DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-11 have been presented for examination based on the application filed on 8/21/2023.
Claims 1-11 are rejected under 35 U.S.C. 101.
Claims 1-11 are 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.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.
Claims 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. US 5464051 A by Beard; Richard C. et al.
This action is made Non-Final.
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). The certified copy has been filed in current application.
Examiner Note
Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. Generally, the presence or absence of such reference characters does not affect the scope of a claim. See MPEP § 608.01(m) for information pertaining to the treatment of reference characters in a claim.
Claim Objections
The claims are objected to because they include reference characters which are not enclosed within parentheses.
Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. See MPEP § 608.01(m).
Exemplarily Claims objected are claim 1 (“bead core 5”), claim 2 (“bead core 5” “bead wire 8”), claim 3 (“bead portion 4”, “center 5c”, “outer surface 4a”, ). Please correct all such references to drawings elements by enclosing them in parenthesis.
Also the claim appear to have terms in square bracket, possibly intended to show units of quantification (e.g. millimeter [mm]). These may be confused with reference characters and therefore should be removed, unless such measurement metric is explicitly desired to limit the claim. Instead stating them in verbose form (e.g. “measured in millimeter”) should be used for above reason.
Claim 2 has extraneous term “[%}” in the limitation “Ɛc: compressive strain on the inside in the radial direction of the tire of the bead core 5 [%]”.
Claim 6 is objected to lack of clarity. A rejection is not made because examiner believes restating the limitation may overcome the objection. Claim 6 recites:
Claim 6: “…. wherein the pressing force of the bead portion is predicted by using an allowable maximum value and allowable minimum value of the diameter of the rim.”
Its unclear from claim 1, if there are two different metric that need to be entered for diameter of the rim or the function is evaluated twice with minimum or maximum diameter of rim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to mental process without any additional elements that provide a practical application or amount to significantly more than the abstract idea.
Claims 1:
Step 1: the claims are drawn to a method, falling under one of the four statutory categories of invention.
Step 2A, Prong 1: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. The limitations are bolded for abstract idea/judicial exception identification.
Claim 1
Mapping Under Step 2A Prong 1
1. (Currently Amended) A bead pressing force prediction method, which is a method for predicting a pressing force of a bead portion of a tire equipped with a bead core in the bead portion, and which comprises a step of predicting the pressing force of the bead portion when the tire is fitted onto a rim of a wheel by using the following numeric expression (1):
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wherein
BF: the bead pressing force [N]
Ɛc: compressive strain on the inside in the radial direction of the tire of the bead core 5 [%]
IDw: the inner diameter of the bead core 5 [mm]
ODR: the diameter of the rim [mm]
Ct: a thickness inward in the radial direction of the tire from the bead core 5 [mm]
a1: a coefficient for obtaining the pressing force BF from the compressive strain Ɛc
a2: a constant.
Abstract Idea/Mathematical Concept/Mathematical Equation: The bead pressing force recites mathematical relationships (as in MPEP 2106.04(a)(2)(I)(A)), mathematical formula/equations (as in MPEP 2106.04(a)(2)(I)(B)), mathematical calculations (as in MPEP 2106.04(a)(2)(I)(C)).
The description of the variables contribute to the Mathematical Concept in computing the bead pressing force (BF).
Under MPEP 2106.04(a)(2)(C) This may also be mental process (using pencil and paper to compute the BF). The variables are a observation on which evaluation of function is performed.
Under its broadest reasonable interpretation, these covers a mathematical concept/mental process including an observation, evaluation, judgment or opinion that could be performed in the human mind or with the aid of pencil and paper.
Step 2A, Prong 2: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d). As per (1) the additional elements are identified as bolded parts of the limitations in column 1 of the table below, and as per (2) the evaluation is shown in the mapping section of the table.
The claim does not recite any additional elements. At best the presence of variable (a1, Ɛc:, IDw, ODR, Ct, and a2) may be considered as data gathering step under MPEP 2106.05(g) and Step 2A Prong 2.
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
The claim does not recite any additional elements. The claim presents these variable (a1, Ɛc:, IDw, ODR, Ct, and a2) to compute bead pressing force (BF) without any indication on how they are derived/computed and since they are related to tire/bead design in automotive technology. The limitation at best is the field of use under MPEP 2106.05(h). These steps do not lead to an improvement in the design of the tire/bead design as the design inputs (variables) are predetermined and the formula for BF is given (as an abstract idea). Therefore the computation is BF does not amount to significantly more.
