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 .
Claim Status
Examiner notes that claim 25 is currently set as “new”, when claim 25 was previously added in the claim set filed 26 February 2026. Applicant is reminded of the need to comply with 37 CFR 1.1.21.
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 13, 14, 16-20 and 22-25 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 13 recites the limitation "the only filler" on L17. There is insufficient antecedent basis for this limitation in the claim, as the only earlier instance of any sort of “filler” is in regards to “at least one reinforcing filler including carbon black in an amount of 5-50 phr” ono L 8-9. For purposes of examination, the line of “wherein the only filler utilized in the rubber-containing film coating is reinforcing filler(s)” will be interpreted as “wherein the at least one reinforcing filler excludes the presence of non-reinforcing fillers in the rubber-containing film”.
As claims 14, 16-20 and 22-25 are directly indirectly dependent on claim 13, they stand as rejected for similar reasons.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 13, 14, 16-20 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Ishihara (US20090308519) (of record) (previously referred to as IshiharaB) in view of Rodgers (NPL) (of record).
Regarding claim 13, Ishihara discloses a cured tire comprising
a tire body (“tire” (1)),
a cured inner liner (“inner liner” (8), [0041] in that the tire is vulcanized, which would result in the “inner liner” (8) being in a cured state),
and at least one component (“porous layer” (9)) positioned radially inward of the cured inner liner (Fig 1, 2),
the cured inner liner comprising rubber, a majority of which comprises butyl rubber (optionally halogenated) ([0017], [0039]),
wherein the cured inner liner has an upper surface and a lower surface with the lower surface positioned radially inward within the tire (Fig 1, 2) and,
the lower surface of the cured inner liner includes a rubber-containing film comprising at least one conjugated diene monomer-containing rubber (”raw material” (23) not impregnated into “porous layer” (9), Fig 2b, [0015]) and polyurethane ([0018] via “thermoplastic urethane-based elastomer”, [0019]), and
the at least one component positioned radially inward of the cured inner liner is adhered to the rubber-containing film of the lower surface of the cured inner liner (Fig 2),
wherein the at least one conjugated diene monomer-containing rubber of the rubber containing film comprises 100 parts of at least one of the following: butyl rubber, halogenated butyl rubber ([0017]),
wherein the at least one radially inward component comprises at least one of: a noise barrier (“porous layer”(9), [0028]).
While Ishihara does not explicitly disclose that the polyurethane is present in the rubber containing film in an amount of 10-50 phr, that the rubber-containing film has a thickness of about 0.1 to 10 micrometers, or that the rubber-containing film comprises at least one reinforcing filler including carbon black in an amount of 5-50 phr and that the at least one reinforcing filler excludes the presence of non-reinforcing fillers in the rubber-containing film, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that
a1) Ishihara teaches that polyurethane’s inclusion with the rubber in the rubber-containing film would improve the water resistance of the mixture ([0020]); and
a2) it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (see MPEP 2144.05(II)(A));
a3) a person of ordinary skill in the art would have been able to find the claimed range of polyurethane within the rubber-containing film to be 10-50 phr through routine experimentation as part of discovering an optimal range;
b1) Ishihara teaches that “raw material” (23) can be applied to a tire inner liner with a thickness of approximately 100 µm ([0071]);
b2) Ishihara teaches that the “raw material” (23) is impregnated into the “porous layer” (9) in a range of 20 µm to 5 mm ([0025]) and that the “raw material” (23) can be partially impregnated into the “porous layer” (9) ([0015]);
b3) based on a “raw material” (23) thickness of 100 µm, the impregnation range can be from 20 µm to about 100 µm based on [0025] and [0015], leaving a “raw material” (23) layer not impregnated into the “porous layer” (9) thickness of 80 µm to about 0 µm, which overlaps with the claimed range of about 0.1 µm to 10 µm;
c1) Ishihara does not explicitly require the presence of any specific filler, reinforcing or non-reinforcing;
c2) Rodgers, which is within the rubber compounding art, teaches that reinforcing fillers are well known components of rubber compositions (p.626), with carbon black being the primary reinforcing filler used (p.627), for improving the physical properties of the rubber (p.626);
c3) it has been held that when the general conditions of a claim are taught in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05(II)(A)); and
c4) given that the raw mixture of Ishihara is a rubber composition ([0017]) being used in a tire subjected to rigorous physical strain during operation, it would have been obvious to include a reinforcing filler including carbon black within the claimed range of 5-50 phr to optimize the physical properties of the rubber film; and
As set forth in previous office actions, examiner notes that the current written specification, including a general statement in [0044] for reinforcing fillers, [0007] and [0049] for the thickness of the rubber-containing film and a general discussion of polyurethane in [0031]-[0039], does not support the criticality of the claimed ranges with sufficient specificity as to render the claimed ranges non-obvious over the prior art (see MPEP 2131.03(II)), as there are no experimental results either inside or outside the claimed ranges showing the impact of the claimed ranges on the claimed invention.
