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 1 is objected to because of the following informalities: The term “Wherein” should not be capitalized and the phrase “as of at least 200 MPa” should be replaced with a phrase, such as -- is at least 200 MPa -- for grammatical clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 112
2. 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.
3. 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.
4. Claim 21 is 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.
Regarding claim 21, the original specification fails to adequately describe how a single embodiment of Applicant’s track would possibly be arranged to include a reinforcement with “the modulus of elasticity of the reinforcement in a widthwise direction of the track is of at least 1 GPa” in combination with “a modulus of elasticity of the reinforcement in a longitudinal direction of the track as of at least 200 MPa” as required by independent claim 1. While paragraph [0305] of Applicant’s specification provides generic support that any feature in any embodiment can be combined with any other feature in any other embodiment, the original specification fails to adequately describe in such a way as to reasonably convey to one having ordinary skill in the art that the inventor had possession at the time of filing of a single embodiment of the track having a reinforcement with a modulus of elasticity in both a longitudinal direction and a widthwise direction with the claimed values as set forth in independent claim 1 and dependent claim 21.
5. 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.
6. Claim 21 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 21, the limitation “the modulus of elasticity of the reinforcement in a widthwise direction of the track is of at least 1 GPa” renders the claim indefinite because it is unclear how the claimed reinforcement can have both “a modulus of elasticity of the reinforcement in a longitudinal direction of the track as of at least 200 MPa” as required by independent claim 1 and “the modulus of elasticity of the reinforcement in a widthwise direction of the track is of at least 1 GPa”.
Claim Rejections - 35 USC § 103
7. 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.
8. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
9. Claims 1, 7-14 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Paradis et al. (US 2011/0074210 A1; hereinafter “Paradis”) in view of Clauzade et al. (US 2002/0100531 A1; hereinafter “Clauzade”).
Regarding claim 1, Paradis, in the embodiment shown in Figs. 6-10, discloses a track 112 for traction of a vehicle 111, the track being movable around a track-engaging assembly (“wheels” described in paragraph [0037]) comprising a drive wheel (“drive sprocket” described in paragraph [0037]) to drive the track (paragraph [0037]), the track comprising: a carcass 136 comprising a ground-engaging outer surface 117 for engaging the ground and an inner surface 115 opposite to the ground-engaging outer surface (Figs. 6-10); a plurality of traction projections 120 projecting from the ground-engaging outer surface (Fig. 6); and an elastomeric material (“elastomeric material” of carcass 136 described in paragraph [0039]) and a reinforcement (“transverse fibers” embedded in the rubber of the track per paragraphs [0035] and [0055] and/or “reinforcing cables” per paragraph [0039] and/or “reinforcing fabric” per paragraph [0039]) disposed within the elastomeric material; and wherein a thickness of the carcass from the ground-engaging outer surface to the inner surface is no more than 0.20 inches (paragraph [0040]).
Paradis fails to expressly disclose a ratio of a widthwise rigidity of the carcass over a longitudinal rigidity of the carcass is between 1.5 included and 2.0 excluded. Instead, Paradis discloses the “transversal rigidity…is substantially greater than a longitudinal rigidity” where “in some embodiments, the transversal rigidity of the endless track 112 may be at least twice…the longitudinal rigidity of the endless track…”(paragraph [0053]).
Nonetheless, inasmuch as a ratio of 2.0 as disclosed by Paradis is essentially identical to a ratio (e.g., 1.99) within the claimed range, a prima facie case of obviousness exists inasmuch it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention that the difference between the properties of the carcasses of the claimed invention and Paradis would have been virtually negligible. Moreover, it is noted that Applicant’s disclosure does not provide any criticality for this newly claimed ratio (See paragraph [0071] of Applicant’s specification). Note the following excerpted section from MPEP 2144.05I. below (emphasis added):
Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Although Paradis discloses the use of reinforcements in the form of reinforcing cables or reinforcing fabric, as noted above, which inherently have a modulus of elasticity in a longitudinal direction of the track, Paradis does not expressly disclose the values of the modulus of elasticity in a longitudinal direction for these reinforcements.
