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 10/14/2025 have been accepted. Claims 1, 5, 14, 17 are amended. Claims 21-22 are new. Claims 1-6, 8-10, 12-22 are pending. Applicant’s amendments to the claims have overcome the objections previously set forth.
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 1-6, 8, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Deal (US2012/0090755) in view of Baily (US20190177486), in view of Big O Tires (NPL: “What is a Tire Load Rating?”), in view of Teratani (JP2001323110A, of record), in view of Wang (CN109749123A, of record), and in view of Yoshioka (US2019/0367705A1, of record).
Regarding claim 1, Deal discloses a pneumatic tire (Fig. 2), wherein the tire as in Figs. 2+ depicts a tread part (tread strip “6”) with a tread surface (considered the radially outermost portion of the tread strip as in Fig. 2), the tread part having at least one rubber layer (the tread rubber would necessarily comprise a rubber layer as in Fig. 2), wherein the tread part has land parts partitioned by tread edges and a plurality of circumferential grooves extending continuously in a tire circumferential direction (as in Fig. 2, the tread rubber clearly have a plurality of circumferential grooves (3 in this case), wherein the land parts would be divided by the end of the tread and these circumferential grooves. The tread edges would be considered to be the axially outer portions of the tread towards the shoulder areas of the tire).
Deal’s tire (assignee Michelin) has a passenger tire size of 205/55R16 and a tire weight of 8kg [0081]. Deal is silent as to the load capacity of the tire.
Baily discloses Michelin Energy Saver tires of size 205/55R16 91V [0100, 0104]. The number “91V” would be considered the load index size as is conventionally used in the art of tires. It being noted that each other tire with the size of 205/55R16 similarly has a load index rating of 91 as well. The load index (maximum load capacity) of “91” correlates to 1356 pounds or 615 kg (WL = 615 kg). See chart in Big O Tires, which provides the correlation of what the load index rating correlates to in terms of kg.
One of ordinary skill in the art would have found it obvious to provide Deal’s pneumatic tire having a tire size of 205/55R16 and a tire weight of 8 kg such that the tire has a maximum load capacity of 615 kg (load index = 91), such that the ratio of tire weight G / maximum load capacity Wl thereby being 0.0130 (as 8kg/615kg = 0.0130). One would have found this obvious because (1) Deal discloses a pneumatic tire (assignee Michelin) having a passenger tire size of 205/55R16 and a weight = 8kg [0081], (2) Baily discloses Michelin Energy Saver 205/55R16 91V (load index = 91) [0100-0104], as well as a variety of other equivalent tire sizes also having a load index of 91, and (3) Big O Tires describes load index (maximum load capacity) of “91” being 1356 pounds or 615 kg (WL = 615kg). Thus, the applied prior art suggests that Deal’s pneumatic tire having a tire size of 205/55R16 and a tire weight of 8kg should have a load index of “91” which is 615kg. This value of 0.0130 falls within the claimed range of 0.0160 or less, and the tire weight of 8kg (G) also falls within the range of from 7.9 to 8.4kg.
Deal is silent as to the rubber composition of the tread rubber and the contact angle therein. As such, it would have been obvious for a person of ordinary skill in the art to look towards other tires with optimal rubber compositions to utilize in the tread portion of its tire, so as to obtain a working tire. Teratani, for example, teaches a pneumatic tire which has a rubber composition which is used for at least the ground contacting portion of the tread of the tire, wherein the water contact angle is set to be 100deg or more for the rubber composition [0004, 0006]. Teratani does not limit the upper limit of its water contact angle, and Teratani’s testing examples show water contact angles of several examples above 105deg [see Table 1]. 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 apply the tread composition as suggested by Teratani to the tread of Deal, because Deal is silent as to its tread rubber composition. Additionally, one would have been motivated in order to improve wet performance, braking performance, good wear resistance, etc. [0003-0004, 0006, Table 1], which are beneficial aspects to all pneumatic tires including the passenger car tires of Deal.
