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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 March 2026 has been entered.
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.
Claims 25 and 34 are 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. The limitation in claim 25 of “the sealant layer is sandwiched between the tread portion and the silicone foam noise reduction layer without intermediary” is already found in claim 16 and fails to further limit claim 16. Similarly, the limitation in claim 34 of “the sealant layer is sandwiched between the tread portion and the silicone foam noise reduction layer without intermediary” is already found in claim 30 and fails to further limit claim 30. 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.
Claim(s) 16, 18, 19, 22-28, 30 and 32-35 are rejected under 35 U.S.C. 103 as being unpatentable over Gubbels et al. (WO2021071847) (of record) in view of Sandstrom et al. (EP2397314, w/ US20110308706 as English equivalent) (of record).
Regarding claim 16, Gubbels discloses a tire comprising:
a tread portion ([0009] “profiled tread”);
that the tread portion defines in part an inner cavity of the tire ([0009]);
a sealant layer arranged on the tread portion of the tire in the inner cavity of the tire ([0022], “self-sealing silicone layer”); and
a silicone foam noise reduction layer arranged on the sealant layer in the inner cavity of the tire ([0024], [0085]), wherein the silicone foam noise reduction layer is a cellular silicone foam with an open cell structure ([0085]);
wherein the sealant layer is sandwiched between the tread portion and the silicone foam noise reduction layer without intermediary ([0012] in that there are no other layers explicitly disclosed).
While Gubbels does not explicitly disclose that the tire comprises a bead portion and a sidewall portion extending between the bead portion and the tread portion and that the bead portion and sidewall portion define in part the inner cavity of the tire and that the sealant infiltrates the open cell structure of the silicone foam, and that the silicone foam noise reduction layer has a density of less than 60 kg/m3 according to the ASTM D 1056 standard, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to do so, given that:
a) examiner takes Official Notice that pneumatic tires, such as the pneumatic tire disclosed in Gubbels ([0002]), necessarily comprise of bead portions and sidewall portion extending between the bead portions and the tread portions and that the bead and sidewall portions define, along with the tread portion, the inner cavity of the tire;
b1) case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01); and
b2) given that, as set forth above, Gubbels discloses a substantially identical tire to that of the claimed invention, so while not explicitly disclosed, the tire disclosed by Gubbels would have all the same properties as the claimed invention, including that the sealant infiltrates the open cell structure of the silicone foam;
c1) Sandstrom, which is within the tire noise absorption art, teaches that a silicone foam noise reduction layer (“silicone rubber foam”) for use within a tire has a specific density of 0.01 to 0.4 ([0056], which converts to 10 to 400 kg/m3, which overlaps with the claimed range of less than 60 kg/m3) for the benefit of easy deformation and no reduction in steering stability ([0055]);
c2) one of ordinary skill in the art would find it obvious for the density of Sandstrom to have been determined by a known standardized test, including that of ASTM D 1056. Additionally, ASTM D 1056 is a standardized measurement test and does not impart structural or compositional differences to the layer.
Examiner notes that the limitation of the sealant infiltrating the open cell structure of the silicone foam “to provide adhesion between the sealant layer and the silicone foam noise reduction layer” is considered a recitation of an intended use of the claimed invention that does not result in a structural difference and therefore is not given weight.
Regarding claim 18, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, given that the Gubbels teaches that the sound absorbing material requires “suitable thermal and mechanical properties so as to not become degraded and/or deformed” at temperatures “well above ambient temperature” (with ambient temperatures being interpreted as 23oC) ([0007]), modified Gubbels teaches that the silicone foam noise reduction layer has a range of operating temperatures of at least 23oC, which overlaps with the claimed range of from -40°C to over 150°C).
Regarding claim 19, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, given that the Gubbels teaches that the sound absorbing material requires “suitable thermal and mechanical properties so as to not become degraded and/or deformed” at temperatures “well above ambient temperature” (with ambient temperatures being interpreted as 23oC) ([0007]), modified Gubbels teaches that the silicone foam noise reduction layer has a range of operating temperatures of at least 23oC, which overlaps with the claimed range of -40°C to +200°C.
