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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/01/2025 has been entered.
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 11 and 12 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.
Claims 11 and 12 are currently dependent upon claims 3 and 4, respectively. However, claims 3 and 4 have been canceled. Thus, the scope of claims 11 and 12 is unclear, and the limitations “the mark” and “the one or more second perimeter protrusions” in claims 11 and 12 lack antecedent basis in the claims. In order to overcome these indefiniteness rejections, examiner suggests amending claim 11 such that it is dependent upon claim 1 and amending claim 12 such that it is dependent upon claim 2.
Appropriate correction is required in order to overcome the indefiniteness rejections.
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.
Claims 1-2, 5-8, 11-12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Iwabuchi (US 2010/0000649) (of record) in view of Roberts et al. (US 4,198,774) (Roberts) (of record).
Regarding claims 1 and 2, Iwabuchi discloses a pneumatic tire (title; see Fig. 1), comprising: at least one mark (21) on a sidewall (1) of the pneumatic tire (see Fig. 2; [0067]), the at least one mark (21) includes an outer surface having three non-perimeter elongated first protrusions (26) (see Modified Figure 3 below; [0071]), wherein the first protrusions (26) are disposed inside of an outer edge (25) of the mark (21) and the first protrusions (26) do not extend along the outer edge of the mark (21) (see Figs. 2 and 3; [0071]), and in a cross section of the mark (21) orthogonal to the traveling direction of the first protrusions (26), the cross section includes four recesses (see Modified Figure 3 below; [0028]), suggesting the claimed range of five or fewer recesses. Iwabuchi further discloses that the at least one mark (21) includes second perimeter protrusions (25) protruding axially outward (see Figs. 2 and 3; [0071]). Furthermore, it is clear that the second perimeter protrusions (25) delimit the edges of a letter that make up the mark (21) (see Figs. 2 and 3; [0058]; [0071]). In the cross-section shown in Figure 3, the letter represented by the second perimeter protrusions (25) is “N” (see Figs. 2 and 3). However, Iwabuchi further discloses that the mark (21) can include the letter “O” (see Fig. 2), which would necessarily require an outer perimeter protrusion fringing an entire perimeter of the outer edge of the mark (21) and an inner perimeter protrusion fringing an entire perimeter of an inner edge of the mark (21) since Iwabuchi requires that the first protrusions (26) be located between the second protrusions (25) making up the mark (21) (see Figs. 2 and 3; [0071]). Iwabuchi further discloses that the first protrusions (26) are disposed in an area between the outer perimeter protrusion and the inner perimeter protrusion, and the first protrusions (26) are not present in an area surrounded by the inner perimeter protrusion (see Modified Figure 2 below; see also Fig. 3). Iwabuchi fails to disclose, however, that the first protrusions (26) have a trapezoidal cross sectional shape orthogonal to a traveling direction (circumferential direction) of the pneumatic tire. Instead, Iwabuchi discloses that the first protrusions have a triangular cross section orthogonal to the circumferential direction of the pneumatic tire (see Figs. 2 and 3; [0028]).
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Modified Figure 3, Iwabuchi
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Modified Figure 2, Iwabuchi
However, it is known in the art to configure protrusions within marks on a sidewall to have trapezoidal cross sectional shapes. For instance, Roberts teaches a similar pneumatic tire (abstract; Col. 3, lines 4-10) comprising a mark (11) on a sidewall (10) of the pneumatic tire (see Fig. 1; Col. 3, lines 4-10), wherein the mark (11) includes a plurality of protrusions (13) having a trapezoidal cross sectional shape (see Figs. 3A and 3B; Col. 3, lines 12-13). Roberts further teaches that protrusions having trapezoidal cross sections are easy to manufacture and easy to keep clean (Col. 2, lines 12-21).
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 modified the first protrusions disclosed by Iwabuchi to have trapezoidal cross sections, as taught by Roberts, because they would have had a reasonable expectation that doing so would allow for easy manufacturing and easy cleaning.
Regarding claims 5 and 6, modified Iwabuchi discloses all of the limitations as set forth above for claims 1 and 2, respectively. Modified Iwabuchi further discloses that the sidewall (Iwabuchi: 1) includes a base face (Iwabuchi: 25) and a depression (Iwabuchi: see region of first protrusions 26) disposed on the base face (Iwabuchi: 25) (Iwabuchi: see Fig. 3), and the at least one mark (Iwabuchi: 21) is disposed on a bottom face of the depression (Iwabuchi: see Fig. 3).
