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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yukawa (JP 2016078822, see updated machine translation provided) (of record), Parker (WO 2016105410) (of record), Bageman (US 3002388) (of record), Anno et al. (US 6417918) (of record), and optionally Watanabe et al. (US 20020163245) (of record).
Regarding claims 1, 3, and 7, Yukawa discloses a method of applying a sealant layer to an inner surface of an automotive tire (Figs. 1-3, 5, 7), the method comprising: (a) placing the tire on a sealant application stand with a rotational axis of the tire oriented generally horizontally (Fig. 7) ([0092]); and (b) applying a spiral wound sealant bead to the inner surface of the tire with a dispense tool (Fig. 7: 30) carried by a dispense robot (Fig. 7: 60) as the tire is rotated by the sealant application stand to form a sealant layer on the inner surface of the tire ([0022]-[0026], [0092]-[0093]).
Yukawa further discloses starting the applying of the spiral wound sealant bead at a first circumferential location and stopping the applying of the spiral wound sealant bead at a second circumferential location such that there is an overlap (Fig. 11: LD) of the sealant windings between the first and second locations (Figs. 10-11) ([0025]-[0026]). However, Yukawa does not expressly recite that the first circumferential location is ahead of a balance light spot in a direction of rotation by a first angle within a range of from 30 to 60 degrees about the rotational axis of the tire, or that the second circumferential location is behind the balance light spot by a second angle within a range of from 30 to 60 degrees, the second angle also being within a range of plus or minus 10 degrees of the first angle and within a range of plus or minus 5 degrees of the first angle.
Parker discloses a method of applying a sealant layer (Fig. 3: 20, 24) to an inner surface of a tire (Fig. 3: 14), the method comprising: (a) placing the tire (Fig. 3: 10) on a sealant application stand (Fig. 3: 40) with a rotational axis of the tire (Fig. 3: AR) oriented generally horizontally; and (b) applying a spiral wound sealant bead (Fig. 3: 20, 24) to the inner surface of the tire (Fig. 3: 14) with a dispense tool (Fig. 3: 32) carried by a dispense robot (Fig. 3: 30) as the tire is rotated by the sealant application stand to form a sealant layer on the inner surface of the tire ([0022], [0035]-[0037]). Parker further discloses that a thicker portion of the sealant (i.e., balancing mass or balancing weight amount) (Fig. 1: 22), and thereby a portion necessarily having additional weight in the sealant, is provided within an angle (Fig. 1: α22) illustrated as centered on a balancing location that is 30 to 180 degrees as measured from the rotational axis of the tire ([0017], [0034]). Because the angle is centered on the balance location, both ends of the thick portion (Fig. 1: 22) would be an equidistant amount away from the balance location. In other words, a first angle from a first end to the balance location is substantially equal to a second angle from a second end to the balance location, wherein the first angle may be in a range of 15 to 90 degrees (i.e., half of α22), which overlaps with the claimed range of from 30 to 60 degrees. Moreover, the first and second angles being substantially equal (i.e., plus or minus 0 degrees difference) also satisfies both of the claimed ranges of for the second angle being within a range of plus or minus 10 degrees of the first angle and plus or minus 5 degrees of the first angle. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the first angle or the second angle. In this manner, the sealant provides a balancing mass that balances out the imbalance of the tire ([0017]). As discussed above, Yukawa discloses that there is an overlap portion (Fig. 11: LD) of the sealant between the first and second circumferential locations, which will necessarily add additional weight at the overlap region as there is more sealant in that region than the rest of the tire. Furthermore, because of the manner in which the sealant of Yukawa is wound (i.e., starting at a first circumferential location and spirally winding until reaching a second circumferential location with a larger axial width of the sealant windings within an overlap region LD), because the overlap will be a region of more mass, and because Parker illustrates centering the balance location in the region of most mass for the sealant, the application of the sealant will necessarily require the first circumferential location to be ahead of the balance location and the second circumferential location to be behind the balance location in the rotational direction. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the first and second circumferential locations of Yukawa such that they are centered around a balance location of the tire as is generally known in the tire art for the advantages as discussed above, as taught by Parker. Accordingly, Yukawa in view of Parker discloses starting the applying of the spiral wound sealant bead at a first circumferential location ahead of the balance location in a direction of rotation by a first angle within a range of from 30 to 60 degrees about the rotational axis of the tire, and stopping the applying of the spiral wound sealant bead at a second circumferential location behind the balance location by a second angle within a range of from 30 to 60 degrees, the second angle also being within a range of plus or minus 10 degrees of the first angle and a range of plus or minus 5 degrees of the first angle.