Clauzade, however, teaches the use of reinforcements in the form of reinforcing cables 1 that have a modulus of elasticity in a longitudinal direction of at least 200 MPa (paragraph [0009]; claim 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the track of Paradis so that its reinforcing cables have a modulus of elasticity in a longitudinal direction of at least 200 MPa, such as taught by Clauzade, with a reasonable expectation of success in improving the longitudinal rigidity of the track. Moreover, it is noted that Applicant’s disclosure does not provide any criticality for this claimed range.
Regarding claims 7-10, Paradis fails to expressly disclose a ratio of a bending stiffness of the reinforcement in the widthwise direction of the track over a bending stiffness of the reinforcement in the longitudinal direction of the track is at least 5.
Nonetheless, inasmuch as Paradis expressly teaches the desirability of the track to have a transversal rigidity (i.e., a rigidity in the widthwise direction) that is substantially greater than the longitudinal rigidity (paragraph [0053] teaches “in some cases at least five times the longitudinal rigidity of the endless track 122, and in some cases even more”) with such desired transversal rigidity being achieved via a reinforcement (note at least paragraphs [0035], [0039], [0054] and [0055]), it would have been obvious to one having ordinary skill in the art, as a matter of routine optimization, to have formed the reinforcement to have a ratio of a bending stiffness in a widthwise direction of the track over a bending stiffness of the reinforcement in a longitudinal direction of the track to be at least 5, with a reasonable expectation of success in allowing the transversal rigidity of the track to be at least five times the longitudinal rigidity of the track so as to improve the stability and handling of the track during the intended use thereof. Moreover, it is noted that Applicant’s disclosure does not provide any criticality for the claimed ratios set forth in claims 7-10.
Regarding claim 11, Paradis further discloses the reinforcement comprises a layer of reinforcing cables (paragraph [0039]).
Regarding claim 12, Paradis further discloses the reinforcement comprises a layer of reinforcing fabric (paragraph [0039]).
Regarding claim 13, Paradis fails to expressly disclose the ratio of the modulus of elasticity of the reinforcement in the longitudinal direction of the track over the thickness of the track being at least 1 GPa/in and the ratio of a modulus of elasticity of the reinforcement in the widthwise direction of the track over the thickness of the track being at least 5 GPa/in.
Nonetheless, inasmuch as Paradis expressly teaches the desirability of the track to have a transversal rigidity (i.e., a rigidity in the widthwise direction) that is substantially greater than the longitudinal rigidity (paragraph [0053] teaches “in some cases at least five times the longitudinal rigidity of the endless track 122, and in some cases even more”) with such desired transversal rigidity being achieved via a reinforcement (note at least paragraphs [0035], [0039], [0054] and [0055]), it would have been obvious to one having ordinary skill in the art, as a matter of routine optimization, to have modified the track so that the ratio of a modulus of elasticity of the reinforcement in a longitudinal direction of the track over the thickness of the track is at least 1 GPa/in and a ratio of a modulus of elasticity of the reinforcement in the widthwise direction of the track over the thickness of the track is at least 5 GPa/in, based upon the intended use of the track with a reasonable expectation of success in allowing the transversal rigidity of the track to be at least five times the longitudinal rigidity of the track so as to improve the stability and handling of the track while also permitting the track sufficient flexibility in the longitudinal direction to increase the track’s surface in contact with the surface (e.g., snow) on which the track engages to improve traction during the intended use of the track. Moreover, it is noted that Applicant’s disclosure does not provide any criticality for these claimed ratios (e.g., paragraph [0083] of Applicant’s specification states “These ratios may have any other suitable values in other embodiments”).
Regarding claim 14, Paradis fails to expressly disclose the elastomeric material has a Young's modulus at 300% elongation of at least 15 MPa.
