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 § 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.
Claims 1-9 and 16-18 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.
Independent claim 1 has been amended to require that the root portion is tapered to prevent contact between the fastening element and the body of the electronic device. This language is inconsistent with the arrangement originally described and depicted in the original disclosure. This is particularly evident in view of the disclosure that the blind hole accommodates a root portion of the electronic device and does not accommodate “an entire body of the electronic device”. Thus, the blind hole does in fact accommodate a portion of the body of the electronic device. This would result, in turn, with contact between the fastening element and the body of the electronic device (upon positioning the electronic device within the blind hole). As such, the amended claim language is seen to constitute new matter.
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) 1-9 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2012-514557 (of record) and further in view of Bell (US 2003/0155054, of record) and/or Koch (US 5,500,065, of record).
As best depicted in Figure 6, JP ‘557 teaches a tire construction comprising a pair of axially opposite end flaps (respective bead regions), a pair of sidewalls (define maximum section width), and a belt structure between respective tire sidewalls and is defined by a ground contacting tread portion (depicted with circumferential ribs in Figure 6) and an inner wall that forms a tire cavity.
The tire of JP ‘557 further includes a fastening element or rubber support 10 designed to house electronic modules, such as pressure sensors, wherein said support includes at least one storage portion 20. With specific respect to the structure of said support, Figure 1 depicts the presence of a base portion, a retaining portion, and at least one blind hole as depicted below.
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In such an instance, though, JP ‘557 fails to expressly teach dimensions for the base portion and for the retaining portion.
It is evident that the base portion has a greater dimension than the retaining portion, it being emphasized that a single storage portion can be included in the fastening element (Figures 1-7). In terms of the exact dimensions in respective portions, the claims as currently drafted are directed to absolute dimensions and it is well taken that dimensions are a function of the tire size and ultimately the intended use of the tire. One of ordinary skill in the art would have found it obvious to use the claimed dimensions, especially since D3 would vary in the tire of JP ‘557 as a function of the number of storage portions included (larger number of storage portions would correspond with larger D3).
Also, with respect to claim 1, JP ‘557 states that an adhesive “may” be provided to attach said rubber support to a tire innerliner. It is extremely well known and conventional, though, to use additional attachment techniques devoid of adhesive. Koch, for example, teaches the alternative use of co-curing techniques (non-adhesive) and adhesive techniques (Column 5, Lines 22+). Bell similarly discloses the alternative use of non-adhesive and adhesive techniques (Paragraph 25). One of ordinary skill in the art would have found it obvious use non-adhesive techniques in the tire of JP ‘557 given the disclosure that an adhesive “may” be included and the recognized use of alternative techniques. It is also noted that the claims are directed to a tire article, as opposed to a method of forming a tire, and thus, the use of co-curing (independent of which layers or layers are uncured or cured upon application) is seen to satisfy the claimed tire structure (that being the direct contact between the innerliner and the support in the absence of an adhesive).
Lastly, regarding claim 1, the term “accommodate” means to provide a place to live or be stored in or to provide lodging or sufficient space for. This language does not define a tire that actually includes an electronic device or a root portion of the electronic device. The claims simply require that the blind hole “accommodates” or provides space for a root portion of the electronic device- this is different than actually requiring the presence of a root portion in the blind hole and the presence of an additional portion of the electronic device outside of the blind hole. Additionally, the claims as currently drafted simply require at least one fastening element “for at least one electronic device”- thus, the claimed tire construction does not require the presence of an electronic device (and thus a root portion of an electronic device) but rather at least one fastening element having the intended use of housing an electronic device (and thus a root portion of an electronic device). Additionally, the language “ wherein the root portion has a non-circular shape and is located within the blind hole” fails to further define the structure of the claimed tire construction. It is emphasized that the root portion refers to a region of the electronic device and as detailed above, the tire as claimed does not require the presence of an electronic device (and thus the language non-circular, for example, defines a characteristic of a portion that is not required in the claimed tire construction). With specific respect to the language “is located within the blind hole”, said language refers to the arrangement of the electronic device when it is provided (certain arrangement is required when the intended use language is carried out) as opposed to actually requiring the presence of an electronic device. It is suggested that Applicant amend the claims to define a tire comprising, for example, at least one fastening element and an electronic device and a specific arrangement of said device within said fastening element.
Regarding claim 2, the figures of JP ‘557 generally suggest that a width or dimension of the retaining portion is smaller than a width or dimension of the base portion and as not above the exact dimension of the base portion is a function of the number of storage portions. One of ordinary skill in the art would have found it obvious to use the claimed ratio given such a general disclosure and Applicant has not provided a conclusive showing of unexpected results for the claimed ratio. Lastly, it is noted that the claims include the language “approximately”, further suggesting a range of ratios as opposed to a single ratio.
With respect to claims 3-6, 8, 9, and 16-18, a wide variety of shapes are conventionally used for tire fastening elements, including those required by the claimed invention. One of ordinary skill in the art would have found it obvious to use any number of commonly used shapes absent a conclusive showing of unexpected results. With specific respect to claims 8 and 9, it is noted that the claims define mutually exclusive shapes, further suggesting a lack of criticality for any individual shape.
As to claim 7, Figures 1 and 5 depict the presence of multiple blind holes (JP ‘557 describes the inclusion of at least one hole).
Response to Arguments
Applicant's arguments filed 1-9 and 16-18 have been fully considered but they are not persuasive.
Applicant contends that there is an unexpected function advantage from the claimed invention. More particularly, Applicant states that when the maximum internal width of the blind hole coincides with the maximum width of the undercut portion, a shape constraint is formed and secure, tool-free manual retention and removal of the electronic device is realized. It is emphasized, though, that the maximum internal width ɸ of the blind hole coincides with the maximum width of the undercut portion (Figure 3 of JP ‘557) and as such, any realized benefits would be present in the arrangement of JP ‘557.
Applicant also states that none of the references teach or suggest the claimed tapered, non-circular root portions. It is emphasized that the claims as currently drafted fail to require an electronic device and thus, any features associated with root portions of the electronic device are not required by the claims as currently drafted.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 July 23, 2026
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