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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/09/2026 has been entered.
Claim Objections
Claim 21 is objected to because of the following informalities: the phrase “an outer surface of each rubber strip” in line 2 should be written as –[[an]]the outer surface of each rubber strip— for consistency in claim language relating back to claim 14. Appropriate correction is required.
Claim 29 is objected to because of the following informalities: the phrase “and free of sharp edges” in line 2 should be written as –and is free of sharp edges— for grammatical clarity. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: the phrase “there is a rubber thickness is not less than” in line 12 should be written as –there is a rubber thickness [[is]]of not less than— for grammatical clarity. Appropriate correction is required.
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
The second misnumbered claim 33 has been renumbered 34, misnumbered claim 34 has been renumbered 35, and misnumbered claim 35 has been renumbered 36.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14-16, 18, 20-24, and 26-36 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 14, the phrase “the electronic housing” in line 13 is unclear. It is unclear if this is referring only to the electronic device, to the housing (which includes the electronic device and rubber strips and thus makes it unclear how the thickness can be between the housing and strips), or to a new component that thereby lacks sufficient antecedent basis. For the purposes of examination, the examiner assumes it to be the electronic device.
Claims 15-16, 18, 20-24, and 26-29 are indefinite by dependence on claim 14.
Regarding claim 20, the claim depends from canceled claim 19. For the purposes of examination, the examiner assumes the claim depends from claim 14.
Regarding claim 30, the phrase “the electronic housing” in line 11 is unclear. It is unclear if this is referring only to the electronic device, to the housing (which includes the electronic device and rubber strips and thus makes it unclear how the thickness can be between the housing and strips), or to a new component that thereby lacks sufficient antecedent basis. For the purposes of examination, the examiner assumes it to be the electronic device.
Claims 31-36 are indefinite by dependence on claim 30.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 20 depends from canceled claim 19. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 14-16, 18, 20-24, and 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Incavo et al. (US 20100212791) (of record), [any one of Naruse et al (JP 2021187267, see machine translation) (Naruse ‘267) and/or Naruse et al (US 20230202244) (Naruse ‘244)], and Emerson (US 3903947).
Regarding claims 14, 18, 20-22, and 26, Incavo discloses a method of producing a tire equipped with an electronic device (Figs. 2-3, 4-6: 24), the method comprising: inserting the electronic device (Figs. 2-3, 4-6: 24) between a first rubber strip (Figs. 2-3, 4-6: 20) and a second rubber strip (Figs. 2-3, 4-6: 22) that enclose therebetween the electronic device (Figs. 2-3, 4-6: 24) which itself defines a housing (Figs. 1-3, 4-6: 10) ([0024]); applying the housing (Figs. 1-3, 4-6: 10) to an innerliner (Fig. 1: 16) of a green tire ([0036]-[0038]), wherein the first rubber strip (Figs. 2-3, 4-6: 20) is in direct contact with the innerliner and the second rubber strip (Figs. 2-3, 4-6: 22) is separated from the innerliner by interposition of the first rubber strip ([0038]); and subjecting the green tire equipped with the housing to a vulcanization process ([0037]); wherein the first rubber strip (Figs. 2-3, 4-6: 20) is composed of completely green rubber ([0036]); and wherein the second rubber strip (Figs. 2-3, 4-6: 22) is composed of partially vulcanized rubber ([0036], [0041]).
Incavo further discloses that the thicknesses of the first rubber strip (Figs. 2-3, 4-6: 20) and the second rubber strip (Figs. 2-3, 4-6: 22) may be about 0.050 inches (i.e., 1.27 mm) ([0025], [0046]). Accordingly, and an overall thickness of the housing is 2.54 mm. Moreover, Incavo discloses that other dimensions may be utilized depending on the application ([0025]). However, Incavo does not expressly recite a rubber thickness between the electronic device and an outer surface of each rubber strip before or after vulcanization.