Moreover, Parker discloses the balancing location with the balancing mass is positioned substantially opposite (i.e., 180 degrees) an imbalance location ([0017]). However, Parker does not expressly disclose what the imbalance location is (i.e., heavy spot, light spot, etc.).
Bageman discloses balancing a wheel, wherein a light spot (Fig. 1: 26) is substantially opposite a heavy spot (Fig. 1: 27) on the tire, and wherein balancing masses (Fig. 1: 21, 22, 24, 25) are placed on opposite sides of the light spot (i.e., balancing mass is centered relative to the light spot) so as to balance the wheel (Col. 2 lines 53-57). The weights are provided with respect to the light spot of the unbalanced wheel which lies opposite the heavy spot, wherein placing the weights opposite the heavy spot is the position of maximum effectiveness for the weights (Col. 1 lines 68-72; Col. 2 lines 1-7, 57-61). Moving the weights away from the light spot or position of maximum effectiveness lessens the effectiveness of the weights in counter-balancing the heavy spot (Col. 2 lines 7-12). Although Parker discloses a tire using a sealant having a balancing mass portion at a balancing location opposite an imbalance location, and Bageman discloses balancing a wheel by attaching weights at a light spot location opposite a heavy spot of imbalance, the underlying principle addressed by both Parker and Bageman that rotational imbalance results from uneven mass distribution about an axis of rotation is the same, and balance is restored by adding or redistributing mass at a position opposite the heavy portion to return the center of mass to the rotational axis. Thus, even though Parker and Bageman employ different balancing media and components, the same concepts and principles of imbalance correction apply to both. Thereby, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Parker and Bageman since both references are directed to correcting the same type of imbalance through equivalent physical means (i.e., adjusting mass distribution about the rotational axis). One of ordinary skill would have readily recognized, or alternatively found obvious, that the specific means of providing counter-mass (i.e., sealant or weights) could be interchanged or adapted to achieve the same predictable result of rotational balance, whether applied to a tire alone or to a tire and wheel assembly. Accordingly, Yukawa in view of Parker and Bageman discloses that the imbalance location must be a heavy spot that is positioned substantially opposite (i.e., 180 degrees) from the light spot for maximum effectiveness in balancing, wherein the balancing mass is added opposite the heavy spot and thereby at the light spot.
Parker further discloses an encoder (Fig. 3: 38) to identify the balancing location and any imbalance location, wherein any known manner and apparatus for identifying such identification of the balancing location and any imbalance location during tire rotation may be employed ([0038]). However, modified Yukawa does not expressly recite sensing a rotational position of the tire by detecting a physical indicia on the rotating tire passing a sensor, nor does Yukawa expressly recite that the circumferential location of the balance light spot on the tire is identified relative to the physical indicia.
Anno discloses a method for detecting a balance light position, wherein a barcode (i.e., physical indicia) (Figs. 2-6, 8-9: B) is provided on a tire as a mark indicating a reference point of the tire (Col. 5 lines 5-8), and a balance light point (Figs. 6, 8-9: P) is detected at an angle (Fig. 9: α) relative to the barcode (Fig. 9: B). Anno further discloses sensing a rotational position of the tire by detecting a physical indicia on the rotating tire passing a sensor (Col. 2 lines 4-27). Although Anno discloses a tire inspection method, rather than a method of applying sealant to a tire, Parker discloses that the imbalance (i.e., light spot) may be identified using a known balancing method/machine in the art, and Anno discloses such a machine. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Yukawa in order to sense the rotational position of the tire by detecting a reference point (i.e., physical indicia) using a sensor and using that to identify the balance light spot, as is generally known in the art as taught by Anno.
