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 Rejections - 35 USC § 103
1. 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.
2. 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.
3. Claims 1, 7-14, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Paradis et al. (US 2011/0074210 A1; hereinafter “Paradis”).
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]).
Regarding claim 1, 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 since 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.).
Regarding claims 1 and 23, 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 modulus of elasticity in the longitudinal direction being between 200 MPa and 400 MPa.
Nonetheless, inasmuch as the modulus of elasticity of a reinforcement in a longitudinal direction of the track is recognized in the art as a result-effective variable (i.e., a higher modulus indicates a stiffer material in the longitudinal direction while a lower modulus indicates a more flexible material in the longitudinal direction), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, as a matter of routine optimization, to have modified the track of Paradis so that its reinforcement has a modulus of elasticity in the longitudinal direction between 200 MPa and 400 MPa with a reasonable expectation of success in providing a desired longitudinal rigidity of the track for the intended use 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).
4. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Paradis in view 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 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”).
5. Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Paradis 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 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”).
6. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Paradis 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 has 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 so that its reinforcing fabric has 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 providing a desired widthwise rigidity of the track for the intended use of the track. Moreover, it is noted that Applicant’s disclosure does not provide any criticality for this claimed range.
Response to Arguments
7. Applicant’s arguments, see pages 5 and 6, filed 5 June 2026, with respect to the rejection of claim 21 under Section 112 have been fully considered and are persuasive. The rejections of claim 21 under Section 112 have been withdrawn.
Applicant’s arguments with respect to independent claim 1 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.
In response to applicant's argument regarding claim 21 that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument regarding claim 21 that Vanden is nonanalogous art because it discusses the use of a composite material in the orthopedic field, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the reinforcement used in both Vanden and in the inventors’ invention is directed to improving the widthwise rigidity of the structure in which the reinforcement is used. Further, as noted above, Applicant’s disclosure does not provide any criticality for claimed range of the modulus of elasticity in the widthwise direction.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Berg (US 2008/0174176 A1) discloses a track which include reinforcement members 38 that have a Young’s modulus greater than about 75,000 psi (paragraph [0034]).
9. 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
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