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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/8/2026 has been entered.
Response to Amendment
The amendments entered on 4/8/2026 have been accepted. Claims 1-10 are amended. Claims 2-3 are canceled. Claims 1, 4, 7-10 are pending. Applicant’s amendments to the claims have overcome the 112(b) rejections previously set forth in the final office action mailed 1/20/2026. Applicant’s amendments to the claims have overcome the objections previously set forth.
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, 4, 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Reese (EP3738789A1, of record) and further in view of at least one of Reese2 (EP3269562A1, of record) or Kramer (DE102019215504A1, of record).
Regarding claim 1 and 4, Reese teaches a pneumatic vehicle tire [see Fig. 1], comprising
a carcass with a plurality of textile carcass strength elements (carcass “2” which contains reinforcing elements [0004]),
a belt arranged radially outside of the carcass (belt “7” which is arranged outside of the carcass [Fig. 1, 0038]),
a belt bandage ply of a belt bandage arranged radially outside the belt (belt bandage “8” is arranged radially outside of the belt [Fig. 1, 0038]. The belt bandage comprises the reinforcing ply “9”, which is considered the belt bandage ply),
wherein the belt bandage ply has a plurality of textile cords as strength elements which are substantially parallel and are embedded in elastomeric material, wherein the cords have two yarns of polyamide 6.6 (PA6.6) which have a same linear density and are end twisted together to form the cord, and wherein the structure is PA 6.6 1880dtex x 2 (the belt bandage contains parallel and substantially circumferentially extending reinforcing members embedded in rubber [0004, 0007]. Fig. 3 shows an example of an embodiment where the cord is made of precisely two yarns [0029], and the cord of Fig. 3 is incorporated in the structure of Fig. 4 so as to form the belt bandage ply [0047-0048]. The two yarns are both preferably polyamide, and preferably PA 6.6 [0019-0020, 0027, 0043, 0047]. The yarns are end-twisted with one another [0027-0028]. The cord with two yarns of polyamide may have the construction of 1880 dtex x 2 [0047, 0022], such that they both have the same linear density, and such that the overall cord may clearly have the construction of PA 6.6 1880 dtex x 2),
the plurality of cords have a twist factor of 120 to 220 (the cords may have a twist factor α of 100 to 250 [0047, 0030]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
It is considered that the claimed tangent modulus would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II. It being emphasized that Reese suggests the use of two yarns to form the cord with a construction of 1880 dtex x 2 [0047, 0022], where the yarns are end-twisted with each other [0027-0028], where the yarns are both preferably PA 6.6 [0019-0020, 0027, 0043, 0047], and with a twist factor α of 100 to 250 [0047, 0030] (substantially overlapping with the preferred twist range of 120 to 220). Thus, the prior art of Reese suggests cords and yarns that are substantially the same as applicant’s disclosure which states [0019-0020]:
[0019] Thus, two yarns made of PA 6.6 with the linear density of 1880 dtex are end-twisted together to form the cord. Measurements of the force-elongation curve of such a cord have shown that, in comparison to a cord of the structure PA 6.6 1400 dtex x 2, such a cord already has a tangent modulus which is advantageously increased for high-speed capability, despite an only slight increase in the diameter.
[0020] For example, a cord of the structure PA 6.6 1880 dtex x2 has a tangent modulus of 11.8 N/%, whereas the corresponding reference cord of the structure PA 6.6 1400 dtex x 2 has a tangent modulus, which is lower by 2.8 N/%, of only 9.0 N/%, in each case measured at an elongation of 4%. The cord and the reference cord each have an identical twist factor of 150.
