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 .
Examiner’s Note
Examiners notes that currently withdrawn claim 7 is left blank as though cancelled, as opposed having limitations as found in the claim set of 21 March 2025. Applicant is reminded of the need to comply with 37 CFR 1.1.21.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16 March 2026 has been entered.
Election/Restrictions
Newly submitted claim 21 directed to an invention that is independent or distinct from the invention originally claimed as it is dependent on non-elected method claim 1.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 21 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Interpretation A of Ishihara (US20090308519)
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) (to be referred to as IshiharaA) in view of Rodgers (NPL) (of record).
Regarding claim 13, IshiharaA 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)/”raw material” (24)) 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 (“impregnated layer” (10a) comprising ”raw material” (23), [0017]) 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)/”raw material” (24), [0028]).
While IshiharaA 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 15 micrometers, or that the rubber-containing film comprises at least one reinforcing filler including carbon black in an amount of 5-50 phr, 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) IshiharaA 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) IshiharaA teaches that the rubber-containing film can comprise of a thickness of 20 micrometers ([0025] with regards to the “impregnated layer” (10a) comprising ”raw material” (24) and when “raw material” (23) is fully impregnated into “impregnated layer” (10a) as described in [0016]);
b2) case law holds that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP 2144.05(I));
b3) given that the thickness of IshiharaA of 20 micrometers is close but does not overlap with the claimed range of about 0.1 to 15 micrometers, a person of ordinary skill in the art would reasonably expect IshiaharaA to behave in substantially the same way as a film with an about 15 micrometer thickness, absent a conclusive showing of unexpected results;
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 impregnated layer with raw mixture of IshiharaA 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.
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 IshiharaA teaches all limitations of claim 13 as set forth above. Additionally, given that IshiharaA 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 IshiharaA teaches all limitations of claim 13 as set forth above. Additionally, IshiharaA 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) not impregnated with ”raw material” (24), [0028]).
Regarding claim 17, modified IshiharaA teaches all limitations of claim 13 as set forth above. Additionally, IshiharaA teaches that the at least one radially inward component consists of a noise barrier (“porous layer”(9) not impregnated with ”raw material” (24), [0028]).
Regarding claim 18, modified IshiharaA teaches all limitations of claim 17 as set forth above. Additionally, given that IshiharaA 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 IshiharaA 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 IshiharaA 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 IshiharaA teaches all limitations of claim 13 as set forth above. Additionally, given that IshiharaA 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 IshiharaA teaches all limitations of claim 17 as set forth above. Additionally, given that IshiharaA 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 IshiharaA teaches all limitations of claim 13 as set forth above. Additionally, given that IshiharaA teaches that the attachment of the impregnated layer (10a) comprising raw material (23) can be done with a separate adhesive ([0015]-[0016]), IshiharaA 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 (24) can optionally be attached to impregnated layer (23) with “an adhesive or glue for temporary fixation”, [0062]).
Regarding claim 25, modified IshiharaA teaches all limitations of claim 13 as set forth above. Additionally, given that IshiharaA teaches that the attachment of the impregnated layer (10a) comprising raw material (23) can be done with a separate adhesive ([0015]-[0016]), IshiharaA teaches that the rubber-containing film is non-adhesive ([0015]-[0016]) and a separate adhesive adheres the noise barrier to the rubber- containing film and the separate adhesive is located between the noise barrier and the rubber-containing film ([0015]-[0016], [0060] in that raw material (24) can optionally be attached to impregnated layer (23) with “an adhesive or glue for temporary fixation”, [0062]).
Interpretation B of Ishihara (US20090308519)
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) (to be referred to as IshiharaB) in view of Rodgers (NPL) (of record).
Regarding claim 13, IshiharaB 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 IshiharaB 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 15 micrometers, or that the rubber-containing film comprises at least one reinforcing filler including carbon black in an amount of 5-50 phr, 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) IshiharaB 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) IshiharaB teaches that “raw material” (23) can be applied to a tire inner liner with a thickness of approximately 100 µm ([0071]);
b2) IshiharaB 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 15 µm;
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 raw mixture of IshiharaB 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.
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 IshiharaB teaches all limitations of claim 13 as set forth above. Additionally, given that IshiharaB 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 IshiharaB teaches all limitations of claim 13 as set forth above. Additionally, IshiharaB 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 IshiharaB teaches all limitations of claim 13 as set forth above. Additionally, IshiharaB teaches that the at least one radially inward component consists of a noise barrier (“porous layer”(9), [0028]).
Regarding claim 18, modified IshiharaB teaches all limitations of claim 17 as set forth above. Additionally, given that IshiharaB 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 IshiharaB 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 IshiharaB 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 IshiharaB teaches all limitations of claim 13 as set forth above. Additionally, given that IshiharaB 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 IshiharaB teaches all limitations of claim 17 as set forth above. Additionally, given that IshiharaB 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 IshiharaB teaches all limitations of claim 13 as set forth above. Additionally, given that IshiharaB teaches that the attachment of the raw material (23) can be done with a separate adhesive ([0015]-[0016]), IshiharaB 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 IshiharaB teaches all limitations of claim 17 as set forth above. Additionally, given that IshiharaB teaches that the attachment of the raw material (23) can be done with a separate adhesive ([0015]-[0016]), IshiharaB 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, 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.
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 Arguments
Applicant's arguments filed 26 February 2026 have been fully considered but they are not persuasive.
Regarding p.7 of applicant’s remarks, applicant argues that Ishihara teaches that the film is applied as a solid and would not meet the newly amended limitation. As mentioned in the rejection of claim 13 above, 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 p.7 of applicant’s remarks, applicant argues that Ishihara teaches that the laminated film is 100 micrometers thick and therefore outside the claimed range and taught away. Examiner disagrees, noting that case law states that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiment” (See MPEP 2123(II)) and that as shown in both interpretations of Ishihara as set forth above in the rejections, Ishihara is considered to read on the claimed limitation regarding thickness.
Regarding p.8 of applicant’s remarks, applicant argues that the limitation that the claimed rubber-containing liquid is now specified to be a coating and differentiates it from modified Ishihara. Examiner disagrees, noting that as either interpretation of Ishihara comprises of a layer of material being pressed onto the inner surface of the inner liner in some manner, similar to how applicant discloses that “coating” of a pressure sensitive adhesive may comprise of “dipping, rolling on, pressing on” ([0055]), modified Ishihara is considered to teach the limitation.
Regarding p.8-9 of applicant’ remarks, applicant argues that Ishihara’s teaching of an impregnation depth of 20 micrometers to 5 mm in [0025] is outside the claimed range of “about 0.1 to 15 micrometers” and that there is no reasonable expectation of success for a rubber-containing film thickness of Ishihara of 20 micrometers. Examiner disagrees, noting that, as set forth in the rejection above, case law holds that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05(I)). Examiner notes that to properly rebut said prima facie case of obviousness, it is the applicant’s responsibility to show that it is non-obvious, including, but not limited to, showing that the range is critical, showing that the prior are explicitly teaches away, etc. (See MPEP 2144.05(II)). Furthermore, as noted in the rejection above, [0007] and [0049] of applicant’s originally filed specification does not support the criticality of the claimed range of about 0.1 to 15 micrometer for the thickness of the rubber-containing film 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. Additionally, without support, the arguments are merely counselor's opinion. Attorney arguments cannot take the place of evidence where the asserted relationship involves technical properties of materials (See MPEP 716.01(c)(II), 2145(I)).
Conclusion
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.
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/ALEXANDER D BOOTH/
Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749