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 amendment filed 10/02/2028 has been entered. Claim 1 has been amended. Claim 16 is a new addition. Claims 1-16 are pending.
Election/Restrictions
Newly submitted claim 16 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Inventions of claim 1 and claim 16 are directed to related methods of forming a tire with a polymer plug. However, the related inventions are distinct since: (1) the method of claim 1 does not require “the step of forming the chamber includes inserting an object into the selected one of the tread elements from a direction of the tire cavity and removing the object after the tire is cured” as required by claim 16. That is, the method of claim 1 produces a materially different invention, wherein an embedded object is permanently fixed by the curing process. Thus, the method of claim 1 has a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 16 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites the limitation of “forming a chamber in a selected one of the tread elements includes forming the chamber so that it does not extend through the selected tread element to the tread surface”. However, such a feature is recited in the parent claim 1 recitation of “forming a chamber in a selected one of the tread elements, the chamber extending from an internal cavity of the tire into the selected one of the tread elements, wherein the chamber is formed without extending through a radially outer surface of the tread”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Figures: The examiner provides illustrations from the prior art with additional annotations as needed to facilitate discussion of the claim elements. Moreover, it is held that guidance as provided by the figures is sufficient to enable public possession of an inventive concept. That is, an enabling picture may be used to reject claims directed to an article to include: anticipating claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). And when the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125.The examiner provides marked-up reproductions of applicable drawings (as needed) to facilitate discussion of the prior art.
Claim 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Raisanen et al. (US 2020/0338932 A1 – of record), in view of Flechtner (DE 19745734 B4 – of record), in view of at least one of Robert (US 2007/0245819 A1 – of record), or Orlewski (US 2014/0365069 A1 – of record), or Chin et al. (US 20200070590 A1).
Regarding claims 1, 15, Raisanen discloses a method for applying an insert into a tire to include the insert comprising a polymer and useful as a wear indicator – (construed as a method of forming a tire with a polymer plug for indicating tread depth), see abstract, [0001], [0046]. Wherein a tire is provided to include a pair of sidewalls, each one of which extends radially outwardly from a respective bead area to a ground-contacting tread; the tread being formed with a plurality of tread elements and a radially outer surface, Figs. 1, 3a below.
[AltContent: arrow][AltContent: arrow][AltContent: textbox (Bead area)][AltContent: textbox (Sidewall)]
PNG
media_image1.png
200
400
media_image1.png
Greyscale
[AltContent: arrow][AltContent: textbox (Ground)]
PNG
media_image2.png
200
400
media_image2.png
Greyscale
[AltContent: arrow][AltContent: textbox (chamber)]
PNG
media_image3.png
200
400
media_image3.png
Greyscale
The tire has a chamber formed in a selected one of the tread elements 110, see also [0088] and figure above. And the use of an interrogator 300 – (construed as a sensor unit) and circuit 290 – (construed as a pair of electrical contacts) being mounted to the tire, see [0029] – (construed as mounting a sensor unit to the tire, the sensor unit including a pair of electrical contacts). The polymer plug including: a wire 212, 213 being disposed in the shell, the wire including proximal ends and a distal end near a radially outer surface of the tread, see Fig. 8 – (construed as disposing a wire in the chamber, the wire including proximal ends and a distal end near a radially outer surface of the tread). The wear indicator being formed by filling with a material that can be cured to form polymer, see [0088] – (construed as injecting a liquid polymer in the chamber; and solidifying the liquid polymer and forming a sealing plug). The electrical circuit being formed such that an electrically conductive element configured to wear with the tread of the tire. As the electrodes wear, the capacitance of the primary capacitive component decreases. And further where electrical components are connected electrically in parallel so that the wiring is connected to a first side of the capacitors and a second wiring is connected to a second side of the capacitors. When the insert wears, part of the wiring also wears, whereby all the capacitors are no longer electrically in parallel. In this way, as the insert wears, the capacitance decreases, see [0076] – [0078] – (construed as an electrical circuit being formed by each proximal end of the wire electrically contacting a respective one of the sensor unit electrical contacts, whereby when the selected one of the tread elements wears down to the distal end of the wire, the distal end of the wire breaks, thereby breaking the electrical circuit).
Raisanen does not explicitly disclose the chamber extending from an internal cavity of the tire into the selected one of the tread elements, or a notice is transmitted by the sensor unit when the electrical circuit has broken. However, as Raisanen includes the use of a communication insert to communicate pertinent data and having a broken wire signify advanced tread wear; it would have been obvious to one of ordinary skill to have Raisanen’s wear indicator function as claimed since all the requisite structure and functionality is present, see [0029], [0078] – [0079].
In any event, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to do so since: Flechtner discloses a wear sensor for detecting the tread depth of a tire, see [0001]. The sensor includes the use of a measuring element 5.3 – (construed as a wire) disposed within a tread lug, where once the measuring element loops are severed a sensor circuit 5.1 the broken circuit which provides an indication of wear depth, see [0019] and Fig. 1.
Moreover, concerning the chamber extending from an internal cavity of the tire into the selected one of the tread elements.