Naruse ‘267 discloses a method of producing a tire equipped with an electronic device (Figs. 1-9: 20), wherein the electronic device is provided with a coating layer (Fig. 4: 23), wherein the total thickness of the coating layer (Fig. 4: Gac) and the maximum thickness of the electronic device (Fig. 4: Gar) satisfies the relationship 1.0 mm ≤ Gac – Gar ≤ 3.0 mm ([0008], [0031]). As a result, the electronic device is surely covered with the coating layer so that the communication distance of the electronic device can be sufficiently secured ([0008], [0031]). Further, by defining the upper limit value of Gac – Gar, it is possible to maintain a good tire balance and sufficiently secure the durability of the tire ([0008], [0031]). If the value is smaller than 1.0 mm, the effect of improving the communication property of the electronic device is reduced, and if it is larger than 3.0 mm, there is a concern that the tire balance and the durability of the tire may deteriorate ([0031]-[0032]). Moreover, the center (Fig. 4: C) of the electronic device is in a range of 25% to 75% of the total thickness (Fig. 4: Gac) ([0035]). For example, assuming the center is 50% of the total thickness (Fig. 4: Gac), the thickness on either side of the electronic device is going to be half of the range 1.0 to 3.0 mm, and thereby a rubber thickness between the electronic device and an outer surface of each rubber strip is 0.5 to 1.5 mm. This is presumably after vulcanization as Naruse ‘267 discloses a tire product, which thereby overlaps with the claimed ranges of not less than 0.2 mm and not less than 0.3 mm. Additionally, Naruse ‘267 discloses the two rubber strips have may have a same thickness which is equal to half a thickness of the electronic device in addition to 0.5 mm. 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 rubber thickness between the electronic device and an outer surface of each rubber strip after vulcanization. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Incavo in order to provide the aforementioned dimensions after vulcanization for the advantages as discussed above as taught by Naruse ‘267.
Additionally or alternatively, Naruse ‘244 also discloses a method of producing a tire equipped with an electronic device, wherein the transponder (i.e., electronic device) (Figs. 1-9: 20) is provided with a coating layer (Fig. 4: 23), wherein the total thickness of the coating layer (Fig. 4: Gac) and the maximum thickness of the electronic device (Fig. 4: Gar) satisfies the relationship 1.1 ≤ Gac/Gar ≤ 3.0 ([0004], [0032]). In this manner, the transponder is sufficiently isolated from the peripheral rubber member and wrapped with the coating layer having a low relative dielectric constant, allowing the communication performance of the transponder to be improved, and specifying the upper limit value of the total thickness (Fig. 4: Gac) of the coating layer with respect to the maximum thickness (Fig. 4: Gar) of the transponder can ensure sufficient durability of the tire ([0005], [0033]). When the value of Gac/Gar is smaller than 1.1, the effect of improving the communication performance of the transponder is not obtained, and when the value is greater than 3.0, the durability of the tire decreases ([0034]). For example, the total thickness (Fig. 4: Gac) of the coating layer in the tire ranges from 2.0 mm to 3.0 mm, and the thickness of the coating layer formed on the outer side of the transponder on the straight line preferably ranges from 0.3 mm to 1.5 mm ([0034]). In other words, a rubber thickness between the electronic device and an outer surface of each rubber strip is from 0.3 mm to 1.5 mm. Additionally, Naruse ‘244 discloses the two rubber strips have may have a same thickness which is equal to half a thickness of the electronic device in addition to 0.5 mm. This is presumably after vulcanization as Naruse ‘244 discloses a tire product, which thereby overlaps with the claimed ranges of not less than 0.2 mm and not less than 0.3 mm. 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 rubber thickness between the electronic device and an outer surface of each rubber strip after vulcanization. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Incavo in order to provide the aforementioned dimensions after vulcanization for the advantages as discussed above as taught by Naruse ‘244.
