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 .
Claim Objections
Claim 17 is objected to because of the following informalities: the phrase “sulfur vulcanizing agent” in line 16 should be written as –the sulfur vulcanizing agent— for grammatical clarity and consistency in claim language. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: the phrase “sulfur vulcanizing agent” in line 8 should be written as –a sulfur vulcanizing agent— for grammatical clarity. Appropriate correction is required.
Claim 26 is objected to because of the following informalities: the phrase “sulfur as a vulcanizing agent” in line 2 should be written as –the sulfur as the vulcanizing agent— for grammatical clarity and consistency in claim language. Appropriate correction is required.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 17-27 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agostini et al. (US 20120073717) and Borgna et al. (US 20190244074).
Regarding claim 17, Agostini discloses a tire having an electronic communication including a radio device on a rubber layer comprised of 100 parts of at least one diene-based rubber ([0008]-[0009], [0012]-[0015], [0017], [0023], [0025], [0048]), a filler selected from the group consisting of carbon black, silica, and combinations thereof ([0024]-[0026]), and a cure package ([0024]-[0028]), the 100 parts of the at least one diene-based rubber of the rubber layer includes a majority by weight of polybutadiene, polyisoprene, natural rubber, or mixtures thereof ([0023]: wherein the rubber may be only polybutadiene, polyisoprene, natural rubber, or mixtures thereof), and no more than 10 parts in total of EPDM, butyl rubber, halogenated butyl rubber, or nitrile rubber ([0023]: wherein EPDM, butyl rubber, halogenated butyl rubber, and/or nitrile rubber may or may not be included, and when not included will be zero parts in total).
Agostini further discloses the filler of the rubber layer includes about 20 to about 200 phr of carbon black, which overlaps with the claimed range of about 30 to about 50 phr, selected from the group consisting of N300 series, N500 series, or a combination thereof ([0025]-[0026]). Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of carbon black.
Agostini further discloses the cure package of the rubber layer includes sulfur as a vulcanizing agent and at least one vulcanization accelerator with a weight ratio of vulcanization accelerator to sulfur of 0.06:1 to 5:1 ([0027]-[0028]: wherein an amount of sulfur may be 0.5 to 8 phr and an amount of accelerator may be 0.5 to 2.5 phr), which overlaps with the claimed range of 0.7:1 to 1.5:1, and wherein sulfur vulcanizing agent is present in an amount of 0.5 to 8 phr ([0027]), which overlaps with the claimed range of 4 to 10 phr. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a weight ratio of vulcanization accelerator to sulfur or an amount of sulfur vulcanizing agent.
Agostini further discloses the rubber layer has a thickness of about 1 to about 25 mm ([0018]), which overlaps with the claimed range of about 0.4 to about 3 mm. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a thickness of the rubber layer.
Agostini further discloses that vulcanizing accelerators are used to control the time and/or temperature required for vulcanization and to improve the properties of the vulcanizate ([0028]). In other words, any desired cure time, and thereby T50 cure time, and cure temperature may be reached by adjusting the vulcanizing accelerators. While Agostini does not explicitly disclose the value for the T50 cure time at 160 °C, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said cure time and temperature. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the T50 cure time and temperature in order to achieve the desired time and temperature.
Additionally, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Agostini discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above. Agostini further discloses that the typical vulcanization temperature ranges from about 90 to about 200°C ([0029]). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, such as a T50 cure time at 160 °C.
Although Agostini does not expressly recite that the radio device is surrounded by the rubber layer, case law holds that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04. In this case, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to duplicate the rubber layer on the other side of the radio device so as to sandwich or embed it for further protection on the tire interior.
Additionally, Borgna discloses a foam-based RFID label that may be attached to an inner wall of a tire ([0013], [0058]), similar to Agostini, wherein the RFID device (Figs. 1-3: 24) is disposed, encased, or sandwiched between one or more foam substrates (Figs. 1-3: 22) ([0007], [0009], [0054]). The layers of foam substrate work to protect the RFID device ([0055]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Agostini in order to embed the RFID (i.e., radio) device in a foam rubber layer or sandwich it between two layers of the foam rubber layer (i.e., such that the radio device is surrounded by the rubber layer) so as to protect the device, as taught by Borgna.