With regards to the limitation of “wherein the rubber-containing film results from applying a rubber-containing liquid to the lower surface of the cured inner liner and allowing it to dry”, such limitations regarding the method of product creation are not relevant to product claims unless said method results in a structurally different product. If applicant wishes to demonstrate said relevance, examiner recommends applicant provide data and/or evidence via affidavit or show such differences as found in the originally submitted disclosure.
Regarding claim 14, modified Ishihara teaches all limitations of claim 13 as set forth above. Additionally, given that Ishihara teaches that the impregnated layer can be comprised of a butyl-rubber ([0017]), Ishihara teaches that the at least one conjugated diene monomer-containing rubber comprises 100 parts of butyl rubber.
As set forth in the previous office action, examiner notes that the current written specification, including the discussion of rubber in [0028]-[0030], does not support the criticality of the claimed range with sufficient specificity as to render the claimed ranges non-obvious over the prior art (see MPEP 2131.03(II)), as there are no experimental results either inside or outside the claimed ranges showing the impact of the claimed ranges on the claimed invention.
Regarding claim 16, modified Ishihara teaches all limitations of claim 13 as set forth above. Additionally, Ishihara teaches that the at least one radially inward component comprises at least one of: a noise barrier, an air barrier, a sealant layer or a run-flat insert (“porous layer”(9), [0028]).
Regarding claim 17, modified Ishihara teaches all limitations of claim 13 as set forth above. Additionally, Ishihara teaches that the at least one radially inward component consists of a noise barrier (“porous layer”(9), [0028]).
Regarding claim 18, modified Ishihara teaches all limitations of claim 17 as set forth above. Additionally, given that Ishihara teaches that the impregnated layer can comprise of a butyl-rubber ([0017]), Ishihara teaches that the at least one conjugated diene monomer-containing rubber consists of butyl rubber.
Regarding claim 19, modified Ishihara teaches all limitations of claim 13 as set forth above. Additionally, as set forth previously, given that Rodgers teaches that the use of reinforcing filler is well known in the art to improve the physical properties of rubber (p.626-627) and discovering the optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05(II)(A)), it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority of the instant application for the rubber-containing film to include carbon black in an amount of 5-25 phr for the benefit of optimizing the physical properties of the rubber-containing film.
Examiner notes that the current written specification, including a general statement in [0044] for reinforcing fillers, does not support the criticality of the claimed range with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)), as there are no experimental results either inside or outside the claimed range showing the impact of the claimed range on the claimed invention.
Regarding claim 20, modified Ishihara teaches all limitations of claim 19 as set forth above. Additionally, Rodgers teaches that the reinforcing filler consists of carbon black (p.627).
Examiner notes that the current written specification, including a general statement regarding the use of fillers including carbon black in [0044], does not support the criticality of the claimed limitation that the reinforcing filler consists only of carbon black with sufficient specificity as to render the limitation non-obvious over the prior art (See MPEP 2131.03(II)), as there is no experimental results showing the impact of the inclusion or exclusion of carbon black on the claimed invention.
Regarding claim 22, modified Ishihara teaches all limitations of claim 13 as set forth above. Additionally, given that Ishihara teaches that the use of adhesive is optional and not required ([0015]-[0016]), Ishihara teaches that the at least one component positioned radially inward directly contacts the rubber-containing film of the lower surface of the cured inner liner without any separate adhesive located between the at least one component positioned radially inward and the rubber-containing film of the lower surface of the cured inner liner (Fig 1).
