlapping ranges disclosed by modified Hosomi.
Regarding claim 6, modified Hosomi discloses all of the limitations as set forth above for claim 1. Modified Hosomi further discloses that the electronic component (Hosomi: 41) is arranged at a position within a range of 20% of the cross-sectional height centered around the widest position (Hosomi: [0039]; see Figs. 10 and 11). Given that the tire has a cross-sectional height of 126.75 mm (Hosomi: [0039]), it is highly likely that this position is 3 mm or more from a radially outer surface of one of the bead cores (Hosomi: 21), which are located outside of this region (Hosomi: see Fig. 10). Notwithstanding, modified Hosomi also discloses that the electronic component (Hosomi: 41) should be arranged at a position sufficiently far from the metal bead core (Hosomi: 21) in order to avoid adversely affecting the communication capabilities of the electronic component (Hosomi: 41) (Hosomi: [0038]; [0035]). Therefore, while modified Hosomi does not disclose a specific distance from the electronic component (Hosomi: 41) to a radially outer surface of one of the bead cores (Hosomi: 21), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have arranged the electronic component (Hosomi: 41) disclosed by modified Hosomi such that it is at a distance of 3 mm or more from the outer surface of one of the bead cores (Hosomi: 21) because they would have had a reasonable expectation that doing so would avoid adversely affecting the communication capabilities of the electronic component (Hosomi: 41).
Regarding claim 7, modified Hosomi discloses all of the limitations as set forth above for claim 1. Modified Hosomi further discloses that the tread portion (Hosomi: 12) is provided with a belt layer (Hosomi: 26) including belt cords made of metal (Hosomi: see Fig. 10; [0028]). Modified Hosomi further discloses that the electronic component (Hosomi: 41) is arranged at a position within a range of 20% of the cross-sectional height centered around the widest position (Hosomi: [0039]; see Figs. 10 and 11). Given that the tire has a cross-sectional height of 126.75 mm (Hosomi: [0039]), it is highly likely that this position is 3 mm or more from an outermost end of the belt layer (Hosomi: 26), which is located outside of this region (Hosomi: see Fig. 10). Notwithstanding, modified Hosomi also discloses that the electronic component (Hosomi: 41) should be arranged at a position sufficiently far from the steel belt layer (Hosomi: 26) in order to avoid communication disturbance of the electronic component (Hosomi: 41) (Hosomi: [0035]-[0038]). Therefore, while modified Hosomi does not disclose a specific distance from the electronic component (Hosomi: 41) to an outermost end of the belt layer (Hosomi: 26), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have arranged the electronic component (Hosomi: 41) disclosed by modified Hosomi such that it is at a distance of 3 mm or more from an outermost end of the belt layer (Hosomi: 26) because they would have had a reasonable expectation that doing so would avoid communication disturbance of the electronic component (Hosomi: 41).
Regarding claim 8, modified Hosomi discloses all of the limitations as set forth above for claim 1. Modified Hosomi further discloses that the inner layer (Hosomi: 442) of the cover rubber (Hosomi: 44) has a maximum thickness smaller than a maximum thickness of the outer layer (Hosomi: 441) of the cover rubber (Hosomi: 44) (Hosomi: see Fig. 12C; [0081]).
Regarding claim 9, modified Hosomi discloses all of the limitations as set forth above for claim 1. Modified Hosomi further discloses that the inner layer (Hosomi: 442) of the cover rubber (Hosomi: 44) has a maximum thickness smaller than a maximum thickness of the outer layer (Hosomi: 441) of the cover rubber (Hosomi: 44) (Hosomi: see Fig. 12C; [0081]). Specifically, modified Hosomi discloses that configuring the thicknesses of the inner layer (Hosomi: 442) and the outer layer (Hosomi: 441) in this way help to prevent damage done to the outer layer (Hosomi: 441) during vulcanization (Hosomi: [0081]-[0082]). Thus, it is clear that the relationship between the thickness of the inner layer (Hosomi: 442) and the thickness of the outer layer (Hosomi: 441) is a result-effective variable affecting the damage done to the outer layer (Hosomi: 441) during vulcanization. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the thicknesses of the inner layer (Hosomi: 442) and the outer layer (Hosomi: 441) disclosed by modified Hosomi to meet the claimed range because they would have had a reasonable expectation that doing so could prevent damage done to the outer layer (Hosomi: 441) during vulcanization.