Therefore, while not explicitly disclosing the claimed tangent modulus from 9.3N/% to 14N/% as an elongation of 4%, one of ordinary skill would reasonably expect Reese’s cords to have the same properties, see MPEP2112. The cords of Reese are substantially the same as disclosed by the Applicant in their instant specification, and Reese’s cords have each of the characteristics listed in the Instant Application as explicitly affecting the tangent modulus (namely, the cord construction type, cord/yarn material, number of yarns, and twist factor). And one of ordinary skill would have expected for Reese’s cords to have a tangent modulus of approximately 11.8 N/% because of this. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Additionally, it is noted that unexpected results nor criticality have been shown by Applicant. Additionally, the burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Reese does not explicitly give the thread density of the belt bandage cords. However, a density of 80-100epdm is conventional and known within the art, and it would have been obvious for one of ordinary skill in the art to arrange the cords as such. Reese2 (of same inventive entity and inventor as Reese), teaches cords related to a belt bandage ply [0003-0004]. The cords of the reinforcing layer have two multifilament yarns twisted together [0033, 0035], where the material is polyamide 6.6 [0016-0017]. The density of the cords may be 90epdm [0033] or 90-100epdm [0035], for example. One of ordinary skill in the art would have found it obvious to modify the cords of Reese to have an epdm as suggested by Reese2. One would have been motivated so as to simplify production and achieve a cost advantage [0033, 0035].
Alternatively, Kramer (of same inventive entity and shared inventor as Reese) teaches a belt bandage for a tire [pg. 1 of machine translation]. The cords may comprise cords made of PA6.6 and at a construction of 1880x2 [pg. 4 of machine translation]. The cords of the belt bandage layer preferably have a density of reinforcement in a range of 50-150epdm [pg. 4 of machine translation]. One of ordinary skill in the art would have found it obvious to modify the cords of Reese to have the epdm as suggested by Kramer. One would have been motivated so as to improve the process capability and the cord spacing [pg. 4 of machine translation].
Therefore, each of Reese2 and/or Kramer makes obvious the density being from 80 to 100epdm. Each of the references either have examples explicitly within the claimed range or substantially overlapping with the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is considered that the claimed tangent modulus per cm width of the belt bandage ply would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II. It being emphasized that Reese suggests the use of two yarns to form the cord with a construction of 1880 dtex x 2 [0047, 0022], where the yarns are end-twisted with each other [0027-0028], where the yarns are both preferably PA 6.6 [0019-0020, 0027, 0043, 0047], and with a twist factor α of 100 to 250 [0047, 0030]. Additionally, as above, each of the references Reese2 and/or Kramer suggests the epdm of the cord ranging from 80 to 100epdm. Reese2 suggesting either a density of 90epdm or 90-100epdm [0033, 0035], and Kramer suggesting a density from 50-150epdm [pg. 4 of machine translation]. Thus, the prior art of Reese suggests cords and yarns that are substantially the same as applicant’s disclosure which states [0024-0027]:
[0024] Surprisingly, it has been shown that such a belt bandage ply with good shrinkage properties has an excellent tangent modulus per cm width of the belt bandage ply.
[0025] An advantageous embodiment is provided in that the cords have the structure PA 6.6 1880 dtex x 2 and are arranged with a thread density of 80 epdm to 100 epdm, preferably of 85 epdm to 95 epdm, particularly preferably with a thread density of 90 epdm.
[0026] Surprisingly, it has been shown that a belt bandage ply F1 according to the invention, which has cords of the structure 1880dtex x 2 in an arrangement of the cords with a thread density of 90 epdm, has a tangent modulus at 4% elongation of the belt bandage ply in the direction of extent of the cords that is higher by more than 2500 N/cm than the corresponding tangent modulus of a reference ply R1, which has reference cords of the structure 1400dtex x 2, which are also arranged with a thread density of 90 epdm. The belt bandage ply F1 according to the invention has a tangent modulus per cm width of 10580 N/cm at an elongation of 4%. The cords and the reference cords each have an identical twist factor of 150.
[0027 ] A pneumatic vehicle tire having such a belt bandage ply F1 according to the invention in the belt bandage has excellent high-speed capability. The thickness and use of materials in the belt bandage ply are only slightly increased, and therefore the rolling resistance is not significantly increased.