Optionally, Watanabe discloses a method of calculating tire balance weight by marking a first position with a physical indicia (Fig. 1B: 2a), and then determining the light point (Fig. 1B: 2b), which is measured as a certain angle (Fig. 1B: β) relative to the physical indicia. Moreover, the physical indicia is a phase matching seal to be aligned and matched with its counterpart on a wheel (Fig. 1A: 1a) ([0113]). Although Watanabe discloses balancing the tire weight for attachment to a wheel, rather than in a process of applying sealant to a tire inner surface, Watanabe is considered to be a teaching in the tire art that balances the weight of a tire in a known manner, and Parker discloses determining the imbalance (i.e., light spot) of the tire by a known balancing machine/method, as discussed above. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Yukawa in order to provide the tire having a physical indicia that will match with a respective wheel, as well as to provide a marking for the light spot that is identified relative to the physical indicia.
Regarding claim 5, as discussed above in claim 1, Yukawa discloses that a starting end portion of the spiral wound sealant bead and a terminating end portion of the spiral wound sealant bead overlap by an overlap angle about the rotational axis (Fig. 11: LD). While Yukawa discloses that the overlap (Fig. 11: LD) length is 300 mm or less or 100 mm or less ([0034], [0176]), Yukawa does not expressly recite the angle about the rotational axis of the overlap.
Parker discloses the first angle may be in a range of 15 to 90 degrees (i.e., half of α22), which overlaps with the claimed range of from 40 to 50 degrees, and the second angle is substantially equal to the first angle thereby also providing the second angle in a range of 15 to 90 degrees, which overlaps with the claimed range of from 40 to 50 degrees. Accordingly, the overlap angle is 30 to 180 degrees, which also overlaps with the claimed range of from 80 to 100 degrees. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the first and second angles.
Regarding claim 6, Anno further discloses the circumferential location of the balance light spot (Figs. 6, 8-9: P) on the tire relative to the physical indicia (Figs. 2-6, 8-9: B) is previously stored in a controller memory and is associated with a tire identification contained in the physical indicia (Col. 2 lines 4-27, 35-67; Col. 4 lines 60-67; Col. 5 lines 1-4).
Response to Arguments
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive.
On pages 5-6 of the Remarks, Applicant argues that Yukawa discloses having a preferred overlap LD of zero, and if not zero then it should be 100 mm (4 inches) or less. The examiner respectfully disagrees and refers to pages 9-10 of the 10/29/2025 Nonfinal Rejection addressing this argument. For convenience, the examiner again notes that Yukawa also discloses an example wherein the overlap LD may be 300 mm (11.8 inches) or less ([0176]), and not just 100 mm or less or zero as argued by Applicant.
On pages 6-8 of the Remarks, Applicant argues again a typical automotive tire size is 225/75R15, and thereby the maximum permissible overlap of 4.0 inches suggested by Yukawa would span about 17.4 degrees of the inner circumference which is far less than the minimum overlap of 60 degrees required by claim 1, and thereby Yukawa teaches away from the present invention. Applicant further argues that the examiner had not refuted the argument based on any factual finding but instead criticized Applicant’s prior presentation as just being counselor’s opinion.
