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 .
Information Disclosure Statement
The information disclosure statement filed 03/29/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered where lined through.
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.
Claims 1-4, 7-9, 12 and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scheurich et al. (US 20210146724 A1), herein Scheurich as evidenced by General Carbon (Frequently Asked Questions).
In regards to claim 1, Scheurich teaches a wheel assembly comprising a wheel (1) and a tire (4) mounted to the wheel with a cavity between the inner surface of the tire and the wheel [Abstract, 0026, 0029-0030 Figs. 1-3]. In the interior of the wheel (1) or of the tire (4), a material (5) adsorbing molecules contained in the air is provided, which is activated charcoal [0030]. The surface of the activated charcoal is porous and is considered to be configured to adsorb and compact air molecules present within the cavity this is considered to naturally occur [0030-0031]. It is noted that General Carbon teaches activated carbon is synonymous with activated charcoal [FAQs].
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
Claims 2-4 define the product by how the product was made. Thus, claims 2-4 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having activated carbon/charcoal present. The reference suggests such a product.
In regards to claims 7-8, Scheurich further teaches the activated charcoal/carbon is mounted to the wheel rim/barrel [0030, 0032, Figs. 1-2].
In regards to claim 9, Scheurich further teaches the activated charcoal/carbon is mounted via an adhesive/glue [0030, 0032].
In regards to claim 12, Scheurich further teaches the activated charcoal/carbon is mounted in a container consisting of an air-permeable and flexible cloth or woven fabric (i.e., a mesh surface) [0030].
In regards to claim 15, Scheurich teaches a wheel assembly comprising a wheel (1) , a rim/barrel(2) and a tire (4) mounted to the wheel with a cavity between the inner surface of the tire and the wheel [Abstract, 0026, 0029-0030 Figs. 1-3]. In the interior of the wheel (1) or of the tire (4), a material (5) adsorbing molecules contained in the air is provided, which is activated charcoal [0030]. The surface of the activated charcoal is porous and is considered to be configured to adsorb and compact air molecules present within the cavity [0030-0031]. It is noted that General Carbon teaches activated carbon is synonymous with activated charcoal [FAQs].
In regards to claim 16, Scheurich further teaches the activated charcoal/carbon is mounted via an adhesive/glue [0030, 0032].
In regards to claim 17, Scheurich further teaches the activated charcoal/carbon is mounted in a container/retainer having air-permeable perforations [0032].
Claims 1-4, 7-10, 12, 15 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McKinlay et al. (GB 2496427 A), herein McKinlay.
In regards to claim 1, McKinlay teaches a wheel assembly comprising a wheel and a tire (2) mounted to the wheel with a cavity present between the tire and the wheel’s surface [Abstract, Pg 4 lines 5-23, Pg 5 lines 1-12, Figs. 1-15, claim 1]. Activated carbon is present within the cavity between the tire and the wheel and the porous surface is considered to be configured to absorb and compact air molecules present within the cavity as by nature activated carbon absorbs air molecules and with movement within the cavity the carbon will compact the molecules [Pg. 1 lines 17-22, Pg 2 lines 1-5, claim 4].
Claims 2-4 define the product by how the product was made. Thus, claims 2-4 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having activated carbon present. The reference suggests such a product.
In regards to claim 7, McKinlay further teaches the activated carbon is mounted to the wheel [Pg 2 lines 4-5, 16-18, Pg 4 lines 12-18].
In regards to claim 8, McKinlay further teaches the activated carbon is mounted to the wheel rim/barrel [Pg 3 lines 3-6, Pg 7 lines 10-17, Pg 8 lines 9-21, Figs. 11, 14-15].
In regards to claims 9-10, McKinlay further teaches the activated carbon is disposed in a cavity defined at a spoke in the wheel [claims 5-6, Pg 2 lines 6-8, Pg 5 lines 1-11, Fig. 2].
In regards to claim 12, McKinlay further teaches the activated carbon is mounted in a perforated metal envelope [Pg 7 lines 14-17].