Raisanen discloses “In principle, a reliable attachment could be made during vulcanization of the tire” and “Another way would be to produce an insert having a flange, and insert the insert from the inner side into the tire in such a way that the flange remains inside the tire”. Thus, one would consider the prior art for all it reasonably suggests and look to exemplary configurations thereof.
Robert discloses a method and system for measuring the degree of wear on a tire. The system is configured to have an instrumented tread pattern element 23. The tread pattern element is formed to extend from the tire interior cavity radially outwards toward the tread ground contacting portion.
PNG
media_image4.png
200
400
media_image4.png
Greyscale
This includes having a rubber composition coat the electrical circuit in order to form the unit – (construed as the injectable liquid polymer is in direct contact with the selected one of the tread elements upon curing of the injectable liquid polymer), see Fig. 5, [0035].
Orlewski discloses an abradable sensor system for tire wear monitoring. The system to include a V-shaped channel (construed as a chamber) which houses a circuit. The circuit extending from the tread element into the internal cavity of the tire. And where, the etched circuit is applied to a strip of suitable material such as flexible polymer film – (construed as an injectable polymer). The polymer film is then attached to an inside surface of the lug formed facing the cut V-shaped channel – (construed as the injectable liquid polymer is in direct contact with the selected one of the tread elements upon curing of the injectable liquid polymer), see Figs. 16-17, [0057].
Chin discloses a tread detecting device and module. The detecting device being configured to extend from the interior of the tire into a tread element without extending to the radially outer surface of the tread, see at least FIG. 4, [0033] – [0034]. Chin further discloses such a configuration provides a means for immediately reporting a tread abrasion, and where the tread detecting device can be implemented at any preset position of the tire, see at least [0008].
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method for applying an insert into a tire of Raisanen to include forming the chamber without extending through a radially outer surface of the tread as taught by Robert, Orlewski, or Chin to provide the method with the aforementioned benefit.
Regarding claims 2-3, modified Raisanen discloses the distal end of the wire is disposed at a set distance below the radially outer surface of the tread, the distance corresponding to a minimum recommended tread depth; and the chamber does not extend through the selected tread element to the tread surface, see Raisanen Figs. 5-8.
Regarding claims 6-7, modified Raisanen discloses using a circuit board and/or a sensor circuit having proximal ends of wire thereto attached, see at least Raisanen [0075], [0078], [0081], Flechtner Fig. 2, [0018] – (construed as step of attaching the proximal ends of the wire to a printed circuit board and of attaching the proximal ends of the wire to a printed circuit board includes inserting the distal end of the wire through an opening formed in the printed circuit board into the chamber).
Regarding claims 5, 8-14, modified Raisanen discloses the use of an adhesive for improving the attachment between the insert and the tire and Fig. 3a depicts a container attached to the interior cavity of the tire, see Raisanen, Fig. 3a, [0004]. Official Notice is taken as to the tire has an innerliner. Moreover, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have “the step of forming a chamber in a selected one of the tread elements includes drilling into the selected one of the tread elements from a direction of the tire cavity; the step of attaching the container to an innerliner of the tire with an adhesive includes attaching the container to the tire after the liquid polymer has cured; and the step of receiving the sensor unit in a container includes forming an opening in a base of the container and passing the proximal ends of the wire through the opening formed in the base”.
Whereas previously discussed, modified Raisanen discloses forming a chamber in the tire to include the use of a shell (construed as a container) for forming the insert, wherein the insert is disposed in the chamber, see the rejection of claims 1, 15. As to the mechanical stop: it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form modified Raisanen as claimed since: it is considered as matter of routine experimentation one would provide a device suitable for limiting the insertion of the insert in the chamber. This being beneficial for reducing the risk of damage to the printed circuit board during assembly. Moreover, the applicant has not provided a conclusive showing of unexpected results for the use of a mechanical stop over any other restraint. And the use of the sensor unit includes an antenna for wirelessly transmitting the notice to a remote processor, see Flechtner [0008], Raisanen [0029]; the remote processor is integrated into at least one of a vehicle electronic control unit, see Flechtner [0004] – [0005], [0011]; and the polymer plug further comprises multiple wires, wherein each wire includes a distal end that is spaced apart from the other wires, see Flechtner Fig. 2, Raisanen Fig. 9.
Response to Arguments
Applicant's arguments filed date have been fully considered but they are not persuasive.
Applicant’s Argument #1
Applicant argues that: Raisanen thus discourages providing an insert that extends from the inner side or internal cavity of the tire. In this manner, Raisanen teaches away from the method of the invention recited in Claim 1.
Examiner’s Response #1
Examiner respectfully disagrees: Disclosures are relevant as prior art for all they contain. Where a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed."). Therefore, Raisanen reasonably suggests forming the chamber is formed without extending through a radially outer surface of the tread. Moreover,
Applicant’s Argument #2
Applicant argues that: The applicant presents comments directed towards Flechtner, Robert and Orlewski.
Examiner’s Response #2
Examiner respectfully disagrees: In response to applicant's arguments against the references individually, 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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEDRICK S WILLIAMS whose telephone number is (571) 272-9776. The examiner can normally be reached on Monday - Thursday 8:00am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or (571) 272-1000.
/CEDRICK S WILLIAMS/Primary Examiner, Art Unit 1749