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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/12/2025 has been entered.
Claim Objections
Claim 17 is objected to because of the following informalities: the phrase “the a filler” in line 10 should be written as –the filler— for grammatical clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 25 is 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.
Regarding claim 25, the phrase “the at least one filler” in line 1 is unclear as a single filler was previously disclosed in claim 20. For the purposes of examination, the examiner assumes –the filler—.
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 Balnis et al. (US 20170368874) (of record).
Regarding claim 17, Balnis discloses a tire having an electronic communication including a radio device surrounded by a rubber layer comprised of 100 parts of at least one diene-based rubber ([0006]-[0007], [0009], [0019]-[0020], [0022], [0031]), a filler selected from the group consisting of carbon black, silica, and combinations thereof ([0038]-[0053]), and a cure package ([0066]-[0071]), wherein 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 ([0055], Table 1), and no more than 10 parts in total of EPDM, or butyl rubber, halogenated butyl rubber, or nitrile rubber ([0055]-[0057], Table 1: wherein it can be 0 and thereby no more than 10 parts).
Balnis further discloses the rubber layer has a thickness of about 0.5 to about 3 mm ([0027]), 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 the thickness of the rubber layer.
Balnis further discloses the filler of the rubber layer includes no more than 100 phr of carbon black ([0046]), which overlaps with the claimed range of about 30 to about 50 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 the amount of carbon black.
Balnis further discloses the cure package of the rubber layer includes sulfur as a vulcanizing agent and at least one vulcanization accelerator ([0067]-[0069]), wherein the vulcanizing agent is used in an amount ranging from 0.1 to 10 phr ([0068]), and wherein the vulcanizing accelerator is used in an amount ranging from 0.1 to 10 phr ([0069]). Accordingly, a weight ratio of vulcanization accelerator to sulfur is in the range of 0.01:1 to 100:1, 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 the ratio of vulcanization accelerator to sulfur in the rubber layer.
Balnis further discloses that vulcanizing accelerators are used to control the time and/or temperature required for vulcanization ([0069]), and vulcanizing inhibitors are used to control the vulcanization process until the desired time and/or temperature is reached ([0071]). In other words, any desired cure time, and thereby T50 cure time, and cure temperature may be reached by adjusting the vulcanizing accelerators and inhibitors. While Balnis 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. Balnis discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above. 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.
The examiner notes that although Balnis discloses ground cured rubber in the rubber layer, this is not considered to be a filler as it is an additional polymer that is never disclosed as being a filler. Moreover, although it is disclosed as being a particulate, the amount of carbon black and/or other fillers within the ground cured rubber is specifically pointed out ([0032]-[0046]). In other words, Balnis recognizes that carbon black, silica, etc. are fillers and accounts for them, while the ground cured rubber is not intended to be a filler. Furthermore, even though it is disclosed as being a control ([0084]), Example 1 in Table 1 provides an example of no ground cured rubber and 45 phr of carbon black. Although the control might not be a preferred embodiment, it demonstrates baseline properties and its inclusion shows that Balnis contemplated compositions both with and without the ground cured rubber. Additionally, although Balnis discloses preferred ranges for the amount of ground cured rubber, these are merely preferable examples and do not explicitly limit the disclosure to such a limitation. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123.
Regarding claim 18, Balnis further discloses that the rubber layer may further comprise one or more process oils which may be useful in improving processability by reducing the Mooney viscosity of the rubber layer ([0063]). In other words, the Mooney viscosity is considered to be a result effective variable that affects the processability of the rubber layer. While Balnis does not explicitly disclose the value for the Mooney viscosity, 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 Mooney viscosity. 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 Mooney viscosity in order to improving processability of the rubber layer.
Furthermore, 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. Balnis 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 claim 20, Balnis discloses a tire having an electronic communication including a radio device surrounded by a rubber layer comprised of 100 parts of at least one diene-based rubber ([0006]-[0007], [0009], [0019]-[0020], [0022], [0031]), a filler selected from the group consisting of carbon black, silica, and combinations thereof ([0038]-[0053]), and a cure package ([0066]-[0071]).
