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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 4, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heffernan et al. (US 5766501) (of record) and optionally any one of Martin et al. (US 3321276) (of record), Dultz (US 3567645) (of record), and/or Arbelaez Correa et al. (US 20200323703) (of record).
Regarding claim 1, Heffernan discloses a set of tire balancing beads comprising: a set of solid non-absorbent beads (Fig. 2: 8 or 9) (Col. 2 lines 11-59; Col. 3 lines 61-67; Col. 4 line 1); and a desiccant (i.e., super moisture absorbent) silica gel (Col. 2 lines 66-67; Col. 3 lines 1-18; Col. 4 lines 1-3).
While Heffernan does not expressly recite that the super moisture absorbent silica gel is in the form of beads, Heffernan does suggest the silica gel is present in the form of a set of beads, granules, particles, etc. as it is defined having a mesh size in the range of 20-40 (Col. 3 lines 1-18: see also how the glass beads and metal beads are described as having a particular mesh size, and the silica gel has a mesh size in the same range as the glass bead mesh range). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the silica gel having the same mesh size range as the glass beads would also be provided in the form of a set of beads.
Optionally, Martin discloses a method of preparing solid silica gel in substantially spherical bead form (Col. 1 lines 8-16). In other words, it is well-known to manufacture silica gel in spherical bead form. Additionally or alternatively, Dultz discloses a process of manufacturing silica gel desiccants having spherical shape (i.e., beads), which are particularly desirable because of their resistance to abrasion, impact, and pressure, wherein silica gel in bead form can be used in processes involving continuous drying and regeneration, and can arrange themselves in uniform layers for full and complete utilization of the desiccants (Col. 1 lines 14-48). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the silica gel of Heffernan in bead form for the advantages as taught by Martin above. Additionally or alternatively, Arbelaez Correa discloses using absorbent granules, such as silica gel, wherein the absorbent granules allow increasing the absorption of fluid throughout ([0046]-[0047]). In other words, it is well-known to manufacture silica gel in granular bead form. Although Martin, Dultz, and Arbelaez Correa are directed to different applications outside of tire balancing beads, they are nevertheless reasonably pertinent to the same purpose of moisture absorption using silica gel. Because all of the references involve a desiccant material (e.g., silica gel) capable of absorbing moisture, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the silica gel of Heffernan in a well-known and commercially available form of granules or spherical beads as taught by Martin, Dultz, and Arbelaez Correa.
Regarding claim 2, Heffernan further discloses the set of solid non-absorbent beads (Fig. 2: 8 or 9) comprises glass beads, ceramic beads, or non-corrosive metal beads (Col. 2 lines 11-59; Col. 3 lines 61-67; Col. 4 line 1).
Regarding claim 4, Heffernan further discloses the set of solid non-absorbent beads are spherical (Col. 2 lines 27-59).
Regarding claim 6, as discussed above in claim 1, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that the set of super moisture absorbent beads would granular or spherical in shape due to their mesh size and the disclosure of the non-absorbent spherical beads having the same mesh size.
Optionally, Martin discloses the silica gel is in substantially spherical bead form (Col. 1 lines 8-16). Additionally or alternatively, Dultz discloses the silica gel desiccants have spherical shape (Col. 1 lines 14-48). Additionally or alternatively, Arbelaez Correa discloses the super moisture absorbent beads are granular in shape ([0046]-[0047]).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heffernan et al. (US 5766501) (of record) and optionally any one of Martin et al. (US 3321276) (of record), Dultz (US 3567645) (of record), and/or Arbelaez Correa et al. (US 20200323703) (of record) as applied to claim 1 above, and further in view of Arbelaez Correa et al. (US 20200323703) (of record).
