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 § 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 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) 13, 15, and 17-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jardine et al. (US 20060090830) (of record).
Regarding claims 13 and 15, Jardine discloses a tire for a passenger vehicle ([0074]), the tire comprising a crown (Figs. 1-5: see region comprising tread and belt), two beads (Figs. 1-5: 1), and two sidewalls (Figs. 1-5: 6) connecting each bead to the crown, wherein the tire further comprises a sidewall insert (Figs. 1-5: 30) arranged axially between an exterior surface of at least one of the sidewalls and an interior surface of the at least one of the sidewalls (Figs. 1-5: 6), and wherein the sidewall insert (Figs. 1-5: 30) comprises at least one rigid elastomeric composition ([0101]).
Jardine further discloses the at least one rigid elastomeric composition of the sidewall insert having a modulus at 10% extension that is 5 to 13 MPa ([0024]), which overlaps with the claimed range of greater than or equal to 6 MPa and less than 13 MPa. 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 modulus at 10% extension.
Jardine further discloses a maximum thickness of the at least one rigid elastomeric composition being from 3 to 20 mm ([0075]), which approaches the claimed range of from 1.0 mm to 2.5 mm. Case law holds that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. One of ordinary skill in the art would reasonably expect a thickness of 3 mm to behave in substantially the same way as a thickness of 2.5 mm. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the maximum thickness of the at least one rigid elastomeric composition of the sidewall insert.
The examiner further notes Jardine discloses the range is a preferable range and does not teach away from, discredit, or discourage going outside of the range. Accordingly, the range is merely a preferable example and does not explicitly limit the disclosure to such a limitation. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123.
Moreover, Jardine also discloses that the insert occupies a particular percentage of the width of the wall of the sidewall ([0103]), and discloses that although the figures illustrate an insert of large dimensions, a similar function could be provided by one or more inserts of substantially different, in particular smaller, size ([0102]). The main function of this insert is to enable the tire to support a certain load when used at low pressure, or even at zero pressure ([0101]). In other words, the maximum thickness of the insert is considered to be a result effective variable that will affect the support of the sidewall and is recognized to have dimensions that may be changed and made smaller. It is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for the maximum thickness of the at least one rigid elastomeric composition of the sidewall insert. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). As discussed above, Jardine discloses a preferable range for the maximum thickness of the at least one rigid elastomeric composition of the sidewall insert ([0075]). In the present invention one of ordinary skill in the art would have been motivated to optimize maximum thickness of the at least one rigid elastomeric composition of the sidewall insert in order to properly support the sidewall.
The examiner notes Jardine discloses the modulus at 10% extension is a secant modulus of extension ME10 at 10% deformation, measured at 23oC in accordance with Standard ASTM D 412 ([0024]), wherein "modulus of extension ME10" of a rubber composition is understood to mean an apparent secant modulus of extension obtained at a uniaxial deformation of extension of the order of 10% measured at 23oC in accordance with Standard ASTM D 412 ([0090]). Applicant’s specification discloses the modulus at 10% extension, commonly referred to as MA10, is the elastic modulus of the compound measured during uniaxial tensile testing, at an elongation value of 0.1 (i.e. 10% elongation, expressed as a percentage), wherein the uniaxial tension is applied to the test specimen at a constant rate, and the elongation and the force are measured, wherein the measurement is carried out using a tensile testing machine of the INSTRONO type, at a temperature of 23°C, and a relative humidity of 50% (to the standard ISO 23529), and wherein a person skilled in the art will know how to select and adapt the dimensions of the test specimen according to the quantity of mixture that is accessible and available, in particular in the event that test specimens are taken from the tyre ([022]). The secant modulus at 10% extension ME10 as disclosed in Jardine is a routine method of measuring the modulus of elastomeric compounds having substantially similar conditions to the ETRTO method of measuring modulus, and one of ordinary skill in the art before the effective filing date of the claimed invention would have readily understood, or alternatively found obvious, that the MA10 disclosed in Applicant’s specification could be obtained by adapting the test parameters or converting the measurement, as is also suggested by Applicant’s specification. Accordingly, the claimed modulus limitation would have been obvious in view of the modulus disclosure of Jardine.
Furthermore, because the tire disclosed by Jardine has the same structure and material properties/dimensions as the claimed tire classified as a high load capacity tire according to ETRTO Standards Manual, 2021, it would have been obvious to one of ordinary skill in the art that the tire of Jardine also meets, or is at least capable of meeting, the ETRTO high load capacity standard. 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. MPEP 2112.01. Additionally or alternatively, the limitation “a high load capacity tire according to ETRTO Standards Manual, 2021” is a recitation of intended use that does not require any additional structure to the tire that differentiates it from the tire disclosed by Jardine. The recitation does not result in structural difference between the claimed invention and the prior art because Jardine discloses a tire comprising the claimed structure and material properties/dimensions of the sidewall inserts, which is capable of being a high load capacity tire according to ETRTO Standards Manual, 2021.
The examiner further notes the limitation “the tire not being suitable for running flat” is a recitation of intended use that does not require any additional structure to the tire that differentiates it from the tire disclosed by Jardine. The recitation does not result in structural difference between the claimed invention and the prior art because Jardine discloses a tire comprising the claim limitations as discussed above and does not need to be used while running flat.