Regarding claims 7 and 8, modified Iwabuchi discloses all of the limitations as set forth above for claims 1 and 2, respectively. Modified Iwabuchi further discloses that Figure 3 is a cross section of the mark (Iwabuchi: 21) shown in Figure 2 taken along a direction parallel to a radial direction of the mark (Iwabuchi: 21) (Iwabuchi: [0028]; see Figs. 2 and 3). Thus, based on Fig. 3, modified Iwabuchi discloses that the three protrusions (Iwabuchi: 26) are arranged in a direction parallel to the radial direction of the mark (Iwabuchi: 21), suggesting the limitation that the first protrusions are opposite one another in a direction slanted at an angle of 10o or less relative to a radial direction of the at least one mark.
Regarding claims 11 and 12, modified Iwabuchi discloses all of the limitations as set forth above for claims 1 and 2, respectively. Modified Iwabuchi further discloses that the highest height of the at least one mark (Iwabuchi: 21) is equal to 0.4 mm (Iwabuchi: [0069]; see Fig. 3). Thus, since this highest height is clearly larger than an absolute value of a difference between an axial position of a tip face at an axially outermost site of the mark (Iwabuchi: 21) and an axial position of the second perimeter protrusions (Iwabuchi: 25) at an axially outermost site (Iwabuchi: see Fig. 3), modified Iwabuchi clearly suggests the claimed range of 5 mm or less.
Regarding claim 14, modified Iwabuchi discloses all of the limitations as set forth above for claim 2. Roberts further teaches that the protrusions (Roberts: 29) can have a cross sectional shape such that the protrusions (Roberts: 29) include two chamfered corners located at a base of the trapezoid, wherein the outer surface of the mark (Roberts: 11) includes a flat face between bases of two adjacent protrusions (Roberts: 29) (Roberts: see Fig. 5E; Col. 5, lines 35-36). Roberts further teaches that this cross sectional shape leads to enhanced visibility of the mark (Roberts: 11) (Roberts: Col. 2, lines 12-26). 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 configured the protrusions (Iwabuchi: 26) in modified Iwabuchi to satisfy the claimed shape because they would have had a reasonable expectation that doing so would lead to enhanced visibility of the mark.
Regarding claim 15, modified Iwabuchi discloses all of the limitations as set forth above for claim 2. Roberts further teaches that the mark (Roberts: 11) and the protrusions (Roberts: 29) can be configured in such a way that the outer surface of the mark (Roberts: 11) includes a flat face connected to bases of the protrusions (Roberts: 29) (Roberts: see Fig. 5E; Col. 5, lines 35-36). Roberts further teaches that this configuration leads to enhanced visibility of the mark (Roberts: 11) (Roberts: Col. 2, lines 12-26). 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 configured the mark (Iwabuchi: 21) and the protrusions (Iwabuchi: 26) in modified Iwabuchi to satisfy the claimed shape because they would have had a reasonable expectation that doing so would lead to enhanced visibility of the mark.
Regarding claim 16, modified Iwabuchi discloses all of the limitations as set forth above for claim 2. Roberts further teaches that the protrusions (Roberts: 26) can alternately have a sinusoidal cross sectional shape, wherein the protrusions (Roberts: 26) include a tip face that is curved and two slope faces that are flat faces (Roberts: see Fig. 5C; Col. 5, lines 32-33). Roberts also teaches that this cross sectional shape leads to easy manufacturing and easy cleaning (Roberts: Col. 2, lines 12-21). 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 configured the protrusions (Iwabuchi: 26) in modified Iwabuchi to satisfy the claimed shape because they would have had a reasonable expectation that doing so could lead to easy manufacturing and easy cleaning.
Claims 13 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Iwabuchi (US 2010/0000649) (of record) in view of Roberts et al. (US 4,198,774) (Roberts) (of record) as applied to claim 2 above, and further in view of Shimizu (US 2022/0324268) (US 2022/0324268) (of record).
Regarding claim 13, modified Iwabuchi discloses all of the limitations as set forth above for claim 2. Modified Iwabuchi further discloses that the first protrusions (Iwabuchi: 26) each have an elongated tip face that is a flat face (Roberts: see Fig. 3A). Modified Iwabuchi fails to disclose, however, that the first protrusions (Iwabuchi: 26) have two chamfered corners at opposite edges of the tip face in cross section, and the one or more first protrusions include two slope faces that are curved faces.
