DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/02/2025 has been entered.
Response to Amendment
The amendments entered on 12/02/2025 have been accepted. Claims 1-2, 6, 10-13, 15, 19 are amended. Claims 14 and 16-17 are canceled. Claims 1-13, 15, and 19 are pending. Applicant’s amendments to the claims have overcome the 112(b) and 112(d) rejections previously set forth in the final office action mailed 9/2/2025. Applicant’s amendments to the claims have overcome the objections previously set forth.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 lines 13-14 recite “…wherein the opposed sidewalls in the intermediate portion are tapered away from each other and are angled…”. Lines 9-10 earlier in the claim recites “wherein the opposed sidewalls are tapered away from each other in the intermediate portion”. Therefore, it is recommended that lines 13-14 be amended as such so as to not repeatedly state the same limitations: “wherein the opposed sidewalls in the intermediate portion
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 6, 10-13, 15, and 19 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, the newly added limitation in lines 2-3 that “…a tread having a tread groove extending continuously in the circumferential direction and having a constant cross-sectional shape” is considered new matter.
The written specification is silent as to having a groove with a constant-cross-sectional shape over the entire circumference of the tire. Figs. 1-2 provides a cross-section of the tire and Figs. 3-4 provide views of the cross-sections of the grooves, but this is merely a “snapshot” of the tread groove at this particular location and does not provide backing for having the same groove shape of the entire circumference. Fig. 5 is the only example that shows the tread grooves with a tread pattern (showing their view over a circumference of the tire). Fig. 5 shows that there is a clear difference in a cross-sectional shape along the extend of the tread grooves (wherein the grooves with the inventive cross-sectional shape are applied to the center two grooves in Fig. 5). Where there are the open cutouts “710” along the circumferential extend of the tread groove, the cross-sectional shape would necessarily be different as this portion compared to the portions without the cutouts “710”. Therefore, Fig. 5 (the only example of the tread groove extending in the circumferential direction) clearly demonstrates a cross-sectional shape that would be changing and would not be constant. Therefore, the added limitation to lines 2-3 of claim 1 cannot reasonably be considered to have been in possession by the Applicant at the time of filing. Claims 2, 6, 10-13, 15 and 19 are rejected for relying upon a rejected claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 10-15, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ocana (US2020/0070586A1, of record).
Regarding claim 1, Ocana teaches a tire (title) comprising
a tread having a tread groove (Fig. 1a shows partial view of the tread and of a cross-section of the groove), extending continuously in the circumferential direction and having a constant cross-sectional shape (Fig. 1a provides the cross-section of the groove which is a circumferential groove, meaning that it extends in the circumferential direction [0016+]. And as the grooves as shown in Figs. 1-5 extend in the circumferential direction with the cross-section as shown in Fig. 1a, it is reasonably suggested that the shown grooves would have this constant cross-sectional shape),
wherein the cross-sectional shape has a top, bottom, and intermediate portion (an annotated Fig. 1a is included below to facilitate discussion. The top portion is considered the portion of “3” which extends with opposed sidewalls straight, the intermediate portion is located below that with opposed sidewalls tapered outwards away from each other to the maximum width position, and the bottom portion is considered below the intermediate portion with opposed sidewalls tapered towards each other)
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wherein a maximum axial width of the tread groove in the top portion is 1.5mm or less (the width B2 ranges from 1-3mm [0022]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)),
the opposed sidewalls in the intermediate portion are tapered away and lead to a maximum width forming an inflection point, where from the inflection point to the bottom portion the opposed sidewalls are tapered continuously towards each other (as in the annotated Fig. 1a above, the intermediate portion as defined clearly has the opposed walls tapered away from each other leading into the maximum width position, where the maximum width has the inflection point which sees the sidewalls being to taper in the opposite direction towards each other. Because of this, the bottom portion as defined would therefore have the walls tapered towards each other and a continuous width decrease happens moving downwards from the inflection point to the bottom of the bottom portion),
the walls of the intermediate portion are angled in the range of 25-60deg (in Fig. 1a, the angle Beta has an angle from 95 to 135 [0023]. With the axial direction, this would mathematically equate to an angle from 5 to 45deg. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)),
and wherein the opposed sidewalls of the top portion are straight (in the top portion as defined in the annotated Fig. 1a above, both sidewalls are clearly formed straight and parallel to the tire radial direction).