Deal in view of Teratani makes obvious a ratio (θ/G) of 16.0 or less (as above, the water contact angle θ suggested by Teratani may be 100deg or above, including explicit examples of above 105deg such as at 118 deg [see Table 1]. Deal teaches a tire weight of 8kg. Therefore, there would be numerous instance within these ranges that satisfy the claimed inequality. For example, when the contact angle θ is 105 and the tire weight is 8kg, the ratio would be 13.125. As an additional example, when the contact angle θ is 118deg and the tire weight G is 8kg, the ratio would be 14.75. 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)).
Deal in view of Teratani does not explicitly have a recycle or powdered rubber in the rubber composition. However, it is very well known and common within the art to have a recycled or powdered rubber in the rubber composition to lessen the environmental impacts of making said tire. For example, Wang teaches rubber powder that may be used specifically with tires and in other uses [pg. 1 of machine translation]. The rubber powder is treated so as to improve the vulcanization speed of the rubber material, and to improve tensile strength of the material [pg. 1, 5 of machine translation].
One of ordinary skill in the art would have found it obvious to modify the composition of Deal/Teratani so as to have a powdered rubber as suggested by Wang. One would have been motivated in order to lessen the environmental impact of the rubber by using reclaimed rubber that is more environmentally friendly [pg. 1 of machine translation], as well as to potentially shorten the vulcanization time and improve strength [pg. 1, 5 of machine translation]. As Teratani does not limit its tire against using recycled/powdered rubber and rather explicitly states that the rubber component is not particularly limited such that a variety of different possibilities may be utilized [0009, 0012, 0025, 0042 states it is not limited to any examples given], it would be obvious to one of ordinary skill to make the modification so as to lessen the environmental impact of the tire.
Deal in view of Teratani/Wang does not explicitly suggest a tan delta or elastic modulus of the rubber composition, such that it would be obvious to look to other rubber compositions for ideal tan delta/elastic modulus relationships for improving the tire performance. Yoshioka suggests a rubber composition for tires [0001], wherein the complex elastic modulus E* measured at 0C is preferably from 3.0 to 8.0 MPa [0206]. The tan delta at 0C is preferably set from 0.14 to 0.26 [0208]. Within this range of values of the modulus and tan delta, the ratio tan delta/modulus significantly overlaps with a range of 0.020 or more. For example, a modulus of 5.5MPa and a tan delta of 0.3 (both taken within the middle of their respective ranges), leads to a ratio of 0.36. 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). It being noted that Yoshioka suggests that the rubber components of the rubber composition may include other and varying amounts of rubber [0136] (and wherein Teratani’s rubber composition is not especially limited and may include a variety of different components [0009, 0012, 0025, 0042], such that the effects of Yoshioka would be expected to be possible with a wide array of different compositions and would be readily applicable to the tire of Deal/Teratani.
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 Deal to have the elastic modulus and tangent delta relationship as suggested by Yoshioka. One would have been motivated in order to balance the performance of snow/ice and abrasion resistance and other properties [0206-0208], wherein this would clearly be beneficial with the composition of Deal/Teratani wherein it is similarly tied to improving grip performance on ice/snow surfaces (as well as other performance enhancing aspects).
