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 .
Response to Amendment
The amendments entered on 8/28/2025 have been accepted. Claim 1 is amended. Claims 1-16 are pending, and claims 4, 11-12, 16 are withdrawn from consideration.
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.
Claims 3, 9-10 and 15 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.
Claim 3 recites “the covering body comprises: covering rubber that covers the periphery of the communication device; and a covering outer surface layer that covers a periphery of the covering rubber…”. Claim 1, of which this claim depends, newly recites “…a covering body that fully encases the communication device…”. It is not clear how the limitations of claim 3 (which more broadly requires the covering body to have a covering rubber that covers a periphery of the communication device) interacts with the limitations of independent claim 1 (which more specifically requires the covering body to fully encapsulate the communication device). Therefore, the metes and bounds of the claims are unable to be determined and thus the claim is indefinite. Claims 9-10 and 15 are rejected for relying upon a rejected claim. Claim 3 will be examined as if “…the covering body comprises: covering rubber that fully encases the communication device, and a covering outer surface layer that fully encases the covering rubber, and the covering different-color layer is the covering outer surface layer”.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Battocchio (FR2966768A1, of record, citing to English translation).
Regarding claim 1, Battocchio teaches a tire (Fig. 1) comprising: a tire body (Fig. 1); and a covered communication device at least a part of which is embedded in the tire body (see Fig. 1 and 3, the assembly “52” comprising the electronic device “54” and surrounding rubber “55” are clearly embedded within the mass of the tire),
the covered communication device comprises a communication device (electronic device “54”) and a covering body that fully encases the communication device (surrounding rubber “55”, which clearly completely surrounds the communication device “54” as in Fig. 3), and
the covering body comprises a distinction portion that is distinguishable from a portion around the covering body in a cross-sectional view (the mass “55” is explicitly listed as containing “coloring agents” [pg. 3 of machine translation]. When the coloring agents are present in the mass “55”, the rubber would necessarily be distinguishable (because of the different coloring agents) from the surrounding rubbers in a cross-sectional view, such that the limitation would be satisfied).
Regarding claim 2, Battocchio teaches a tire wherein the covering body comprises a different-color layer having a different hue from the portion around the covering body of the tire body where this is the distinction portion (as in the rejection of claim 1 above, Battocchio explicitly states that the rubber mass “55” which surrounds the electronic component may have coloring agents. Therefore, “55” would be considered the covering body, and because of the coloring agents that are in Battocchio, the rubber mass would clearly be distinguished from the surrounding rubber components).
Regarding claim 3, Battocchio teaches a tire wherein the covering body comprises a covering rubber that covers the communication device and a covering outer surface layer that covers a periphery of the covering rubber where the covering different-color layer is the covering outer surface layer (in the rubber mass “55”, it may be considered that the outermost portion of “55” is the covering outer surface layer while the inner portions of “55” are considered the covering rubber, such that the outer portion of “55” would necessarily cover the inner portion of “55”. It being noted that as there are no distinguishing limitations between what is considered to be the “covering rubber” and the “covering outer surface layer”, it may be considered that the “covering outer surface layer” is merely the outermost portion of “55” and the “covering rubber” is the innermost portion of “55”, under the broadest reasonable interpretation of the claim. And as stated above, “55” may have coloring agents, such that it would be of a different hue than surrounding rubbers).
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 following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5, 7, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kleckner (US8833409B2, of record) in view of either Shimura (US6788192, of record) or Shimura2 (US8004408B2, of record).
Regarding claim 1, Kleckner teaches a tire comprising a tire body (see Fig. 4); and a covered communication device at least partly embedded in the tire body (see Fig. 4 and Fig. 4a, where tag “104” and the surrounding rubber “212” is considered the covered communication device),
Wherein the covered communication device comprises: a communication device (tag “104”) and a covering body that fully encases the communication device (as in Fig. 4A, the encapsulation material “212” completely encapsulated the tag “104”. As in Fig. 4A, it completely surrounds the tag, with one side being the outer surface/sidewall of the tire).
Kleckner teaches that the encapsulation material “212” may be made of any of a wide variety of materials, adhesvies, compounds, etc., as well as being rigid or flexible material [Col3 L13+]. Kleckner does not directly disclose that the encapsulation material is visually distinguishable from surrounding portions of the tire. However, it is well known to have the rubber surrounding the electronic component with a different color to help with identification. Shimura, for example, teaches a tire with a transponder and a surrounding rubber of the seat member “418” that substantially covers an outer surface of the transponder/tire [see Fig. 11]. The seat member “418” is made to have a different color from that of the surrounding rubber [Col3 L1-10].
One of ordinary skill in the art would have found it obvious to modify the surrounding rubber of Kleckner to be of a different color as suggested by Shimura. One would have been motivated so as to be able to easily identify the transponder [Col3 L1-10]. And as the rubber of Kleckner “212” clearly surrounds the communication device with a singular type of rubber, the entire surrounding rubber would have been colored (in addition to the outermost portion facing the outer surface of the tire), thus suggesting the claimed limitation.