Regarding claim 10, modified Hosomi discloses all of the limitations as set forth above for claim 1. Given the above values for the thickness of the adhesive rubber layer (Masui: IL2) and the thickness of the inner layer (Hosomi: 442), it is clear that modified Hosomi discloses that the adhesive rubber layer (Masui: IL2) has a maximum thickness in a range of 1% ((0.01/1)*100) to 100% ((0.3/0.3)*100) of a maximum thickness of the inner layer (Hosomi: 442) of the cover rubber (Hosomi: 44), overlapping the claimed range of 100% to 250%. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied all of the limitations in claim 10 based on the overlapping range disclosed by modified Hosomi.
Regarding claim 11, modified Hosomi discloses all of the limitations as set forth above for claim 1. Masui further teaches that the butyl rubber layer (Masui: IL1) can contain between 60% and 95% of butyl rubber (Masui: [0014]; [0040]), overlapping the claimed range of 80% or more. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, since modified Hosomi includes the teachings from Masui regarding the butyl rubber layer (Masui: IL1), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied all of the limitations in claim 11.
Regarding claim 12, modified Hosomi discloses all of the limitations as set forth above for claim 1. Modified Hosomi further discloses that the carcass (Hosomi: 23) includes a main body portion (Hosomi: 24) and turned-up portions (Hosomi: 25) (see Fig. 10; [0027]), the main body portion (Hosomi: 24) extends from one bead portion (Hosomi: 11) to the other bead portion (Hosomi: 11) (see Fig. 10; [0027]), the turned-up portions (Hosomi: 25) are continuous with the main body portion (Hosomi: 24) and each turned up around a respective one of the bead cores (Hosomi: 21) from inside to outside in a tire axial direction (Hosomi: see Fig. 10; [0027]), in each of the bead portions (Hosomi: 11), a bead apex (Hosomi: 22) extending outward in a tire radial direction from the bead core (Hosomi: 21) is disposed between the main body portion (Hosomi: 24) and the turned-up portion (Hosomi: 25) (Hosomi: see Fig. 10; [0026]-[0027]). Modified Hosomi further discloses that the electronic module (Hosomi: 40) can be arranged axially inside the bead apex (Hosomi: 22) in one of the bead portions (Hosomi: 11) (Hosomi: [0089]). Thus, modified Hosomi satisfies all of the limitations in claim 12.
Regarding claim 16, modified Hosomi discloses all of the limitations as set forth above for claim 1. Given the above values for the thickness of the topping rubber (Masui: 6a) and the thickness of the outer layer (Hosomi: 441), it is clear that modified Hosomi discloses that the thickness of the topping rubber (Masui: 6a) is from 0% ((0/1)*100) to 333% ((1/0.3)*100) of the thickness of the outer layer (Hosomi: 441), which includes the scenario in which the thickness of the topping rubber (Masui: 6a) is smaller than the thickness of the outer layer (Hosomi: 441). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied all of the limitations in claim 16 based on the wide range of possible values for the thicknesses of the topping rubber (Masui: 6a) and the outer layer (Hosomi: 441) disclosed by modified Hosomi.
Regarding claim 17, modified Hosomi discloses all of the limitations as set forth above for claim 16. As set forth above, modified Hosomi discloses that the thickness of the topping rubber (Masui: 6a) is from 0% ((0/1)*100) to 333% ((1/0.3)*100) of the thickness of the outer layer (Hosomi: 441), encompassing the claimed range of 10% to 30%. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality for the claimed range, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied the claimed range based on the encompassing range disclosed by modified Hosomi.
Regarding claim 18, modified Hosomi discloses all of the limitations as set forth above for claim 1. Modified Hosomi further discloses that the electronic component (Hosomi: 41) is an RFID tag (Hosomi: [0034]), satisfying all of the limitations in claim 18.
Regarding claim 19, modified Hosomi discloses all of the limitations as set forth above for claim 1. Pedrinelli further teaches that the cover rubber (Pedrinelli: 17) has a first length (Pedrinelli: L) in the tire circumferential direction of 60 to 80 mm (Pedrinelli: see Fig. 2; [0035]), suggesting the claimed range of 60 to 80 mm. Pedrinelli further teaches that configuring the electronic module (Pedrinelli: 13) in this way can be inexpensive to implement (Pedrinelli: [0013]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the cover rubber disclosed by modified Hosomi to have the first length taught by Pedrinelli because they would have had a reasonable expectation that doing so would be consistent with similar electronic modules in the art and would be inexpensive to implement.