Regarding claim 2, modified Deal makes obvious a tire wherein the rubber composition comprises 50 parts by mass or more of silica based on 100 parts by mass of the rubber component (the silica as suggested in the composition of Teratani may contain from 5 to 60 parts by weight to 100 parts of rubber [0014]. 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 Deal makes obvious a tire wherein a content of carbon black in the rubber composition based on 100 parts by mass of the rubber component is 15parts by mass or less (the amount of carbon black in the rubber composition as suggested by Teratani is preferably from 5 to 60parts by mass [0013 of machine translation]. 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 Deal makes obvious a tire wherein the ratio (G/WL) of the tire weight G (kg) to the maximum load capacity WL is 0.0150 or less (as in the calculations in the rejection of claim 1 above, the tire of Deal in view of Baily/Big O Tires has a ratio (G/WL) of 0.0130. 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 5, modified Deal makes obvious a tire wherein a ratio (θ/G) of the contact angle to the tire weight is 12.5 or more (the contact angle may be greater than 100deg as suggested by Teratani without setting an upper limit, including several examples above 105deg in Table 1. The tire weight may range from 8kg as suggested by Deal. All possible combinations would result in a ratio above 12.5. For example, at a contact angle of 105 and a tire weight of 8kg, the ratio would be 13.125. 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 6, modified Deal makes obvious a tire wherein the contact angle with the pure water of the rubber composition is 115deg or more (as in the rejection of claim 1 above, Teratani suggests the water contact angle is 100deg or more [0004, 0006], without setting an upper bound. Additionally, testing examples show that the water contact angle may be above 115deg such as at 118deg [see Table 1]. 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 8, modified Deal makes obvious a tire wherein the rubber composition comprises at least one selected from a group of silicone, silicone-based polyurethane, and fluorine-based polyurethane (the rubber composition of Teratani includes at least one water-repellant agent such as fluororesins, silane compounds, and silicone oils [0008]).
Regarding claim 19, modified Deal makes obvious a tire wherein the angle is 105 to 118degrees (as in the rejection of claim 1 above, Teratani suggests a rubber composition which has a water contact angle of greater than 100deg [0004, 0006]. The testing examples suggest that the water contact angle may be, for example 118deg for the ground contacting portion [see Table 1]. 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)).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Deal (US2012/0090755) in view of Baily (US20190177486), in view of Big O Tires (NPL: “What is a Tire Load Rating?”), in view of Teratani (JP2001323110A, of record), in view of Wang (CN109749123A, of record), and in view of Yoshioka (US2019/0367705A1, of record), as applied to claim 1 above, and further in view of Takenaka (JP2017095673A, of record).
Regarding claim 9, Deal/Teratani does not explicitly suggest an inclusion of a terpene-based resin or a cyclopentadiene-based resin. However, it is known in the art that the inclusion of these compounds improves the hydrophilic properties of rubber, and the composition of Teratani does not limit its composition away from the use of such compounds. Takenaka is similarly tied to a pneumatic tire with a rubber composition for improve wet properties and water contact angle [see pg. 1 of machine translation]. The rubber composition is made to include either/or terpene resins and cyclopentadiene resins [see pg. 3 of machine translation]. One of ordinary skill in the art would have found it obvious to modify the composition of Deal/Teratani so as to include a terpene resin and/or cyclopentadiene resin as in Takenaka. One would have been motivated so as to improve the water repellency of the rubber composition which affects the wet and snow ability of the tire [see pg. 3 of machine translation].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Deal (US2012/0090755) in view of Baily (US20190177486), in view of Big O Tires (NPL: “What is a Tire Load Rating?”), in view of Teratani (JP2001323110A, of record), in view of Wang (CN109749123A, of record), and in view of Yoshioka (US2019/0367705A1, of record), as applied to claim 1 above, and further in view of Chen (US2013/0231426A1, of record).
Regarding claim 10, Deal does not explicitly state that its rubber composition includes 30 parts by mass or more of oil. However, the inclusion of oils in rubber compositions of the tread are very common within the art of tires, and the composition of Teratani does not limit its composition away from the use of such compounds. Chen, for example, is tied to a rubber composition for a tire tread [0003, 0006], wherein the rubber compositions are made to have increase contact angles with water [see Table 7 for example]. The rubber composition is made to have process oils in amounts ranging up to 100phr or up to 50phr is different embodiments [0052]. 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 composition of Deal/Teratani so as to include oil in amounts as suggested by Chen. One would have been motivated so as to extend and soften the rubber composition [0052].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Deal (US2012/0090755) in view of Baily (US20190177486), in view of Big O Tires (NPL: “What is a Tire Load Rating?”), in view of Teratani (JP2001323110A, of record), in view of Wang (CN109749123A, of record), and in view of Yoshioka (US2019/0367705A1, of record), as applied to claim 1 above, and further in view of Kogure (US5355922A, of record).