Furthermore, Emerson discloses a sealing strip comprising vulcanized rubber cover layers (Figs. 2-4: 11, 13) and a sealing composition layer in between (Figs. 2-4: 12), wherein the thicknesses of the different layers may vary over a wide range, and wherein the layers will be considerably thinner in a cured tire, such as a reduction in thickness as much as 50% (Col. 3 lines 55-68). For instance, the covering layers may be as thin as 15 mils (0.381 mm) in original thickness (i.e., the thickness may be at least 15 mils as it may be as thin as 15 mils and may vary over a wide range) (Col. 3 lines 55-68). Although Emerson discloses a sealing strip sandwiched between two vulcanized cover strips, rather than an electronic device between two rubber strips, Emerson discloses that rubber cover strips used in tires that are vulcanized are considerably thinner after curing, such as being reduced as much as 50% in thickness. Moreover, Incavo discloses that the rubber strips may comprise a rubber, such as natural rubber, butyl-based rubbers, etc. ([0028]-[0030], [0036]-[0038]). Emerson also discloses that the rubber cover layers are not limited and may comprise natural rubber, butyl-based rubbers, etc. (Col. 6 lines 52-67; Col. 7 lines 4-8, 31-35, 50-68; Col. 8 lines 1-5). In other words, Emerson discloses rubber cover layers that may be formulated to be substantially similar to the rubber layers of Incavo. One of ordinary skill in the art before the effective filing date of the claimed invention would recognize, or at the very least find obvious, that the vulcanized rubber cover strips of similar thicknesses used in the tire of modified Incavo would also reduce in thickness by the same amount after curing as is generally known in the art as taught by Emerson. Accordingly, if the thickness after vulcanization of modified Incavo is in the range of 0.5 mm to 1.5 mm, as discussed above in view of Naruse ‘267, and the layers may reduce in thickness up to 50%, then the thickness before vulcanization would be in the range of 0.5 to 3.0 mm. Similarly, if the thickness after vulcanization of modified Incavo is in the range of 0.3 mm to 1.5 mm, as discussed above in view of Naruse ‘244, and the layers may reduce in thickness up to 50%, then the thickness before vulcanization would be in the range of 0.3 to 3.0 mm. Both of these ranges overlap with the claimed ranges of not less than 0.4 mm and not less than 0.5 mm. Similarly, the housing before vulcanization may comprise an overall thickness equal to a thickness of the electronic device in addition to 0.5 mm per side. 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 rubber thickness between the electronic device and the outer surface of each rubber strip and the overall thickness of the housing before vulcanization.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Regarding claims 15-16, Incavo further discloses the second rubber strip may include up to a 90% cure (i.e., is composed of 0-90% vulcanized rubber), which overlaps with the claimed range of 20-40%. 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 amount of vulcanized rubber included in the second rubber strip.
Additionally, Incavo discloses the degree of curing may be related to the shelf-life of the housing with an increasing degree of cure providing improved shelf life, may cure or set the tapered edges of the housing enough without reducing tackiness of the layer(s), and may prove to be advantageous in terms of sourcing and shipping the housing for use in markets around the world ([0041]). In other words, the degree of curing is considered to be a result-effective variable that will affect the shelf life, tackiness, set, and transportation of the housing. It is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for the degree of cure of the second rubber strip. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the degree of cure of the second rubber strip for the advantages as discussed above.
As discussed above, Incavo discloses that the second rubber strip may include up to a 90% cure, and that the degree of curing is considered to be a result-effective variable. Incavo also discloses that the pre-cure times and temperatures may be varied depending on the desired cure percentage ([0041]). It is well-known in the tire rubber art that the stiffness of a rubber is a function of cross-link density determined by curing temperatures and times. As Incavo discloses the curing temperature, time, and degree of cure may be varied as desired, one of ordinary skill would readily recognize that the stiffness, and thereby the tangential elastic constant, would also be varied as desired or in relation to the desired cure percentage. Moreover, case law holds that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization. MPEP 2144.05(II)(A). In this case, Incavo discloses a second rubber strip composed of partially vulcanized rubber, wherein the degree, time, and temperature of vulcanization of the rubber strip may be variable and optimized. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have also found it obvious that the selection of a particular degree of vulcanization to achieve a desired stiffness would have been a matter of routine optimization of known parameters that predictably affect the material rigidity.
Regarding claim 23, Incavo further discloses the second rubber strip (Figs. 2-3, 4-6: 22) is smaller than the first rubber strip (Figs. 2-3, 4-6: 20) ([0025]).
Regarding claim 24, Incavo further discloses that the second rubber strip (Figs. 2-3, 4-6: 22) may measure about 0.125 inches (i.e., 3.175 mm) smaller in length and width than the first rubber strip (Figs. 2-3, 4-6: 20) ([0025]), which falls within the claimed range of between 0.5 mm and 8 mm. 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 dimensions of the rubber strips.
Regarding claim 27, Incavo further discloses the first rubber strip may have a width of about 0.8 inches (i.e., 20.32 mm) which falls within with the claimed range of between 20 and 45 mm, and a thickness of about 0.050 inches (i.e., 1.27 mm) which falls within the claimed range of between 1.2 and 1.4 mm, and the second rubber strip may have a thickness of about 0.050 inches (i.e., 1.27 mm) which falls within the claimed range of between 1.2 and 1.4 mm ([0025], [0046]). 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 dimensions of the first and second rubber strips.