While Pedrinelli teaches that, in general, the electronic component (Pedrinelli: 14) has an overall length of 1 to 2 mm less than the first length (Pedrinelli: L) of the cover rubber (Pedrinelli: 17) (Pedrinelli: [0033]), modified Hosomi also discloses that the overall length of the electronic component (Hosomi: 41) can be optimized according to the frequency band of radio waves to be used (Hosomi: [0034]; [0036]; [0043]). Therefore, absent any showing of unexpected results or criticality for the claimed range of the overall length of the electronic component, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the overall length of the electronic component (Hosomi: 41) in modified Hosomi to satisfy the claimed range because they would have had a reasonable expectation that doing so would be appropriate for use in certain frequency bands. Thus, modified Hosomi satisfies all of the limitations in claim 19.
Regarding claim 20, modified Hosomi discloses all of the limitations as set forth above for claim 19. Pedrinelli further teaches that the cover rubber (Pedrinelli: 17) has a second length (Pedrinelli: W) and a thickness (Pedrinelli: T) (Pedrinelli: see Figs. 3 and 4), wherein the second length (Pedrinelli: W) is a length in a direction orthogonal to the first length (Pedrinelli: L) , corresponds to a length of the electronic module (Pedrinelli: 13) along the carcass (Pedrinelli: 3) in the lateral cross-sectional view of the tire (Pedrinelli: see Figs. 2-4), and is from 8 to 12 mm (Pedrinelli: [0035]), overlapping the claimed range of 10 to 15 mm. Pedrinelli further teaches that the thickness (Pedrinelli: T) is a length in a direction orthogonal to the first length (Pedrinelli: L) and the second length (Pedrinelli: W) (Pedrinelli: see Figs. 2-4), and is from 0.6 to 2 mm (Pedrinelli: [0035]), overlapping the claimed range of 2.0 to 3.0 mm. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality for the claimed ranges, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied the claimed ranges based on the overlapping ranges disclosed by modified Hosomi.
Claims 13-15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hosomi (US 2020/0108672) (of record) in view of Masui et al. (US 2015/0075692) (Masui) (of record) and Pedrinelli et al. (US 2022/0088974) (Pedrinelli) (of record) as applied to claim 12 above, and further in view of So (US 2020/0406564) (of record).
Regarding claims 13-14, modified Hosomi discloses all of the limitations as set forth above for claim 12. Modified Hosomi fails to disclose, however, specific values for the distance L1 from an innermost end in the tire radial direction of the electronic module (Hosomi: 40) to an outermost surface in the tire radial direction of the bead core (Hosomi: 21) and the distance L2 from an outermost end in the tire radial direction of the electronic module (Hosomi: 40) to an outermost end in the tire radial direction of the bead apex (Hosomi: 22).
So teaches a similar tire (title) comprising: an electronic module (120) disposed within the inner liner (110) of the sidewall (150) (see Fig. 1; [0037]-[0038]). So further teaches that the electronic module (120) is arranged axially inside a bead apex (130) (see Fig. 1; [0039]; [0047]). Specifically, So teaches that a distance L1 from the electronic module (120) to an outermost surface (140) in the tire radial direction of the bead core is from 45% to 85% of a height of the bead apex (130) ([0047]; [0014]), encompassing the claimed range of 50% to 60%. Thus, So also necessarily teaches that the distance L2 from the electronic module (120) to an outermost end (131) in the tire radial direction of the bead apex (130) is from 15% (100-85) to 55% (100-45) of the height of the bead apex (130), encompassing the claimed range of 25% to 35%. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. So further teaches that this position of the electronic module (120) is where contact shear strength is lowest ([0047]), thus avoiding reducing the durability of the tire and electronic module (120) ([0008]-[0009]; [0054]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the electronic module disclosed by modified Hosomi such that it satisfies the claimed position ranges, as suggested by So, because they would have had a reasonable expectation that doing so would avoid reducing the durability of the tire and the electronic module.
Regarding claim 15, modified Hosomi discloses all of the limitations as set forth above for claim 14. So further teaches that the above position ranges of the electronic module (So: 120) are appropriate for a bead apex (So: 130) height of 30 mm or more (So: [0013]-[0014]; [0046]; [0070]). Thus, So necessarily teaches that the distance L1 is at least between 13.5 mm (30*0.45) and 25.5 mm (30*0.85), suggesting the claimed ranges of 5 mm or more. Likewise, So necessarily teaches that the distance L2 is at least between 4.5 mm (30*0.15) and 16.5 mm (30*0.55), overlapping the claimed ranges of 7 mm or more and less than 7 mm. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, since modified Hosomi includes the teachings from So regarding the positioning of the electronic module, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Hosomi to have satisfied all of the limitations in claim 15.
