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) 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) (of record) and/or Naruse et al (US 20230202244) (Naruse ‘244) (of record)], and Emerson (US 3903947) (of record).
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) (of record) and/or Naruse et al (US 20230202244) (Naruse ‘244) (of record)], and Emerson (US 3903947) (of record) 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) (of record) and/or Naruse et al (US 20230202244) (Naruse ‘244) (of record)], and Emerson (US 3903947) (of record) 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) (of record) and/or Naruse et al (US 20230202244) (Naruse ‘244) (of record)].
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) (of record) and/or Naruse et al (US 20230202244) (Naruse ‘244) (of record)] as applied to claim 30 above, and further in view of Emerson (US 3903947) (of record).
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 filed 04/27/2026 have been fully considered but they are not persuasive.
On pages 9-18 of the Remarks, Applicant argues that the Naruse references both require rubber coating layers with low dielectric constant values, which would require lower amounts of carbon black. Applicant further argues that a POSITA would not expect the thickness modification to provide the stated benefit without being accompanied by the lower dielectric constant composition. Applicant also argues that the dielectric constant is governed, in part, by the filler used, wherein carbon black may be present, but in small amounts (up to 5 phr), and that Incavo discloses examples of high carbon black content (50-80 phr), which would increase the dielectric constant. Applicant argues the thickness parameters of the Naruse references were selected for a system in which the coating has a low dielectric constant, and those same thickness parameters would not replicate the conditions of the Naruse references using the composition of Incavo. Applicant argues the Naruse references fundamental preconditions are the low dielectric composition layers and a POSITA would have no reasonable expectation of success in achieving Naruse-like radio frequency performance improvements by applying Naruse’s coating thicknesses to Incavo’s device as the proposed modification would place a layer of high dielectric constant material around the transponder, which is the very condition that Naruse teaches degrades radio frequency performance.
As discussed above in the detailed rejection, the examiner again notes that Incavo discloses a total thickness of the rubber strips being about 0.05 inches (1.27 mm) ([0025], [0046]). Incavo also suggests by illustration that the two rubber layers are more or less equal in thickness, thereby placing the device at the halfway point of 0.6 mm. Accordingly, Incavo reasonably suggests that the thickness may be 0.6 mm from device to rubber surface, which falls within the claimed ranges of not less than 0.4 mm and not less than 0.26 mm. Moreover, the examiner notes that the Naruse references both disclose similar rubber coated electronic devices to Incavo, wherein there are specific teachings for the thicknesses of the rubber coatings reasonably known in the substantially similar art that both overlap with the claimed ranges and satisfy the Incavo total thickness disclosure. In addition to being similar rubber coatings for electronic devices, Naruse additionally teaches advantages to the disclosed thicknesses. In particular, that the thicknesses directly affect the communication performance and durability of the coated electronic device, as discussed in the detailed rejection above.
Furthermore, the Naruse references are relied upon solely for their dimension (i.e., thickness) parameters in a radio frequency communication environment, not for the specific rubber compositions, and the rejection does not require wholesale adoption of the references’ compositions, but rather relies on the general principle that reduced thickness through the dielectric medium improves communication performance and signal transmission characteristics. A POSITA would have understood that in radio frequency communication systems embedded in rubber, the communication performance and signals of the device are influenced independently by dielectric properties of the material and the physical thickness of the medium through which signal propagates. Accordingly, even where Incavo employs a different rubber composition, the teachings of the Naruse references regarding thickness remain applicable because the effect of thickness on communication performance for the radio frequency device is a general and predictable physical relationship that is not dependent on the specific filler system used in the elastomer.
Additionally, the rejection does not rely on the Naruse references dielectric constant teachings in combination with Incavo, nor does it require that identical communication performance be achieved. Rather, the Naruse references are cited for the proposition that adjusting thickness is a known technique for influencing radio frequency performance and structural durability in embedded electronic systems, and a POSITA would reasonably expect that the communication performance and durability of the electronic device in the Incavo disclosure would also be influenced by and improved with the thickness modifications disclosed by the Naruse references.
