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 .
Election/Restrictions
Claims 1-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected tire (Group I), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/02/2025.
Claim Objections
Claim 5 is objected to because of the following informalities: the phrase “as result of” in line 9 should be written as –as a result of— for grammatical clarity. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: the phrase “the second thickness and the further thickness” in line 6 should be written as –the second thickness, and the further thickness— for grammatical clarity. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: the phrase “recess; and” in line 6 should be written as –recess; or— for grammatical clarity. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: the phrase “the recess” in line 1 should be written as –the stepped recess— for consistency in claim language throughout the claims. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: the phrase “the tire and on a sidewall” in line 2 should be written as –the tire or on a sidewall— for grammatical clarity. Appropriate correction is required.
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 10-11 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 10, the phrase “a further thickness” in line 5 is unclear. Previously, “at least one further thickness” was disclosed in lines 1-2. It is unclear if this is a new further thickness different from the at least one further thickness (in which case the examiner suggests renaming the further thickness), or if it is intended to be the same as the at least one further thickness (in which case the examiner suggests renaming it as such). For the purposes of examination, the examiner assumes that they are two different further thicknesses, wherein at least one further thickness is removed, and a further overlapping zone thickness is removed as a result of removing the first thickness, the second thickness, and the at least one further thickness.
Regarding claim 11, the phrases “an overlapping zone” in lines 2 and 3 are unclear. It is unclear if both or either refer to the same overlapping zone of claim 5, or to a new and different overlapping zone(s). For the purposes of examination, the examiner assumes –the overlapping zone— in each instance.
Regarding claim 13, the phrase “each one of the first subarea and the second subarea have one or more” in lines 1-2 is unclear. It is unclear how each individual subarea can have more than one shape. For the purposes of examination, the examiner assumes each one of the first subarea and the second subarea have a circular shape, an elliptical shape, or a curved shape.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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.
Claim(s) 5-6, 8, 12-14, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wei et al. (US 20170355238).
Regarding claim 5, Wei discloses a method of processing a tire, comprising creating a stepped recess in an area of an inner surface of the tire (Figs. 1A-1B: 102, 103; see also various example shapes for stepped recesses in Fig. 3: 302, 303; Fig. 7: 702, 703; Fig. 9: 902, 903), wherein the inner surface is formed by a rubber material (i.e., elastomer composition) ([0023]-[0024]).
Wei further discloses that creating the stepped recess comprises molding or cutting away material (i.e., removing thickness) ([0035]-[0036]). Moreover, the stepped recess has a first thickness of the elastomer composition in a first subarea of the area of the inner surface (Figs. 1A, 1B: 104 or 106) and a second thickness of the elastomer composition in a second subarea of the area of the inner surface (Figs. 1A, 1B: 106 or 104), wherein the second subarea (Figs. 1A, 1B: 106 or 104) at least partially overlaps with the first subarea (Figs. 1A, 1B: 104 or 106) in an overlapping zone (Figs. 1A, 1B: see how all of 106 falls within and overlaps with 104) so that in the overlapping zone there is an overlapping zone thickness which is a sum of the first and second thicknesses (i.e., a third thickness of the elastomer composition is removed as result of removing the first thickness and the second thickness) (Fig. 1A: see thickness of entire depth of 104 and 106 together).
Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized, or alternatively found obvious, that because Wei discloses forming the first, second, and third thicknesses by cutting, Wei discloses: removing a first thickness of the elastomer composition in a first subarea of the area of the inner surface; and removing a second thickness of the elastomer composition in a second subarea of the area of the inner surface, wherein the second subarea at least partially overlaps with the first subarea in an overlapping zone so that in the overlapping zone a third thickness of the elastomer composition is removed as result of removing the first thickness and the second thickness (i.e., an overlapping zone thickness which is a sum of the first and second thicknesses).
The examiner notes that while the claimed method does not expressly recite a particular sequence of steps for the removal of the thicknesses, one of ordinary skill in the art would further recognize, or alternatively find obvious, that the removing of the first and second thicknesses may be done in a limited number of ways: (1) at the same time; (2) removing the first thickness and then removing the second thickness; or (3) removing the second thickness and then removing the first thickness. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B). The examiner further notes that the thicknesses may be removed at the same time and still satisfy the claim limitations.
Regarding claim 6, Wei further discloses one of the first and the second subareas (Fig. 1B: 104 or 106) is smaller than the other one of the first and the second subareas (Fig. 1B: 106 or 104) and is surrounded by the other one of the first and second subareas (Figs. 1A, 1B), so that the one of the first and the second subareas being smaller than the other one of the first and the second subareas corresponds to the overlapping zone (Figs. 1A, 1B: 106).