Regarding claim 3, while Heffernan discloses that the set of super moisture absorbent beads comprises silica gel, it is well-known that silica gel may be interchanged with sodium polyacrylate. For instance, Arbelaez Correa discloses using absorbent granules that are selected from sodium polyacrylate, silica gel, etc. ([0047]). Case law holds that it is prima facie obvious to substitute equivalents known for the same purpose. See MPEP 2144.06. Such absorbent granules allow increasing the absorption of fluid throughout ([0046]). Although Arbelaez Correa is directed to a different application outside of tire balancing beads, it is nevertheless reasonably pertinent to the same purpose of moisture absorption. Because both Heffernan and Arbelaez Correa involve selecting a desiccant material capable of absorbing moisture, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to substitute one known desiccant for another having similar moisture absorption characteristics, such as silica gel and sodium polyacrylate, which are both well-known and commercially available desiccants that can be used in bead form.
Claim(s) 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heffernan et al. (US 5766501) (of record) and optionally any one of Martin et al. (US 3321276) (of record), Dultz (US 3567645) (of record), and/or Arbelaez Correa et al. (US 20200323703) (of record) as applied to claims 1 and 6 above, and further in view of Kramer Industries (Mesh Size, 28 February 2019, page 1) (of record).
Regarding claims 5 and 7, Heffernan further discloses that the solid non-absorbent beads have a mesh size either in a range of 80-325 or 20-40, and the silica gel (i.e., super moisture absorbent beads) have a mesh size of 20-40 (Col. 3 lines 10-18).
Kramer Industries discloses that a mesh size of 20-40 is equivalent to 0.850 mm to 0.425 mm (Page 1: Table), which overlaps with the claimed ranges of between about 0.5 mm and 4 mm and less than 10 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 diameter of the set of solid non-absorbent beads and the super moisture absorbent beads.
Response to Arguments
Applicant's arguments filed 05/12/2026 have been fully considered but they are not persuasive.
On page 4 of the Remarks, Applicant argues “in Heffernan, in any embodiment where a desiccant is considered, there is also a requirement for the presence of vermiculite or a lubricant material. There is no suggestion in Heffernan of an embodiment that is directed at ‘a set of solid non-absorbent beads’ and ‘a set of super moisture absorbent beads’. One skilled in the art would not be able to arrive at the claimed invention without the inclusion of the lubricant component.” The examiner respectfully disagrees.
As discussed in the detailed rejection above, Heffernan discloses a set of tire balancing beads comprising: a set of solid non-absorbent beads (Fig. 2: 8 or 9) (Col. 2 lines 11-59; Col. 3 lines 61-67; Col. 4 line 1); and a desiccant (i.e., super moisture absorbent) silica gel (Col. 2 lines 66-67; Col. 3 lines 1-18; Col. 4 lines 1-3), wherein the silica gel is present in the form of a set of beads, granules, particles, etc. as it is defined having a mesh size in the range of 20-40 (Col. 3 lines 1-18: see also how the glass beads and metal beads are described as having a particular mesh size, and the silica gel has a mesh size in the same range as the glass bead mesh range) and one of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized, or alternatively found obvious, that the silica gel having the same mesh size range as the glass beads would also be provided in the form of a set of beads. Additionally, even if it were not obvious from the disclosure of Heffernan that the silica gel would be in the form of beads, the detailed rejection above includes optional teachings from the art to show it would have been known or obvious that the silica gel would be in the form of beads. Accordingly, Heffernan, optionally in view of Martin, Dultz, and/or Arbelaez Correa, discloses a set of solid non-absorbent beads and a set of super moisture absorbent beads. Applicant has merely stated that there is no suggestion in Heffernan of an embodiment that is directed at a set of solid non-absorbent beads and a set of super moisture absorbent beads without explaining why or addressing the reference(s) of record that the examiner has provided disclosing said limitations. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Moreover, the claim language requires a set of tire balancing beads “comprising” solid non-absorbent beads and super moisture absorbent beads. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). Accordingly, even if Heffernan does require a lubricant, it also discloses the claimed components and the claim language does not exclude additional elements, such as lubricant, from being present. Furthermore, it is noted that the features upon which Applicant relies (i.e., no inclusion of lubricant) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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