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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 13 recites the limitation “each of the two slope faces extends in a linear direction that is slanted at 10o or less relative to a circumferential tangent at a center between a first circumferential end of the mark and a second circumferential end of the mark” in lines 2-4. However, the instant specification nowhere describes the two slope faces as extending in a direction that is 10o or less relative to the circumferential direction. Figure 3 of the instant specification shows a cross-section of the two slope faces (11, 12) that is parallel to the circumferential direction (see [0011] of the PGPub of the instant application). However, Figure 3 only supports an embodiment in which the two slope faces extend in a linear direction that is parallel to the circumferential direction. It does not support the range of 10o or less relative to a circumferential tangent at a center between a first circumferential end of the mark and a second circumferential end of the mark. Furthermore, the instant specification discloses that a line of intersection (17) between the two slope faces (11, 12) can extend in a linear direction that is slanted at 10o or less relative to the circumferential direction (see [0047] of the PGPub). However, the line of intersection (17) is not the same as the two slope faces (11, 12). Thus, the amendments to claim 13 constitute new matter to the original specification.
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, 3, 6-11, and 13 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.
Claim 1 recites the limitation “the slope face” in line 10. However, “a pair of two slope faces” is introduced in line 4. Thus, it is unclear if this limitation is intending to refer to both of the slope faces or to only one of the two slope faces. It is assumed that this limitation is intending to refer to both of the slope faces. For examination purposes, “neither the bottom of the recess nor the slope face is disposed” in line 10 will be read as “neither the bottom of the recess nor the slope faces are disposed.”
Claims 3, 6-11, and 13 are also rejected due to their dependence upon rejected claim 1.
Appropriate correction is required in order to overcome the indefiniteness rejections. Suggested corrections are bolded and underlined for emphasis only.
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, 3, 6-7, 9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura (JP 2007083604 with English Machine Translation) (of record) in view of Tamura (JP 2008195136 with English Machine Translation) (of record).
Regarding claim 1, Kitamura discloses a pneumatic tire (title) comprising at least one mark (22) on a sidewall (21) of the pneumatic tire (see Figs. 21 and 26; [0030]), wherein the at least one mark (22) includes an outer surface including a bottom face of only one recess composed of only a single pair of two slope faces (22a, 22b) tapered into a valley shape (see Fig. 24; [0030]), the at least one mark (22) includes a character mark (see Fig. 26; [0024]; [0029]), and the recess has a bottom extending in a direction that is parallel to a radial direction of the at least one mark (22) (see Modified Figure 22 below; [0030]), suggesting the claimed range of 10o or less relative to the radial direction of the mark. In the embodiment shown in Figure 26, Kitamura discloses that the at least one mark (22) is configured as the letter “H” (see Fig. 26; [0029]). However, Kitamura also discloses that the at least one mark (22) can be configured as a variety of different letters, numbers, or symbols ([0024]). Kitamura fails to explicitly disclose, however, that the at least one mark (22) includes an outer edge that is entirely fringed by an outer perimeter protrusion and an inner edge that is entirely fringed by an inner perimeter protrusion.
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Modified Figure 22, Kitamura
Tamura teaches a similar pneumatic tire (title) comprising at least one mark (8) on a sidewall (2) of the pneumatic tire (see Figs. 1 and 8; [0010]), wherein the at least one mark (8) includes an outer surface including a bottom face (9x) of only one recess composed of two slope faces tapered into a valley shape (see Modified Figure 9 below; [0011]-[0013]), and the at least one mark (8) includes a character mark in the form of the number “8” (see Figs. 8 and 9; [0013]). Tamura further teaches that the at least one mark (8) includes an outer edge that is entirely fringed by an outer perimeter protrusion (10o) and an inner edge that is entirely fringed by an inner perimeter protrusion (10i) (see Figs. 8 and 9; [0013]), wherein neither the bottom (9b) of the recess nor the slope faces are disposed in an area surrounded by the inner perimeter protrusion (10i) (see Modified Figure 9 below). Tamura further teaches that configuring the mark (8) in this way can improve the visibility of the mark (8) while preventing vulcanization failure of the mark (8) ([0002]; [0004]; [0006]; [0015]; [0017]; [0024]).