Although Incavo discloses an example wherein the first rubber strip may have a length of about 4.5 inches (i.e., 114.3 mm), and the second rubber strip may have a length of about 4.375 inches (i.e., 111.125 mm) and a width of about 0.675 inches (i.e., 17.145 mm), Incavo also discloses that other dimensions may be utilized depending on the application ([0025]). Thereby, the dimensions of the first and second rubber strips are variable and a matter of design choice. It would have been obvious to one of ordinary skill in the art to adjust or optimize such dimensions depending on their intended application. In other words, the dimensions are considered to be result-effective variables that may be variable depending on the intended application. It is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for the length, width, and/or thickness dimensions of the first and second rubber strips. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize said dimensions depending on their intended application.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Incavo et al. (US 20100212791) (of record), [any one of Naruse et al (JP 2021187267, see machine translation) (Naruse ‘267) and/or Naruse et al (US 20230202244) (Naruse ‘244)], and Emerson (US 3903947) as applied to claim 14 above, and optionally further in view of any one of Pedrinelli et al. (IT 201900001565, see US 20220088974 as English equivalent) (of record) and/or Sabetti et al. (WO 2019207422) (of record).
Regarding claim 28, Incavo further discloses the housing (Fig. 1: 10) is applied to the innerliner (Fig. 1: 16) of the green tire at a side wall of the tire (Fig. 1: 12) ([0023]), and illustrates a central portion of the housing has a radial height (Fig. 1), measured from a radially innermost portion and opposite a tread, that may be less than 50% of a height of a respective section of the tire (Fig. 1).
Additionally, Pedrinelli discloses applying a housing comprising an electronic device (Figs. 1-5: 13) to an innerliner (Figs. 1, 5: 10) of a green tire at a side wall (Figs. 1, 5: 11) of the tire, wherein a central portion of the housing has a radial height, measured from a radially innermost portion and opposite a tread, of less than 50% of a height of a respective section of the tire (Figs. 1, 5: H, H/2, M) ([0029], [0037]-[0038]). In this manner, it makes it possible to minimize the stresses and deformations to which the electronic device is subjected (both during the construction of the tire and during the use of the tire) and, at the same time, makes it possible to minimize electronic device radio frequency communications disturbances and interference (in this way, the electronic device can be read at a distance of over 3 meters if the tire is not mounted on a metallic rim and at a distance of over 2 meters if the tire is mounted on a metallic rim) ([0047]). Moreover, in this manner it does not have a negative impact on the performance and durability, or on the operating life, of the tire itself ([0048]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Incavo in order to provide a central portion of the housing having a radial height, measured from a radially innermost portion and opposite a tread, of less than 50% of a height of a respective section of the tire for the advantages discussed above as taught by Pedrinelli.
Additionally or alternatively, Sabetti discloses applying a housing comprising an electronic device (Figs. 1, 5, 7-8: 13) to a green tire at a side wall of the tire, wherein a central portion of the housing has a radial height, measured from a radially innermost portion and opposite a tread, of less than 50% of a height of a respective section of the tire (Figs. 1, 5, 7-8: M, H, H/2) (Page 5 lines 32-33; Page 6 lines 1-8; Page 8 lines 16-33; Page 9 lines 1-33; Page 10 lines 1-6; Page 11 lines 10-33; Page 12 lines 1-3). In this manner, it is possible to minimize the stresses and deformations to which the transponder 13 is subjected (both during the construction of the pneumatic tyre 1 and during the use of the pneumatic tyre 1) and, at the same time, makes it possible to minimize transponder 13 radio frequency communications disturbances and interference (in this way, the transponder 13 can be read at a distance of over 3 meters if the pneumatic tyre 1 is not mounted on a metallic rim and at a distance of over 2 meters if the pneumatic tyre 1 is mounted on a metallic rim) (Page 13 lines 12-22). Moreover, in this manner it does not have a negative impact on the performance and durability, or on the operating life, of the tire itself (Page 13 lines 23-27). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Incavo in order to provide a central portion of the housing having a radial height, measured from a radially innermost portion and opposite a tread, of less than 50% of a height of a respective section of the tire for the advantages discussed above as taught by Sabetti.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Incavo et al. (US 20100212791) (of record), [any one of Naruse et al (JP 2021187267, see machine translation) (Naruse ‘267) and/or Naruse et al (US 20230202244) (Naruse ‘244)], and Emerson (US 3903947) as applied to claim 14 above, and optionally further in view of any one of De Col et al. (IT 202000030686, see machine translation) (of record) and/or Ichikawa et al. (JP 2007137037, see machine translation) (of record).