Therefore, while not explicitly disclosing the claimed tangent modulus per cm width of the belt bandage ply of 8300N/cm to 14000N/cm, one of ordinary skill would reasonably expect Reese’s cords to have the same properties, see MPEP2112. The cords of Reese (as modified by the conventionally known thread densities of Reese2 and/or Kramer) are substantially the same as disclosed by the Applicant in their instant specification, and Reese’s cords have each of the characteristics listed in the Instant Application as explicitly affecting the tangent modulus (namely, the cord construction type, cord/yarn material, number of yarns, and twist factor, and thread density). And one of ordinary skill would have expected for Reese’s cords to have a tangent modulus of approximately 10580 N/cm because of this. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Additionally, it is noted that unexpected results nor criticality have been shown by Applicant. Additionally, the burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Regarding claim 7, Reese suggests a cord of the plurality of cords is arranged over an entire axial extent of the belt and beyond (as in Fig.1, the belt bandage extends over the entire axial extend of the belt so as to envelope it [Fig. 1]. And as the reinforcing ply of the belt bandage has its reinforcing members continuously would along the axial width [0039], the cords would clearly similarly extend over the entire axial extent of the belt).
Regarding claim 8, Reese suggests the tire is in a passenger car (the tire may be used in a passenger vehicle [0038]. Additionally, it is noted that “is in a passenger car” is merely an intended use of the tire that does not impart specific structural limitations onto the claimed tire, and that the tire of Reese would be capable of being in any type of vehicle).
Regarding claim 9, Reese suggests that tire is in a light-duty vehicle or a van (it is noted that “light-duty vehicle” is considered in the art to encompass a range of light weight vehicle loads, including passenger vehicles. Reese states that its tire may be used in passenger vehicles [0038], such that it would clearly be used with light-weight vehicles. Additionally, it is noted that “in a light-duty vehicle or a van” is merely an intended use of the tire that does not impart specific structural limitations onto the claimed tire, and that the tire of Reese would be capable of being in any type of vehicle).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Reese (EP3738789A1, of record) and further in view of at least one of Reese2 (EP3269562A1, of record) or Kramer (DE102019215504A1, of record).
Regarding claim 10, Reese teaches a pneumatic vehicle tire [see Fig. 1], comprising
a carcass with a plurality of textile carcass strength elements (carcass “2” which contains reinforcing elements [0004]),
a belt arranged radially outside of the carcass (belt “7” which is arranged outside of the carcass [Fig. 1, 0038]),
a belt bandage ply of a belt bandage arranged radially outside the belt (belt bandage “8” is arranged radially outside of the belt [Fig. 1, 0038]. The belt bandage comprises the reinforcing ply “9”, which is considered the belt bandage ply),
wherein the belt bandage ply has a plurality of textile cords as strength elements which are substantially parallel and are embedded in elastomeric material, wherein the cords have two yarns of polyamide 6.6 (PA6.6) which have a same linear density and are end twisted together to form the cord (the belt bandage contains parallel and substantially circumferentially extending reinforcing members embedded in rubber [0004, 0007]. Fig. 3 shows an example of an embodiment where the cord is made of precisely two yarns [0029], and the cord of Fig. 3 is incorporated in the structure of Fig. 4 so as to form the belt bandage ply [0047-0048]. The two yarns are both preferably polyamide, and preferably PA 6.6 [0019-0020, 0027, 0043, 0047]. The yarns are end-twisted with one another [0027-0028]. The cord with two yarns of polyamide may have the construction of 1880 dtex x 2 [0047, 0022], such that they both have the same linear density),
the plurality of textile cords each having a structure of 1880 dtex x 2 (as stated above, the cord with two yarns of polyamide may have the construction of 1880 dtex x 2 [0047, 0022],
the plurality of textile cords have an adhesive impregnation for adhesion of the cords to the elastomeric material (“In order to ensure reliable adhesion of textile reinforcing elements to the rubber, it is expedient to provide the reinforcing elements with an adhesive impregnation” [0032]),
the textile cords have a twist factor of 140 to 180 (the cords may have a twist factor α of 100 to 250 [0047, 0030]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Reese does not explicitly give the thread density of the belt bandage cords. However, a density of 85-95epdm is conventional and known within the art, and it would have been obvious for one of ordinary skill in the art to arrange the cords as such. Reese2 (of same inventive entity and inventor as Reese), teaches cords related to a belt bandage ply [0003-0004]. The cords of the reinforcing layer have two multifilament yarns twisted together [0033, 0035], where the material is polyamide 6.6 [0016-0017]. The density of the cords may be 90epdm [0033] or 90-100epdm [0035], for example. One of ordinary skill in the art would have found it obvious to modify the cords of Reese to have an epdm as suggested by Reese2. One would have been motivated so as to simplify production and achieve a cost advantage [0033, 0035].