Regarding claim 23, modified Ishihara teaches all limitations of claim 17 as set forth above. Additionally, given that Ishihara teaches that the use of adhesive is optional and not required ([0015]-[0016]), Ishihara teaches that the at least one component positioned radially inward directly contacts the rubber-containing film of the lower surface of the cured inner liner without any separate adhesive located between the at least one component positioned radially inward and the rubber-containing film of the lower surface of the cured inner liner (Fig 1).
Regarding claim 24, modified Ishihara teaches all limitations of claim 13 as set forth above. Additionally, given that Ishihara teaches that the attachment of the raw material (23) can be done with a separate adhesive ([0015]-[0016]), Ishihara teaches that the rubber-containing film is non-adhesive ([0015]-[0016]) and a separate adhesive adheres the at least one radially inward component to the rubber-containing film and the separate adhesive is located between the at least one component and the rubber-containing film ([0015]-[0016], [0060] in that raw material (23) can optionally be attached to the porous layer (9) with “an adhesive or glue for temporary fixation”).
Regarding claim 25, modified Ishihara teaches all limitations of claim 17 as set forth above. Additionally, given that Ishihara teaches that the attachment of the raw material (23) can be done with a separate adhesive ([0015]-[0016]), Ishihara teaches that the rubber-containing film is non-adhesive ([0015]-[0016]) and a separate adhesive adheres the at least one radially inward component to the rubber-containing film and the separate adhesive is located between the at least one component and the rubber-containing film ([0015]-[0016], [0060] in that raw material (23) can optionally be attached to the porous layer (9) with “an adhesive or glue for temporary fixation”).
Claim(s) 13, 14, 16-19 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Feeney et al. (WO9856598) in view of Kuramori (US20090308523) (of record) and Rodgers (NPL) (of record).
Regarding claim 13, Feeney discloses a cured tire comprising
a tire body (Fig 10, p.23-24),
a cured inner liner (p.23 L23-p.24 L2),
the cured inner liner comprising rubber, a majority of which comprises butyl rubber (optionally halogenated) (p.23 L9- p.24 L2),
wherein the cured inner liner has an upper surface and a lower surface with the lower surface positioned radially inward within the tire (Fig 10) and,
the lower surface of the cured inner liner includes a rubber-containing film (p.20 L24-p.32 L3 regarding “barrier coating mixture”) comprising at least one conjugated diene monomer-containing rubber (p.13 L18-28) and polyurethane (p.13 L14-16 and/or p.14 L12), and
the rubber-containing film has a thickness of 1 to 100 µm (p.27 L25, which overlaps with the claimed range of about 0.1 to 15 micrometers);
wherein the at least one conjugated diene monomer-containing rubber of the rubber containing film comprises 100 parts of at least one of the following: butyl rubber, halogenated butyl rubber, polybutadiene, natural rubber or chlorinated poly isoprene (p.13 L6-p.14 L15),
wherein the rubber-containing film results from applying a rubber-containing liquid to the lower surface of the cured inner liner and allowing it to dry (p.23 L23-p.24 L2, p.27 L20-p.28 L3).