Regarding claim 22, Hosomi in view of Masui, Pedrinelli, and So discloses all of the limitations in claim 22 as set forth above for claims, 1, 12, and 13, which include all of the limitations in claim 22.
Response to Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
Regarding applicant’s arguments related to amended independent claim 1, examiner notes that the new ground of rejection over Hosomi, Masui, and Pedrinelli set forth above suggests each of the newly claimed ranges as well as the claimed d1/d2 ratio by providing corresponding ranges that either overlap, encompass, or come substantially close to the respective claimed ranges. Therefore, absent any showing of unexpected results or criticality, newly amended claim 1 does not overcome a prima facie case of obviousness over Hosomi, Masui, and Pedrinelli.
Applicant points to Examples 2 and 8 in Table 1 of the instant application to show that the combination of the newly claimed ranges as well as the claimed d1/d2 ratio results in advantageous properties when compared with Comparative Reference Examples 1 and 2 as well as Examples 1 and 9. While applicant does not expressly argue that Table 1 provides evidence of unexpected results or criticality, examiner nonetheless emphasizes that Table 1 does not set forth a showing of unexpected results or criticality for any of the claimed ranges nor the combination of claimed ranges. Indeed, none of the examples in Table 1 provide data for the endpoint of 0.50 for the claimed d1/d2 ratio; thus, criticality at least for this endpoint of the claimed d1/d2 ratio cannot be proved based on Table 1. All of the examples, including ones with inferior durability, have a maximum thickness (t4) within the claimed range; thus, the maximum thickness (t4) of the topping rubber does not seem to have criticality. Example 9 includes a maximum thickness (t1) of the outer layer within the claimed range but has inferior performance; thus, the claimed (t1) range does not seem to have criticality. Examples 1 and 9, which have inferior performance, also include thickness values (t2) of the inner layer that fall within the claimed range; thus, the claimed (t2) range does not seem to have criticality. Comparative Reference Examples 1 and 2 have inferior performance but contain thickness values (t3) of the adhesive rubber layer within the claimed range; thus, the claimed (t3) range does not seem to have criticality. Example 9 also includes a first distance (d1) within the claimed range but has inferior performance, so the claimed first distance (d1) does not seem to have criticality. Comparative Reference Example 1 and Example 1 include a second distance (d2) within the claimed range but have inferior performance; thus, the claimed second distance (d2) does not seem to have criticality. Finally, Table 1 does not have enough data in order to prove criticality for the combination of each of the above claimed ranges since a controlled experiment comparing examples having only one of the variables outside of the claimed range for each of the claimed ranges would be necessary. Thus, it is clear that applicant has not provided a sufficient showing of unexpected results or criticality for any of the newly claimed ranges.
Regarding applicant’s arguments that the So reference fails to suggest the claimed distance (L1) in claims 13 and 22, examiner respectfully disagrees. Applicant specifically argues that a literal and accurate reading of So’s disclosure that “the electronic device is attached at a height of 45% to 85% from the end of the bead wire of the tire” (see [0014]; [0021]; [0047]; [0070]) would require that the percentage range be with respect to the tire’s cross-sectional height and not with respect to the radial height of the bead filler. While it is true that the disclosure of So does not explicitly contain the words “with respect to the radial height of the bead filler,” examiner notes that the statement also does not include the words “with respect to the tire’s cross-sectional height,” and contrary to applicant’s arguments, it is more reasonable – and indeed necessary – to take the percentage range disclosed by So as being with respect to the radial height of the bead filler when read in the proper context. For instance, paragraphs [0045]-[0047] of So describe the embodiments shown in Figs. 2 and 3 where the electronic device (120) is “attached to the inner side of an end 131 of the bead filler, when the bead filler 130 has a length of 30 mm” ([0046]). Thus, when So discloses the height range of 45% to 85% in paragraph [0047], So cannot possibly mean 45% to 85% with respect to the cross-sectional height of the tire because this would clearly involve placing the electronic device (120) on the outer side of the end (131) of the bead filler (130) (45% of the smaller cross-sectional height 99.75 mm would be 44.9 mm, which is clearly greater than the 30 mm height of the bead filler). Furthermore, So also gives a specific height range of the electronic device (120) of 15 mm to 26 mm from the end (140) of the bead wire ([0047]), which is 50% ((15/30)*100) to 87% ((26/30)*100) of the bead filler height. This aligns closely with the disclosed range of 45% to 85% only when taken with respect to the bead filler height, not the tire’s cross-sectional height. Thus, applicant’s arguments against the So reference are not persuasive.
As such, claims 1, 3-20, and 22 stand rejected.
Conclusion
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/B.C.D./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749