Regarding claim 22, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, given that Sandstrom teaches that that silicone foam noise reduction layer (“silicone rubber foam”) for use within a tire has a width of 30 to 150 mm ([0062], which overlaps with the claimed range of 50-150 mm), a thickness of 10 to 50 mm ([0062], which overlaps with the claimed range of 15-30 mm) and is disposed circumferentially around the tire ([0062], which overlaps with the claimed range of 90-100% of the tire inner circumference) to ensure that the foam noise damper has dimensions suitable to reduce noise level ([0061]-[0062]), it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application for the silicone foam noise reduction layer to have a width of 50-150mm, a thickness of 15-30mm, and/or extends over 90-100% of the tire inner circumstance.
Regarding claim 23, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, given that Sandstrom teaches that a silicone foam noise reduction layer (“foam noise damper” (22)) can be positioned to be centrally on the tire ([0031]) and the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see MPEP 2143(I)(A)), it would have been obvious to one of ordinary skill in the art prior the earliest effective priority date of the instant application date for the silicone foam noise reduction layer to be located centrally on the sealant layer for the predictable result of an axially-balanced tire.
Regarding claim 24, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, Gubbels teaches that the sealant layer is formed of a single homogeneous composition ([0009], [0059], [0079]) and is configured to adhere to the tread portion and noise reduction layer ([0012], [0024]).
Regarding claim 25, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, as Gubbels teaches the self-sealing layer acting as the adhesive between the tread portion and the foam layer with no other layers explicitly disclosed ([0012]), Gubbels discloses that the sealant layer is sandwiched between the tread portion and the silicone foam noise reduction layer without intermediary.
Regarding claim 26, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, as Gubbels teaches only a silicone self-sealing composition and a sound-absorbing layer with no other layers mentioned ([0010]), modified Gubbels teaches that the tire comprises only the sealant layer and silicone foam noise reduction layer as layers in the inner cavity of the tire.
Regarding claim 27, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, as Gubbels teaches the self-sealing layer acting as the adhesive between the tread portion and the foam layer with no other layers explicitly disclosed ([0012], [0024]) and no other layers are mentioned ([0010]), modified Gubbels teaches that the tire does not comprise a separate adhesive layer in addition to the sealant layer and the silicone foam noise reduction layer.
Regarding claim 28, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, Gubbels teaches that the sealant layer has a layer thickness of 1 to 5 mm ([0080], which is within the claimed range of between 1 – 6 mm) and/or a tackiness of greater than 1.025 ([0082], which is within the claimed range of 0.1 to 25 N).
Regarding claim 30, Gubbels discloses a vehicle comprising a tire, the tire comprising:
a tread portion ([0009] “profiled tread”);
that the tread portion defines in part an inner cavity of the tire ([0009]);
a sealant layer arranged on the tread portion of the tire in the inner cavity of the tire ([0022], “self-sealing silicone layer”); and
a silicone foam noise reduction layer arranged on the sealant layer in the inner cavity of the tire ([0024], [0085]), wherein the silicone foam noise reduction layer is a cellular silicone foam with an open cell structure ([0085]);
wherein the sealant layer is sandwiched between the tread portion and the silicone foam noise reduction layer without intermediary ([0012] in that there is no other layers explicitly disclosed).