Regarding claim 2, Ocana makes obvious a tire wherein the bottom portion has a minimum width which is in a range of 1.5 to 3.5mm (B4 is taken at the base of the groove and it ranges from b1 x (a3 + a1) [0030]. Where this would simplify to b4 = b1 * (0.2 to 0.7). Given that b1 ranges from 3 to 22mm [0022], b4 would therefore range from 0.6 to 15.4mm. And b3 is the maximum width, and it ranges from b1 * (a2 + a1) [0009], where this range simplifies to b1 * (0.4 to 1.1), such that b3 ranges from 1.2mm to 24.2mm. Because the minimum width Wb taken at 5% of the groove bottom would be taken between points b3 and b4, the minimum width Wb would therefore overlap with the claimed range of 1.5 to 3.5mm. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claims 3-4, Ocana makes obvious a tire wherein the groove has a maximum width Wmax in the range of 4-9mm and 5-7mm (b3 is the maximum width, and it ranges from b1 * (a2 + a1) [0009], where this range simplifies to b1 * (0.4 to 1.1), such that b3 ranges from 1.2mm to 24.2mm. Moreover, it has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' with sufficient specificity”, then the claimed range is anticipated, see MPEP § 2131.03(II)).
Regarding claim 5, Ocana makes obvious a tire wherein the groove has the maximum width Wmax in the intermediate section (as in the annotated Fig. 1 in the rejection of claim 1 above, the max width b3 is clearly in the intermediate section).
Regarding claim 6, Ocana makes obvious a tire wherein the ratio of Wmax to Wb is from 1.5 to 2.5 (B4 is taken at the base of the groove and it ranges from b1 x (a3 + a1) [0030]. Where this would simplify to b4 = b1 * (0.2 to 0.7). Given that b1 ranges from 3 to 22mm [0022], b4 would therefore range from 0.6 to 15.4mm. And b3 is the maximum width, and it ranges from b1 * (a2 + a1) [0009], where this range simplifies to b1 * (0.4 to 1.1), such that b3 ranges from 1.2mm to 24.2mm. The maximum width (b3) and the minimum width (near b4) have values that readily satisfy the claimed ratio, such as when both are at the bottom of their respective ranges (where the max width is 1.2mm and the min is ~0.6mm, for a ratio of 2.0). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Alternatively, reference is made to the annotated Fig. 1a below. The measured maximum width has a value of 1.00, and the measured Wb value is 0.60. This yields a ratio of 1.67 which is within the claimed range. One of ordinary skill in the art would have found it obvious to use the scale of the drawings as a starting point in their design process, specifically in choosing a ratio between Wmax and Wb of the bottom portion as described above. While patent drawings are not to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of claims. See In re Mraz, 173 USPQ 25 (CCPA 1972). From Fig 1a of Ocana, one would have found that the ratio between the widths is approximately 1.67, thus suggesting the claimed range).
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Regarding claims 7-8 and 10, Ocana makes obvious a tire wherein a maximum width of the groove is at a radial height of 40-60% of the height of the groove, 50% of the height of the groove, and 35-65% of the height of the groove (Ocana teaches that the height T2 ranges from 30-60% of the total depth [0022]. This height T2 is substantially close to the maximum width position, such that the range of the maximum width position to that of the total height would be expected to be slightly above the range of 30-60% of the total depth, such that there is significant overlap between Ocana’s taught range and that of each of the claimed ranges).
Alternatively, reference is made to the annotated Fig. 1a below. The measured total height of the groove is 1.00, while the position of maximum width is measured at 0.50 from the top of the groove. One of ordinary skill in the art would have found it obvious to use the scale of the drawings as a starting point in their design process, specifically in choosing a ratio of the maximum width position to the total groove height as described above. While patent drawings are not to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of claims. See In re Mraz, 173 USPQ 25 (CCPA 1972). From Fig 1a of Ocana, one would have found that the ratio between the maximum width is at approximately 50% of the total height of the groove, thus suggesting the claimed range).
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Regarding claim 12, Ocana makes obvious a tire wherein the maximum width of the top portion is less than 25% or more than 10% of the max width of the groove (the top portion width B2 may range from 1-3mm [0022]. The maximum width of the groove may range from 1.2 to 24.2mm, as detailed above in rejections of claims 3-4. The width of the top portion would clearly be more than 10% of the max width of the groove when both ranges are at their bottom portion (1/1.2 =83.3%), and the width of the top portion would clearly be below 25% when both ranges are at their top portion (3/24 = 12.4%). Moreover, it has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' with sufficient specificity”, then the claimed range is anticipated, see MPEP § 2131.03(II)).
