DETAILED ACTION
Claims 1, 4-6, and 12-14 are pending.
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 .
Response to Amendment
This office action is responsive to the amendment filed on July 16, 2026. As directed by the amendment: no claims have been amended or cancelled. Thus, claims 1, 4-6, and 12-14 are presently pending in this application.
Applicant’s arguments have not overcome the 35 USC §112(b) or §103 rejections.
Response to Arguments
Applicant's arguments filed July 16, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments do not apprise the examiner of error. Applicant’s claim refers to a dipped and heat-set cord, but defines a property based on the difference between and unclaimed cord and the present dipped and heat-set cord. The pre-cursor cord is not claimed, nor in this apparatus claim could the pre-cursor cord be claimed, it is outside the bounds of the claim.
Applicant argues that the “claims provide both the definition of MEP and the precise testing conditions required to determine that property”. While the Examiner does not dispute that the claims state what MEP is, the claim is for a tire cord cap ply reinforcement with a dipped and heat-set cord, not to a pre-cursor component of a tire cord cap ply reinforcement. Thus, someone could not determine if a given cord falls within the scope of the claims, because the claim is attempting to claim both a pre-cursor element as well as the dipped and heat-set cord.
The examiner does not doubt that MEP is a measurable property, but does doubt that MEP can be determined on “a tire cord cap ply, comprising: a dipped and heat-set cord”. Again, the claim is for the dipped and heat-set cord, not for the precursor component. Applicant recites the MEP “characterizes the behavior of the claimed cord when subjected to the specifically recited thermal treatment conditions”. The Examiner respectfully disagrees. Applicant is not reciting a testing procedure for the dipped and heat-set cord (e.g. ASTM, EIN, JIS, etc.) which would be verifiable because the person having ordinary skill in the art could take the dipped and heat-set cord and test according to the particular standard, but rather is reciting a testing procedure for before the dipped and heat-set cord is formed compared to after the dipped and heat-set cord is formed. Because the claim includes “a dipped and heat-set cord” and not the pre-cursor, the MEP cannot be determined from the tire cord cap ply reinforcement.
Applicant argues that inquiry under §112(b) is not whether infringement analysis may require testing. The Examiner agrees, and has never stated that. The Examiner states that the testing is impossible on the product as claimed, because the cord is already “dipped and heat-set”. If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate (see MPEP 2173.02(II)). The Examiner submits that the metes and bounds of the claim, which refer to a precursor component, do not permit a PHOSITA to understand how to avoid infringement.
Furthermore the claims provide no boundary or description of the pre-cursor cord. Various other steps could have been done to the precursor yarn prior to being heat-treated in order for it to arrive at the claimed MEP. A PHOSITA would not have access to this data, nor does Applicant provide such data.
Next Applicant argues that while Lee includes similar PET materials, similar manufacturing parameters, including PET composition, intrinsic viscosity, drawing operations, draw ratios, processing temperatures, and winding speed, Lee does not measure shrinkforce, MEP, or data from which MEP can be calculated. Applicant asserts that they have reviewed technical literature related to polyester tire cord thermomechanical behavior but did not include the literature and thus Applicant’s arguments regarding the literature are treated as merely attorney arguments and are unpersuasive.
Furthermore, even if the documents were provided and given weight the arguments are unpersuasive. Rath et al. allegedly describes that during heat treatment shrinkage, shrinkage force and mechanical properties change and that modulus changes with free-shrinkage and taut-fiber conditions which correlate with changes in the crystal structure. Next Mahdavipour et al. allegedly describes that different tensions provide different crystallization during heat treatment and shrinkage and shrinkage force increase and tension increases. Applicant summarizes that Rath and Mahdavipour confirm that the shrinkforce and modulus are not fixed consequences of PET composition alone.
The Examiner did not simply recite PET composition and then invoke inherency. Rather, as recognized by Applicant, Lee recites similar PET materials, similar manufacturing parameters, including PET composition, intrinsic viscosity, drawing operations, draw ratios, processing temperatures, and winding speed. Applicant’s recitations of Rath and Mahdavipour do not apprise the Examiner of error, but rather reaffirms that Lee, with substantially the same method of manufacturing, would produce a cord with the same properties.