Regarding claim 12, Deal clearly have circumferential grooves as in Fig. 2, but Deal is silent as to further aspects of its tread pattern including a circumferential groove depth. Kogure is tied to a pneumatic radial tire for passenger cars [title], similar to Deal. Kogure states that conventional passenger tread grooves have a depth from 8 to 11mm [Col3 L64 – Col4 L10]. 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). Because Deal is silent as to the depth of its circumferential grooves, it would have been obvious for one of ordinary skill in the art to look to other conventional tires within the art for conventionally used circumferential groove depths so as to obtain a working tire, with a reasonable expectation of success. One would have been motivated to obtain conventional benefits associated with proper sized groove depths, such as sufficient drainage and rigidity of the tread portion.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Deal (US2012/0090755) in view of Baily (US20190177486), in view of Big O Tires (NPL: “What is a Tire Load Rating?”), in view of Teratani (JP2001323110A, of record), in view of Wang (CN109749123A, of record), and in view of Yoshioka (US2019/0367705A1, of record), as applied to claim 1 above, and further in view of Tomida (US2018/0111424A, of record), optionally in view of Kogure (US5355922A, of record).
Regarding claim 13, Deal clearly discloses that the tire has circumferential grooves in Fig. 1, and based off of the half of the tire that is shown in Fig. 1 there would be 4 land portions in the tread of the tire divided by 3 circumferential grooves. The equatorial plane is shown by “CO” in Fig. 1. Deal does not explicitly disclose L0/L90 that is 0.95 or less. Tomida is tied to a pneumatic tire for passenger vehicles [0001, 0106], where the tread pattern is shown in Fig. 1 and is divided by circumferential grooves “20”. Fig. 2A of Tomida shows a cross-section of the circumferential grooves “20”, wherein “Lt” is the width at the outermost tread surface and “Lb” is the width of the groove at the 95% depth point of the groove [Fig. 2A, 0043-0044]. The width “Lb” at the 95% groove depth position is from 25% to 60% of “Lt”. Given that the width of the groove may decrease linearly (as reasonably suggested by Fig. 2A), the groove width at the 90% groove depth point may reasonably be estimated to be 28.9% to 62.1% of “Lt”. Therefore, the groove width at the 90% groove depth point would still be considerably narrower compared to a point at the tread surface. As in Fig. 2A, it is clear that because the circumferential groove width decreases moving radially inward, the associated land portion adjacent to the circumferential groove must see a respective increase in width while moving radially inwards. Because the groove width sees up to a ~28.9% decrease in width at the 90% depth point, it would be reasonable to expect that an adjacent land part would have a change in width such that L90 is at least 5% greater than L0 (such that the ratio L0/L90 is 0.95 or less), and the actual ratio would be expected to be well below this point. 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 would have found it obvious to modify the tread of Deal so as to have the decreased groove width/increasing land portion width moving radially inwards as suggested by Tomida. One would have been motivated so as to improve drainage performance, gripping performance, land rigidity, and steering stability [0043-0044]. It is noted that as this is applied to each of the circumferential grooves and surrounding land parts, the land part closest to the equatorial plane would clearly have this relationship as well.
Optionally applied, Kogure is tied to a pneumatic radial tire for passenger cars [title], similar to Deal. Kogure states that conventional passenger tread grooves have a depth from 8 to 11mm [Col3 L64 – Col4 L10]. The widths of the main grooves may be 6mm wide [Col5 L49+], wherein this is of similar design as suggested by Deal. Because Deal is silent as to the depth/width of its circumferential grooves, it would have been obvious for one of ordinary skill in the art to look to other conventional tires within the art for conventionally used circumferential groove depths so as to obtain a working tire, with a reasonable expectation of success. One would have been motivated to obtain conventional benefits associated with proper sized groove depths, such as sufficient drainage and rigidity of the tread portion.