Alternatively, Kramer (of same inventive entity and shared inventor as Reese) teaches a belt bandage for a tire [pg. 1 of machine translation]. The cords may comprise cords made of PA6.6 and at a construction of 1880x2 [pg. 4 of machine translation], along with a variety of other possible options. The cords of the belt bandage layer preferably have a density of reinforcement in a range of 50-150epdm [pg. 4 of machine translation]. One of ordinary skill in the art would have found it obvious to modify the cords of Reese to have the epdm as suggested by Kramer. One would have been motivated so as to improve the process capability and the cord spacing [pg. 4 of machine translation].
Therefore, each of Reese2 and/or Kramer makes obvious the density being from 85 to 95epdm. Each of the references either have examples explicitly within the claimed range or substantially overlapping with the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is considered that the claimed tangent modulus would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II. It being emphasized that Reese suggests the use of two yarns to form the cord with a construction of 1880 dtex x 2 [0047, 0022], where the yarns are end-twisted with each other [0027-0028], where the yarns are both preferably PA 6.6 [0019-0020, 0027, 0043, 0047], and with a twist factor α of 100 to 250 [0047, 0030]. Additionally, as modified by Reese2 and/or Kramer, a well-known thread density of 85-95 would be obvious to use by a person of ordinary skill in the art. Thus, the prior art of Reese suggests cords and yarns that are substantially the same as applicant’s disclosure which states [0019-0020]:
[0019] Thus, two yarns made of PA 6.6 with the linear density of 1880 dtex are end-twisted together to form the cord. Measurements of the force-elongation curve of such a cord have shown that, in comparison to a cord of the structure PA 6.6 1400 dtex x 2, such a cord already has a tangent modulus which is advantageously increased for high-speed capability, despite an only slight increase in the diameter.
[0020] For example, a cord of the structure PA 6.6 1880 dtex x2 has a tangent modulus of 11.8 N/%, whereas the corresponding reference cord of the structure PA 6.6 1400 dtex x 2 has a tangent modulus, which is lower by 2.8 N/%, of only 9.0 N/%, in each case measured at an elongation of 4%. The cord and the reference cord each have an identical twist factor of 150.
Therefore, while not explicitly disclosing the claimed tangent modulus from 9.3N/% to 14N/% as an elongation of 4%, one of ordinary skill would reasonably expect Reese’s cords to have the same properties, see MPEP2112. The cords of Reese are substantially the same as disclosed by the Applicant in their instant specification, and Reese’s cords have each of the characteristics listed in the Instant Application as explicitly affecting the tangent modulus (namely, the cord construction type, cord/yarn material, number of yarns, and twist factor). And one of ordinary skill would have expected for Reese’s cords to have a tangent modulus of approximately 11.8 N/% because of this. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Additionally, it is noted that unexpected results nor criticality have been shown by Applicant. Additionally, the burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Regarding the ply at 4% elongation having a tangent modulus per cm width from 8300-1400 N/cm, it is considered that this would be implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II. It being emphasized that Reese suggests the use of two yarns to form the cord with a construction of 1880 dtex x 2 [0047, 0022], where the yarns are end-twisted with each other [0027-0028], where the yarns are both preferably PA 6.6 [0019-0020, 0027, 0043, 0047], and with a twist factor α of 100 to 250 [0047, 0030]. Additionally, as above, each of the references Reese2 and/or Kramer suggests the epdm of the cord ranging from 80 to 100epdm. Reese2 suggesting either a density of 90epdm or 90-100epdm [0033, 0035], and Kramer suggesting a density from 50-150epdm [pg. 4 of machine translation]. Thus, the prior art of Reese suggests cords and yarns that are substantially the same as applicant’s disclosure which states [0024-0027]:
[0024] Surprisingly, it has been shown that such a belt bandage ply with good shrinkage properties has an excellent tangent modulus per cm width of the belt bandage ply.
[0025] An advantageous embodiment is provided in that the cords have the structure PA 6.6 1880 dtex x 2 and are arranged with a thread density of 80 epdm to 100 epdm, preferably of 85 epdm to 95 epdm, particularly preferably with a thread density of 90 epdm.