Regarding claim 15, Ocana teaches or makes obvious a tire wherein the groove has at 5% of its total radial height an axial width in a range of 30-60% of the max width of the tread groove (B4 is taken at the base of the groove and it ranges from b1 x (a3 + a1) [0030]. Where this would simplify to b4 = b1 * (0.2 to 0.7). Given that b1 ranges from 3 to 22mm [0022], b4 would therefore range from 0.6 to 15.4mm. The width at 5% from the base of the groove would be only slightly larger than this value. And b3 is the maximum width, and it ranges from b1 * (a2 + a1) [0009], where this range simplifies to b1 * (0.4 to 1.1), such that b3 ranges from 1.2mm to 24.2mm. When both widths are at their minimum width, the claimed range would be satisfies (~0.6mm/1.2mm = 50%). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Alternatively, reference is made to the annotated Fig. 1a in the rejection of claim 6 above. The maximum width has a measured value of 1 while the width at 5% from the bottom is 0.60, for a value of 60%. One of ordinary skill in the art would have found it obvious to use the scale of the drawings as a starting point in their design process, specifically in choosing a ratio between Wmax and Wb of the bottom portion as described above. While patent drawings are not to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of claims. See In re Mraz, 173 USPQ 25 (CCPA 1972). From Fig 1a of Ocana, one would have found that a value of 60% thus suggesting the claimed range).
Regarding claim 19, Ocana makes obvious a tire wherein it is a pneumatic tire [title, abstract].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ocana (US2020/0070586A1), as applied to claim 1 above, and further in view of Georges (US2013/0014871A1, of record).
Regarding claim 9, Ocana does not directly disclose the groove located on the centerline (equator) of the tread. However, Ocana does not restrict the placement of its specially designed circumferential grooves, and it would have been obvious for one of ordinary skill in the art to be the grooves anywhere on the tread surface, including the centerline of the tire. And as Ocana does not suggest an explicit tread pattern for its inventive tire, one would not limit themselves in designing an ideal placement for the grooves. Georges, for example, teaches a tire for heavy loads [0003], which has both wide circumferential grooves (20, 24) and variable circumferential grooves (100, 61, 62) [see Figs 1-2]. The variable circumferential grooves have a narrow sipe opening, and a wider opening at the radial inner portion of the groove [see Fig. 2], wherein the variable grooves are substantially similar to those of the instant application and of Ocana. The groove “100” is located on the equator which is the centerline of the tread.
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the special grooves of Ocana to be located on the center of the tread. One would have been motivated so as to decrease crack probability and to improve wet skid performance and wear evenness [0108].
Claims 1, 5-8, 10-13, 15, 19 are rejected under 35 U.S.C. 103 as being unpatentable over License (WO2022064134A1, of record, citing to English Equivalent US2023/0373253, of record).
Regarding claim 1, License teaches a tire (title, Fig. 4) comprising:
A tread having a tread groove extending continuously in the circumferential direction with a constant cross-sectional shape (inner longitudinal cuts “42”, as in Figs. 3-4, clearly are extending in a circumferential direction. And as in Fig. 3, this groove extends in the circumferential direction with no changes to its shape, such that it would reasonably be considered to have a constant shape in the circ direction),
Wherein the cross-sectional shape has a top portion, a bottom portion, and an intermediate portion between the top portion and the bottom portion (the circumferential tread grooves may have a cross-section as shown in Fig. 4. In this Figure, the top section is considered to be the outer radial portion “421”, the intermediate portion is from the bottom of “421” to the maximum width position, and the bottom portion is considered the bottom of “422” from a region of the maximum width to the radially innermost portion of the groove. An annotated Fig. 4 is shown below to identify each of the three different portions of the groove. Double-sided arrows are included on the side of the figure to mark each of the radial locations of the three portions),
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Wherein a maximum axial width of the tread groove in the top portion is 1.5mm or less (the width of the top portion “421” may have a width WI1 which is at most equal to 0.2 times the height HI1 [0053, Fig. 4]. License does not give a lower bound for its width “WI1”. License suggests that a height HI1 may have a value of 32mm [Table 1]. Therefore, given the suggestion that WI1 would be at most 0.2 times this height, one of ordinary skill in the art would have found it obvious to utilize groove widths smaller than 0.2 times HI1, and one would have fallen within the suggested range of 1.5mm or less, in order to improve grip, wear, and thermal endurance [0053]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
License further suggests the tread groove has opposed sidewalls wherein they are tapered towards each other continuously in the bottom portion (in the bottom portion as identified above, the sidewalls, each located on either axial side of the figure, are clearly tapered towards each other, as the width of the groove decreases moving radially inwards),
Wherein the opposed sidewalls in the intermediate portion are tapered away from each other to a maximum width forming an inflection point (in the transition portion as identified above, the groove walls are tapered away from each other as the overall groove width increases moving radially inwards. These tapered walls clearly lead to the maximum width of the groove, wherein this maximum width also changes the inflection point from the groove walls being tapered away from each other to being tapered towards each other) and are angled in a range of 25-60degrees with the axial direction (from Fig. 4, the intermediate portion sidewalls are both clearly arranged at approximately 45degrees, and well within the range of 25-60deg with respect to the axial direction. An annotated Fig. 4 is included below to further show this angle. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125.
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Regarding claim 5, License suggests a tire with the width Wmax in the intermediate section (as in the rejection of claim 1 above, the maximum width would overlap with the intermediate region as defined).