When Deal is in view of Tomida and Kogure, the claimed L0/L90 is further made obvious. With an inventive tire size of 205/55R16, the maximum possible tread width would be 205mm. If the 3 circumferential grooves have a width of 6mm as suggested by Kogure, the remaining 4 land portions would have a total width of 187mm, or approximately 46mm for each land part. The circumferential grooves would have a width at the tread surface of 6mm, and the width at the 90% depth point may be 1.73mm (28.9% of the tread surface groove width). The difference between the tread surface groove width and the 90% groove width would thus be 4.27mm. The decrease in groove width would simultaneously be an increase in land part width, such that a 90% depth width of the land part would be expected to be 46mm + 4.27mm = 50.27mm. Therefore, L0 would be equal to ~46mm and L90 would be 50.27mm, leading to a L0/L90 value of 0.915. This example is taken at the widest possible tread width, but the claimed ratio would still be well met at such values, showing a clear case for prima facie obviousness. 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).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Deal (US2012/0090755) in view of Baily (US20190177486), in view of Big O Tires (NPL: “What is a Tire Load Rating?”), in view of Teratani (JP2001323110A, of record), in view of Wang (CN109749123A, of record), and in view of Yoshioka (US2019/0367705A1, of record), as applied to claim 1 above, and further in view of Takenaka (JP2017095673A, of record) and in view of Chen (US2013/0231426A1, of record).
Regarding claim 21, Deal in view of Teratani suggests a tire wherein the rubber composition comprises 50 parts by mass or more of silica based on 100 parts by mass of the rubber component (the silica as suggested in the composition of Teratani may contain from 5 to 60 parts by weight to 100 parts of rubber [0014]),
wherein a content of carbon black in the rubber composition based on 100 parts by mass of the rubber component is 15parts by mass or less (the amount of carbon black in the rubber composition as suggested by Teratani is preferably from 5 to 60parts by mass [0013 of machine translation]. 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)).
Deal/Teratani does not explicitly suggest an inclusion of a terpene-based resin or a cyclopentadiene-based resin. However, it is known in the art that the inclusion of these compounds improves the hydrophilic properties of rubber, and the composition of Teratani does not limit its composition away from the use of such compounds. Takenaka is similarly tied to a pneumatic tire with a rubber composition for improve wet properties and water contact angle [see pg. 1 of machine translation]. The rubber composition is made to include either/or terpene resins and cyclopentadiene resins [see pg. 3 of machine translation]. One of ordinary skill in the art would have found it obvious to modify the composition of Deal/Teratani so as to include a terpene resin and/or cyclopentadiene resin as in Takenaka. One would have been motivated so as to improve the water repellency of the rubber
Deal/Teratani does not explicitly state that its rubber composition includes 30 parts by mass or more of oil. However, the inclusion of oils in rubber compositions of the tread are very common within the art of tires, and the composition of Teratani does not limit its composition away from the use of such compounds. Chen, for example, is tied to a rubber composition for a tire tread [0003, 0006], wherein the rubber compositions are made to have increase contact angles with water [see Table 7 for example]. The rubber composition is made to have process oils in amounts ranging up to 100phr or up to 50phr is different embodiments [0052]. 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 composition of Deal/Teratani so as to include oil in amounts as suggested by Chen. One would have been motivated so as to extend and soften the rubber composition [0052].
Claims 14-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Deal (US2012/0090755) in view of Baily (US20190177486), in view of Big O Tires (NPL: “What is a Tire Load Rating?”), in view of Teratani (JP2001323110A, of record), and in view of Yoshioka (US2019/0367705A1, of record).
Regarding claim 14, Deal discloses a pneumatic tire (Fig. 2), wherein the tire as in Figs. 2+ depicts a tread part (tread strip “6”) with a tread surface (considered the radially outermost portion of the tread strip as in Fig. 2), the tread part having at least one rubber layer (the tread rubber would necessarily comprise a rubber layer as in Fig. 2), wherein the tread part has land parts partitioned by tread edges and a plurality of circumferential grooves extending continuously in a tire circumferential direction (as in Fig. 2, the tread rubber clearly have a plurality of circumferential grooves (3 in this case), wherein the land parts would be divided by the end of the tread and these circumferential grooves. The tread edges would be considered to be the axially outer portions of the tread towards the shoulder areas of the tire).