[0026] Surprisingly, it has been shown that a belt bandage ply F1 according to the invention, which has cords of the structure 1880dtex x 2 in an arrangement of the cords with a thread density of 90 epdm, has a tangent modulus at 4% elongation of the belt bandage ply in the direction of extent of the cords that is higher by more than 2500 N/cm than the corresponding tangent modulus of a reference ply R1, which has reference cords of the structure 1400dtex x 2, which are also arranged with a thread density of 90 epdm. The belt bandage ply F1 according to the invention has a tangent modulus per cm width of 10580 N/cm at an elongation of 4%. The cords and the reference cords each have an identical twist factor of 150.
[0027 ] A pneumatic vehicle tire having such a belt bandage ply F1 according to the invention in the belt bandage has excellent high-speed capability. The thickness and use of materials in the belt bandage ply are only slightly increased, and therefore the rolling resistance is not significantly increased.
Therefore, while not explicitly disclosing the claimed tangent modulus per cm width of the belt bandage ply of 8300N/cm to 14000N/cm, one of ordinary skill would reasonably expect Reese’s cords to have the same properties, see MPEP2112. The cords of Reese (as modified by the conventionally known thread densities of Reese2 and/or Kramer) are substantially the same as disclosed by the Applicant in their instant specification, and Reese’s cords have each of the characteristics listed in the Instant Application as explicitly affecting the tangent modulus (namely, the cord construction type, cord/yarn material, number of yarns, and twist factor, and thread density). And one of ordinary skill would have expected for Reese’s cords to have a tangent modulus of approximately 10580 N/cm because of this. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Additionally, it is noted that unexpected results nor criticality have been shown by Applicant. Additionally, the burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Response to Arguments
Applicant’s arguments have been fully considered but they are not found persuasive. It is noted that the optional reference of Reese3 is removed to streamline the rejections.
Applicant argues on pgs. 8-9 and pg. 5 of their filed remarks dated 4/8/2026 that the rejection does not establish that the cited prior art teaches the claimed 4% tangent modulus windows. Applicant argues that the N/cm and N/% at 4% are mechanical response characteristics and not merely compositional identities. Applicant argues that the combination would not implicitly achieve the desired results, as this is a combination of references.
The Examiner respectfully disagrees. Namely, Reese suggests the use of two yarns to form the cord with a construction of 1880 dtex x 2 [0047, 0022], where the yarns are end-twisted with each other [0027-0028], where the yarns are both preferably PA 6.6 [0019-0020, 0027, 0043, 0047], and with a twist factor α of 100 to 250 [0047, 0030] (substantially overlapping with the preferred range of 120-220 and/or 140-180). Because these suggested cords by Reese are substantially the same as the 1880x2 embodiment disclosed in the instant specification, one of ordinary skill in the art would have expected for the tangent modulus to have a value substantially close to 11.8 N/% because of this, wherein all of the factors of the cord that affect the tangent modulus as disclosed by the instant specification are satisfied via Reese (see [0019-0020]). Applicant makes no contention or unexpected results nor criticality and has not met the burden of establishing any such results as unexpected or significant. As to the tangent modulus at 4% range, as in the rejection above Reese is modified by either Reese2 or Kramer so as to suggest the thread density (as Reese is silent as to the specific thread density thereof, but Reese would necessarily have a thread density of some sort in order to be a functioning cord). It is noted that Reese2 and Kramer both share Assignee’s with that of Reese and the instant application (Continental), and that the references of Reese2 and Kramer both share the inventor Reese, Wolfgang with that of Reese (and with the instant application). As such, the inventor/assignee would clearly have been aware of each of the references of Reese, Reese2, and Kramer. And as Reese2 provides a thread density so as to simplify production and improving cost, and Kramer provides a thread density so as to improve processing and cord spacing, one would have found it obvious to modify the cords of Reese so as to have a thread density as suggested by Reese2/Kramer to achieve those stated benefits. When Reese is in view of Reese2/Kramer, the cited combination satisfies each and every of the preferred characteristics of the cord and of each of the factors that is cited as affecting the tangent modulus per cm width [see instant spec 0026]. As such, although modified Reese does not explicitly disclose the claimed tangent modulus per cm width, one of ordinary skill in the art would have reasonably expected for the cords to have the same properties, see MPEP 2112.