Regarding claim 18, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Agostini discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above in claim 17. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, such as an elongation at break at 23 °C, a 50% modulus at 23 °C, a tension at break at 23 °C, and/or a Mooney viscosity ML1+4 at 130 °C.
Regarding claim 19, as discussed above in claim 18, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, including all of an elongation at break at 23 °C, a 50% modulus at 23 °C, a tension at break at 23 °C, and a Mooney viscosity ML1+4 at 130 °C.
Regarding claims 20 and 25, Agostini discloses a tire having an electronic communication including a radio device on a rubber layer comprised of 100 parts of at least one diene-based rubber ([0008]-[0009], [0012]-[0015], [0017], [0023], [0025], [0048]), a filler selected from the group consisting of silica, carbon black, and combinations thereof ([0024]-[0026]), and a cure package ([0024]-[0028]).
Agostini further discloses the filler consists of 0 to less than 5 phr of silica ([0026]: wherein silica may not be included). Additionally, in the event silica is included it may be in an about of about 5 to about 80 phr ([0026]), which overlaps with or at the very least approaches the claimed range at the value about 5 phr. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Case law holds that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. One of ordinary skill in the art would reasonably expect about 5 phr to behave in substantially the same way as less than 5 phr. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of silica in the filler.
Agostini further discloses the filler of the rubber layer includes about 20 to about 200 phr of carbon black, which overlaps with the claimed ranges of up to about 50 phr and about 30 to about 50 phr, selected from the group consisting of N300 series, N500 series, or a combination thereof ([0025]-[0026]). Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of carbon black.
Agostini further discloses the cure package of the rubber layer includes sulfur as a vulcanizing agent, wherein sulfur vulcanizing agent is present in an amount of 0.5 to 8 phr ([0027]), which overlaps with the claimed range of 4 to 10 phr. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for an amount of sulfur vulcanizing agent.
Agostini further discloses the rubber layer has a thickness of about 1 to about 25 mm ([0018]), which overlaps with the claimed range of about 0.4 to about 3 mm. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a thickness of the rubber layer.
Agostini further discloses that vulcanizing accelerators are used to control the time and/or temperature required for vulcanization and to improve the properties of the vulcanizate ([0028]). In other words, any desired cure time, and thereby T50 cure time, and cure temperature may be reached by adjusting the vulcanizing accelerators. While Agostini does not explicitly disclose the value for the T50 cure time at 160 °C, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said cure time and temperature. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the T50 cure time and temperature in order to achieve the desired time and temperature.
Additionally, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Agostini discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above. Agostini further discloses that the typical vulcanization temperature ranges from about 90 to about 200°C ([0029]). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, such as a T50 cure time at 160 °C.
Although Agostini does not expressly recite that the radio device is surrounded by the rubber layer, case law holds that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04. In this case, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to duplicate the rubber layer on the other side of the radio device so as to sandwich or embed it for further protection on the tire interior.
Additionally, Borgna discloses a foam-based RFID label that may be attached to an inner wall of a tire ([0013], [0058]), similar to Agostini, wherein the RFID device (Figs. 1-3: 24) is disposed, encased, or sandwiched between one or more foam substrates (Figs. 1-3: 22) ([0007], [0009], [0054]). The layers of foam substrate work to protect the RFID device ([0055]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Agostini in order to embed the RFID (i.e., radio) device in a foam rubber layer or sandwich it between two layers of the foam rubber layer (i.e., such that the radio device is surrounded by the rubber layer) so as to protect the device, as taught by Borgna.
Regarding claim 21, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Agostini discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above in claim 20. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, such as an elongation at break at 23 °C, a 50% modulus at 23 °C, a tension at break at 23 °C, and/or a Mooney viscosity ML1+4 at 130 °C.
Regarding claim 22, as discussed above in claim 21, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, including all of an elongation at break at 23 °C, a 50% modulus at 23 °C, a tension at break at 23 °C, and a Mooney viscosity ML1+4 at 130 °C.
Regarding claims 23-24, Agostini further discloses the 100 parts of the at least one diene-based rubber of the rubber layer includes a majority by weight (including the entirety of the 100 parts of the at least one diene-based rubber of the rubber layer) of polybutadiene, polyisoprene, natural rubber, or mixtures thereof ([0023]: wherein the rubber may be only polybutadiene, polyisoprene, natural rubber, or mixtures thereof), and no more than 10 parts in total of EPDM, butyl rubber, halogenated butyl rubber, or nitrile rubber ([0023]: wherein EPDM, butyl rubber, halogenated butyl rubber, and/or nitrile rubber may or may not be included, and when not included will be zero parts in total).