Regarding claim 29, while Incavo does not expressly recite that, in plan view, each rubber strip has two smaller rounded ends and is free of sharp edges, case law holds that changes in shape are matters of design choice that a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed invention is significant. See MPEP 2144.04.
Optionally, De Col discloses a rubberized electronic component between two rubber strips (Figs. 2-3), wherein the rubber strips having a specific shape and size with respect to a specific purpose may be cut to size preferably having a cross-sectional profile of flattened shape which can have ovoid, circular, quadrangular, square, or rectangular shape ([0010]). Additionally or alternatively, Ichikawa discloses an electronic device comprising two rubber layers (Figs. 3a, 3b: 23, 27), wherein the rubber layers may be rectangular or circular (i.e., rounded ends) ([0033], [0036]). Moreover, the shape of the rubber layers may be any shape as long as it functions to cover ([0033], [0036]). In other words, it is generally known in the substantially similar art that the shape of the rubber strips is interchangeable between known shapes, such as rounded edges or sharp edges. Case law holds that it is prima facie obvious to substitute equivalents known for the same purpose. See MPEP 2144.06. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the edges of the rubber strips of Incavo to a known shape in the art, such as rounded ends, for the desired purpose, as taught by De Col, Watanabe, and/or Ichikawa.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome the De Col reference because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim(s) 30-32 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Incavo et al. (US 20100212791) (of record) and [any one of Naruse et al (JP 2021187267, see machine translation) (Naruse ‘267) and/or Naruse et al (US 20230202244) (Naruse ‘244)].
Regarding claims 30 and 36, Incavo discloses a method of producing a tire equipped with an electronic device (Figs. 2-3, 4-6: 24), the method comprising: inserting the electronic device (Figs. 2-3, 4-6: 24) between a first rubber strip (Figs. 2-3, 4-6: 20) and a second rubber strip (Figs. 2-3, 4-6: 22) that enclose therebetween the electronic device (Figs. 2-3, 4-6: 24) which itself defines a housing (Figs. 1-3, 4-6: 10) ([0024]); applying the housing (Figs. 1-3, 4-6: 10) to an innerliner (Fig. 1: 16) of a green tire ([0036]-[0038]), wherein the first rubber strip (Figs. 2-3, 4-6: 20) is in direct contact with the innerliner and the second rubber strip (Figs. 2-3, 4-6: 22) is separated from the innerliner by interposition of the first rubber strip ([0038]); and subjecting the green tire equipped with the housing to a vulcanization process ([0037]); wherein the first rubber strip (Figs. 2-3, 4-6: 20) is composed of completely green rubber ([0036]); and wherein the second rubber strip (Figs. 2-3, 4-6: 22) is composed of partially vulcanized rubber ([0036], [0041]).
Incavo further discloses that the thicknesses of the first rubber strip (Figs. 2-3, 4-6: 20) and the second rubber strip (Figs. 2-3, 4-6: 22) may be about 0.050 inches (i.e., 1.27 mm) ([0025], [0046]). Accordingly, and an overall thickness of the housing is 2.54 mm. Moreover, Incavo discloses that other dimensions may be utilized depending on the application ([0025]). However, Incavo does not expressly recite a rubber thickness between the electronic device and an outer surface of each rubber strip after vulcanization.