Regarding claim 8, Wei further discloses the inner surface of the tire is a surface of an innerliner of the tire which faces a tire cavity of the tire ([0024], [0066], [0069]).
Regarding claim 12, Wei further discloses at least one step is formed between the overlapping zone (Figs. 1A, 1B: 106; See also Figs. 7, 9) and at least one portion of the first and second subareas (Figs. 1A, 1B: 104; See also Figs. 7, 9) outside of the overlapping zone.
Regarding claim 13, Wei further discloses each one of the first subarea and the second subarea have a circular shape (Fig. 1B), or a curved shape (Fig. 1B) ([0028]).
Additionally, Wei also discloses that the shape may be any of a variety of cross-sections ([0028]). 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.
Regarding claim 14, Wei further discloses one of the first and the second subareas (Fig. 1B: 104 or 106) is smaller than the other one of the first and the second subareas (Fig. 1B: 106 or 104) and is surrounded by the other one of the first and second subareas (Figs. 1A, 1B), so that the one of the first and the second subareas being smaller than the other one of the first and the second subareas corresponds to the overlapping zone (Figs. 1A, 1B: 106), and wherein the overlapping zone may include essentially a rectangular shape ([0026], [0028], [0089], [0095]).
Additionally, Wei also discloses that the shape may be any of a variety of cross-sections ([0028], [0089], [0095]). 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.
Regarding claim 17, Wei further discloses the overlapping zone (Fig. 1B: 106) corresponds to at least 50% of an area of the first subarea (Fig. 1B: 104 or 106) and at least 50% of an area of the second subarea (Fig. 1B: 106 or 104), respectively ([0031]-[0033]).
Regarding claim 18, Wei further discloses the tire is a cured tire and wherein the method further comprises mounting a sensor (Fig. 2: 210; Figs. 4A, 4B: 410) onto a bottom of the overlapping zone ([0039]-[0040], [0067]).
Regarding claim 19, Wei further discloses said sensor comprises an attachment surface (Fig. 2: 214) formed by a polymer composition ([0044]), and wherein the sensor is attached with the attachment surface, optionally via an adhesive ([0040]), to the overlapping zone (Figs. 1A, 1B, 3, 4A, 4B).
Regarding claim 20, Wei further discloses the stepped recess is located in a position chosen from one of radially below a tread portion of the tire or on a sidewall portion of the tire (Fig. 4A) ([0023]-[0024]).
Claim(s) 7, 10, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 20170355238) as applied to claim 5 above.
Regarding claim 7, Wei further discloses that the first and second subareas (Figs. 1A, 1B: 104 and 106) may have any of a variety of shapes or cross-sections ([0026], [0028]). 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. Moreover, case law holds that shifting the position of a component would have been obvious absent a showing that the rearrangement modified the operation of the device. See MPEP 2144.04. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Wei so as to laterally shift the second subarea in relation to the first subarea and such that it only partially overlaps with the first subarea.
Regarding claim 10, Wei further discloses that the recess may take on any variety of shapes ([0026], [0028], [0034]). Moreover, case law holds that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04. While Wei does not expressly recite the method further comprises removing at least one further thickness of the elastomer composition in at least one further subarea of the area of the tire surface, wherein the at least one further subarea at least partially overlaps with the first sub-area and the second sub-area in a further overlapping zone, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to remove at least one further thickness of the elastomer composition in at least one further subarea of the area of the tire surface in a similar manner to the first and second thicknesses and/or to change the overall shape of the recess as desired, wherein the at least one further subarea may at least partially overlap with the first sub-area and the second sub-area in a further overlapping zone. Accordingly, in the further overlapping zone a further thickness of the elastomer composition would necessarily be removed as a result of removing the first thickness, the second thickness, and the further thickness (i.e., a further overlapping zone thickness which is a sum of the first, second, and at least one further thicknesses).
Regarding claim 15, Wei further discloses a minimum diameter of one or more of the first subarea and the second subarea (Figs. 1A, 1B: D1) is 110% to 400% greater than a minimum diameter of one or more of the second subarea and the first subarea (Figs. 1A, 1B: D2) ([0031]), wherein the minimum diameter of one or more of the second subarea and the first subarea (Figs. 1A, 1B: D2) may be about 2.0 mm, between about 0.2 and 8.0 mm, between about 0.5 and 5.0 mm, and between about 1.0 and 3.0 mm ([0033]). Accordingly, one or more of the first subarea and the second subarea have a minimum diameter (Figs. 1A, 1B: D1) within a range of 4.2 to 10 mm, 0.42 to 40 mm, 1.05 to 25 mm, and 2.1 to 15 mm, wherein the ranges 0.42 to 40 mm and 1.05 to 25 mm overlap with the claimed range of 20 mm to 70 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 a minimum diameter of one or more of the first subarea and the second subarea.