In regards to Applicant’s arguments that the claimed properties are mechanical characteristics and not compositional identities, it is noted that MPEP 2112 also structural/functional properties that would be a result of the substantially identical product/apparatus/etc. The “mechanical characteristics” in this case are directly states as being directly tied to a cords structure, thread density, material, and twist factor. See instant specification 0019-0020 and 0024-0027. Therefore, because modified Reese satisfies all aspects which affect these mechanical characteristics, it would similarly follow that the cords of modified Reese would have these same mechanical characteristics.
Additionally, if Applicant’s statements regarding the variability of these mechanical parameters was correct [pg. 5 of Remarks], it would mean that the claimed properties of the N/% and N/cm would be indefinite under 112(b) because it would not be possible for the person of ordinary skill in the art to understand whether these properties were within the claimed limitations. Because the properties of N/% and N/cm are typical tests that may be run upon cords (wherein under the same test conditions on the same cords would obtain the same values), these parameters N/% and N/cm would clearly fall under the scope of MPEP 2112.
In regards to Applicant’s arguments that the rejection is not valid because individual references are utilized together in a rejection, it is noted that Applicant’s arguments are not convincing. See MPEP 2112 V. Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). The court found that pharmacokinetic limitations of the asserted claims were inherently met by combining prior art references because the limitations were necessarily present in the prior art combination. Id. See also Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329-32, 2020 USPQ2d 6227 (Fed. Cir. 2020). In other words, the finding that the combination of Reese’s cord with the thread density of Reese/Kramer to result in a tangent modulus per cm width would have been the natural consequence of this combination of prior art elements.
It is noted that case 17/299642 follows a similar fact pattern as in this instant application. The Examiner was affirmed by PTAB, wherein prior art references were combined in a rejection and wherein a property (tensile modulus) was not specifically described by the prior art. Because the prior art combination satisfied all of the characteristics of the invention which were cited as affecting the tensile modulus (cord type, elongation range, and diameter), the Examiner and the PTAB decision found that the prior art implicitly achieved the claimed tensile modulus. It is noted that the prior art applied was not the exact same as the examples from this instant specification. The prior art had values of 0.12-0.4mm and an elongation range of 0.3-2.5%, compared to a specification example (with a tensile modulus of 50MPa) which had a diameter of 0.26mm and an elongation of 0.7%. The Board therefore found overlapping ranges of these parameters (which affect the unspecified claimed value) to have been sufficient in having a prima facie case of obviousness. The Board additionally noted that “The inquiry under 35 U.S.C. 103 is not merely what references expressly teach, but what inferences one of ordinary skill in the art reasonably would draw from them. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1965); In re Preda, 401 F.2d 825, 826 (CCPA 1968)”. See attached NPL.
Applicant argues on pg. 9-10 and additionally on pgs. 5-6 that the thread-density combination relies on context-mismatched teachings and does not supply a predictable expectation for the claimed 4% stiffness window. Applicant argues that the combination does not explain why the claimed density range would have been selected with the specific PA 6.6 1880dtex x 2 cord. Applicant argues that inherency requires showing that the result must be met across the full disclosed parameter space.
The Examiner respectfully disagrees. In regards to Applicant’s arguments that the parameters need to be suggested by a single reference of record [pg. 5-6 and 9-10 of arguments], the Examiner notes that the rejections of record are based upon the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Additionally, see MPEP 2112 V. Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). The court found that pharmacokinetic limitations of the asserted claims were inherently met by combining prior art references because the limitations were necessarily present in the prior art combination. Id. See also Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329-32, 2020 USPQ2d 6227 (Fed. Cir. 2020). Applicant’s arguments that all features of the invention need be disclosed in a single reference are therefore unconvincing.