Nonetheless, inasmuch as Paradis, in paragraph [0056], teaches “the elastomeric material of the endless track 112 may be selected to create a stiffer and/or harder track”, it would have been obvious to one having ordinary skill in the art, as a matter of routine optimization, to have modified the track of Paradis by using an elastomeric material that has a Young's modulus at 300% elongation of at least 15 MPa to ensure the track has a desired stiffness and/or hardness for the intended use thereof. Moreover, it is noted that Applicant’s disclosure does not provide any criticality for this claimed value (e.g., paragraph [0084] of Applicant’s specification states “The modulus of elasticity of the elastomeric material 38 of the carcass 35 may have any other suitable value in other embodiments”).
Regarding claim 22, the claimed method to obtain the widthwise rigidity or the longitudinal rigidity of the track is not afforded full patentable weight in a product claim (See MPEP 2113).
10. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Paradis in view of Clauzade, as applied to claim 1 above, and further in view of Favre et al. (WO 2014/138938 A1; hereinafter “Favre”).
Regarding claim 15, although Paradis further discloses the carcass comprises at least two reinforcements disposed within the elastomeric material (paragraph [0039]), Paradis fails to expressly disclose a ratio of a spacing between adjacent ones of the at least two reinforcements in a thickness direction over the thickness of the carcass is at least 0.4.
Favre, however, teaches a track 22 comprising a carcass 36 comprising elastomeric material and at least two reinforcements 711, 712 disposed within the elastomeric material 38 (Fig. 22), wherein a ratio of a spacing between adjacent ones of the at least two reinforcements in a thickness direction over the thickness of the carcass can be at least 0.4 (clearly shown in Fig. 22; lines 6-8 of page 30).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the track of Paradis, as modified by Clauzade, so that a ratio of spacing between adjacent ones of the at least two reinforcements in a thickness direction over the thickness of the carcass is at least 0.4, such as taught by Favre, as a well-known track reinforcement arrangement that would have a reasonable expectation of success for providing a desired rigidity profile for the track. Moreover, it is noted that Applicant’s disclosure does not provide any criticality for this claimed ratio (e.g., paragraph [0087] of Applicant’s specification states “The ratio of the spacing…may have any other suitable value in other embodiments”).
11. Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Paradis in view of Clauzade, as applied to claim 1 above, and further in view of Lajoie et al. (US 2013/0162016 A1; hereinafter “Lajoie”).
Regarding claim 16, although Paradis further discloses the carcass can comprise two or more different elastomeric materials (paragraph [0059]), Paradis fails to expressly disclose a different elastomeric material being a lower-density elastomeric material that is away from a periphery of the track.
Lajoie, however, in the embodiment shown in Fig. 26, teaches a track 22 with a carcass 36 that comprises an elastomeric material 38 (“rubber” or “polyurethane elastomer” per paragraph [0042]) and a lower-density elastomeric material 80 (e.g., “foam rubber” per paragraph [0081]), wherein the lower-density elastomeric material is away from a periphery of the track (Fig. 26).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the track of Paradis, as modified by Clauzade, so that the carcass includes a lower-density elastomeric material that is away from a periphery of the track, such as taught by Lajoie, with a reasonable expectation of success for minimizing the weight of the carcass while also facilitating the elastic deformation of the carcass at portions when the track impacts an obstacle during use thereof.
Regarding claim 17, Lajoie further implicitly discloses a ratio of a density of the lower-density elastomeric material (i.e., foam rubber per paragraph [0081]) over a density of the elastomeric material (i.e., rubber) is less than or equal to 0.9.
Regarding claim 18, Lajoie further implicitly discloses a density of the lower density elastomeric material is less than or equal to 1.4 g/cm3 (i.e., foam rubber per paragraph [0081]).
Regarding claim 19, Lajoie further discloses the lower-density elastomeric material comprises at least 20% of the thickness of the carcass (clearly shown in Fig. 26).
Regarding claim 20, Lajoie further discloses the lower-density elastomeric material comprises cellular elastomeric material (i.e., foam rubber per paragraph [0081]).
Moreover, with respect to claims 17-19, it is noted that Applicant’s disclosure does not provide any criticality for these claimed ratios (e.g., paragraphs [0095], [0096] and [0099] of Applicant’s specification each states that each claimed ratio “may have any other suitable value in other embodiments”).
12. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Paradis in view of Clauzade, as applied to claim 1 above, and further in view of Vanden et al. (CA 2042410 A1; hereinafter “Vanden”).
Although Paradis discloses the use of a reinforcement in the form of a reinforcing fabric, as noted above, which inherently has a modulus of elasticity in a widthwise direction of the track, Paradis does not expressly disclose the value of the modulus of elasticity in a widthwise direction for this reinforcement.
Vanden, however, teaches a composite material that includes a reinforcement in the form of a reinforcing fabric that have a modulus of elasticity in a widthwise direction of at least 1 GPa (lines 1-4 on page 8 of the English language machine translation).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the track of Paradis, as modified by Clauzade, so that its reinforcing fabric a modulus of elasticity in a widthwise direction of at least 1 GPa, such as taught by Vanden, with a reasonable expectation of success in improving the widthwise rigidity of the track. Moreover, it is noted that Applicant’s disclosure does not provide any criticality for this claimed range.
Response to Arguments
13. Applicant's arguments filed 22 January 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that “Lowering the transversal to longitudinal rigidity ratio under the lowest described ratio in the description of Paradis would go against the description and intent of Paradis of having a substantially greater transversal rigidity than a longitudinal rigidity”, the Examiner respectfully disagrees. First, paragraph [0053] of Paradis does not expressly preclude a ratio less than 2.0 as alleged by Applicant. Instead, Paradis merely describes “in this embodiment, the endless track 112 has a transversal rigidity…which is substantially greater than a longitudinal rigidity” (paragraph [0053]). What amount is considered to be “substantially greater” is not disclosed in Paradis. The Examiner notes that the Applicant, in paragraph [0071] of the specification, apparently considers ratios less than 2.0 (i.e., “may be at least 1.5”) to not go against the intent of the application of to have the “widthwise rigidity of the carcass 35” to be “significantly greater than the longitudinal rigidity of the carcass 35”. Nonetheless, as noted above, it is well-settled in caselaw 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 absent any showing of unexpected results or criticality. Inasmuch as a ratio of 2.0 as disclosed by Paradis is essentially identical to a ratio (e.g., 1.99) within the newly claimed range, a prima facie case of obviousness exists because it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention that the difference between the properties of the carcasses of the claimed invention and Paradis would have been virtually negligible.
In response to Applicant’s argument that “there would be no motivation to look at values dozens and hundredth times higher than the elasticity values provided in Paradis”, the Examiner is unclear about what is being argued. Paradis, in paragraph [0039], expressly discloses the use of reinforcements (i.e., cables or fabric) that would inherently have a modulus of elasticity in the longitudinal direction of the track). It is unclear to the Examiner how the use of elastomeric material having “a modulus of elasticity in the range of only a couple of MPa” for the carcass of the track in Paradis as pointed out by Applicant would somehow prevent one of ordinary skill in the art from considering the use of a cable or fabric reinforcement that has a modulus of elasticity in a longitudinal direction of at least 200 MPa.
In response to Applicant’s argument regarding claim 21 that the intent of Paradis “aims at being reinforcement free in the transversal direction of the endless track in order to reduce noise generation”, the Examiner respectfully disagrees as it appears that Applicant has mischaracterized the teachings of Paradis. Instead, it is clear (note at least the Abstract, paragraphs [0035], [0039], [0053] and [0055] of Paradis) that Paradis eliminates the use of transversal reinforcing rods in order to reduce noise while imparting transversal rigidity (i.e., reinforcement in the transversal direction of the track) by utilizing other types of reinforcements (e.g., reinforcing fabric, transverse fibers embedded in the rubber of the track, a particular elastomeric material used for the track, etc…).
Conclusion
14. 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.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIP T KOTTER whose telephone number is (571)272-7953. The examiner can normally be reached 9:30-6 EST Monday-Friday.
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, Samuel (Joe) J Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kip T Kotter/Primary Examiner, Art Unit 3615
Prosecution Insights