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 Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macdonald (US2837767 A) in view Zarak (WO 2012/057793 A1).
Regarding claim 1, Macdonald teaches a tire repair machine (see figures), comprising: a base (14), the base having a tire support (see figure 1);
And a support frame (15) being attached to the base (14), the tire support being spaced from the support frame (see figure 2), the support frame being movable vertically relative to the base and the tire support ( further the support frame can be adjust up and down in order to fit the tire (column 2 lines 53-64); the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities)
a clamp (10) for releasably holding the tire for repair on the tire support (see figure 2); and an injector (28) position on the support frame. MPEP 2144.04 states It has generally been recognized that to shift location of parts when the operation of the device is not otherwise changed is within the level of ordinary skill in the art, In re Japikse, 86 USPQ 70; In re Gazda, 104 USPQ 400. Hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to an injector positioned on the support frame since Macdonald depicts the injector adjacent to the support frame in figure 4 and therefore placing the injector on the support frame is a mere rearrangement of element and within the skillset of one ordinary skilled in the art.
the injector being movable relative to the base, the injector forcing melted compound into a repair zone of the tire for repair (column 2 lines 12-21).
As for the limitation, the clamp being movable into a position in alignment with the injector such that the clamp acts as a barrier to prevent melted compound from escaping from one side of the repair zone of the tire for repair, the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities.
Applicant has amended the claim limitation a base having a planar support surface on which a tire for repair is supportable, however, Macdonald’s figure 3 depicts a planar surface on 31. If Applicant does not agree with this interpretation, analogous art, Zarak, depicts a planar surface in figures 1 and 2 for which a tire is repaired.
Applicant has amended the claim to add the limitation, the base providing support to the tire support and the support frame such that the base supports the entire weight of the tire support, the support frame, and a tire for repair when the tire for repair is positioned on the tire support. As written the claim amendment is broad, and figure 2 depicts the base (14) providing support for the tire support (15), base supports the entire weight of the tire support, the support frame and tire for repair (28). Zarak further discloses a clamp being movable by an actuator position (23) [0041]. As for the second actuator, MPEP 2144.04 VI states In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). The court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. Additionally, it is well known for power sources to be connected to actuators in order to quickly and efficiently. Further, Macdonald teaches comprising power source, the control panel the power source providing power to the tire repair machine (column 2 lines 37-46). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the clamp being movable between a contracted position and an extended position by a first actuator, the clamp being movable upwards and downwards relative to the base by a second actuator, the first actuator and the second actuator being powered by a power source since (1) Zarak teaches clamps attached to actuators and the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities, (2) having more than one actuators is within the skillset of one ordinary skill in the art.
Claim(s) 2-3 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macdonald (US2837767 A) in view Zarak (WO 2012/057793 A1), as applied to claim 1, and further in view of Heintz (US1839877 A), and iKonomov (US 2014/0248825 A1).
Regarding claim 2, Macdonald does not explicitly disclose a control panel and a having a programmable logic controller or integrated circuit board, the control panel providing at least one operational control, it is conventionally well known to have control panels in tire repair system. Analogous repair art, Heintz, discloses a control device in the tire repair device (claim 1) for the benefit of controlling the heating device. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated disclose a control panel and a having a programmable logic controller or integrated circuit board, the control panel providing at least one operational control as taught by Heintz, into the machine taught by Macdonald for the benefit of controlling the heating device.
As for the limitation for operation of at least one of the clamp, the injector, or movement of the support frame. It is conventionally known for controllers to regulate frames. Analogous art, Ikonomov discloses controller [0045]. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding claim 3, Macdonald does not explicitly disclose wherein the at least one operational control includes a start/stop button. However, analogous art, Heintz, discloses and a releasable control device for shutting off the heat (claims 1 and 10) and switches 35/36 (lines 100-103). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided a start/stop button as taught by Heintz into the machine taught by Macdonald since it is conventionally well known. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding claim 8, Macdonald teaches further comprising a hopper (40) for supplying compound to the injector.
Regarding claim 9, Macdonald teaches wherein the injector is a heated (37) injector that melts compound prior to forcing melted compound into the repair zone of the tire for repair. MPEP 2144.04 state if the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). The manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself, In re Casey 152 USPQ 235.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macdonald (US2837767 A) in view Zarak (WO 2012/057793 A1) and further in view of Heintz (US1839877 A) and iKonomov (US 2014/0248825 A1), as applied to claim 2, and further in view of Rehab (WO2015/197298 A1).
Regarding claim 5, Macdonald does not explicitly disclose further comprising at least one sensor, the at least one sensor providing information regarding tire dimension. However, it is conventionally well known for tires to have sensors. Analogous art, Rehab, discloses “It turns out that today some vehicles are equipped with a device for automatically re-inflating tires when a drop in pressure is detected by sensors. This re-inflation operation is then most often carried out without the driver's knowledge. Such an operation occurring in the case of a perforation as presented above, it then becomes possible for the tire to continue to roll with a perforating object for a relatively long time, allowing for example the inflation air to reach the rubber compounds constituting the tire between the cavity of the latter and the outer surface of its tread” [0023]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated sensors position on at least one of the support frame, the tire support or the base to provide information regarding tire dimension as taught by Rehab into the machine taught by Macdonald and Heintz since it is conventionally well known and in order check if a tire is punctured.
Regarding claim 6, Macdonald does not explicitly disclose wherein the control panel is in electrical communication with the at least one sensor, the control panel receiving information from the at least one sensor for determining a center of the tire and a volume of melted compound to be applied. However, Rehab discloses using sensors in tires and Heintz discloses a control device in the tire repair device (claim 1) for the benefit of controlling the heating device. Further, the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macdonald (US2837767 A) in view Zarak (WO 2012/057793 A1), in view of Heintz (US1839877 A) and further in view of iKonomov (US 2014/0248825 A1), as applied to claim 2, and further in view of Kerner (US2013/0327185 A1).
Regarding claim 7, Macdonald, Zarak, iKonomov and Heintz do not explicitly disclose comprising at least one drill for drilling out the repair zone of the tire for repair prior to the injector forcing melted compound into the repair zone of the tire for repair, the at least one drill being supported on a support frame. However, analogous art, Kerner, discloses “the clearing tool(s) may be a small drill like device with unique cutting flutes that allow for minor removal of material inside the site of the puncture, which is achieved with a fixed bit and a straight in an out motion” [0013]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated comprising at least one drill for drilling out the repair zone of the tire for repair prior to the injector forcing melted compound into the repair zone of the tire for repair, the at least one drill being supported on a support frame, as taught by Kerner, into the machine taught by Macdonald and Heintz, for the benefit of removing material inside the puncture site.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 and 5-9 have been considered but are moot in light of the newly cited reference Zarak (WO 2012/057793 A1).
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 FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/Primary Examiner, Art Unit 1754
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