Deal’s tire (assignee Michelin) has a passenger tire size of 205/55R16 and a tire weight of 8kg [0081]. Deal is silent as to the load capacity of the tire.
Baily discloses Michelin Energy Saver tires of size 205/55R16 91V [0100, 0104]. The number “91V” would be considered the load index size as is conventionally used in the art of tires. It being noted that each other tire with the size of 205/55R16 similarly has a load index rating of 91 as well. The load index (maximum load capacity) of “91” correlates to 1356 pounds or 615 kg (WL = 615 kg). See chart in Big O Tires, which provides the correlation of what the load index rating correlates to in terms of kg.
One of ordinary skill in the art would have found it obvious to provide Deal’s pneumatic tire having a tire size of 205/55R16 and a tire weight of 8 kg such that the tire has a maximum load capacity of 615 kg (load index = 91), such that the ratio of tire weight G / maximum load capacity Wl thereby being 0.0130 (as 8kg/615kg = 0.0130). One would have found this obvious because (1) Deal discloses a pneumatic tire (assignee Michelin) having a passenger tire size of 205/55R16 and a weight = 8kg [0081], (2) Baily discloses Michelin Energy Saver 205/55R16 91V (load index = 91) [0100-0104], as well as a variety of other equivalent tire sizes also having a load index of 91, and (3) Big O Tires describes load index (maximum load capacity) of “91” being 1356 pounds or 615 kg (WL = 615kg). Thus, the applied prior art suggests that Deal’s pneumatic tire having a tire size of 205/55R16 and a tire weight of 8kg should have a load index of “91” which is 615kg. This value of 0.0130 falls within the claimed range of 0.0160 or less, and the tire weight of 8kg (G) also falls within the range of from 7.9 to 8.4kg.
Deal is silent as to the rubber composition of the tread rubber and the contact angle therein. As such, it would have been obvious for a person of ordinary skill in the art to look towards other tires with optimal rubber compositions to utilize in the tread portion of its tire, so as to obtain a working tire. Teratani, for example, teaches a pneumatic tire which has a rubber composition which is used for at least the ground contacting portion of the tread of the tire, wherein the water contact angle is set to be 100deg or more for the rubber composition [0004, 0006]. Teratani does not limit the upper limit of its water contact angle, and Teratani’s testing examples show water contact angles of several examples above 105deg [see Table 1]. 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 apply the tread composition as suggested by Teratani to the tread of Deal, because Deal is silent as to its tread rubber composition. Additionally, one would have been motivated in order to improve wet performance, braking performance, good wear resistance, etc. [0003-0004, 0006, Table 1], which are beneficial aspects to all pneumatic tires including the passenger car tires of Deal.
Deal in view of Teratani makes obvious the rubber composition comprises at least one selected from a group of silicone, silicone-based polyurethane, and fluorine-based polyurethane (the rubber composition of Teratani includes at least one water-repellant agent such as fluororesins, silane compounds, and silicone oils [0008]).
Deal in view of Teratani makes obvious a ratio (θ/G) of 16.0 or less (as above, the water contact angle θ suggested by Teratani may be 100deg or above, including explicit examples of above 105deg such as at 118 deg [see Table 1]. Deal teaches a tire weight of 8kg. Therefore, there would be numerous instance within these ranges that satisfy the claimed inequality. For example, when the contact angle θ is 105 and the tire weight is 8kg, the ratio would be 13.125. As an additional example, when the contact angle θ is 118deg and the tire weight G is 8kg, the ratio would be 14.75. 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)).