Regarding claim 6, License suggests a tire with a ratio of Wmax to Wb in a range 1.5 to 2.5 (reference is made to the annotated Fig. 4 below. The maximum width position is measured, and a width 5% from the bottom of the bottom portion are measured, as indicated by the two double-sided arrows below. One of ordinary skill in the art would have found it obvious to use the scale of the drawings as a starting point in their design process, specifically in choosing a ratio between Wmax and Wb of the bottom portion as described above. While patent drawings are not to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of claims. See In re Mraz, 173 USPQ 25 (CCPA 1972). From Fig 4 of License, one would have found that the ratio between the widths is approximately 1.75, thus suggesting the claimed range).
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Regarding claims 7-8, License suggests a tire where a maximum width is at a radial height of 40-60% and 50% of the total radial height (an annotated Fig. 4 is included below. A measurement of the total depth of the groove is shown by “1” and it has a standardized value of 1.00. The distance from the tread surface to the maximum width position is shown by “2” and it has a value of 0.50. Therefore, the maximum width position is at a position of 50% of the total radial height of the groove. And when the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125).
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Regarding claim 10, License makes obvious a tire wherein a maximum axial width is at a position of 35-65% of the total height of the tread groove (see the annotated Fig. 4 which is included above in the rejections of claims 7-8. The maximum width position is clearly located at a position of 50% of the total depth of the groove, such that the claimed range is made obvious).
Regarding claim 11, License makes obvious a tire wherein a total cross-sectional area of the tread groove is more than 15% of the total cross-sectional area of the shoulder groove (see Fig. 4 of License. The tread groove “42” is shown, and the shoulder grooves “41”, with the cross-sectional areas being present. It is immediately clear with only a simple observation of Fig. 4 that the area of “42” is well above 15% of the area of the shoulder groove “41”, as both cross-sectional area appear to be close in value).
Regarding claim 12, License makes obvious a tire wherein the maximum axial width of the top portion is less than 25% of the maximum axial width of the tread groove (as in the rejection of claim 1 above, the width of the top portion WI1 may be 0.2 times the height HI1 or less, such that the width of the top portion would be obvious to be 1.5mm or less. While the bottom portion may have a max width of WI2 of 24mm. The top would therefore be 6.25% of the maximum width when at these dimensions).
Regarding claim 13, License makes obvious a tire wherein the shoulder groove has a shape tapering from its outermost portion to its innermost portion (see Fig. 4, groove “41” which is considered the shoulder grooves. These are roughly in a V-shape, has a decreasing width from the outside to inside of the groove, and have groove walls at approximately 80deg for the top portion of the groove).
Regarding claim 15, License further suggests a tire where a width Wb measured 5% from the bottom of the tread groove a width from 30-60% of the maximum axial width of the groove (reference is made to the annotated Fig. 4 in the rejection of claim 6 above. The bottom arrow is taken at 5% from the bottom of the groove, while the top arrow is at the maximum width position. The bottom arrow is approximately 57% of the maximum width position arrow. Moreover, it is held that guidance as provided by the figures is sufficient to enable public possession of an inventive concept. While patent drawings are not to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of claims. See In re Mraz, 173 USPQ 25 (CCPA 1972). From Fig. 4 of License, one would expect for the width at 5% to be from 30-60% of the maximum width of the tread groove).
Regarding claim 19, License makes obvious a pneumatic tire which is heavy duty (see title, Figs. 1-6), and the tire as in Fig. 4 has 3 middle circumferential grooves and 2 outer shoulder grooves).
Response to Arguments
Applicant argues that Eikermann and Ishizaka do not suggest the amended claim limitations. These specific arguments have been considered but are moot because the new ground of rejection does not rely upon these references.
Applicant argues that License fails to recite the maximum axial width of the tread groove is 1.5mm or less, as License allegedly only teaches a maximum width of 2mm.
The Examiner respectfully disagrees. While Table 1 may only state an explicit value of 2mm for its top sipe portion, the greater disclosure of License suggests that the width WI1 of the top portion has a width that is at most equal to 0.2 times the height HI1 [0053, Fig. 4]. 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 Merc & Co v. Biocraft Labs, Inc., 874 F 2d 804,807 10 USPQ 2nd 1843, 1846 (Fed. Cir. ). As there is not a lower bound given for this sipe portion, it would have been obvious for the person of ordinary skill in the art to work within this given range and one would have landed upon the suggested range of 1.5mm or less. For example, as the height HI1 may be 32mm for example, the suggestion of 1.5mm or less would have been within the suggested range of less than 0.2 times the height HI1, in order to improve grip, wear, and thermal endurance [0053]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS F SCHNEIDER whose telephone number is (571)272-4857. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
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/T.F.S./Examiner, Art Unit 1749
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749