As noted on pages 9-10 of the previous Nonfinal Rejection, Applicant’s reliance on a tire size of 225/75R15 and a carcass and tread thickness of 1 inch was counselor’s opinion that was not previously supported by any documented, credible sources or evidence, but instead were arbitrary values selected by Applicant without any reference to prior art, documentation, evidence, declaration, or any other credible, verifiable support. The examiner had also previously noted that these were not the only possible tire dimension options, and that there are endless possibilities of tire sizes and carcass and tread thicknesses. This is further evidenced by Applicant’s own reliance on the tiresize.com chart on page 8 of the Remarks which has hundreds of different possible tire sizes (i.e., there are 16 different wheel sizes, and within each wheel size category there are different tire diameter categories, and within each of those there are one or more tire sizes listed). Furthermore, the examiner maintains that characterizing statement’s as “counselor’s opinion” is appropriate when the statements presented do not rely on verifiable evidence or supporting documentation. The examiner refers to pages 9-10 of the previous Nonfinal Rejection as to why Applicant’s statement was appropriately characterized as “counselor’s opinion.” Thereby, the examiner’s response did not require factual refutation, rather, it is up to Applicant to provide competent, verifiable evidence to support any factual assertion or calculation. Applicant’s reliance on general awareness of typical tire dimensions or selection of a single tire size from numerous possible tire sizes does not meet the requisite evidentiary standards. If Applicant believes differently, a declaration stating as such may be filed.
On pages 8-10 of the Remarks, Applicant has cited webpage tiresize.com which lists available tire sizes. Applicant has selected one specific example from the myriad of possible tire sizes wherein “the smallest possible wheel size, 13” diameter, [has] the rolling circumference for the first listed tire size 155/70R13 [as] … 67.6 inches.” Applicant further argues that based on Google AI, the carcass and tread thickness will be 14 to 20 mm. Applicant also argues that the 4 inch overlap taught by Yukawa is equal to an arc of about 23.6 degrees when applied to the 155/70R13 example tire, which is far less than the 60 degree overlap required by claim 1. Applicant further argues that no standard automotive tire is so small that a 4 inch overlap in the spiraled sealant would come close to a 60 degree overlap.
Firstly, the examiner notes that the smallest tire size listed is actually a tire size of 105/70R14 having a circumference of 62.1 inches. Nevertheless, assuming Applicant’s argument of a tire size of 155/70R13 having a circumference of 67.6 inches, a carcass and tread thickness of 20 mm, and a resulting inner circumference of 62.7 inches, the overlap of 11.8 inches (an example overlap width of Yukawa as discussed above) would have an arc equal to about 68 degrees, which is greater than the 60 degree minimum overlap of claim 1. Additionally, assuming the smaller tire size of 105/70R14 having a circumference of 62.1 inches, a carcass and tread thickness of 20 mm, and a resulting inner circumference of 57.2 inches, the overlap of 11.8 inches would have an arc equal to about 74 degrees, which is also greater than the 60 degree minimum overlap of claim 1.
On pages 9-10 of the Remarks, Applicant argues that “[a]ny person of skill in the art is well aware of the typical dimensions of automotive tires, and the assumptions Applicant’s attorney has made in presenting these arguments are well founded.” The examiner again notes that Applicant’s reliance on general awareness of typical tire dimensions or selection of a single tire size from numerous possible tire sizes does not meet the requisite evidentiary standards and thereby is conclusory and unsupported by objective evidence. Moreover, Applicant arbitrarily selected a single tire size from among numerous possible tire sizes without demonstrating that it is representative of the scope of the claims or the applied prior art, and instead argues that because the claims and applied reference relate to automotive tires, a chart of automotive tire sizes is representative. This does not meet the requisite evidentiary standards. If Applicant believes differently, a declaration stating as such may be filed.
The examiner notes that Applicant’s reliance on the chart from tiresize.com has been considered, but has not been given significant weight because it has not been properly made of record. The cited website is not listed on an IDS, and Applicant has provided only a partial screenshot in the arguments. The examiner further notes that Applicant has relied on Google AI as a source for the thickness of the carcass and tread. While it has been considered, it has also not been given significant weight because it is not considered a prior art reference. If Applicant believes differently, a declaration stating as such may be filed.
Conclusion
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE (née AYALP) whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749