While Gubbels does not explicitly disclose that the tire comprises a bead portion and a sidewall portion extending between the bead portion and the tread portion and that the bead portion and sidewall portion define in part the inner cavity of the tire and that the sealant infiltrates the open cell structure of the silicone foam, and that the silicone foam noise reduction layer has a density of less than 60 kg/m3 according to the ASTM D 1056 standard, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date to do so, given that:
a) examiner takes Official Notice that pneumatic tires, such as the pneumatic tire disclosed in Gubbels ([0002]), necessarily comprise of bead portions and sidewall portion extending between the bead portions and the tread portions and that the bead and sidewall portions define, along with the tread portion, the inner cavity of the tire;
b1) case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01); and
b2) given that, as set forth above, Gubbels discloses a substantially identical tire to that of the claimed invention, so while not explicitly disclosed, the tire disclosed by Gubbels would have all the same properties as the claimed invention, including that the sealant infiltrates the open cell structure of the silicone foam;
c1) Sandstrom, which is within the tire noise absorption art, teaches that a silicone foam noise reduction layer (“silicone rubber foam”) for use within a tire has a specific density of 0.01 to 0.4 ([0056], which converts to 10 to 400 kg/m3, which overlaps with the claimed range of less than 60 kg/m3) for the benefit of easy deformation and no reduction in steering stability ([0055]);
c2) one of ordinary skill in the art would find it obvious for the density of Sandstrom to have been determined by a known standardized test, including that of ASTM D 1056. Additionally, ASTM D 1056 is a standardized measurement test and does not impart structural or compositional differences to the layer.
Examiner notes that the limitation of the sealant infiltrating the open cell structure of the silicone foam “to provide adhesion between the sealant layer and the silicone foam noise reduction layer” is considered a recitation of an intended use of the claimed invention that does not result in a structural difference and therefore is not given weight.
Regarding claim 32, modified Gubbels teaches all limitations of claim 30 as set forth above. Additionally, given that Sandstrom teaches that a silicone foam noise reduction layer (“foam noise damper” (22)) can be positioned to be centrally on the tire ([0031]) and the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see MPEP 2143(I)(A)), it would have been obvious to one of ordinary skill in the art prior the earliest effective priority date of the instant application date for the silicone foam noise reduction layer to be located centrally on the sealant layer for the predictable result of an axially-balanced tire.
Regarding claim 33, modified Gubbels teaches all limitations of claim 30 as set forth above. Additionally, Gubbels teaches that the sealant layer is formed of a single homogeneous composition ([0009], [0059], [0079]) and is configured to adhere to the tread portion and noise reduction layer ([0012], [0024]).
Regarding claim 34, modified Gubbels teaches all limitations of claim 30 as set forth above. Additionally, as Gubbels teaches the self-sealing layer acting as the adhesive between the tread portion and the foam layer with no other layers explicitly disclosed ([0012]), Gubbels teaches that the sealant layer is sandwiched between the tread portion and the silicone foam noise reduction layer without intermediary.
Regarding claim 35, modified Gubbels taches all limitations of claim 30 as set forth above. Additionally, as Gubbels teaches only a silicone self-sealing composition and a sound-absorbing layer with no other layers mentioned ([0010]), modified Gubbels teaches that the tire comprises only the sealant layer and silicone foam noise reduction layer as layers in the inner cavity of the tire.
Claim(s) 21 is rejected under 35 U.S.C. 103 as being unpatentable over Gubbels et al. (WO2021071847) (of record) and Sandstrom et al. (EP2397314, w/ US20110308706 as English equivalent) (of record) as set forth above in the 103 rejection of claim 16 and in further view of Bisco Material Selection Guide (NPL) (of record), Bisco MF1 Product Data Sheet (NPL) (of record) and applicant’s own specification.
Regarding claim 21, modified Gubbels teaches all limitations of claim 16 as set forth above. While Gubbels does not explicitly teach that the silicone foam noise reduction layer has a compression set of less than 2%, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a) Gubbels teaches that foam noise reduction layer comprises of a silicone material ([0085]);
b1) Sandstrom, teaches that one silicone foam noise reduction layer for use with a tire (“silicone rubber foam strip”) can comprise of the material MF1-6535 ([0073]);
b2) case law holds that the selection of a known material based on its suitability for its intended use is prima facie obvious (See MPEP 2144.07);
c) Bisco Material Selection Guide (with Bisco being part of the Rogers Corporation) explicitly teaches that the Bisco Cellular Silicone series, which includes the material MF1 (with MF1-55 as one possible embodiment), is suitable for “Acoustic Performance” and “Vibration Reduction” (which can contribute to noise) within automotive services (p.3-4);
d) Bisco MF1 Product Data Sheet lists the MF1 Cellular Silicone Foam series includes MF1-35 (NPL);
e) applicant’s own specification asserts that Rogers MF1-35 as a “silicone foam suitable for use in the silicone foam noise reduction layer” (p.11 L15-16); and
f) case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01), which would include any intrinsic properties inherent to said compositions (in this case, MF1-35).