Applicant next argues that Control A and Control B confirms that the properties rely on more than PET alone. The Control A and Control B comparison is only as useful as the information it provides, which is quite lacking. The only information we have about control A and control B is that they are PET cord, 1670/2, 390/390tpm. There is nothing about the manufacturing processes associated with control A and control B, nor is the percentage PET recited. In short, there are no differences recited other than the difference in MEP. Applicant argues that control A and control B show that more is required than simply PET, but control A and control B could have been formed in the same manner as described in the specification for “invention C”. The recitation of some other cord with different properties does not further Applicant’s position when the composition and method of making of the control samples is not provided.
Applicant has provided no support, or even allegation, that Lee is formed differently than that of the present Application but rather states that since other actions can affect the shrinkforce Lee’s recitation of PET does not satisfy the claim language. As recited above, Lee includes similar material, drawing, temperature and winding as present in Applicant’s disclosure. Applicant’s has thus failed to demonstrate that Lee would not include the claimed properties.
Information Disclosure Statement
The listing of references in the response is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list . . . must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-6, and 12-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites “wherein the dipped and heat-set cord exhibits a modulus enhancement potential (MEP) of at least 110%”. MEP is defined by applicant as stress increase after heat-setting under specific conditions. Applicant provides a table showing the increase on page 5 of the application. The table shows a stress at 5% LASE greige and 5% LASE heat. The percentage change is considered the MEP. Therefore, the claim is attempting to recite a manufacturing step or method of making which results in a particular increase. The claim is for a “tire cord cap ply reinforcement” and not a method of manufacturing. What the qualities of the cord were prior to the cord being considered a “tire cord cap ply reinforcement” is of no significance and does not further limit the claim. Furthermore, one who possibly would be infringing would be required to know the properties of the cord prior to it being formed. One in possession of a potentially infringing product would not know if they were infringing, nor would they be able to test to do so as they would only have the finished product. Therefore, it is unclear as to the scope of the claim. Claim 14 has the same issues and is rejected for the same reasons.
The dependent claims inherit(s) the deficiency by nature of dependency.
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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 4-6, and 12-14 is/are rejected, as best understood, under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 20200369086).
Regarding claim 1, Lee describes tire cord cap ply reinforcement (PET dip cord, heat set), comprising:
a dipped and heat-set cord (dipped, abstract, heat treatment para. 0027);
wherein the dipped and heat-set cord comprises cord plies and each cord ply comprises polyethylene terephthalate (PET) yarn having a linear density between 300 dtex and 3500 dtex (example 2, 1300 denier, 1443 dtex).
wherein stress at 5% elongation (5% SASE) of the dipped and heat-set cord is minimum 2.5 g/dtex and maximum 3.5 g/dtex (strength of 2.5-3.0 g/d at 5% elongation, abstract).
With regards to requirements the particular properties of the drawn PET, such as the stress at 5% elongation, it is the position of the Office that the claimed resultant properties as desired in the aforesaid claims, would be inherent if not obvious to the composite of Lee. It is reasonable to presume so, as support for said presumption is found in the use of like materials (i.e. 90 mol % PET) and properties during manufacturing (0.9 to 1.20 intrinsic viscosity in Lee versus 0.96 to 1.20 in the present application) and temperatures (240°C to 260°C during extrusion and 250°C to 400°C in a cooling zone thereafter in Lee, compared to 260°C to 330°C followed by quenching at 180°C to 400°C in the present application). The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594 (MPEP 2112(V)). In addition, the presently claimed properties as set forth above would obviously have been present once the Lee product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the provision of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, et al. (CCPA) 186 USPQ 80.
With regards to requirements the shrinkforce of the dipped and heat-set cord, it is the position of the Office that the claimed resultant properties as desired in the aforesaid claims, would be inherent if not obvious to the composite of Lee. It is reasonable to presume so, as support for said presumption is found in the use of like materials (i.e. 90 mol % PET) and properties during manufacturing (multiple drawing zones in both Lee and the present application, drawing ratio of 1.8 to 2.5 total in Lee, final drawing ratio of 1.4 to 5.0 in the present application, wind speed of 5000 to 6000 m/min in Lee, wind speed of 3500 to 6500 in the present application). The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties as set forth above would obviously have been present once the Lee product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the provision of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, et al. (CCPA) 186 USPQ 80.