Regarding claim 26, Agostini further discloses the cure package of the rubber layer includes sulfur as a vulcanizing agent and at least one vulcanization accelerator with a weight ratio of vulcanization accelerator to sulfur of 0.06:1 to 5:1 ([0027]-[0028]: wherein an amount of sulfur may be 0.5 to 8 phr and an amount of accelerator may be 0.5 to 2.5 phr), which overlaps with the claimed range of 0.7:1 to 1.5:1. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a weight ratio of vulcanization accelerator to sulfur.
Regarding claim 27, Agostini further discloses the tire (Fig. 1: 10) includes an inner liner (Fig. 1: 16) and the radio device (Fig. 1: see how 22 may be replaced with RFID) is positioned radially inward of the inner liner ([0048]).
Regarding claim 37, Agostini further discloses the filler consists of 0 to less than 5 phr of silica ([0026]: wherein silica may not be included). Additionally, in the event silica is included it may be in an about of about 5 to about 80 phr ([0026]), which overlaps with or at the very least approaches the claimed range at the value about 5 phr. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Case law holds that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. One of ordinary skill in the art would reasonably expect about 5 phr to behave in substantially the same way as less than 5 phr. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of silica in the filler.
Claim(s) 17-27 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lionetti et al. (US 20090151829) and Agostini et al. (US 20120073717).
Regarding claim 17, Lionetti discloses a tire having an electronic communication including a radio device (Fig. 3: 22) surround by a rubber layer (Figs. 1-3: 18) comprised of 100 parts of at least one diene-based rubber ([0002], [0005], [0019], [0021], [0027-[0028]), a filler selected from the group consisting of carbon black, silica, and combinations thereof ([0015], [0020]-[0022]), and a cure package ([0020-[0024]), the 100 parts of the at least one diene-based rubber of the rubber layer includes a majority by weight of polybutadiene, polyisoprene, natural rubber, or mixtures thereof ([0019]: wherein the rubber may be only polybutadiene, polyisoprene, natural rubber, or mixtures thereof), and no more than 10 parts in total of EPDM, butyl rubber, halogenated butyl rubber, or nitrile rubber ([0019]: wherein EPDM, butyl rubber, halogenated butyl rubber, and/or nitrile rubber may or may not be included, and when not included will be zero parts in total).
Lionetti further discloses the filler of the rubber layer includes about 20 to about 200 phr of carbon black, which overlaps with the claimed range of about 30 to about 50 phr, selected from the group consisting of N300 series, N500 series, or a combination thereof ([0021]-[0022]). Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of carbon black.
Lionetti further discloses the cure package of the rubber layer includes sulfur as a vulcanizing agent and at least one vulcanization accelerator with a weight ratio of vulcanization accelerator to sulfur of 0.06:1 to 5:1 ([[0023]-[0024]: wherein an amount of sulfur may be 0.5 to 8 phr and an amount of accelerator may be 0.5 to 2.5 phr), which overlaps with the claimed range of 0.7:1 to 1.5:1, and wherein sulfur vulcanizing agent is present in an amount of 0.5 to 8 phr ([0023]), which overlaps with the claimed range of 4 to 10 phr. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a weight ratio of vulcanization accelerator to sulfur or an amount of sulfur vulcanizing agent.
Lionetti further discloses that vulcanizing accelerators are used to control the time and/or temperature required for vulcanization and to improve the properties of the vulcanizate ([0024]). In other words, any desired cure time, and thereby T50 cure time, and cure temperature may be reached by adjusting the vulcanizing accelerators. While Lionetti does not explicitly disclose the value for the T50 cure time at 160 °C, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said cure time and temperature. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the T50 cure time and temperature in order to achieve the desired time and temperature.
Additionally, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Agostini discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above. Lionetti further discloses that the typical vulcanization temperature ranges from about 90 to about 200°C ([0025]). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, such as a T50 cure time at 160 °C.
