Any timDETAILED 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
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, 21-24, 26-28, 30, 32, 33 and 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), Bisco Material Selection Guide (NPL) (of record), Bisco MF1 Product Data Sheet (NPL) (of record) and applicant’s own specification.
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 thereby adhering the sealant layer and the silicone foam noise reduction layer, and that the silicone foam noise reduction layer has a density of less than 60 kg/m3 according to the ASTM D 1056 standard, a tensile strength of greater than 70kPa measured according to the ASTM D 412 standard, an ultimate elongation of greater than 40% measured according to the ASTM D 412 standard and a compression set of less than 5% measured 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);
b2) based on applicant’s own specification, “the use of an open cell silicone foam allows the sealant material to penetrate inside the open cell structure of the silicone foam and thus achieve ‘mechanical adhesion’, wherein the silicone foam is locked to the sealant due to the infiltration of the sealant within the foam structure” (p.9 L1-19) and similarly described on p.5 L5-10, meaning that the only requirement for having the sealant material infiltrate the silicone foam is for the foam to have an open cell structure;
b3) 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, thereby adhering the sealant layer and the silicone foam noise reduction layer;
c) Gubbels teaches that foam noise reduction layer comprises of a silicone material ([0085]);
d1) 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]);
d2) Sandstrom further 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]), implying that MF1-6535 would have the required density previously noted;
e) 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);
f) 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);
g) Bisco MF1 Product Data Sheet lists the MF1 Cellular Silicone Foam series includes MF1-35 (NPL);
h) 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
i) 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), including density, tensile strength, ultimate elongation and compression set; and
j) that one would have been motivated to select the appropriate silicone foam for the predictable result of picking a material suitable for noise absorption within tires; and
k) one of ordinary skill in the art would find it obvious for the intrinsic properties of Sandstrom, including density, tensile strength, ultimate elongation and compression set to have been determined by a known standardized test, including that of ASTM D 1056 (for density and compression set) and ASTM D 412 (for tensile strength and ultimate elongation).
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 21, modified Gubbels teaches all limitations of claim 16 as set forth above. Additionally, as set forth above in the rejection of claim 16 with regards to the selection of suitable material (see d1 to k), as the MF1 silicone composition is recognized as a suitable material for use in the claimed invention as noted in applicant’s specification and would include all the intrinsic properties, including compression set, modified Gubbels teaches that the silicone foam noise reduction layer has a compression set of less than 2%.
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 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 thereby adhering the sealant layer and the silicone foam noise reduction layer, and that the silicone foam noise reduction layer has a density of less than 60 kg/m3 according to the ASTM D 1056 standard, a tensile strength of greater than 70kPa measured according to the ASTM D 412 standard, an ultimate elongation of greater than 40% measured according to the ASTM D 412 standard and a compression set of less than 5% measured 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, thereby adhering the sealant layer and the silicone foam noise reduction layer;
c) Gubbels teaches that foam noise reduction layer comprises of a silicone material ([0085]);
d1) 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]);
d2) Sandstrom further 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]), implying that MF1-6535 would have the required density previously noted;
e) 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);
f) 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);
g) Bisco MF1 Product Data Sheet lists the MF1 Cellular Silicone Foam series includes MF1-35 (NPL);
h) 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
i) 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), including density, tensile strength, ultimate elongation and compression set; and
j) that one would have been motivated to select the appropriate silicone foam for the predictable result of picking a material suitable for noise absorption within tires; and
k) one of ordinary skill in the art would find it obvious for the intrinsic properties of Sandstrom, including density, tensile strength, ultimate elongation and compression set to have been determined by a known standardized test, including that of ASTM D 1056 (for density and compression set) and ASTM D 412 (for tensile strength and ultimate elongation).
Examiner notes that the limitation of the sealant infiltrating the open cell structure of the silicone foam “thereby adhering 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 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) 29 is rejected under 35 U.S.C. 103 as being unpatentable over Gubbels et al. (WO2021071847) (of record), Sandstrom et al. (EP2397314, w/ US20110308706 as English equivalent) (of record), Bisco Material Selection Guide (NPL) (of record), Bisco MF1 Product Data Sheet (NPL) (of record) and applicant’s own specification as set forth above in the 35 U.S.C. 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 25 June 2026 have been fully considered but they are not persuasive.
Regarding p.9 of applicant’s remarks, applicant argues that the examiner has not done enough to establish inherency that the foam would be infiltrated by the adhesive. Examiner disagrees, noting that it is now shown in the rejection of claim 16 as set forth above, examiner’s determination of inherency is based on applicant’s own criteria for what enables mechanical infiltration, that criteria being that the foam comprises an open cell structure. As Gubbels teaches that the silicone foam can comprise an open cell structure ([0085]), it therefore meets the criteria for enabling mechanical infiltration and inherently has such a quality.
Regarding p.10 of applicant’s remarks, applicant argues that Sandstrom teaches that the use of an adhesive is necessary, that “’the adhesive is an acrylic adhesive’ and identifies ‘6038 adhesive transfer tape from 3M’ as a suitable product” that “is a chemical adhesive layer”, therefore “undermines the premise that infiltration-based adhesion arises naturally when a sealant contacts a silicone foam”. Examiner disagrees, first noting that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (see MPEP 2123). In particular, with regards to the acrylic adhesive transfer tape mentioned in Sandstrom, examiner notes that [0057] teaches that “in one embodiment, the adhesive is an acrylic adhesive” (bolded for emphasis) and that claims 2 and 12 of Sandstrom only require the use of an adhesive, meaning the acrylic adhesive in Sandstrom is a preferred embodiment that does not teach away from a broader disclosure of using adhesive to adhere the silicone foam to the inner surface of the tire. Given that 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), Sandstrom does not teach away from the use of adhesives besides an acrylic adhesive.
Regarding p.10-11 of applicant’s remarks, applicant argues that as Gubbel’s only working example uses a closed cell structure silicone foam, it is therefore an engineered outcome and not automatic result of the infiltration. Examiner disagrees, noting that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (see MPEP 2123), Gubbel’s teaches the use of an open cell structure silicone foam ([0085]) and applicant’s own specification specifies that the only criteria for having mechanical infiltration of the sealant into the silicone foam is the presence of an open cell structure (p.5 L5-10, p.9 L1-19).
With regards to p.11 of applicant’s arguments that as “Gubbels teaches that ‘the layer of silicone self-sealing composition may be cured on the inner surface of the tire before the sound-absorbing layer is applied’ Gubbels, at [0082]” and that “applied to an already-solidified layer, the foam cannot be infiltrated by flowable sealant”, examiner notes that such arguments, specifically that the curing state of the sound-absorbing layer impacts its ability to be infiltrated by flowable sealant, amount to applicant’s own opinion not supported by explicit evidence and is not considered persuasive.
Regarding p.12 of applicant’s remarks, applicant argues that the infiltration structure for the silicone foam noise reduction layer is not found in the prior art of Gubbels or Sandstrom. Examiner disagrees, as, similar to the response to p.10-11 of applicant’s arguments above, Gubbel’s teaching of an open cell structure silicone foam ([0085]) meet applicant’s own criteria for what allows for mechanical infiltration: having an open cell structure (p.5 L5-10, p.9 L1-19).
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.
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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