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Modified Figure 9, Tamura
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 at least one mark disclosed by Kitamura such that it is shaped like the letter “8” and has the claimed outer perimeter protrusion and inner perimeter protrusion, as taught by Tamura, because they would have had a reasonable expectation that doing so would improve the visibility of the mark while preventing vulcanization failure of the mark.
Furthermore, because Kitamura discloses that the bottom of the recess can extend symmetrically across the whole mark (Kitamura: 22) in the radial direction of the mark (Kitamura: see Figs. 18, 24, and 7; [0027]), and because modified Kitamura includes the teachings from Tamura that the at least one mark is in the shape of the number “8”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the bottom of the recess in modified Kitamura to extend across the inner edge of the mark (Kitamura: 22) and to extend transversely between the outer perimeter protrusion (Tamura: 10o) and the inner perimeter protrusion (Tamura: 10i) given that the number “8” necessarily includes overlapping portions of the outer perimeter protrusion (Tamura: 10o) and the inner perimeter protrusion (Tamura: 10i) in the radial direction of the mark (Tamura: see Fig. 8). Thus, modified Kitamura satisfies all of the limitations in claim 1.
Regarding claim 3, modified Kitamura discloses all of the limitations as set forth above for claim 1. Modified Kitamura further discloses that the sidewall (Kitamura: 21) includes a base face (Kitamura: 21a) and a depression disposed on the base face (Kitamura: 21a) (Kitamura: see Figs. 21 and 24), and the at least one mark (Kitamura: 22) is disposed on a bottom face of the depression (Kitamura: see Figs. 21 and 24; [0030]).
Regarding claim 6, modified Kitamura discloses all of the limitations as set forth above for claim 1. Modified Kitamura further discloses that a first slope face (Kitamura: 22a) of the two slope faces (Kitamura: 22a, 22b) and a second slope face (Kitamura: 22b) of the two slope faces (Kitamura: 22a, 22b) are flat faces (Kitamura: see Fig. 24; [0025]). Modified Kitamura further discloses that each of the first (Kitamura: 22a) and second (Kitamura: 22b) slope faces can make an angle (Kitamura: β2) of 2o with respect to the surface (Kitamura: 21a) of the sidewall (Kitamura: 21) (Kitamura: see Fig. 23; [0047]; [0031]), making an angle between the first (Kitamura: 22a) and second (Kitamura: 22b) be equal to 176o (180-2*2), suggesting the claimed range of 171o or greater and 177o or smaller.
Regarding claim 7, modified Kitamura discloses all of the limitations as set forth above for claim 1. Tamura further teaches that a height (Tamura: H) of the circular protrusion (Tamura: 10) is between 0.5 mm and 3.0 mm (Tamura: [0018]), and a ratio (Tamura: h/H) between a height (Tamura: h) of a deepest location (Tamura: 9b) in the mark (Tamura: 8) is equal to 0.4 (Tamura: see Example 1, Table 1; [0020]), making the height (Tamura: h) of the deepest location (Tamura: 9b) be between 0.2 mm (0.4*0.5) and 1.2 mm (0.4*3.0). Thus, Tamura necessarily teaches that an axial length (Tamura: H-h) obtained by subtracting an axial position of a line of intersection at a deepest location (Tamura: 9b) in the mark (Tamura: 8) from an axial position of the circular protrusion (Tamura: 10) at an axially outermost site is between 0.3 mm (0.5-0.2) and 1.8 mm (3.0-1.2), overlapping the claimed range of 1 mm or greater and 3 mm or smaller. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, since modified Kitamura includes the teachings from Tamura regarding the circular protrusion, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Kitamura to have satisfied all of the limitations in claim 7.