Naruse ‘267 discloses a method of producing a tire equipped with an electronic device (Figs. 1-9: 20), wherein the electronic device is provided with a coating layer (Fig. 4: 23), wherein the total thickness of the coating layer (Fig. 4: Gac) and the maximum thickness of the electronic device (Fig. 4: Gar) satisfies the relationship 1.0 mm ≤ Gac – Gar ≤ 3.0 mm ([0008], [0031]). As a result, the electronic device is surely covered with the coating layer so that the communication distance of the electronic device can be sufficiently secured ([0008], [0031]). Further, by defining the upper limit value of Gac – Gar, it is possible to maintain a good tire balance and sufficiently secure the durability of the tire ([0008], [0031]). If the value is smaller than 1.0 mm, the effect of improving the communication property of the electronic device is reduced, and if it is larger than 3.0 mm, there is a concern that the tire balance and the durability of the tire may deteriorate ([0031]-[0032]). Moreover, the center (Fig. 4: C) of the electronic device is in a range of 25% to 75% of the total thickness (Fig. 4: Gac) ([0035]). For example, assuming the center is 50% of the total thickness (Fig. 4: Gac), the thickness on either side of the electronic device is going to be half of the range 1.0 to 3.0 mm, and thereby a rubber thickness between the electronic device and an outer surface of each rubber strip is 0.5 to 1.5 mm. This is presumably after vulcanization as Naruse ‘267 discloses a tire product, which thereby overlaps with the claimed ranges of not less than 0.26 mm and not less than 0.3 mm. 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 rubber thickness between the electronic device and an outer surface of each rubber strip after vulcanization. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Incavo in order to provide the aforementioned dimensions after vulcanization for the advantages as discussed above as taught by Naruse ‘267.
Additionally or alternatively, Naruse ‘244 also discloses a method of producing a tire equipped with an electronic device, wherein the transponder (i.e., electronic device) (Figs. 1-9: 20) is provided with a coating layer (Fig. 4: 23), wherein the total thickness of the coating layer (Fig. 4: Gac) and the maximum thickness of the electronic device (Fig. 4: Gar) satisfies the relationship 1.1 ≤ Gac/Gar ≤ 3.0 ([0004], [0032]). In this manner, the transponder is sufficiently isolated from the peripheral rubber member and wrapped with the coating layer having a low relative dielectric constant, allowing the communication performance of the transponder to be improved, and specifying the upper limit value of the total thickness (Fig. 4: Gac)of the coating layer with respect to the maximum thickness (Fig. 4: Gar) of the transponder can ensure sufficient durability of the tire ([0005], [0033]). When the value of Gac/Gar is smaller than 1.1, the effect of improving the communication performance of the transponder is not obtained, and when the value is greater than 3.0, the durability of the tire decreases ([0034]). For example, the total thickness (Fig. 4: Gac) of the coating layer in the tire ranges from 2.0 mm to 3.0 mm, and the thickness of the coating layer formed on the outer side of the transponder on the straight line preferably ranges from 0.3 mm to 1.5 mm ([0034]). In other words, a rubber thickness between the electronic device and an outer surface of each rubber strip is from 0.3 mm to 1.5 mm. This is presumably after vulcanization as Naruse ‘244 discloses a tire product, which thereby overlaps with the claimed ranges of not less than 0.26 mm and not less than 0.3 mm. 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 rubber thickness between the electronic device and an outer surface of each rubber strip after vulcanization. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Incavo in order to provide the aforementioned dimensions after vulcanization for the advantages as discussed above as taught by Naruse ‘244.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Regarding claims 31-32, Incavo further discloses the second rubber strip may include up to a 90% cure (i.e., is composed of 0-90% vulcanized rubber), which overlaps with the claimed range of 20-40%. 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 amount of vulcanized rubber included in the second rubber strip.
Additionally, Incavo discloses the degree of curing may be related to the shelf-life of the housing with an increasing degree of cure providing improved shelf life, may cure or set the tapered edges of the housing enough without reducing tackiness of the layer(s), and may prove to be advantageous in terms of sourcing and shipping the housing for use in markets around the world ([0041]). In other words, the degree of curing is considered to be a result-effective variable that will affect the shelf life, tackiness, set, and transportation of the housing. It is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for the degree of cure of the second rubber strip. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the degree of cure of the second rubber strip for the advantages as discussed above.
