DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 5 is objected to because of the following informalities: the phrase “the second thickness ; and” in line 9 should be written as –the second thickness; and— so as to remove the spacing between “thickness” and “;”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: the phrase “the recess” in line 10 should be written as –the stepped recess— for consistency in claim language. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: the phrase “each one of the first subarea and the second subarea include” in lines 1-2 should be written as –each one of the first subarea and the second subarea includes— for grammatical clarity. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: the phrase “one or more of sensor and sensor container” in lines 1-2 and 3 should be written as –one or more of the sensor and the sensor container— for grammatical clarity and consistency in claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 5-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant has pointed to [0055]-[0065] of the specification and Figures 1-6, without further explanation or discussion as to the support other than to state “[b]asis for the amendments to Claim 5 appear throughout the specification.” However, the originally filed specification does not have support for the newly added negative claim limitation “wherein the attachment is free of mechanical fasteners.” Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. MPEP 2173.05(i). The specification does not positively or negatively recite mechanical fasteners, it is completely silent on them. Moreover, there is no statement distinguishing or criticizing the use of mechanical fasteners, or any statement that reasonably conveys to a person skilled in the art that the invention excludes them. While the specification discloses optional adhesive attachment ([0014], [0050]-[0051], [0055]), there is no disclosure of adhesive only attachment. The specification also discloses the use of flanges (Fig. 1: 20) ([0055]), which while not a mechanical fastener, is a disclosure of an additional retention structure. Thereby, the specification willing describes attachment details when they matter, yet omits disclosure of screws, rivets, clips, pins, or any other types of mechanical fasteners. Furthermore, the figures are not enough because while they do not depict screws, rivets, or other types of mechanical fasteners generally, this does not amount to an express disclosure that they are excluded. Patent drawings are often schematic and omission of a feature alone is not sufficient written description support for a negative limitation. This is further evidenced by the fact that the specification discloses an adhesive tape, layer, etc. may be used, but the figures do not depict it as they are schematic in nature. Claims 6-20 are dependent upon claim 5.
Claim 7 is 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 7, it is unclear how the second subarea can be laterally shifted in relation to the first subarea without creating a ridged structure that will hold onto the sensor and/or sensor container in the same manner as a mechanical fastener, and yet claim 5 requires the attachment without mechanical fasteners. Further clarification is requested.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 5, no prior art of record is considered to teach or suggest the combination of limitations of claim 5. In particular, the limitation “attaching one or more of a sensor and a sensor container to a bottom portion of the recess, wherein the attachment is free of mechanical fasteners.”
Claims 6-20 would be allowable by dependence on claim 5.
The closest prior art of record is considered to be Wei et al. (US 20170355238) (of record), Nishida (US 20200298515) (of record), and Atte et al. (BR 112020022272, see machine translation).
Wei discloses the limitations of claim 5 as discussed in the 12/18/2025 Nonfinal Rejection. However, Wei expressly discloses only embodiments wherein the sensor is attached to the bottom of the recess using mechanical fasteners. One of ordinary skill in the art before the effective filing date of the claimed invention would not have found it obvious to modify Wei contrary to its express disclosure with Wei’s teaching away of an attachment that is free of mechanical fasteners, especially without any further motivation or teaching to do so.
Nishida discloses a method of processing a tire, comprising creating a recess in an area of an inner surface of the tire, wherein creating the recess comprises: removing a first thickness of the inner surface in a first subarea of the area of the inner surface (Figs. 3A-3B); and removing a second thickness of the inner surface in a second subarea of the area of the inner surface (Figs. 3C-3D), 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 a result of removing the first thickness and the second thickness (Fig. 3D); and attaching one or more of a sensor and a sensor container to a bottom portion of the recess (Fig. 3E), wherein the attachment is free of mechanical fasteners (Fig. 3E: see how adhesive 14 adheres the sensor to the recess bottom) ([0037]). However, Nishida does not expressly recite that the recess is a stepped recess, and expressly discloses that the shape of the first removed layer is repeated again for the second removed layer in order to secure the adhesive force equivalent to that of the rubber member before the silicone layer is adhered thereon (Figs. 3A-3E) ([0034]). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would not have found it obvious to modify Nishida contrary to its express disclosure of a non-stepped recess to form a stepped recess, especially without a motivation or teaching to do so, when Nishida discloses a specific intent and reasoning for providing the disclosed recess structure.
Atte discloses a method of processing a tire, comprising creating a stepped recess, wherein creating the stepped recess comprises: removing a first thickness of the elastomer composition in a first subarea (Figs. 6a-6c, 7a-7c); and removing a second thickness of the elastomer composition in a second subarea (Figs 6a-6c, 7a-7c), 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 a result of removing the first thickness and the second thickness (Figs. 6c, 7c); and attaching one or more of a sensor and a sensor container to a bottom portion of the recess (Figs. 1c, 5a-5b), wherein the attachment is free of mechanical fasteners (Fig. 5b: see adhesive 114 attaching sensor with no other mechanical fasteners). However, Atte does not expressly recite that the stepped recess is provided in an area of an inner surface of the tire, and instead discloses it is provided in the tread so as to measure the wear of the tread while being protected against gripping forces and/or impact during insertion into the tread, while also communicating with other components provided on the tire inner surface that are not disposed in a recess (Fig. 1c). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would not have found it obvious to modify Atte contrary to its express disclosure of a stepped recess formed in a tire tread rather than tire inner surface, especially without a motivation or teaching to do so, when Atte discloses a specific intent and reasoning for providing the disclosed recess in the tread, which functions and operates differently than a sensor formed on a tire inner surface, and provides an additional component on the tire inner surface that is not within a recess.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE 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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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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