Regarding claim 9, modified Kitamura discloses all of the limitations as set forth above for claim 1. Modified Kitamura further discloses that each of the two slope faces (Kitamura: 22a, 22b) can be a single curved face protruding axially inward, the two slope faces (Kitamura: 22a, 22b) are smoothly connected at a location of the valley, and the outer surface of the at least one mark (Kitamura: 22) that is a combination of the two slope faces (Kitamura: 22a, 22b) is a single curved face (Kitamura: see Fig. 25; [0032]; [0028]).
Regarding claim 13, modified Kitamura discloses all of the limitations as set forth above for claim 1. Modified Kitamura further discloses that each of the two slope faces (Kitamura: 22a, 22b) extends in a linear direction that is parallel to the circumferential direction (see Modified Figure 22 above), suggesting the claimed range of 10o or less relative to a circumferential tangent at a center between a first circumferential end of the mark and a second circumferential end of the mark.
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura (JP 2007083604 with English Machine Translation) (of record) in view of Tamura (JP 2008195136 with English Machine Translation) (of record) as applied to claim 1 above, and further in view of Nakajima (US 2019/0291517) (of record).
Regarding claim 8, modified Kitamura discloses all of the limitations as set forth above for claim 1. Modified Kitamura fails to disclose, however, that the at least one mark (Kitamura: 22) comprises an arc-shaped edge extending parallel to a tire circumferential direction.
Nakajima teaches a similar tire (title) comprising at least one mark (4) on a sidewall (2) of the tire (see Fig. 1; [0023]-[0024]), the at least one mark (4) including an outer surface including a bottom face (4s) of only one recess composed of two slope faces (11, 12) tapered into a valley shape (see Figs. 2, 3A, and 3B; [0026]). Nakajima further teaches that the at least one mark (4) comprises an arc-shaped edge extending parallel to a circumferential direction (see Modified Figure 2 below; [0028]). Nakajima further teaches that configuring the mark (4) in this way contributes to excellent legibility of the mark (4) ([0042]-[0044]).
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Modified Figure 2, Nakajima
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 mark disclosed by modified Kitamura such that it comprises an arc-shaped edge extending parallel to a circumferential direction, as taught by Nakajima, because they would have had a reasonable expectation that doing so would contribute to excellent legibility of the mark.
Regarding claim 10, modified Kitamura discloses all of the limitations as set forth above for claim 1. Modified Kitamura fails to disclose, however, that each of the two slope faces (Kitamura: 22a, 22b) is a single curved face protruding axially outward, the outer surface of the at least one mark (Kitamura: 22) includes a groove at a site including a line of intersection of the two curved faces (Kitamura: 22a, 22b), and a corner is present at a site where the line of intersection is present.
Nakajima teaches a similar tire (title) comprising at least one mark (4) on a sidewall (2) of the tire (see Fig. 1; [0023]-[0024]), the at least one mark (4) including an outer surface including a bottom face (4s) of only one recess composed of two slope faces (11, 12) tapered into a valley shape (see Figs. 2, 3A, and 3B; [0026]). Nakajima further teaches that the two slope faces (11, 12) can be formed as a curved surface curved in a convex shape ([0032]). In a configuration in which the two slope faces (11, 12) are convex, the outer surface of the at least one mark (4) would necessarily include a groove at a site including a line of intersection (10) of the two curved faces (11, 12), and a corner would necessarily be present at a site where the line of intersection (10) is present. Nakajima further teaches that this mark (4) has improved legibility ([0006]; [0044]).
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 two slope surfaces disclosed by modified Kitamura to be configured in a convex shape, as taught by Nakajima, because they would have had a reasonable expectation that doing so would improve the legibility of the mark.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kitamura (JP 2007083604 with English Machine Translation) (of record) in view of Tamura (JP 2008195136 with English Machine Translation) (of record) as applied to claim 1 above, and further in view of Muhlhoff (US 2016/0288584) (of record).
Regarding claim 11, modified Kitamura discloses all of the limitations as set forth above for claim 1. Modified Kitamura fails to disclose, however, that each of the two slope surfaces (Kitamura: 22a, 22b) is a single curved face protruding axially outward, the outer surface of the at least one mark (Kitamura: 22) includes a groove at a site including a line of intersection of the two curved faces (Kitamura: 22a, 22b), and the groove has a bottom included in a curved face protruding axially inward.