Shimizu teaches a similar pneumatic tire (title) comprising a mark (H) on a sidewall (31) of the pneumatic tire (see Fig. 2), wherein the mark (H) includes a plurality of protrusions (51) having a substantially trapezoidal cross sectional shape (see Figs. 5 and 6; [0061]). Shimizu further teaches that the protrusions can have two chamfered corners at opposite edges (PA) of an elongated tip face (U) that is a flat face (see Fig. 10; [0074]). Examiner notes that these two chamfered corners also constitute two slope faces that are curved faces, thus suggesting the limitations in claim 13. Shimizu further teaches that chamfered edges/slope faces like this can improve the cleaning performance of the mark (H) ([0083]).
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 modified the first protrusions disclosed by modified Iwabuchi to have the claimed chamfered corners/slope faces, as taught by Shimizu, because they would have had a reasonable expectation that doing so would improve the cleaning performance of the mark.
Regarding claim 17, Iwabuchi in view of Roberts and Shimizu discloses all of the limitations in claim 17 present in claims 2 and 13, as set forth above. Roberts further teaches that the protrusions (Roberts: 29) can have a cross sectional shape such that the protrusions (Roberts: 29) include two slope faces that are inwardly protruding curved faces (Roberts: 29) (Roberts: see Fig. 5E). Roberts further teaches that this cross sectional shape leads to enhanced visibility of the mark (Roberts: 11) (Roberts: Col. 2, lines 12-26). 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 modified the first protrusions (Iwabuchi: 26) in modified Iwabuchi such that they include the claimed inwardly protruding curved faces, as taught by Roberts, because they would have had a reasonable expectation that doing so would lead to enhanced visibility of the mark (Iwabuchi: 21). Furthermore, since Shimizu teaches that the chamfered corners/outwardly protruding curved faces are located at opposite edges (Shimizu: PA) of the tip face (Shimizu: U) of the protrusions (Shimizu: 51) (Shimizu: see Fig. 10; [0074]), and since Roberts teaches that the inwardly protruding curved faces start at an end of the tip face of the protrusions (Roberts: 29) (Roberts: see Fig. 5E), it would have been obvious for the inwardly protruding curved faces in modified Iwabuchi to have a starting point at an end of the outwardly protruding curved faces. Thus, modified Iwabuchi satisfies all of the limitations in claim 17.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
Applicant argues that the combination of Iwabuchi and Roberts would not lead to what is claimed in independent claims 1 and 2 because Roberts includes a number of trapezoidal protrusions outside of the claimed range of one or more and four or fewer. Examiner respectfully disagrees. First of all, examiner notes that Roberts is not relied upon in the rejection to teach the claimed number of first protrusions since Iwabuchi already suggests this limitation. Instead, Roberts is relied upon to teach the claimed trapezoidal cross section of the protrusions. Examiner also notes that the benefits taught by Roberts regarding the trapezoidal cross section are unrelated to the number of protrusions (Roberts: 29) within the mark (Roberts: 11) (Roberts: Col. 2, lines 12-21). Additionally, “a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton," and “a person of ordinary skill in the art will be able fit the teachings of multiple patents together like pieces of a puzzle,” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420, 421, 82 USPQ2d 1385, 1397 (2007). Thus, it is well within the ability of one of ordinary skill in the art to have modified the first protrusions disclosed by Iwabuchi with the cross sectional shape taught by Roberts without incorporating the number of protrusions taught by Roberts, especially since these two teachings are unrelated to each other. Finally, instead of arguing against the combination of Iwabuchi and Roberts used in the rejection of claims 1 and 2, applicant argues against the Roberts reference individually, and it has been held that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Thus, applicant’s arguments against the Roberts reference are not persuasive.
Applicant further argues that the amended limitations in claim 17 overcome the prior art rejection of record. However, examiner notes that the combination of Iwabuchi, Roberts, and Shimizu still suggests the claimed limitations in claim 17, as set forth in the above rejection.
As such, claims 1-2, 5-8, and 11-17 stand rejected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDON C DARBY whose telephone number is (571)272-1225. The examiner can normally be reached Monday - Friday: 7:30am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.C.D./Examiner, Art Unit 1749
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749
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