Deal in view of Teratani/Wang does not explicitly suggest a tan delta or elastic modulus of the rubber composition, such that it would be obvious to look to other rubber compositions for ideal tan delta/elastic modulus relationships for improving the tire performance. Yoshioka suggests a rubber composition for tires [0001], wherein the complex elastic modulus E* measured at 0C is preferably from 3.0 to 8.0 MPa [0206]. The tan delta at 0C is preferably set from 0.14 to 0.26 [0208]. Within this range of values of the modulus and tan delta, the ratio tan delta/modulus significantly overlaps with a range of 0.020 or more. For example, a modulus of 5.5MPa and a tan delta of 0.3 (both taken within the middle of their respective ranges), leads to a ratio of 0.36. 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). It being noted that Yoshioka suggests that the rubber components of the rubber composition may include other and varying amounts of rubber [0136] (and wherein Teratani’s rubber composition is not especially limited and may include a variety of different components [0009, 0012, 0025, 0042], such that the effects of Yoshioka would be expected to be possible with a wide array of different compositions and would be readily applicable to the tire of Deal/Teratani.
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 Deal to have the elastic modulus and tangent delta relationship as suggested by Yoshioka. One would have been motivated in order to balance the performance of snow/ice and abrasion resistance and other properties [0206-0208], wherein this would clearly be beneficial with the composition of Deal/Teratani wherein it is similarly tied to improving grip performance on ice/snow surfaces (as well as other performance enhancing aspects).
Regarding claim 15, modified Deal makes obvious a tire wherein the rubber composition comprises 50 parts by mass or more of silica based on 100 parts by mass of the rubber component (the silica as suggested in the composition of Teratani may contain from 5 to 60 parts by weight to 100 parts of rubber [0014]. 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 16, modified Deal makes obvious a tire wherein a content of carbon black in the rubber composition based on 100 parts by mass of the rubber component is 15parts by mass or less (the amount of carbon black in the rubber composition as suggested by Teratani is preferably from 5 to 60parts by mass [0013 of machine translation]. 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 17, modified Deal makes obvious a tire wherein a ratio (θ/G) of the contact angle to the tire weight is 12.5 or more (the contact angle may be greater than 100deg as suggested by Teratani without setting an upper limit, including several examples above 105deg in Table 1. The tire weight may range from 8kg as suggested by Deal. All possible combinations would result in a ratio above 12.5. For example, at a contact angle of 105 and a tire weight of 8kg, the ratio would be 13.125. 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 20, modified Deal makes obvious a tire wherein the angle is 105 to 118degrees (as in the rejection of claim 14 above, Teratani suggests a rubber composition which has a water contact angle of greater than 100deg [0004, 0006]. The testing examples suggest that the water contact angle may be, for example 118deg for the ground contacting portion [see Table 1]. 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)).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Deal (US2012/0090755) in view of Baily (US20190177486), in view of Big O Tires (NPL: “What is a Tire Load Rating?”), in view of Teratani (JP2001323110A, of record), and in view of Yoshioka (US2019/0367705A1, of record), as applied to claim 14 above, and further in view of Chen (US2013/0231426A1, of record).
Regarding claim 18, Deal does not explicitly state that its rubber composition includes 30 parts by mass or more of oil. However, the inclusion of oils in rubber compositions of the tread are very common within the art of tires, and the composition of Teratani does not limit its composition away from the use of such compounds. Chen, for example, is tied to a rubber composition for a tire tread [0003, 0006], wherein the rubber compositions are made to have increase contact angles with water [see Table 7 for example]. The rubber composition is made to have process oils in amounts ranging up to 100phr or up to 50phr is different embodiments [0052]. 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 composition of Deal/Teratani so as to include oil in amounts as suggested by Chen. One would have been motivated so as to extend and soften the rubber composition [0052].
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Deal (US2012/0090755) in view of Baily (US20190177486), in view of Big O Tires (NPL: “What is a Tire Load Rating?”), in view of Teratani (JP2001323110A, of record), and in view of Yoshioka (US2019/0367705A1, of record), as applied to claim 14 above, and further in view of Takenaka (JP2017095673A, of record) and in view of Chen (US2013/0231426A1, of record).