While Feeney does not explicitly disclose that the cured tire comprises at least one component positioned radially inward of the cured inner liner that is adhered to the rubber-containing film of the lower surface of the cured inner liner, that the at least one radially inward component comprises at least one of a noise barrier, an air barrier layer, a sealant layer, a run-flat insert, and combinations thereof, that the reinforcing filler includes carbon black in an amount of 5-50 phr, wherein the at least one reinforcing filler excludes the presence of non-reinforcing fillers in the rubber-containing film, that the polyurethane is present in the rubber-containing film in an amount of 10-50 phr, it would have been obvious to one of ordinary skill in the art prior to the effective priority date of the instant application to do so, given that:
a) Kuramori, which is within the tire manufacturing art, teaches that for the benefits of reducing cavity resonance sound in the tire ([0002]), a tire can comprise of a noise barrier (“sound-absorbing member” (5)) that is attached to the inner surface of a tire (Fig 1, 2);
b1) Rodgers, which is within the rubber compounding art, teaches that polyurethane is a known compounding component of rubber for the benefit of improved tear strength, tensile strength, and swelling resistance to oils (p.626); and
b2) it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (see MPEP 2144.05(II)(A));
c1) Rodgers, which is within the rubber compounding art, teaches that reinforcing fillers are well known components of rubber compositions (p.626), with carbon black being the primary reinforcing filler used (p.627), for improving the physical properties of the rubber (p.626);
c2) it has been held that when the general conditions of a claim are taught in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05(II)(A)); and
c3) given that the “barrier coating mixture” of Feeney is a rubber composition (p.13) being used in a tire subjected to rigorous physical strain during operation, it would have been obvious to include a reinforcing filler including carbon black within the claimed range of 5-50 phr to optimize the physical properties of the rubber film;
d1) the only disclosed filler required to practice the invention of Feeney is an “exfoliated layered platelet filler” (claim 1), with vermiculite presented as one of the preferred fillers (p.15 L4-5); and
d2) Rodgers teaches that hydrous phyllosilicates (such as hydrous aluminum silicate or clays) are a known type of reinforcing filler (p.630-631, Fig 4)
Examiner notes that the current written specification, including a general statement in [0044] for reinforcing fillers, [0007] and [0049] for the thickness of the rubber-containing film and a general discussion of polyurethane in [0031]-[0039], does not support the criticality of the claimed ranges with sufficient specificity as to render the claimed ranges non-obvious over the prior art (see MPEP 2131.03(II)), as there are no experimental results either inside or outside the claimed ranges showing the impact of the claimed ranges on the claimed invention.
Furthermore, examiner notes that while Feeney may teach that the use of carbon black does not “optimally reduce permeability”, Feeney does teach that the use of carbon black is conventional to “improve impermeability of butyl rubber” (p.2 L19-22) and never goes as far as to exclude the use of carbon black in the “barrier coating mixture” by discrediting, teaching away, or criticizing it.
With regards to the limitation of “wherein the rubber-containing film results from applying a rubber-containing liquid to the lower surface of the cured inner liner and allowing it to dry”, such limitations regarding the method of product creation are not relevant to product claims unless said method results in a structurally different product If applicant wishes to demonstrate said relevance, examiner recommends applicant provide data and/or evidence via affidavit or show such differences as found in the originally submitted disclosure. While not necessary for the rejection, for the expedition of prosecution, examiner included said limitation in the rejection with regards to Feeney.
Regarding claim 14, modified Feeney teaches all limitations of claim 13 as set forth above. Additionally, Feeney teaches that the barrier coating composition can be comprised of a butyl-rubber, halogenated butyl rubber or a combination thereof (p.13 L21-28).
As set forth in the previous office action, examiner notes that the current written specification, including the discussion of rubber in [0028]-[0030], does not support the criticality of the claimed range with sufficient specificity as to render the claimed ranges non-obvious over the prior art (see MPEP 2131.03(II)), as there are no experimental results either inside or outside the claimed ranges showing the impact of the claimed ranges on the claimed invention.
Regarding claim 16, modified Feeney teaches all limitations of claim 13 as set forth above. Additionally, Kuramori teaches that the at least one radially inward component comprises a noise barrier (“sound-absorbing member” (5)).
Regarding claim 17, modified Feeney teaches all limitations of claim 13 as set forth above. Additionally, Feeney teaches that the at least one radially inward component consists of a noise barrier (“sound-absorbing member” (5)).
Regarding claim 18, modified Feeney teaches all limitations of claim 17 as set forth above. Additionally, given that Feeney teaches that the barrier coating composition can comprise of a butyl-rubber, halogenated butyl rubber or a combination thereof (p.13 L21-28), Feeney teaches that the at least one conjugated diene monomer-containing rubber consists of butyl rubber, halogenated butyl rubber or a combination thereof.
Regarding claim 19, modified Feeney teaches all limitations of claim 13 as set forth above. Additionally, as set forth previously, given that Rodgers teaches that the use of reinforcing filler is well known in the art to improve the physical properties of rubber (p.626-627) and discovering the optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05(II)(A)), it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority of the instant application for the rubber-containing film to include carbon black in an amount of 5-25 phr for the benefit of optimizing the physical properties of the rubber-containing film.
