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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 22, 2026 has been entered.
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.
Claim 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. The claim language “the root portion is tapered to prevent contact with the body of the electronic device and has a non-circular shape” is not present in the original disclosure and the figures fail to provide support for said language. As such, said language is seen to constitute new matter. It is understood that the dimensions of both the retaining portion of the fastening element and the respective blind hole are selected in order to accommodate in the blind hole only a limited root portion of the electronic device and not the entire body of the electronic device. However, in such an instance, a root portion of the electronic would be in contact with the body of the electronic device (continuous structure as opposed to a structure in which a root portion is spaced from or separated from a body of the electronic device). Also, there is no mention of the root portion of the electronic device having a non-circular geometry.
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.
6. 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). It is noted, though, that Figures 4 and 5 of JP ‘557 depict the presence of a portion within the blind hole and a portion outside the blind hole.
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
7. Applicant’s arguments with respect to claim(s) 1-9 and 16-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
8. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 April 24, 2026
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