Lionetti further discloses the rubber layer is of such a size as to not occupy any substantial inner portion of the inflated tire, wherein, generally, its length, width and thickness are sufficient to provide an adequate mount for a sensor ([0013]). In other words, while Lionetti does not explicitly disclose the value for the thickness of the rubber layer, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said thickness. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the thickness of the rubber layer in order to not occupy any substantial inner portion of the inflated tire while being sufficient to provide an adequate mount for a sensor (i.e., radio device).
Additionally, Agostini discloses the limitations of claim 17 as discussed in the detailed rejection above. Agostini also discloses the rubber layer is of such a gauge as to not occupy any substantial inner portion of the inflated tire ([0018]). Agostini further discloses the rubber layer has a thickness of about 1 to about 25 mm ([0018]), which overlaps with the claimed range of about 0.4 to about 3 mm. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a thickness of the rubber layer. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the thickness of the foamed rubber layer of Lionetti so as to be a generally known thickness that does not occupy any substantial inner portion of the inflated tire, as taught by the substantially similar art of Agostini.
Regarding claim 18, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Lionetti discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above in claim 17. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, such as an elongation at break at 23 °C, a 50% modulus at 23 °C, a tension at break at 23 °C, and/or a Mooney viscosity ML1+4 at 130 °C.
Regarding claim 19, as discussed above in claim 18, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, including all of an elongation at break at 23 °C, a 50% modulus at 23 °C, a tension at break at 23 °C, and a Mooney viscosity ML1+4 at 130 °C.
Regarding claims 20 and 25, Lionetti discloses a tire having an electronic communication including a radio device (Fig. 3: 22) surround by a rubber layer (Figs. 1-3: 18) comprised of 100 parts of at least one diene-based rubber ([0002], [0005], [0019], [0021], [0027-[0028]), a filler selected from the group consisting of silica, carbon black, and combinations thereof ([0015], [0020]-[0022]), and a cure package ([0020-[0024]).
Lionetti further discloses the filler consists of 0 to less than 5 phr of silica ([0015, [0020], [0022]]: wherein silica may not be included). Additionally, in the event silica is included it may be in an about of about 5 to about 80 phr ([0022]), which overlaps with or at the very least approaches the claimed range at the value about 5 phr. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Case law holds that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. One of ordinary skill in the art would reasonably expect about 5 phr to behave in substantially the same way as less than 5 phr. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of silica in the filler.
Lionetti further discloses the filler of the rubber layer includes about 20 to about 200 phr of carbon black, which overlaps with the claimed ranges of up to about 50 phr and about 30 to about 50 phr, selected from the group consisting of N300 series, N500 series, or a combination thereof ([0021]-[0022]). Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of carbon black.
Lionetti further discloses the cure package of the rubber layer includes sulfur as a vulcanizing agent, wherein sulfur vulcanizing agent is present in an amount of 0.5 to 8 phr ([0023]), which overlaps with the claimed range of 4 to 10 phr. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a weight ratio of vulcanization accelerator to sulfur or an amount of sulfur vulcanizing agent.
Lionetti further discloses that vulcanizing accelerators are used to control the time and/or temperature required for vulcanization and to improve the properties of the vulcanizate ([0024]). In other words, any desired cure time, and thereby T50 cure time, and cure temperature may be reached by adjusting the vulcanizing accelerators. While Lionetti does not explicitly disclose the value for the T50 cure time at 160 °C, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said cure time and temperature. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the T50 cure time and temperature in order to achieve the desired time and temperature.
Additionally, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Agostini discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above. Lionetti further discloses that the typical vulcanization temperature ranges from about 90 to about 200°C ([0025]). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, such as a T50 cure time at 160 °C.
Lionetti further discloses the rubber layer is of such a size as to not occupy any substantial inner portion of the inflated tire, wherein, generally, its length, width and thickness are sufficient to provide an adequate mount for a sensor ([0013]). In other words, while Lionetti does not explicitly disclose the value for the thickness of the rubber layer, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said thickness. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the thickness of the rubber layer in order to not occupy any substantial inner portion of the inflated tire while being sufficient to provide an adequate mount for a sensor (i.e., radio device).