Moreover, while the Naruse references disclose that communication performance is improved by adjusting the dielectric constant of the rubber composition, they also separately disclose the role of the coating layer thickness in influencing communication performance and durability. These disclosures are presented as distinct design considerations in different portions of the disclosure without being directly tied to each other within the overall radio frequency communication environment. The Naruse references do not teach that the dielectric constant and the thickness are inseparably linked such that the effect of one is contingent upon the other. Rather, the Naruse references describe both parameters as independent variables that affect radio frequency performance in different ways. A POSITA would have understood that these parameters operate within the same system, but are not mutually dependent. Instead, they represent independently adjustable design variables that each contribute to overall communication performance in a predictable manner. Accordingly, Applicant’s assertion that the communication benefits of the Naruse references are limited to their specific dielectric constants and cannot be considered when modifying thickness alone is not commensurate in scope with the teachings of the Naruse references. The rejection does not rely on completely replacing Incavo’s rubber composition with the Naruse compositions, nor does it require preservation of the Naruse references dielectric constants. Instead, the Naruse references are relied upon for the well-understood principle that reducing the thickness of a dielectric medium reduces total radio frequency attenuation by shortening the propagation path length (i.e., thickness), which is a general physical relationship recognized in the art and applicable regardless of the specific rubber formulation in Incavo.
To the extent Applicant argues that thickness modifications would not yield predicable improvements absent the specific dielectric constants of the Naruse references, such assertion is unsupported by persuasive technical evidence. The modification proposed in the rejection constitutes a routine optimization of known design parameters (thickness) in radio frequency embedded rubber systems, yielding predictable results consistent with established principles and known advantages. If Applicant believes differently, a declaration stating as such may be filed.
Furthermore, Incavo’s disclosure of a rubber composition containing carbon black does not establish that the dielectric constant of the entire radio frequency communication environment is determinative of, or solely responsible for, communication performance such that the teachings of the Naruse references are inapplicable. While it may be generally understood that carbon black can influence dielectric behavior of rubber compositions, Incavo does not teach that the communication performance is exclusively controlled by dielectric constant and carbon black content, nor does it exclude optimization of other known radio frequency parameters, such as rubber thickness. The Naruse references are not limited only to low dielectric constant systems or that general radio frequency principles are inapplicable to higher carbon black formulations. To the contrary, a POSITA would have understood that radio frequency performance in rubber materials is governed by a combination of factors, including dielectric properties and physical thickness, as is also argued by Applicant. Accordingly, even if Incavo employs a higher carbon black composition that may increase radio frequency loss relative to the Naruse compositions, the general principle that reducing thickness reduces total radio frequency attenuation and thereby improves communication performance remains applicable. Applicant improperly treats the Naruse teachings as requiring identical dielectric conditions for its teachings to be considered. However, the Naruse references do no disclaim applicability to higher dielectric constant materials, nor do they teach away from dimensional optimization in such systems. Instead, they describe general radio frequency performance considerations in rubber embedded communication environments.
On pages 15-16 of the Remarks, Applicant argues against the Incavo reference being modified with the rubber composition of the Naruse references, especially given the differences in carbon black amounts. However, Incavo discloses exemplary rubber compositions without any explicit disclosure limiting the carbon black amount or excluding routine modification of filler system. Accordingly, Incavo leaves open the use of conventional and optimized rubber formulations suitable for radio frequency enabled tire applications. The Naruse references are directed to the same general field of radio frequency communication through rubber materials and teach that reducing carbon black content and/or incorporating white fillers improves radio wave transmissivity, as well as indicating such compositions may still include carbon black, albeit in differing amounts. A POSITA would have recognized that modifying filler content to improve radio frequency performance also represents a routine and predictable optimization within rubber formulation design. While the Naruse references provide examples of improved compositions, adoption of their specific formulations is an optional enhancement and not a necessary condition for applying the teachings regarding radio frequency performance considerations. Thereby, even if the exact compositions of the Naruse references are not fully adopted, their teachings regarding filler selection and radio frequency transmission would have motivated a POSITA to modify the rubber of Incavo in a predictable manner to improve communication performance.
On page 19 of the Remarks, Applicant argues that Incavo’s figures were improperly relied upon to teach the claim limitation of claim 28. However, the examiner notes that while Incavo’s figures were relied upon for clearly illustrating the claim limitation, the rejection also relied on Pedrinelli and Sabetti to further teach the modification for various advantages. Applicant has not addressed the combination of Incavo and Pedrinelli and/or Sabetti.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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