Claim 2-5 recites similarly another variations of the bead pressing force (BF) formula and besides the formula being different and having more variables, the rationale to reject it remains the same as claim 1, where the formula presents mathematical concept/mental step and field of use at best. These claims are rejected as claim 1 above.
Claim 6 further recites wherein the pressing force of the bead portion is predicted by using an allowable maximum value and allowable minimum value of the diameter of the rim. This only adds further to abstract idea, how or what data is entered into the formula for BF. This may be considered as data gathering step (MPEP 2106.05(g)) or simply field of use (MPEP 2106.05(h)) where the variable is related to rim diameter.
Claim 7 recites computation of variable BOW, contributing bead pressing force (BF) formula for claim 3 where the formula presents mathematical concept/mental step (rejected under Step 2A Prong 1) and field of use (MPEP 2106.05(h)/Step 2A Prong 2 & 2B) at best. The claim does not improve the design or selection of any of the underlying variables to improve the tire/bead design. Simply computing a datum (BOW) does not improve the design.
Claim 8-9, Similar to claim 7 recite formulas to compute variables BWmax and Ct, which are based on formulas having further variables. This is considered as mathematical concept/abstract idea (rejected under Step 2A Prong 1) and field of use (MPEP 2106.05(h)/Step 2A Prong 2 & 2B) at best. The claim does not improve the design or selection of any of the underlying variables to improve the tire/bead design.
Claim 10 is the field of use of manufacturing the tire based on the formula (method claim) where the force value computed is between 1000 to 10000 N. Although this appears that claim parallels Diamond v. Diehr however as a whole the limitation do not provide eligibility and merely recite calculating bead pressing force equation "in a manufacturing of tire". Unlike Diehr (which recited specific limitations such as monitoring the elapsed time since the mold was closed, constantly measuring the temperature in the mold cavity, repetitively calculating a cure time by inputting the measured temperature into the Arrhenius equation, and opening the press automatically when the calculated cure time and the elapsed time are equivalent), the current claim is simply field of use as no details are presented how any of the underlying variables are computed for BF, whether the process was iteratively monitored, corrected and on what basis the correction was made to the underlying variable to compute the BF. Further no indication is shown how the computation of BF leads to better tire model (e.g. what variables are changed or how they are determined). The limitation of this claim parallels In re Flook where the alarm limit (like bead pressing force here) is calculated and some process (like tire manufacturing) is performed.
Claim 11 is the claim to article of manufacture (in this case the tire) which is manufactured based on formula where the force value computed is between 1000 to 10000 N. The claim is devoid of any details of the physical attributes or manufacturing details of the tire. This is simply field of use of the formula (computing BF) where computation of BF simply does not lead to article of manufacture. Even if input variables are considered as physical attributes for the tire there is no indication how they are derived (expert knowledge, given). The claim is therefore rejected under Step 2A prong 2, and step 2B under MPEP 2106.05(h).
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Claim Rejections - 35 USC § 112(a) Written Description Requirement
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.
Claims 1-11 are 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
MPEP 2161.01 states:
For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.") (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1405-06); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").
Claim 1-11 claims “bead pressing force (BF)” computed based on plurality of input variables as enumerated in claims 1-9. While the specification verbatim recites these variables nothing in the specification show how these variables are derived.
Some of the variables in the formulas do not even have identifications what they convey (declared as constants) with nothing in the specification what these constants are and how they are computed.
E.g. See claim 1( constants a1, a2), Claim 2 (constants a3-a5), claim 3 (constant a6-a7), claim 4 (constants a8-a10), Claim 5 (constant a11-a14), Claim 7 (constant a15-a17), Claim 8 (constant a18-a19), Claim 9 (constant a20-a21).
As stated in MPEP above "[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries… holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed.
Claim 10 uses the claim 1 formula (exceeding a threshold) to perform the method of manufacturing the tire, except there are no steps disclosed in the claim or the specification1.
Claim 11 uses the claim 1 formula (exceeding a threshold) to represent an article of manufacture (the tire), except there are no details disclosed in the claim or the specification2 of any physical parameters that would lead to the claimed tire.