Additionally, Agostini discloses the limitations of claim 20 as discussed in the detailed rejection above. Agostini also discloses the rubber layer is of such a gauge as to not occupy any substantial inner portion of the inflated tire ([0018]). Agostini further discloses the rubber layer has a thickness of about 1 to about 25 mm ([0018]), which overlaps with the claimed range of about 0.4 to about 3 mm. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a thickness of the rubber layer. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the thickness of the foamed rubber layer of Lionetti so as to be a generally known thickness that does not occupy any substantial inner portion of the inflated tire, as taught by the substantially similar art of Agostini.
Regarding claim 21, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Lionetti discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above in claim 20. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, such as an elongation at break at 23 °C, a 50% modulus at 23 °C, a tension at break at 23 °C, and/or a Mooney viscosity ML1+4 at 130 °C.
Regarding claim 22, as discussed above in claim 21, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the rubber layer would also have, or would at least be capable of having, substantially the same properties and characteristics as the claimed rubber layer, including all of an elongation at break at 23 °C, a 50% modulus at 23 °C, a tension at break at 23 °C, and a Mooney viscosity ML1+4 at 130 °C.
Regarding claims 23-24, Lionetti further discloses the 100 parts of the at least one diene-based rubber of the rubber layer includes a majority by weight (including the entirety of the 100 parts of the at least one diene-based rubber of the rubber layer) of polybutadiene, polyisoprene, natural rubber, or mixtures thereof ([0019]: wherein the rubber may be only polybutadiene, polyisoprene, natural rubber, or mixtures thereof), and no more than 10 parts in total of EPDM, butyl rubber, halogenated butyl rubber, or nitrile rubber ([0019]: wherein EPDM, butyl rubber, halogenated butyl rubber, and/or nitrile rubber may or may not be included, and when not included will be zero parts in total).
Regarding claim 26, Lionetti further discloses the cure package of the rubber layer includes sulfur as a vulcanizing agent and at least one vulcanization accelerator with a weight ratio of vulcanization accelerator to sulfur of 0.06:1 to 5:1 ([0019-[0020], [0023]-[0024]]: wherein an amount of sulfur may be 0.5 to 8 phr and an amount of accelerator may be 0.5 to 2.5 phr), which overlaps with the claimed range of 0.7:1 to 1.5:1. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a weight ratio of vulcanization accelerator to sulfur.
Regarding claim 27, Lionetti further discloses the tire (Fig. 1-2: 10) includes an inner liner (Figs. 1-3: 16) and the radio device (Fig. 3: 22) is positioned radially inward of the inner liner (Fig. 3: 16).
Regarding claim 37, Lionetti further discloses the filler consists of 0 to less than 5 phr of silica ([0015, [0020], [0022]]: wherein silica may not be included). Additionally, in the event silica is included it may be in an about of about 5 to about 80 phr ([0022]), which overlaps with or at the very least approaches the claimed range at the value about 5 phr. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Case law holds that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. One of ordinary skill in the art would reasonably expect about 5 phr to behave in substantially the same way as less than 5 phr. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of silica in the filler.
Response to Arguments
Applicant’s arguments with respect to claim(s) 17-27 and 37 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.
Applicant's arguments filed 04/09/2026 have been fully considered but they are not persuasive.
On page 6 of the Remarks, the examiner notes Applicant argues “independent claims have also been amended to specify that the amount of sulfur is 4 to 8 phr.” However, the claims recite the amount of sulfur is 4 to 10 phr.
On pages 8-10 of the Remarks, Applicant argues “the independent claims specify a particular range of minutes for the T50 cure time of the rubber layer, not merely that the rubber layer possesses a T50 cure time at 160 °C” and that the Office has provided “no explanation as to why one of skill in the art would have been motivated to or otherwise sought to ‘optimize the T50 cure time’ of a rubber composition used for a rubber layer surrounding a radio device. Essentially, the Office pre-supposes that one of skill in the art would have had some reason to consider the T50 cure time of a rubber composition used for a rubber layer surrounding a radio device. No evidence has been provided to support this position. In other words, the Office has cited to no prior art recognizing T50 cure time as relevant to the formulation of a rubber composition used for a rubber layer surrounding a radio device.” Applicant further argues “the Office seemed to take the position that the burden was on Applicant to prove that the relevant claimed parameter (i.e., T50 cure time) was not recognized as a result- effective variable in the prior art … Notwithstanding the impossibility of providing a negative, the Office's position is unsupportable in view of post-KSR Federal Circuit case law discussing the result-effective variable principle.”