Examiner notes that the current written specification, including a general statement in [0044] for reinforcing fillers, does not support the criticality of the claimed range with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)), as there are no experimental results either inside or outside the claimed range showing the impact of the claimed range on the claimed invention.
Regarding claim 22, modified Feeney teaches all limitations of claim 13 as set forth above. Additionally, Kuramori teaches that that the at least one component positioned radially inward directly contacts the rubber-containing film of the lower surface of the cured inner liner without any separate adhesive located between the at least one component positioned radially inward and the rubber-containing film of the lower surface of the cured inner liner ([0021] via “flame lamination”).
Regarding claim 23, modified Feeney teaches all limitations of claim 17 as set forth above. Additionally, Kuramori teaches that the at least one component positioned radially inward directly contacts the rubber-containing film of the lower surface of the cured inner liner without any separate adhesive located between the at least one component positioned radially inward and the rubber-containing film of the lower surface of the cured inner liner ([0021] via “flame lamination).
Regarding claim 24, modified Feeney teaches all limitations of claim 13 as set forth above. Additionally, given that Feeney does not explicitly teach that the dried barrier coating composition is used for attachment and Kuramori teaches that an adhesive agent can be used to attach the sound-absorbing member (5) to the inner surface of the tire ([0022]), modified Feeney teaches that the rubber-containing film is non-adhesive and a separate adhesive adheres the at least one radially inward component to the rubber-containing film and the separate adhesive is located between the at least one component and the rubber-containing film.
Regarding claim 25, modified Feeney teaches all limitations of claim 17 as set forth above. Additionally, given that Feeney does not explicitly teach that the dried barrier coating composition is used for attachment and Kuramori teaches that an adhesive agent can be used to attach the sound-absorbing member (5) to the inner surface of the tire ([0022]), modified Feeney teaches that the rubber-containing film is non-adhesive and a separate adhesive adheres the at least one radially inward component to the rubber-containing film and the separate adhesive is located between the at least one component and the rubber-containing film.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 7 July 2026 is insufficient to overcome the rejection of claim 13 based upon either Ishihara (US20090308519) (of record) (previously referred to as IshiharaB) in view of Rodgers (NPL) (of record) or Feeney et al. (WO9856598) in view of Kuramori (US20090308523) (of record) and Rodgers (NPL) (of record) as set forth in the last Office action because:
With the submission of the Declaration of Jared J. Griebel under 37 C.F.R. §1.132, applicant argues that the manner on which a rubber-containing film is produced on an inner liner will impact the structure of the rubber-containing film, including in terms of thickness and thoroughness of application, and that applying rubber-containing liquid to a cured inner liner prevents the occurrence of patterning on the resulting rubber-containing film. Examiner disagrees, noting that the burden is on Applicant to establish that the method of application is significant through the presentation of evidence that should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” (See MPEP 716.02(b)). The declaration fails to provide any evidence supporting the applicant’s position and amounts to amount to applicant’s own opinion which cannot take the place of evidence where the asserted relationship involves technical properties of materials (See MPEP 716.01(c)(II), MPEP 2145(I)).
With the submission of the Declaration of Jared J. Griebel under 37 C.F.R. §1.132, applicant argues that Feeney (WO1998056598) requires the use of fillers include vermiculite and clays and that such fillers are not reinforcing fillers. Examiner disagrees, noting that as set forth above in the rejection of claim 13, Rodgers teaches that clays and hydrous aluminum silicate (a vermiculite) can be used as reinforcing fillers in rubber compounds (p.630-631, Fig 4).
Response to Arguments
Applicant's arguments filed 7 July 2026 have been fully considered but they are not persuasive. Applicant arguments on p.7-11 are directed towards the Declaration under Rule 1.132 and how the declaration presents evidence towards applicant’s position with regards to how the method in which the rubber-containing film is applied impacts the structure and how Feeney teaches the requirement of non-reinforcing filler. As set forth above in examiner’s response to the Declaration, said Declaration fails to provide significant evidence supporting applicant’s position and amounts to applicant’s own opinion which cannot take the place of evidence where the asserted relationship involves technical properties of materials (See MPEP 716.01(c)(II), MPEP 2145(I)), and examiner disagrees.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