In the alternate, Shimura2 teaches a pneumatic tire which may have an identification tag which has a color different from the surrounding rubbers, such as yellow while the rest of the rubber is black [Col3 L59+]. The identification tag “37” may be made to be in direct contact on the transponders [see Figs. 5-6].
One of ordinary skill in the art would have found it obvious to modify the encapsulating rubber of Kleckner to be of a different color from the surrounding rubber as suggested by Shimura2. One would have been motivated so as to easily identify the position of the transponder [Col3 L59+]. And as the rubber of Kleckner “212” clearly surrounds the communication device with a singular type of rubber, the entire surrounding rubber would have been colored (in addition to the outermost portion facing the outer surface of the tire), thus suggesting the claimed limitation.
Regarding claim 2, modified Kleckner makes obvious a tire wherein the covering body has a different color layer than the surrounding portion of the tire body, and the distinction portion is the covering different color layer (as in the rejection of claim 1 above, Kleckner as modified by Shimura or Shimura2 suggests having the encapsulating layer “212” around the tag “104” a different color from the surrounding tire rubber. As such, “212” would be considered the covering body which is of a different color).
Regarding claim 3, modified Kleckner makes obvious a tire wherein the covering body comprises a covering rubber that covers the communication device and a covering outer surface layer that covers a periphery of the covering rubber where the covering different-color layer is the covering outer surface layer, (in the rubber mass “212”, it may be considered that the outermost portion of “212” is the covering outer surface layer while the inner portions of “212” are considered the covering rubber, such that the outer portion of “212” would necessarily cover the inner portion of “212” which covers the tag “104”. It being noted that as there are no distinguishing limitations between what is considered to be the “covering rubber” and the “covering outer surface layer”, it may be considered that the “covering outer surface layer” is merely the outermost portion of “212” and the “covering rubber” is the innermost portion of “212”, under the broadest reasonable interpretation of the claim. And as stated above, Kleckner as modified would have the rubber “212” with a different color than that of the surrounding tire body).
Regarding claim 5, 7, 9, modified Kleckner makes obvious a tire wherein a part of the distinction portion of the covering body is exposed from an outer surface of the tire body (as in Fig. 4a, the encapsulation material “212” is clearly exposed from an outer surface of the tire body).
Claims 6, 8, 10, 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kleckner (US8833409B2, of record) in view of either Shimura (US6788192, of record) or Shimura2 (US8004408B2, of record), as applied to claim 1 above, and further in view of Shimura (US6788192, of record) or in view of Sudo (JP2016159716A, of record)
Regarding claims 6, 8, 10, 13-15, Kleckner does not explicitly state that the encapsulation rubber has a light emission area. Shimura teaches a tire with a transponder and a surrounding rubber of the seat member “418” that substantially covers an outer surface of the transponder/tire [see Fig. 11]. The seat member “418” is made to have light permeability so as to more easily specify the position of the transponder after vulcanization [Col3 L1-L19]. As the seat member has these light properties, it is reasonably considered under the broadest reasonable interpretation of the claim that the seat member would thus have a “light emission area”).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the encapsulation rubber “212” of Kleckner to have the light permeability of Shimura. One would have been motivated so as to more easily specify the position of the transponder [Col3 L1-L19].
In the alternate regarding claims 6, 8, 10, 13-15, Sudo teaches a pneumatic tire where abrasion degree identifiers “11” are formed on the tire [see Fig. 1]. A phosphorescent paint “13” is applied to the surface of the wear degree identifier of the tire [pg. 2 of machine translation]. Light is emitted at the place where the paint is provided, and the position can be easily grasped [pg. 2 of machine translation]. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to apply phosphorous paint as suggested by Sudo to the outer area of the transponder of Kleckner. One would have been motivated in order to increase the light emitted at the location so that the position may be easily obtained [pg. 2 of machine translation]. And a portion with this paint would clearly be considered a “light emission area”, as the paint is stated to reflect the light so as to appear lighter.
Response to Arguments
Applicant’s arguments with respect to the claims of the 102 rejections of Shimura 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 argues against the use of the reference of Sudo to suggest the claimed light emission area. Applicant argues that this is from a non-analogous art that addresses different problems. Applicant argues that one would only use Sudo with impermissible hindsight.
The Examiner respectfully disagrees. In response to applicant's argument that Sudo is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor' s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, while Sudo may not be explicitly utilized for identifying transponders in the tire, Sudo provides phosphorescent paint at a tire location for the purpose of more easily identifying the painted portion. In other words, Sudo provides an identification method for a feature on the tire body. Where Kleckner in view of Shimura/Shimura2 are similarly tied to ways of easily obtaining the position of the transponder, a person of ordinary skill in the art would have found it obvious to apply said phosphorescent paint to a similar tire part (such as “212” of Kleckner) with the expected similar benefit of increasing the ease of identifying the painted portion.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, only information from Sudo was utilized in the modification. Where Sudo explicitly teaches that the phosphorescent paint applied to the tire surface results in an improved identification of said area, the person of ordinary skill in the art would have reasonably considered this teaching pertinent to the issue at hand.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/T.F.S./Examiner, Art Unit 1749
/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781