Claim(s) 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 20170355238) as applied to claim 5 above, and further in view of Nishida (US 20200298515).
Regarding claims 9 and 16, Wei does not expressly disclose how the elastomer composition is cut.
However, it is generally known in the tire art to use laser ablation, such as a bi-directional laser moving line by line, to cut and remove rubber/elastomer composition from tires. For instance, Nishida discloses using laser ablation (Figs. 3A, 3C: 20), such as a bi-directional laser moving line by line (Figs. 3A, 3C), to cut and remove rubber/elastomer composition from tires (Figs. 3B, 3D) ([0022], [0027], [0031]-[0034]). In this manner, the adhesiveness of the worked upon area is improved so as to securely adhere and fix a member on a surface of the inner liner ([0010], [0054]). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Wei in order to cut the thickness of elastomer composition using a generally known method in the art, such as the bi-directional laser ablation as taught by Nishida.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 20170355238) as applied to claim 5 above, and optionally further in view of Sugimoto (US 20110060082).
Regarding claim 11, Wei further discloses an innerliner forming the inner surface of the tire ([0024], [0066], [0069]), wherein the innerliner includes a maximum thickness being larger than a total depth of the stepped recess (Fig. 1A: see how thickness of 102 is larger than depth of 104 and 106 combined).
While Wei does not expressly recite the innerliner includes a maximum thickness within a range of 300 µm to 4000 µm (0.3 mm to 4 mm), Wei does illustrate that a first thickness or a second thickness (Fig. 1A: L1) is approximately 15% of the innerliner thickness (Fig. 1A: 102). Wei further discloses a first thickness or a second thickness may be any variety of lengths, such as within a range of between about 1.0 mm and about 3.0 mm, between about 0.5 mm and about 5.0 mm, and between about 1.0 mm and about 7.0 mm ([0029]), which overlap with the claimed range of 5 µm to 1500 µm (0.005 mm to 1.5 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 a first thickness or a second thickness, or for the innerliner thickness. Accordingly, the innerliner thickness will be approximately within the range of 6.67 to 20 mm, 3.33 to 33.33 mm, or 6.67 to 46.67 mm, wherein 3.33 to 33.33 mm overlaps with the claimed range of 300 µm to 4000 µm (0.3 mm to 4 mm). While Wei does not state whether the figure is drawn to scale, one of ordinary skill in the art would have nonetheless found it obvious that the innerliner thickness would be reasonably in the aforementioned ranges.
Optionally, Sugimoto discloses a tire comprising an inner liner having a thickness within a range of from 0.05 to 0.5 mm ([0068]), which overlaps with the claimed range of 300 µm to 4000 µm (0.3 mm to 4 mm). In this manner, a satisfactory effect of suppressing air pressure drop is exerted and a satisfactory effect of improving fuel efficiency due to weight saving of the tire is exerted ([0068]). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Wei in order to provide the inner liner having a thickness in the aforementioned range for the advantages as taught by Sugimoto.
Additionally or alternatively, Wei illustrates that a first/second thickness (Fig. 1A: L1) is approximately 31% of the total recess depth, and a second/first thickness is approximately 76% of the total recess depth (Fig. 1A). Accordingly, a first/second thickness (Fig. 1A: L1) is within a range of between 2.45 to 7.35 mm, between about 0.5 mm and about 5.0 mm, and between about 1.0 mm and about 7.0 mm ([0029]), as discussed above, wherein ranges of between about 0.5 mm and about 5.0 mm or between about 1.0 mm and about 7.0 mm overlap with the claimed range of 5 µm to 1500 µm (0.005 mm to 1.5 mm). Thereby, the other second/first thickness will have a thickness within a range 1.22 to 12.25 mm or 2.45 to 17.15 mm, wherein a range 1.22 to 12.25 mm overlaps with the claimed range of 5 µm to 1500 µm (0.005 mm to 1.5 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 first or second thickness. While Wei does not state whether the figure is drawn to scale, one of ordinary skill in the art would have nonetheless found it obvious that the first/second thickness would be reasonably in the aforementioned ranges.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE (née AYALP) whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KATELYN SMITH (née WHATLEY) can be reached on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The fax phone number for the examiner is (571) 273-5031.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749