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Claim Rejections - 35 USC § 112(a) Enablement Requirement
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
It is noted from MPEP that while applying In re Wands test that While the analysis and conclusion of a lack of enablement are based on the factors discussed in MPEP § 2164.01(a) and the evidence as a whole, it is not necessary to discuss each factor in the written enablement rejection. The language should focus on those factors, reasons, and evidence that lead the examiner to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims.
Applying In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) factors:
(A) The breadth of the claims - The focus of the examination inquiry is whether everything within the scope of the claim is enabled (MPEP 2164.08).
Specifically, claims 1-9 disclose different formulas to predict the bead pressing force (BF). While some variables are clearly disclosed, the other variables are declared as constants. E.g. See claim 1( constants a1, a2), Claim 2 (constants a3-a5), claim 3 (constant a6-a7), claim 4 (constants a8-a10), Claim 5 (constant a11-a14), Claim 7 (constant a15-a17), Claim 8 (constant a18-a19), Claim 9 (constant a20-a21).
While non-constant terms (variables) may be measurable quantities from any given tire design, one would need these constants to predict the exact bead pressing force (BF) as anticipated by current claims. The specification does not disclose what these constants represent, and no method/steps are claimed which show how these constants are determined, the claims represent an infinite possibility of values these constants can take, thereby making it impossible to determine scope of the invention.
Further as to variables which can be measured (e.g. claim 1 IDw: the inner diameter of the bead core 5 [mm]
ODR: the diameter of the rim [mm], Ct: a thickness inward in the radial direction of the tire from the bead core 5 [mm]), the specification provides no rationale how these physical aspects which are used calculate the bead pressing force (BF) compare to any empirically obtained bead pressing force. The value of these are therefore also arbitrary.
Further claims 1-9 disclose different formulas for bead pressing force (BF), without any support in disclosure why one formula for BF is used over another. The breadth of claims is not limited to what tire-rim configuration each one of them would be applicable to. Therefore one would not know when to use one BF formula over the another BF formula.
The specification is ipsis verbis recitation of claims for most part and does not extrapolate on any of the breadth defining aspects of BF formula. Therefore, specific citation to specification to show breadth is not disclosed. This shows lack of enablement how one would compute bead pressing force (BF) using any of the formula.
Similar rationale applies to claim 10 of method of manufacturing the tire based on formula of claim 1. Neither claim 10 nor specification ([0073]) recite any steps that lead to method to manufacture the tire.
Similar rationale applies to claim 11 of article of manufacturing (the tire) based on formula of claim 1. Neither claim 11 nor specification ([0072]) recite any physical attributes of the tire.
(B) & (C) The nature of the invention & The state of the prior art - The nature of the invention becomes the backdrop to determine the state of the art and the level of skill possessed by one skilled in the art. The state of the prior art is what one skilled in the art would have known, at the time the application was filed, about the subject matter to which the claimed invention pertains. The relative skill of those in the art refers to the skill of those in the art in relation to the subject matter to which the claimed invention pertains at the time the application was filed (MPEP 2164.05(a)). In this case bead pressing force (BF) is critical factor to determine that rubber tire does not slip around the metal rim and at the same time provides enough sealing pressure between the tire and rim such that the tire can hold inflation. Another aspect of the design is bead design such that pressure from weight of the vehicle is distributed as evenly possible on the rim. These considerations have been empirically measured and improved in the past as detailed in patents documents going back to 1959.
US 20230322030 A1 2023-10-12 FUKUSHIMA; Kazuki
US 20210309051 A1 2021-10-07 Honda; Hiroaki
US 5464051 A 1995-11-07 Beard; Richard C. et al.
US 5085260 A 1992-02-04 Ueyoko; Kiyoshi et al.
US 6079467 A 2000-06-27 Ueyoko; Kiyoshi
US 2874747 A 1959-02-24 WOODALL WILLIAM R
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As seen above the bead compression force is measured empirically but not computed for a specific tire with different beading configurations (US 5464051 A Fig.1, 3A, 3B) and specific rim design (e.g. Fig.5).
In the instant invention’s exemplary claim 1, the bead compression force is computed and includes not only variables like IDw, ODR and Ct (untethered to any specific tire or wheel design), but also containing undeclared constants a1 and a2. Without full details and specific tie to specific tire/rim design these computations are meaningless and one cannot determine bead compression force from it.