One would have been motivated to do so for the predictable result of picking a material suitable for noise absorption within tires.
Claim(s) 29 is rejected under 35 U.S.C. 103 as being unpatentable over Gubbels et al. (WO2021071847) (of record) in view of Sandstrom et al. (EP2397314, w/ US20110308706 as English equivalent) (of record) as set forth above in the 103 rejection of claim 16, and further in view of Bauer (US20180086158) (of record) and Rodgers (NPL) (of record).
Regarding claim 29, modified Gubbels teaches all limitations of claim 16 as set forth above. While Gubbels does not explicitly teach that the sealant layer comprises a butyl rubber, a plasticizer and a tackifier resin, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a) Bauer, which is within the tire sealant art, teaches that a sealant layer (“sealant” (8)) for use to adhere a foam noise reduction layer (“inner absorber” (9)) to the inner cavity of a tire can comprise of a mixture of not only silicone compounds but also of butyl rubber ([0025]), recognizing butyl rubber as an appropriate material for the predictable result of obtaining a sealant layer and case law states that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see MPEP 2143(I)(A));
b) Bauer teaches that the sealant composition can comprise of “customary further constituents, such as plasticizer oils” ([0025]; and
c) Rodgers, which is within the rubber compounding art, teaches that possible processing aids for use in rubber compounds (which would include butyl rubber) include tackifier resins for the benefit of improved adhesion between components (p.645-646).
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually on p.7 regarding Gubbels’ lack of density teaching (said teaching being found in Sandstrom), 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).
Regarding applicant’s arguments on p.7, applicant argues that as Gubbels teaches the use of an optional adhesion promoter, said adhesion is chemical instead of mechanical and therefore “strongly suggests that Gubbels does not contemplate mechanical adhesion through infiltration of sealant into an open cel foam structure”. Examiner disagrees, noting that Gubbels never explicitly discloses that the adhesion is achieved solely through chemical adhesion and/or that it excludes any mechanical adhesion in any form, regardless of the inclusion of an optional adhesion promoter, and that applicant’s interpretation of Gubbels is applicant’s opinion not supported by citation. Furthermore, the current claim limitations do not exclude the presence of chemical adhesion in any form.
In response to applicant’s argument on p.9 that there is no teaching, suggestion, or motivation to combine the references as Sandstrom does not teach the use of a sealant layer, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as Sandstrom teaches a silicone foam noise reduction layer should have a specific density for easy deformation and no reduction in steering stability ([0055]) and Gubbels teaches a silicone foam noise reduction layer, a person of ordinary skill in the art would have proper motivation to combine Sandstrom’s teachings with Gubbels.
With regards to applicant’s argument on p.9 that Sandstrom teaches the use of a “separate adhesive” ([0049] in EP1777081, [0057] in US equivalent US20110308706) which would exclude a sealant, examiner disagrees. While true Sandstrom teaches that “to ensure adhesion of the silicone rubber foam to the innerliner use of an adhesive is necessary” in [0057], examiner notes that Sandstrom does not explicitly teach away from said adhesive also being used as a sealant layer and that the adhesive can only fulfill a purpose of adhesion. Of note, Gubbels explicitly discloses in [0024] that “the silicone self-sealing composition as described above can be utilised in the aforementioned pneumatic tire as both a self-sealing silicone layer and also as an adhesive for a sound-absorbing layer to be adhered to the inner surface of a pneumatic tire” (bolded for emphasis).
In response to applicant's argument on p.9 that Sandstrom does not relate to a self-sealing tire or solve the technical problem of the present application, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749