Regarding claim 22, Deal in view of Teratani suggests a tire wherein the rubber composition comprises 50 parts by mass or more of silica based on 100 parts by mass of the rubber component (the silica as suggested in the composition of Teratani may contain from 5 to 60 parts by weight to 100 parts of rubber [0014]),
wherein a content of carbon black in the rubber composition based on 100 parts by mass of the rubber component is 15parts by mass or less (the amount of carbon black in the rubber composition as suggested by Teratani is preferably from 5 to 60parts by mass [0013 of machine translation]. 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)).
Deal/Teratani does not explicitly suggest an inclusion of a terpene-based resin or a cyclopentadiene-based resin. However, it is known in the art that the inclusion of these compounds improves the hydrophilic properties of rubber, and the composition of Teratani does not limit its composition away from the use of such compounds. Takenaka is similarly tied to a pneumatic tire with a rubber composition for improve wet properties and water contact angle [see pg. 1 of machine translation]. The rubber composition is made to include either/or terpene resins and cyclopentadiene resins [see pg. 3 of machine translation]. One of ordinary skill in the art would have found it obvious to modify the composition of Deal/Teratani so as to include a terpene resin and/or cyclopentadiene resin as in Takenaka. One would have been motivated so as to improve the water repellency of the rubber
Deal/Teratani does not explicitly state that its rubber composition includes 30 parts by mass or more of oil. However, the inclusion of oils in rubber compositions of the tread are very common within the art of tires, and the composition of Teratani does not limit its composition away from the use of such compounds. Chen, for example, is tied to a rubber composition for a tire tread [0003, 0006], wherein the rubber compositions are made to have increase contact angles with water [see Table 7 for example]. The rubber composition is made to have process oils in amounts ranging up to 100phr or up to 50phr is different embodiments [0052]. 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 composition of Deal/Teratani so as to include oil in amounts as suggested by Chen. One would have been motivated so as to extend and soften the rubber composition [0052].
Response to Arguments
Applicant’s arguments with respect to the claims regarding the newly added limitation of the tire weight being from 7.9 to 8.4kg have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, it is noted that new references are cited to suggest the tire weight range (as well as the other ratios that relate to the tire weight G). Applicant’s other arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicant argues on pgs. 8-9 of their Remarks that Teratani, Wang, and Takenaka each fail to disclose certain features of the claimed invention.
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). It is the combination of references, as applied in the rejections above herein, which suggests each of the combination of claim elements.
Applicant argues on pg. 8 that Wang utilizes improper hindsight based upon the disclosure of the present application.
The Examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The modification of the base reference in view of Wang is utilized so as to lessen the environmental impact of the rubber, which is specifically suggested by the reference of Wang. Therefore, the rationale for the combination is taken directly from Wang such that no improper hindsight is utilized.
Applicant argues on pg. 9 that a person of ordinary skill in the art would not utilize the terpene/cyclopentadiene resins of Takenaka, and that if they did it would be outside the scope of the claims.
The Examiner respectfully disagrees. First, it is noted that Deal nor Teratani limits the rubber composition from including components such as these terpene resins. The reference of Takenaka is similarly tied to compositions improving wet properties and water contact angle, such that the specific teachings of Takenaka which suggest the use of the terpene or cyclopentadiene resins so as to improve water repellency of the composition would be obvious to utilize in the rubber composition of the base reference. And as above, Applicant is attacking the references individually as opposed to the combination of references which are what is utilized in the rejections of record. Furthermore, applicant has failed to account for the level of ordinary skill in the art. Examiner notes that “a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton,” and “a person of ordinary skill in the art will be able to fit the teachings of multiple patents together like pieces of a puzzle,” KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 420, 421, 82 USPQ2d 1385, 1397 (2007). Given that Takenaka specifically cites the use of these resins for improving the water properties of the tread rubber, one of ordinary skill in the art would have found it obvious to include these components in the tread rubber, as in the rejections cited above.
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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