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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
The complex elastic modulus is measured under the conditions set forth in specification paragraph 0021, and the clinch rubber maximum thickness tc is measured perpendicular to the axially inner surface of the clinch rubber as set forth in specification paragraph 0041.
Claim Objections
Claims 1-20 are objected to because of the following informalities: In claim 1, to provide proper grammar applicant should amend the claim such that lines 8-9 read -- the turned-up portions each extending radially outwardly on the axially outer side of the respective bead apex, -- ; in claims 13-15, to provide proper grammar (all of the first reinforcing rubber layer axially inner surface is in contact with the second reinforcing rubber layer) applicant should amend each claim such that “of which entirety” is changed to -- the entirety of which -- . Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 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.
In claim 1, to clarify that each of the first and second reinforcing rubber layers do not have more than one complex modulus (otherwise objects of the invention not achieved, specification paragraphs 0004-0007, 0021-0025), applicant should amend the claim such that in each of lines 16 and 17 “a complex” is changed to -- the complex -- .
In claim 3, to clarify that the claim further limits claim 2, applicant should amend the claim such that in line 3 before “smaller than 5.0” is inserted -- greater than 1.5 and -- .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 10 (one of which depends from patented claim 1 despite the typographical error making both of them depend from claim 8) of U.S. Patent No. 12,246,560 B2 in view of The Pneumatic Tire. One of ordinary skill in the art would have understood that each bead apex in the patented claims tapers radially outwardly from the bead core to perform its function unless otherwise specified and that the toroidal shape is part of basic pneumatic tire structure that is expected to be present unless otherwise specified, as evidenced for example by The Pneumatic Tire (p. 8), and it would have been obvious to one of ordinary skill in the art to select ratio values within the patented claim range including the instantly claimed values of greater than 100% to 200% absent unexpected results.
Claims 1-3 and 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 12 of U.S. Patent No. 12,194,785 B2 in view of The Pneumatic Tire. One of ordinary skill in the art would have understood that each bead apex in the patented claims tapers radially outwardly from the bead core to perform its function unless otherwise specified and that the toroidal shape is part of basic pneumatic tire structure that is expected to be present unless otherwise specified, as evidenced for example by The Pneumatic Tire (p. 8), and it would have been obvious to one of ordinary skill in the art to combine the features of patented claims 2 and 12 absent unexpected results. As to claims 2 and 3, it would have been obvious to one of ordinary skill in the art to select ratio values within the patented claim range including the instantly claimed values of greater than 150% to 200% absent unexpected results.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 10-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication 2023/0138951 A1.
See the embodiment of Figs. 1-2, paragraphs 0008-0073 (note reference E*2 is the instantly claimed first axially outer reinforcing rubber layer and reference E*1 is the instantly claimed second axially inner reinforcing rubber layer). As to claims 2 and 3, the values in the preferred ratio range of 120%-200% including the instantly claimed values of greater than 150%-200% are disclosed with sufficient specificity. As to claims 16-19, see the exemplary separation distances of 8 mm and 12 mm in Table 1 falling within the broadly claimed range of at least 5 mm, and the figures clearly convey to one of ordinary skill in the art that the radially outer end of the turned-up portion in the exemplary tires is spaced significantly further away than 5 mm from the radially outer ends of the inner and outer rubber reinforcing layers. As to claim 20, the figures clearly convey to one of ordinary skill in the art that t1+tc in the exemplary tires falls within the broadly claimed range of not less than 50% of Bt.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim(s) 1-3, 10-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent Application Publication 2023/0138951 A1.
See paragraph 12 above. The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim(s) 1, 4, 13, 16, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication 2017/0274710 A1 (which includes the disclosure of Japanese Patent Application 2016-52840 A cited by applicant).
See the embodiments of Figs. 1-2, paragraphs 0020-0029, 0044-0123, Table 5, and the Extended European Search Report filed in this application August 20, 2024: preferred E*1/E*2 values 70%-125% including the values greater than 100%-125% within the claimed range of greater than 100% disclosed with sufficient specificity (paragraph 0042) and exemplary value 125% (Table 5). As to claim 4, length La less than or equal to 10 mm (paragraph 0121). As to claim 13, the broadly recited “an axially inner surface” is not required to be the axially inner surface between the radially innermost and outermost points of the first reinforcing rubber layer. As to claim 16, Ds greater than or equal to 5 mm (paragraph 0117). As to claim 19, exemplary Ht is (0.75 x 265 mm)/2 = 99 mm while the upper limit of Hc is 60 mm (paragraph 0120).
Claim(s) 1-3, 13-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication 2007/0102091 A1.
See the embodiment of Figs. 1 and 3, paragraphs 0006-0050, and the Extended European Search Report filed in this application August 20, 2024 (exemplary E*1/E*2 10/3.5 = 2.9, 10/6 = 1.7, and 10/3 = 3.3 in Table 1). As to claims 13-15, the broadly recited “an axially inner surface” is not required to be the axially inner surface between the radially innermost and outermost points of the first reinforcing rubber layer. As to claims 16-19, the exemplary Ho values in combination with the figures clearly conveys to one of ordinary skill in the art that the claimed spacings are at least 5 mm.
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.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2023/0138951 A1 in view of US Patent Application Publication 2015/0217605 A1 or, alternatively, over US Patent Application Publication 2007/0102091 A1 A1 in view of US Patent Application Publication 2015/0217605 A1.
See paragraphs 12, 13, and 15 above: it is well known to provide such tires with a small bead apex radial dimension of less than 20 mm in order to obtain the well-known advantages, as evidenced for example by US ‘605 (paragraph 0065); it would therefore have been obvious to one of ordinary skill in the art to provide such well-known bead apex radial dimension in the above tires in order to obtain the well-known advantages.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2023/0138951 A1 in view of US Patent Application Publication 2007/0056673 A1 or, alternatively, over US Patent Application Publication 2007/0102091 A1 in view of US Patent Application Publication 2007/0056673 A1.
See paragraphs 12, 13, and 15 above: it is well known in tires to obtain high complex modulus rubber by adding thermosetting resin, as evidenced for example by US ‘673 (paragraph 0028); it would therefore have been obvious to one of ordinary skill in the art to obtain the high complex modulus bead apex rubber in the above tires by adding thermosetting resin.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Application Publications 2023/0286331 A1 and 2023/0311584 A1 (publications of the two patented applications applied above, also having a common assignee with the instant application) and US Patent Application Publications 2023/0415519 A1, 2023/0415520 A1, and 2023/0415521 A1 anticipate or render obvious at least claim 1 but are considered to be no more pertinent to the instant claims than the prior art applied by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrienne C. Johnstone whose telephone number is (571)272-1218. The examiner can normally be reached M-F 1PM-5PM.
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ADRIENNE C. JOHNSTONE
Primary Examiner
Art Unit 1749
Adrienne Johnstone /ADRIENNE C. JOHNSTONE/ Primary Examiner, Art Unit 1749 March 2, 2026