Firstly, the examiner notes that the detailed rejection above discusses why the particular range of minutes for the T50 cure time of the rubber layer would have been obvious to optimize, and not merely that the rubber layer possesses a T50 cure time at 160 °C. The record establishes that vulcanization temperature and the use/amount of accelerators and other curing system additives are well-known process parameters that directly and predictably influence cure time. The prior art also discloses a range of generally known vulcanization temperatures that encompasses the claimed 160 °C. The fact that the prior art recognizes accelerators as affecting cure time, temperature, and processing conditions renders the curing behavior a result-effective variable. Selection or optimization of cure conditions at a known temperature, including achieving the desired cure time range at T50 and 160 °C, would have been within the routine skill in the art as a matter of ordinary process optimization. Applicant’s position that T50 cure time is an isolated, non-predictable parameter is not found persuasive as the T50 cure time is an inherent kinetic outcome of adjusting known result-effective variables, such as temperature and accelerator amount. Additionally, no criticality or unexpected result has been shown for the claimed cure time range.
Secondly, the absence of an explicit prior art reference identifying “T50 cure time” in the context of rubber compositions used for surrounding radio devices is not persuasive. The relevant inquiry under 35 USC 103 is not whether the prior art expressly recognizes the same nomenclature or target application, but whether the claimed parameter reflects an inherent and predictable property of the vulcanization system governed by known, result-effective variables, such as temperature, sulfur content, accelerator amount, etc. As discussed above, these variables directly control cure kinetics, and T50 cure time is simply a conventional measurement of cure progression. Moreover, the suitability of rubber compositions for surrounding radio devices is likewise governed by known material properties, such as cure state, processing conditions, etc., which the prior art teaches adjusting. Therefore, even absent an explicit teaching linking T50 cure time to radio device encapsulation, optimization of cure behavior to achieve a desired processing and final material state would have been within the routine skill of the art.
Thirdly, Applicant’s argument of improper burden shifting is not persuasive. The rejection properly establishes a prima facie case of obviousness based on recognized result-effective variables governing vulcanization kinetics, as discussed above, which inherently control cure time and rate behavior measured by such parameters as T50. It is well settled that once a prima facie case of optimization of result-effective variables is made, the burden of production shifts to Applicant to rebut by demonstrating that the claimed range or parameter is critical (i.e., that it produces unexpected results or is otherwise not the result of routine optimization). The examiner has not required Applicant to prove a negative or to establish that T50 cure time is not a result-effective variable. Rather, the examiner’s reference to rebuttal via unexpected results or criticality on pages 11-12 of the 06/17/2025 Final Rejection merely reflects the established legal standard for overcoming an optimization-based prima facie case. In other words, it does not shift to Applicant the burden of proving the absence of recognition of a result-effective variable in the prior art. Applicant has not provided evidence or data of unexpected results or technical criticality for the claimed T50 cure time range. Applicant remains free to rebut by demonstrating criticality or unexpected results associated with the claimed T50 cure time range. In the absence of such evidence, the prima facie case of obviousness based on routine optimization remains unrebutted.
Finally, the examiner notes that the MPEP, as well as additional USPTO guidance memoranda, are the guidance that are followed by the USPTO. Examiners are not expected to do additional legal research beyond the MPEP and guidance memoranda. The examiner has not found In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) or Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020) to be available in the MPEP or in USPTO guidance memoranda, and therefore the examiner must rely upon the guidance currently available in the MPEP and said memoranda and not upon additionally cited case law outside said sources. Moreover, Applicant refers to a quote from In re Waymouth, 499 .2d 1273, 1277 (CCPA 1974) stating “the board[,] in discussing the results . . . appears to have completely ignored the fact that it is appellants [patentee], not Reiling [the prior art], who have discovered that any relationship exists at all between the halogen atom to mercury atom ratio and the intensity of white light emission.” However, the examiner notes that the MPEP discussion of Waymouth in section 716.02 states “the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of ‘a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree.’” In other words, the court was responding to appellants’ demonstration of unexpected results to reach said conclusion. In this case, Applicant has not provided or demonstrated criticality or unexpected results.
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.
Contact Information
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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