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Claims 8-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method of producing a set of tire beads (Group II), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/16/2025. The traversal is on the ground(s) that claim 8 has been amended to be directed at a method of producing a set of tire balancing beads rather than a method of balancing a tire, and thereby both independent claims are now directed at a single general inventive concept. This is not found persuasive because even if the claimed subject matter is linked by a single general inventive concept, the common special technical feature does not make a contribution over the prior art. Applicant has not provided any arguments directed to the prior art and how the common special technical feature makes a contribution over the prior art. Therefore, Applicant’s arguments are not persuasive, and the technical features are known in the prior art as evidenced by the prior art rejection below.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 3-7 are objected to because of the following informalities: the phrase “balancing beads” in line 1 of each respective claim should be written as –tire balancing beads— for consistency in claim language throughout the claims. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: the phrase “metal beads or” in line 2 should be written as –metal beads, or— for grammatical clarity. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: the phrase “moisture absorbent” in line 2 should be written as –super moisture absorbent— for consistency in claim language. Appropriate correction is required.
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.
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) and optionally any one of Martin et al. (US 3321276), Dultz (US 3567645), and/or Arbelaez Correa et al. (US 20200323703).
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) and optionally any one of Martin et al. (US 3321276), Dultz (US 3567645), and/or Arbelaez Correa et al. (US 20200323703) as applied to claim 1 above, and further in view of Arbelaez Correa et al. (US 20200323703).
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) and optionally any one of Martin et al. (US 3321276), Dultz (US 3567645), and/or Arbelaez Correa et al. (US 20200323703) as applied to claims 1 and 6 above, and further in view of Kramer Industries (Mesh Size, 28 February 2019, page 1).
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.
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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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749