The state of the art is empirical design and does not disclose a formula to compute the bead pressing force (BF).
Further, “The state of the prior art is also related to the need for working examples in the specification.” (MPEP 2164.05(a)) which is not present in this case. Additionally applicants are directed to their own IDS dated 10/10/2024 where such force measurements are shown, and none show an equation for the force.
(D) The level of one of ordinary skill - MPEP 2164.05(b) states “The relative skill of those in the art refers to the skill of those in the art in relation to the subject matter to which the claimed invention pertains at the time the application was filed. As illustrated above with one example, the compression may be represented by empirically gathered data. One may be able to tabulate the data such as in US 5464051 A Fig.10B on previous page, however it would be near impossible to determine an equation for bead pressing force without associating it with specific bead pattern, tire and wheel dimensions to variable of the bead pressing force equation.
(E) The level of predictability in the art - The “predictability or lack thereof” in the art refers to the ability of one skilled in the art to extrapolate the disclosed or known results to the claimed invention. If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains, then there is predictability in the art. On the other hand, if one skilled in the art cannot readily anticipate the effect of a change within the subject matter to which that claimed invention pertains, then there is lack of predictability in the art. Accordingly, what is known in the art provides evidence as to the question of predictability. In particular, the court in In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971) (MPEP 2164.03). As seen There are no examples available of calculating from an equation a bead pressing force (BF) in the cited state of the art examples.
(G) The existence of working examples - MPEP 2164.02 states “When considering the factors relating to a determination of non-enablement, if all the other factors point toward enablement, then the absence of working examples will not by itself render the invention non-enabled.” In this all factors shown above point the to non-enablement of the invention therefore absence of a working example for the claimed scope of the invention becomes necessary as this bead pressing force equation is specialized art. No examples are provided to show how the constants are determined and how they are associated with specific tire-bead-rim designs. This is clearly further demonstrated by different bead pressing force formula envisioned in claims 1-5 without associating them to specific tire-bead-rim designs or which formula is applicable to what situation. Hence the specification fails to give any working example.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure - MPEP 2164.06(a) related to ELECTRICAL AND MECHANICAL DEVICES OR PROCESSES - gives guidance that drawings by block diagrams with functional labels, was held to be nonenabling in In re Gunn, 537 F.2d 1123, 1129, 190 USPQ 402, 406 (CCPA 1976).-Applying the same rationale to this case, bead pressing force is an abstract idea, wherein a specific application of which requires detailed knowledge of field (in this case how to formulate a specific formula for bead pressing force including variables and constants). Since no details are presented to show how the constants are determined and how they are associated with specific tire-bead-rim designs, a lot of undue experimentation would be needed to determine formulas for bead pressing force from empirical data. The fact that beads in pneumatic tires are used since 1959 (US 2874747 A above) and no one has tried to standardize computation for bead pressing force, shows that this is very specific to tire-bead-rim designs. Hence it is believed that there would have to be undue experimentation needed to make or use the invention based on the content of the disclosure.
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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 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 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. US 5464051 A by Beard; Richard C. et al.
MPEP 2113 States:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)
Regarding Claim 10
Beard teaches A tire manufacturing method which is a method of manufacturing a tire comprising a step of configuring a bead portion so that a pressing force of the bead portion predicted by the bead pressing force prediction method (Beard: Fig.10A-10B Col.10 Lines 16-Col.16 Lines 12 showing bead force between 1000-4500N) .
Regarding Claim 11
Beard teaches A tire, which is a tire of which pressing force of a bead portion predicted by the bead pressing force prediction method (Beard: Beard: Fig.10A-10B Col.10 Lines 16-Col.16 Lines 12; showing bead force between 1000-4500N) .
Conclusion
All claims are rejected.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Examiner’s Note: Examiner has cited particular columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AKASH SAXENA whose telephone number is (571)272-8351. The examiner can normally be reached Mon-Fri, 7AM-3:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN PITARO can be reached on (571) 272-4071. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AKASH SAXENA
Primary Examiner
Art Unit 2188
/AKASH SAXENA/Primary Examiner, Art Unit 2188 Tuesday, August 18, 2026
1 See specification as filed ¶[0073].
2 See specification as filed ¶[0072].
Prosecution Insights