Balnis further discloses the rubber layer has a thickness of about 0.5 to about 3 mm ([0027]), 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 the thickness of the rubber layer.
Balnis further discloses the rubber layer contains 0 to less than 5 phr of silica filler ([0050]-[0051]).
Balnis further discloses the filler of the rubber layer includes no more than 100 phr of carbon black ([0046]), which overlaps with the claimed range of up to about 50 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 the amount of carbon black.
Balnis further discloses that vulcanizing accelerators are used to control the time and/or temperature required for vulcanization ([0069]), and vulcanizing inhibitors are used to control the vulcanization process until the desired time and/or temperature is reached ([0071]). In other words, any desired cure time, and thereby T50 cure time, and cure temperature may be reached by adjusting the vulcanizing accelerators and inhibitors. While Balnis 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. Balnis discloses a rubber layer composition that may comprise all of the claimed components in ranges overlapping with the claimed ranges, as discussed above. 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.
The examiner notes that although Balnis discloses ground cured rubber in the rubber layer, this is not considered to be a filler as it is an additional polymer that is never disclosed as being a filler. Moreover, although it is disclosed as being a particulate, the amount of carbon black and/or other fillers within the ground cured rubber is specifically pointed out ([0032]-[0046]). In other words, Balnis recognizes that carbon black, silica, etc. are fillers and accounts for them, while the ground cured rubber is not intended to be a filler. Furthermore, even though it is disclosed as being a control ([0084]), Example 1 in Table 1 provides an example of no ground cured rubber and 45 phr of carbon black. Although the control might not be a preferred embodiment, it demonstrates baseline properties and its inclusion shows that Balnis contemplated compositions both with and without the ground cured rubber. Additionally, although Balnis discloses preferred ranges for the amount of ground cured rubber, these are merely preferable examples and do not explicitly limit the disclosure to such a limitation. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123.
Regarding claim 21, Balnis further discloses that the rubber layer may further comprise one or more process oils which may be useful in improving processability by reducing the Mooney viscosity of the rubber layer ([0063]). In other words, the Mooney viscosity is considered to be a result effective variable that affects the processability of the rubber layer. While Balnis does not explicitly disclose the value for the Mooney viscosity, 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 Mooney viscosity. 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 Mooney viscosity in order to improving processability of the rubber layer.
Furthermore, 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. Balnis 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 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 claim 23, Balnis further discloses 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 ([0055], Table 1), and no more than 10 parts in total of EPDM, or butyl rubber, halogenated butyl rubber, or nitrile rubber ([0055]-[0057], Table 1: wherein it can be 0 and thereby no more than 10 parts).
Regarding claim 24, Balnis further discloses the entirety of the 100 parts of the at least one diene-based rubber of the rubber layer is selected from the group consisting of polybutadiene, polyisoprene, natural rubber, and mixtures thereof ([0055]-[0057], Table 1).
Regarding claim 25, Balnis further discloses the filler of the rubber layer includes no more than 100 phr of carbon black ([0046]), which overlaps with the claimed range of about 30 to about 50 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 the amount of carbon black.
Regarding claim 26, Balnis further discloses the cure package of the rubber layer includes sulfur as a vulcanizing agent and at least one vulcanization accelerator ([0067]-[0069]), wherein the vulcanizing agent is used in an amount ranging from 0.1 to 10 phr ([0068]), and wherein the vulcanizing accelerator is used in an amount ranging from 0.1 to 10 phr ([0069]). Accordingly, a weight ratio of vulcanization accelerator to sulfur is in the range of 0.01:1 to 100:1, 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 the ratio of vulcanization accelerator to sulfur in the rubber layer.
Regarding claim 27, Balnis further discloses the tire includes an inner liner and the radio device is positioned radially inward of the inner liner ([0005]).
Regarding claim 37, Balnis further discloses the rubber layer contains 0 to less than 5 phr of silica filler ([0050]-[0051]).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE (née AYALP) whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KATELYN SMITH (née WHATLEY) can be reached on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The fax phone number for the examiner is (571) 273-5031.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749