As discussed above, Incavo discloses that the second rubber strip may include up to a 90% cure, and that the degree of curing is considered to be a result-effective variable. Incavo also discloses that the pre-cure times and temperatures may be varied depending on the desired cure percentage ([0041]). It is well-known in the tire rubber art that the stiffness of a rubber is a function of cross-link density determined by curing temperatures and times. As Incavo discloses the curing temperature, time, and degree of cure may be varied as desired, one of ordinary skill would readily recognize that the stiffness, and thereby the tangential elastic constant, would also be varied as desired or in relation to the desired cure percentage. Moreover, case law holds that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization. MPEP 2144.05(II)(A). In this case, Incavo discloses a second rubber strip composed of partially vulcanized rubber, wherein the degree, time, and temperature of vulcanization of the rubber strip may be variable and optimized. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have also found it obvious that the selection of a particular degree of vulcanization to achieve a desired stiffness would have been a matter of routine optimization of known parameters that predictably affect the material rigidity.
Claim(s) 33-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Incavo et al. (US 20100212791) (of record) and [any one of Naruse et al (JP 2021187267, see machine translation) (Naruse ‘267) and/or Naruse et al (US 20230202244) (Naruse ‘244)] as applied to claim 30 above, and further in view of Emerson (US 3903947).
Regarding claim 33-35, modified Incavo does not expressly recite the dimensions before vulcanization. However, Naruse ‘267 discloses that the overall thickness of the housing comprises a thickness of the electronic device (Fig. 4: Gar) in addition to 0.5 to 1.5 mm on each side if the electronic device is centered at 50% of the total thickness (Fig. 4: Gac), and Naruse ‘244 discloses that the overall thickness of the housing comprises a thickness of the electronic device (Fig. 4: Gar) in addition to 0.3 to 1.5 mm on each side if the electronic device is centered at 50% of the total thickness (Fig. 4: Gac), as discussed above in claim 30.
Emerson discloses a sealing strip comprising vulcanized rubber cover layers (Figs. 2-4: 11, 13) and a sealing composition layer in between (Figs. 2-4: 12), wherein the thicknesses of the different layers may vary over a wide range, and wherein the layers will be considerably thinner in a cured tire, such as a reduction in thickness as much as 50% (Col. 3 lines 55-68). For instance, the covering layers may be as thin as 15 mils (0.381 mm) in original thickness (i.e., the thickness may be at least 15 mils as it may be as thin as 15 mils and may vary over a wide range) (Col. 3 lines 55-68). Although Emerson discloses a sealing strip sandwiched between two vulcanized cover strips, rather than an electronic device between two rubber strips, Emerson discloses that rubber cover strips used in tires that are vulcanized are considerably thinner after curing, such as being reduced as much as 50% in thickness. Moreover, Incavo discloses that the rubber strips may comprise a rubber, such as natural rubber, butyl-based rubbers, etc. ([0028]-[0030], [0036]-[0038]). Emerson also discloses that the rubber cover layers are not limited and may comprise natural rubber, butyl-based rubbers, etc. (Col. 6 lines 52-67; Col. 7 lines 4-8, 31-35, 50-68; Col. 8 lines 1-5). In other words, Emerson discloses rubber cover layers that may be formulated to be substantially similar to the rubber layers of Incavo. One of ordinary skill in the art before the effective filing date of the claimed invention would recognize, or at the very least find obvious, that the vulcanized rubber cover strips of similar thicknesses used in the tire of modified Incavo would also reduce in thickness by the same amount after curing as is generally known in the art as taught by Emerson. Accordingly, if the thickness after vulcanization of modified Incavo is in the range of 0.5 mm to 1.5 mm, as discussed above in view of Naruse ‘267, and the layers may reduce in thickness up to 50%, then the thickness before vulcanization would be in the range of 0.5 to 3.0 mm. Similarly, if the thickness after vulcanization of modified Incavo is in the range of 0.3 mm to 1.5 mm, as discussed above in view of Naruse ‘244, and the layers may reduce in thickness up to 50%, then the thickness before vulcanization would be in the range of 0.3 to 3.0 mm. Both of these ranges overlap with the claimed ranges of not less than 0.4 mm and not less than 0.5 mm. Similarly, the housing before vulcanization may comprise an overall thickness equal to a thickness of the electronic device in addition to 0.5 mm per side. 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 rubber thickness between the electronic device and the outer surface of each rubber strip and the overall thickness of the housing before vulcanization.
Response to Arguments
Applicant’s arguments with respect to claim(s) 14-16, 18, 20-24, and 26-36 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.
Applicant's arguments filed 03/09/2026 have been fully considered but they are not persuasive.