With regards to the requirements of modulus enhancement potential (MEP) it is the position of the Office that the claimed resultant properties as desired in the aforesaid claims would be inherent if not obvious to the composite of Lee. It is reasonable to presume so, as support for said presumption is found in the use of like materials (i.e. 90 mol % PET) and properties during manufacturing (multiple drawing zones in both Lee and the present application, drawing ratio of 1.8 to 2.5 total in Lee, final drawing ratio of 1.4 to 5.0 in the present application, wind speed of 5000 to 6000 m/min in Lee, wind speed of 3500 to 6500 in the present application) and properties during manufacturing (0.9 to 1.20 intrinsic viscosity in Lee versus 0.96 to 1.20 in the present application) and temperatures (240°C to 260°C during extrusion and 250°C to 400°C in a cooling zone thereafter in Lee, compared to 260°C to 330°C followed by quenching at 180°C to 400°C in the present application). The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties as set forth above would obviously have been present once the Lee product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the provision of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, et al. (CCPA) 186 USPQ 80.
Regarding claim 4, Lee as modified describes the tire cord cap ply reinforcement according to claim 1, wherein a twist multiplier of the dipped and heat-set cord is between 10 and 30 (1300 denier * 1.11 = 1443 dtex, sqrt(1443) is 37.98, 37.98/1000 is 0.03798, 0.03798*410 TPM is 15.5).
Regarding claim 5, Lee as modified describes the tire cord cap ply reinforcement according to claim 4, wherein the twist multiplier of the dipped and heat-set cord is between 15 and 25 (1300 denier * 1.11 = 1443 dtex, sqrt(1443) is 37.98, 37.98/1000 is 0.03798, 0.03798*410 TPM is 15.5).
Regarding claim 6, Lee as modified describes the tire cord cap ply reinforcement according to claim 1, wherein the dipped and heat-set polyethylene terephthalate (PET) cord is used as (what follows is a recitation of intended use) cap ply in pneumatic radial tires (fully capable of being utilized as a cap ply, furthermore, described as utilized in a cap ply, abstract).
Regarding claim 12, Lee as modified describes the tire cord cap ply reinforcement according to claim 4, wherein the dipped and heat-set polyethylene terephthalate (PET) cord is used as (what follows is a recitation of intended use) cap ply in pneumatic radial tires (fully capable of being utilized as a cap ply, furthermore, described as utilized in a cap ply, abstract).
Regarding claim 13, Lee as modified describes the tire cord cap ply reinforcement according to claim 5, wherein the dipped and heat-set polyethylene terephthalate (PET) cord is used as (what follows is a recitation of intended use) cap ply in pneumatic radial tires (fully capable of being utilized as a cap ply, furthermore, described as utilized in a cap ply, abstract).
Regarding claim 14, Lee as modified describes the limitations of claim 1 but does not explicitly describe wherein the dipped and heat-set cord has an MEP of 118%.
With regards to the requirements of modulus enhancement potential (MEP) it is the position of the Office that the claimed resultant properties as desired in the aforesaid claims would be inherent if not obvious to the composite of Lee. It is reasonable to presume so, as support for said presumption is found in the use of like materials (i.e. 90 mol % PET) and properties during manufacturing (multiple drawing zones in both Lee and the present application, drawing ratio of 1.8 to 2.5 total in Lee, final drawing ratio of 1.4 to 5.0 in the present application, wind speed of 5000 to 6000 m/min in Lee, wind speed of 3500 to 6500 in the present application) and properties during manufacturing (0.9 to 1.20 intrinsic viscosity in Lee versus 0.96 to 1.20 in the present application) and temperatures (240°C to 260°C during extrusion and 250°C to 400°C in a cooling zone thereafter in Lee, compared to 260°C to 330°C followed by quenching at 180°C to 400°C in the present application). The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties as set forth above, it would obviously have been present once the Lee product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the providing of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, et al. (CCPA) 186 USPQ 80.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK J LYNCH whose telephone number is (571)272-1145. The examiner can normally be reached on M-Th, Alt F: 8:00 AM-5:00 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clint Ostrup can be reached on 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732
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