However, this configuration is known in the art. For instance, Muhlhoff teaches a similar tire (title) comprising a mark (5) on a sidewall (3) of the tire, wherein the mark (5) includes an outer surface including a bottom face of only one recess (13) composed of sloped faces (7) (see Figs. 1, 4, and 5; [0026]; [0032])/ Muhlhoff further teaches that the sloped faces (7) are convex shaped such that a groove (11) is formed at a site including a line of intersection of the sloped faces (7) (see Fig. 5). Muhlhoff further teaches that the groove (11) has a bottom included in a curved face protruded axially inward in order to limit the risk of cracks spreading through the mark (5) ([0033]).
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 sloped faces disclosed by modified Kitamura such that they meet the claimed limitations, as taught by Muhlhoff, because they would have had a reasonable expectation that doing so would limit the risk of cracks spreading through the mark.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kitamura (JP 2007083604 with English Machine Translation) (of record) in view of Ratliff, Jr. (US 5,807,446) (Ratliff).
Regarding claim 12, Kitamura discloses a pneumatic tire (title) comprising at least one mark (22) on a sidewall (21) of the pneumatic tire (see Figs. 21 and 26; [0030]), wherein the at least one mark (22) includes an outer surface including a bottom face of only one recess composed of two slope faces (22a, 22b) tapered into a valley shape (see Fig. 24; [0030]), the at least one mark (22) includes a character mark (see Fig. 26; [0024]; [0029]), and the recess has a bottom extending in a direction that is parallel to a radial direction of the at least one mark (22) (see Modified Figure 22 above; [0030]), suggesting the claimed range of 10o or less relative to the radial direction of the mark. Kitamura further discloses that the two slope faces (22a, 22b) comprise a face including a first slope face (22a) that is a flat face and a second slope face (22b) that is a flat face, creating a groove with a triangular cross-section (see Figs. 18 and 24; [0027]; [0030]). Kitamura fails to explicitly disclose, however, that a curved face protrudes axially inward and smoothly connects the first slope face (22a) and the second slope face (22b).
However, this configuration is known in the art. For instance, Ratliff teaches a similar tire (title) comprising a mark (20) on a sidewall (4) including a plurality of grooves (28) having a triangular cross-section (see Figs. 1 and 4; Col. 2, lines 31-44; Col. 3, lines 7-19). Ratliff further teaches that the base of each of the triangular grooves (28) is curved in order to prevent crack growth (see Fig. 4; Col. 3, lines 7-19).
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 at least one mark disclosed by Kitamura such that a curved face that protrudes axially inward smoothly connects the first slope face and the second slope face, as suggested by Ratliff, because they would have had a reasonable expectation that doing so would prevent crack growth.
Response to Arguments
Applicant’s amendments to the claims are appreciated; however, they fail to overcome the previous 112(a) rejection set forth in the Final Office Action mailed 08/13/2025.
Applicant specifically argues that the angle θ shown in Fig. 3 and described in paragraph [0013] of the instant specification supports the limitation in claim 13 that “each of the two slope faces extends in a linear direction that is slanted at 10o or less relative to a circumferential tangent at a center between a first circumferential end of the mark and a second circumferential end of the mark.” However, the angle θ in Fig. 3 is the angle between the two slope faces (11, 12), not the extension direction of the two slope faces relative to the circumferential direction. Indeed, because Fig. 3 is a cross-section of the mark (4) when cut with a plane parallel to a circumferential tangent at a center between a first circumferential end of the mark and a second circumferential end of the mark, Fig. 3 cannot show an extension angle of the two slope faces relative to the circumferential direction. Thus, applicant’s arguments related to the 112(a) rejection of claim 13 are not persuasive.
Applicant’s arguments with respect to amended independent claim 1 and 12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
As such, claims 1, 3, and 6-13 stand rejected.
Conclusion
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/B.C.D./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749