In regards to claim 15, McKinlay teaches a wheel assembly comprising a wheel and a tire (2) mounted to the wheel with a cavity present between the tire and the wheel’s surface [Abstract, Pg 4 lines 5-23, Pg 5 lines 1-12, Figs. 1-15, claim 1]. Activated carbon is present within the cavity between the tire and the wheel and the porous surface is considered to be configured to absorb and compact air molecules present within the cavity as by nature activated carbon absorbs air molecules and with movement within the cavity the carbon will compact the molecules [Pg 1 lines 17-22, Pg 2 lines 1-5, claim 4]. McKinlay further teaches the activated carbon is mounted to the wheel rim/barrel [Pg 3 lines 3-6, Pg 7 lines 10-17, Pg 8 lines 9-21, Figs. 11, 14-15].
In regards to claim 17, McKinlay further teaches the activated carbon is mounted in a perforated metal envelope [Pg 7 lines 14-17].
In regards to claim 18, McKinlay teaches a wheel assembly comprising a wheel and a tire (2) mounted to the wheel with a cavity present between the tire and the wheel’s surface [Abstract, Pg 4 lines 5-23, Pg 5 lines 1-12, Pg 8 lines 14-21, Fig. 15, claim 1]. The rim having a cavity formed in the surface with a retaining surface having bores that allow fluid communication with air and the activated carbon within the cavity [Pg 8 lines 16-18, Fig. 15]. The activated carbon having a porous surface and the surface is considered to be configured to absorb and compact air molecules present within the cavity as by nature activated carbon absorbs air molecules and with movement within the cavity the carbon will compact the air molecules [Pg 1 lines 17-22, Pg 2 lines 1-5, claim 4].
Claims 1-4, 6-8, 11-12 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coakley et al. (WO 2023021300 A1) [IDS dated 03/29/2024], herein Coakley.
In regards to claim 1, Coakley teaches a wheel assembly comprising a wheel rim and a tire (14) with a cavity therebetween having activated carbon disposed and mounted in the cavity [Abstract, claims 1-2, Fig. 1, Pg 4 lines 1-4, Pg 6 lines 9-33, Pg 10, Pg 11 lines 13-18]. The activated carbon present within the cavity between the tire and the wheel and the porous surface of the carbon is considered to be configured to absorb and compact air molecules present within the cavity as by nature activated carbon absorbs air molecules and with movement within the cavity the carbon will compact the air molecules, see In re Best.
Claims 2-4 define the product by how the product was made. Thus, claims 2-4 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having activated carbon/charcoal present. The reference suggests such a product.
In regards to claim 6, Coakley further teaches the activated carbon is mounted to the inner surface of the tire [Pg 6 lines 16-18, Pg 10 lines 32-35, Fig. 1]
In regards to claim 7-8, Coakley further teaches the activated carbon is mounted onto the rim/barrel of the wheel [Fig. 1, Pg 6 lines 9-15, Pg 10 lines 26-31].
In regards to claim 11, Coakley further teaches the activated carbon is mounted with a binder/adhesive [Pg 7 lines 6-10, Pg 14 20-23].
In regards to claim 12, Coakley further teaches the activated carbon is mounted in a container with a protective mesh that covers the top surface [Pg 7 lines 34-35, Pg 8 lines 3].
In regards to claim 15, Coakley teaches a wheel assembly comprising a wheel rim and a tire (14) with a cavity therebetween having activated carbon disposed and mounted in the cavity on the rim [Abstract, claims 1-2, Fig. 1, Pg 4 lines 1-4, Pg 6 lines 9-33, Pg 10, Pg 11 lines 13-18]. The activated carbon present within the cavity between the tire and the wheel and the porous surface of the carbon is considered to be configured to absorb and compact air molecules present within the cavity as by nature activated carbon absorbs air molecules and with movement within the cavity the carbon will compact the air molecules, see In re Best.
In regards to claim 16, Coakley further teaches the activated carbon is mounted with a binder/adhesive [Pg 7 lines 6-10, Pg 14 20-23].
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 13 and 14, are rejected under 35 U.S.C. 103 as being unpatentable over Scheurich et al. (US 20210146724 A1), herein Scheurich as evidenced by General Carbon (Frequently Asked Questions), as applied to claim 1 above.
In regards to claim 13, Scheurich further teaches the activated charcoal/carbon is mounted in a container/retainer having air-permeable perforations [0032].
Scheurich does not expressly teach the perforations are micro sized.
Scheurich discloses the claimed invention except for the size of the perforations. It would have been obvious to one having ordinary skill in the art at the time the invention was made to the perforations micro sized, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In regards to claim 14, Scheurich further teaches the activated charcoal/carbon is mounted in a container/retainer having air-permeable perforations [0032].