Regarding the thread density, Reese is silent as to the thread density of the belt bandage, and the belt bandage would have necessarily needed a thread density of some sort in order to function properly. Because of this, one of ordinary skill in the art would have found it obvious to look to the art for other known thread densities and their stated benefits. It is noted that Reese2 and Kramer both share Assignee’s with that of Reese and the instant application (Continental), and that the references of Reese2 and Kramer both share the inventor “Wolfgang Reese” with that of Reese (and with the instant application). As such, the inventor/assignee would clearly have been aware of each of the references of Reese, Reese2, and Kramer. And as Reese2 provides a thread density so as to simplify production and improving cost, and Kramer provides a thread density so as to improve processing and cord spacing, one would have found it obvious to modify the cords of Reese so as to have a thread density as suggested by Reese2/Kramer to achieve those stated benefits. Additionally, the Examiner notes that the rejection of the claims is a 103 rejection wherein the rejection is based upon the combination of references to suggest the claimed invention. A single reference need not have every component of the claim for the combination of references to suggest the combined claim limitations. As there is rationale laid out for the modifications made out, and because there is clearly no improper hindsight reasoning utilized, the modifications would have been obvious to the person of ordinary skill in the art.
Additionally, Reese2 lacking a specific example with a PA 6.6 1880dtex x 2 cord is not convincing towards nonobviousness, because Reese2 is not being relied upon for these aspects. Reese is being relied upon for these aspects of the claim. While Reese2 may have a slightly different cord construction, Reese2 also specifically suggests a thread density and a specific rationale for having this thread density, such that a modification for a tire cord within the same field of endeavor would have been an obvious modification. And regarding Kramer, it is noted that Kramer specifically calls out PA 6.6 1880x2 as a cord construction for its tire. While Kramer may additionally suggest other cord types, it is noted that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123. As such, one would have found the thread density of Kramer and its associated rationale as highly pertinent to the disclosure of Reese.
As to Applicant’s arguments pertaining inherency over the entire range, it is noted that in the same related case as detailed above in paragraph 46, the prior art suggested values for its cord diameter (0.12-0.4mm) and elongation range (0.3-2.5%) which overlapped with the preferred testing examples (0.26mm and 0.7%). Despite there being an overlap and not an exactly identical range, the Board affirmed the Examiner’s rejection and of the reasonable presence of a tangent modulus satisfying the claimed less than 150GPa based upon the prior art. See attached NPL. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Applicant argues on pg. 10-11 and additionally pg. 6 that the present disclosure provides evidence of unexpected performance. Applicant further argues that the claimed upper bounds of 14 N/% and 14000N/cm have been adequately addressed.
The Examiner respectfully disagrees. Applicant alleges to unexpected performance of the invention, but Applicant provides no citations to any sections of the written specification or testing results which to demonstrate this. It is not clear whether this is just a general allegation of unexpected results or whether Applicant actually has evidence of such unexpected results. Based on the Remarks and the lack of any evidence provided, these arguments cannot be found convincing. The instant specification does not appear to contain any evidence of criticality or unexpected results for the claimed ranges. General statements alleging unexpected results cannot be found convincing nor as an adequate rebuttal against the prima facie case of obviousness as detailed in the rejections herein. Please see MPEP 716.02, wherein burden is on the Applicant to establish results are unexpected and significant.
Regarding the upper bounds of the claimed tangent ranges, it is still noted that the prior art combination would satisfy these bounds. As the combination of Reese and Reese2/Kramer results in a cord with a construction of PA 6.6 1880dtex x 2, where the yarns are end-twisted with each other, a twist factor α of 100 to 250 [0047, 0030] (substantially overlapping with the preferred range of 120-220 and/or 140-180), and a thread density of 90-100 or 50-150 (overlapping with 80-100), the cord would be substantially the same as the inventive cord which has a tangent modulus of 11.8 N/% and 10580 N/cm [0019-0026 of instant specification]j. Such values are well within the significantly wider claimed ranges of 9.3-14 N/% and 8300-14000N/cm.
Applicant argues that Reese discloses a twist factor range of 100 to 250, “substantially beyond the claimed range of 120 to 220”.
The Examiner strongly disagrees with Applicant’s position here. The prior art range of 100-250 compared to 120-220 are substantially the same, such that the prior art of Reese is only slightly broader than that of the instant claims. The ranges substantially overlap, with midpoints of 175 and 170 respectively. Reese suggests values of the twist factor at every possible value in the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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