On pages 13-14 of the Remarks, Applicant argues that Naruse achieved RF performance improvement through a combination of both the specific thickness range and the calcium carbonate filler composition working together and not through thickness alone. Applicant further argues the examiner has not proposed modifying Incavo to include calcium carbonate, only to adopt Naruse’s thickness parameters, and that a person of ordinary skill in the art would understand that adopting Naruse’s thickness alone, without the calcium carbonate composition, would not necessarily provide the RF performance benefit that allegedly motivates the combination. Applicant further argues that simply adding calcium carbonate filler to Incavo would not resolve this issue as Incavo’s rubber composition includes 80 phr of carbon black, and Naruse identifies carbon-containing compositions as having a higher dielectric constant than calcium carbonate-containing compositions and explicitly teaches that this higher dielectric constant degrades RF communication performance. Applicant argues simply adding calcium carbonate to Incavo’s formulation while retaining the carbon black would elevate the dielectric constant, removing carbon black to accommodate calcium carbonate would alter the fundamental principle of operation (i.e., chemistry) of Incavo’s compound, and substituting calcium carbonate for carbon black would replace a reinforcing filler with a non-reinforcing filler compromising the mechanical durability that Incavo requires to withstand cyclic flexing stresses, thereby rendering Incavo unsuitable for its intended purpose.
The examiner notes that the calcium carbonate in Naruse ‘326 (which is no longer relied upon, but is also disclosed in Naruse ‘267 and Naruse ‘244) may be used as a filler. Incavo does not teach away from modifying the rubber layers to be those of Naruse ‘267 or Naruse ‘244. Accordingly, there is no reason why a person of ordinary skill would not combine Incavo with Naruse ‘267 and/or Naruse ‘244 in order to provide the rubber layer compositions of Naruse ‘267 and/or Naruse ‘244, especially because Naruse ‘267 and Naruse ‘244 disclose various advantages by using such fillers, which would also be applicable to and advantageous for Incavo. Moreover, Applicant has not provided any evidence, facts, data, etc. to support the contention that calcium carbonate will alter the rubber layers such that they cannot be applied to Incavo and cannot result in the claimed thickness ranges before or after vulcanization, or would not necessarily provide the RF performance benefit. Without said support, the arguments are merely counselor's opinion. Attorney arguments cannot take the place of evidence where the asserted relationship involves technical properties of materials. See MPEP 716.01(c)(II), 2145(I). The examiner also notes that the claim limitations do not require any particular composition for the rubber layers and thus Applicant is relying upon features which are not claimed.
Additionally, Naruse ‘244 discloses that the rubber coating layer can optionally contain, in addition to calcium carbonate, carbon black, and in this manner the relative dielectric constant of the coating layer can be reduced while ensuring strength of the coating layer ([0042]). Naruse ‘267 also discloses the same ([0037]). In other words, it is generally known in the art that adding calcium carbonate and carbon black together is possible while reducing the relative dielectric constant and ensuring strength of the coating layer, contrary to Applicant’s argument.
The examiner further notes that Incavo’s only disclosure of carbon black in the rubber cover layers is by way of example embodiments wherein 80 phr of HAF carbon black (N-330) or 50 phr of GPF carbon black (N-660) may be added ([0028]-[0029]). Incavo does not expressly recite that the layers must include 80 phr of carbon black or that carbon black and only carbon black must be used, as suggested by Applicant. Instead, Incavo very clearly denotes they are exemplary compositions. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. 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. See MPEP 2123. Accordingly, it is not found persuasive that removing carbon black to accommodate calcium carbonate would alter the fundamental principle of operation (i.e., chemistry) of Incavo’s compound. Moreover, both calcium carbonate and carbon black are generally known in the art to be fillers, as is also acknowledged by Applicant in the Remarks, and in Naruse ‘267 and Naruse ‘244. Even if one may be considered a non-reinforcing filler and the other a reinforcing filler, Applicant has provided no evidence or data to support the statement that replacing a reinforcing filler with a non-reinforcing filler would compromise the mechanical durability that Incavo requires to withstand cyclic flexing stresses, thereby rendering Incavo unsuitable for its intended purpose, and thus it is counselor’s opinion. Attorney arguments cannot take the place of evidence where the asserted relationship involves technical properties of materials. See MPEP 716.01(c)(II), 2145(I).
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.
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, KATELYN SMITH (née WHATLEY) can be reached on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The fax phone number for the examiner is (571) 273-5031.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749