Scheurich does not expressly teach the circumference of the perforations are from 0.1 mm to 2 mm.
Scheurich discloses the claimed invention except for the size of the perforations. It would have been obvious to one having ordinary skill in the art at the time the invention was made to the perforations have circumferences of from 0.1 mm to 2 mm , since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claims 11, 13-14, 16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over McKinlay et al. (GB 2496427 A), herein McKinlay, as applied to claims 1 and 15 above.
In regards to claims 11 and 16, McKinlay further teaches the activated carbon is mounted by fasteners or adhesive [Pg 7 lines 10-12].
McKinlay differs from claim 11 by teaching use of an adhesive in a list of mounting methods, such that it cannot be said that the adhesive species is anticipated.
However, it would have been obvious of ordinary skill in the art before the effective filing date of the invention to have employed any of the mounting methos=ds taught by McKinlay, including using an adhesive. The motivation for doing so is that the “selection of a known material/method based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
In regards to claim 13, McKinlay further teaches the activated carbon is mounted in a perforated metal envelope [Pg 7 lines 14-17].
McKinlay does not expressly teach the perforations are micro sized.
McKinlay discloses the claimed invention except for the size of the perforations. It would have been obvious to one having ordinary skill in the art at the time the invention was made to the perforations micro sized, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In regards to claim 14, McKinlay further teaches the activated carbon is mounted in a perforated metal envelope [Pg 7 lines 14-17].
McKinlay does not expressly teach the circumference of the perforations are from 0.1 mm to 2 mm.
McKinlay discloses the claimed invention except for the size of the perforations. It would have been obvious to one having ordinary skill in the art at the time the invention was made to the perforations have circumferences of from 0.1 mm to 2 mm , since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In regards to claim 19, McKinlay further teaches the cavity/channel extends with spokes on the wheel [Pg 2 lines 6-8, Pg 5 lines 1-17, Figs. 2-3, 9-10].
McKinlay does not expressly teach a retaining member with perforations is present over the cavity in the spoke. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have added a retaining member with perforations to the opening of the cavity of the spoke of McKinlay. One would have been motivated to do so to ensure that the activated carbon material stays within the cavity and is still in fluid communication with the air of the tire.
Claims 5 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Coakley et al. (WO 2023021300 A1), herein Coakley, as applied to claims 1 and 15 above.
In regards to claim 5, Coakely teaches the surface area of the activated carbon is 1000 m2/g or greater [Pg. 6, lines 5-7]. This overlaps the claimed range.
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).
In regards to claims 13 and 14, Coakely further teaches the activated carbon is mounted in a container with a protective mesh that covers the top surface [Pg 7 lines 34-35, Pg 8 lines 3]. The mesh has a pore size of 0.5 mm to 25 mm [Pg 13 lines 5-9]. This overlaps the claimed ranges.
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Scheurich et al. (US 20210146724 A1), herein Scheurich as evidenced by General Carbon (Frequently Asked Questions) as applied to claim 1 above, and further in view of Wang et al. (US 20190202702 A1), herein Wang.
In regards to claims 2, 5, Scheurich does not teach the surface area of the activated carbon is at least 3,000 m2/g.
Wang teaches high surface area activated carbon [Abstract]. Wang teaches an activated carbon derived from coconut shells and having a surface area of 3206 m2/g [0063, 0064, Table 1 example 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the activated carbon of Wang as the activated carbon of Scheurich. One would have been motivated to do so as it would have been the simple substitution of one activated carbon for another to obtain predictable results and thus one would have had a reasonable expectation of success.
Claims 2, 5 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over McKinlay et al. (GB 2496427 A), herein McKinlay, as applied to claims 1 and 18 above, and further in view of Wang et al. (US 20190202702 A1), herein Wang.
In regards to claims 2, 5 and 20, McKinlay does not teach the surface area of the activated carbon is at least 3,000 m2/g.
Wang teaches high surface area activated carbon [Abstract]. Wang teaches an activated carbon derived from coconut shells and having a surface area of 3206 m2/g [0063, 0064, Table 1 example 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the activated carbon of Wang as the activated carbon of McKinlay. One would have been motivated to do so as it would have been the simple substitution of one activated carbon for another to obtain predictable results and thus one would have had a reasonable expectation of success.
Conclusion
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784