Regarding claim 17, Jardine further discloses a thickness of the at least one rigid elastomeric composition (Figs. 1-5: 30) is at a maximum radially to an outside of an equator of the tire (Figs. 1-5: see how maximum thickness of 30 extends along sidewall including a region above the equator of the tire until it tapers down in thickness).
Regarding claim 18, Jardine further discloses a radially exterior end of the sidewall insert (Figs. 1-5: 30) is arranged radially to an outside of an equator of the tire (Figs. 1-5).
Regarding claim 19, Jardine further discloses a radially interior end of the sidewall insert (Figs. 1-5: 30) is arranged radially to an inside of an equator of the tire (Figs. 1-5).
Regarding claim 20, Jardine further discloses a crown reinforcement in the crown of the tire (Figs. 1-5), and a carcass reinforcement (Figs. 1-5: 10) comprising at least one carcass layer anchored in the or each bead (Figs. 1-5: 1) and extending radially in the or each sidewall (Figs. 1-5: 6) and axially in the crown radially to an inside of a crown reinforcement of the tire.
Regarding claim 21, Jardine further discloses an inner-liner layer (Figs. 1-5: 40) bearing an interior surface of the tire, the sidewall insert (Figs. 1-5: 30) being arranged axially between the inner-liner layer (Figs. 1-5: 40) and an axially innermost carcass layer (Figs. 1-5: 10) ([0104]).
Regarding claim 22, Jardine further discloses the carcass reinforcement (Figs. 1-5: 10) comprises a single carcass layer anchored in the or each bead and extending radially in each sidewall and axially in the crown radially to an inside of a crown reinforcement ([0008], [0077]: wherein there is at least one carcass-type reinforcement or one or more carcass plies).
Regarding claim 23, Jardine further discloses the carcass reinforcement comprises (Figs. 1-5: 10) a first carcass layer and a second carcass layer anchored in the or each bead and extending radially in each sidewall and axially in the crown radially to an inside of the crown reinforcement, the sidewall insert being arranged axially to an inside of the first carcass layer ([0008], [0077]: wherein there is at least one carcass-type reinforcement or one or more carcass plies).
Claim(s) 16 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jardine et al. (US 20060090830) (of record) as applied to claim 13 above, and further in view of Yukawa (US 20140034205) (of record).
Regarding claims 16 and 24, Jardine further discloses the or each sidewall has a sidewall height H defined by H=SW x AR / 100, where SW is a nominal section width and AR is a nominal aspect ratio of the tire (Figs. 1-5) as every tire will necessarily have a sidewall height H, nominal section width SW, and nominal aspect ratio AR.
However, Jardine does not expressly recite, with each sidewall having a minimum thickness at a point I, a thickness of the sidewall at a point on an interior surface being defined as a straight-line distance along a normal to the interior surface at the point on the interior surface between the point on the interior surface and a point on the exterior surface of the tire that is aligned, along the normal, with the point on the interior surface, the point on the interior surface at which a thickness of the at least one rigid elastomeric composition is at a maximum is arranged radially between: a radially exterior straight line formed by the normal to the interior surface passing through a point on the interior surface arranged 10 mm radially to an outside of the point I, and a radially interior straight line formed by the normal to the interior surface passing through a point on the interior surface arranged 10 mm radially to an inside of the point I. Jardine also does not expressly recite a load index LI satisfying H/LI ≥ 0.85, where SW, AR and LI are defined in accordance with the ETRTO Standards Manual, 2021.
Yukawa discloses a tire comprising a sidewall insert (Figs. 1-2: 10) arranged axially between an exterior surface of at least one sidewall and an interior surface of the at least one sidewall ([0028]), wherein the sidewall insert comprises at least one rigid elastomeric composition, wherein the thickness of the sidewall insert as well as the sidewall at certain positions with heights in association with the load index of the tire and the modulus of the sidewall insert affects run-flat durability with low rolling resistance and spring constant ([0041], [0047]-[0048]), and wherein ETRTO standards may be relied upon ([0022]). In other words, the thicknesses at various heights of the sidewall insert and the load index of the tire are considered to be result effective variables that will affect the run-flat durability with low rolling resistance and spring constant of the tire. While Jardine does not explicitly disclose the value for a radial position/height for a thickness of the at least one rigid elastomeric composition at a maximum being arranged radially between a radially exterior straight line formed by the normal to the interior surface passing through a point on the interior surface arranged 10 mm radially to an outside of the point I, and a radially interior straight line formed by the normal to the interior surface passing through a point on the interior surface arranged 10 mm radially to an inside of the point I, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said radial point position/height. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize a radial position/height for a thickness of the at least one rigid elastomeric composition at a maximum in order to improve run-flat durability with low rolling resistance and spring constant of the tire. Additionally, while Jardine does not explicitly disclose the value for the ratio of the sidewall height H to the load index LI, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said ratio. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the ratio of the sidewall height H to the load index LI in order to improve run-flat durability with low rolling resistance and spring constant of the tire.
Response to Arguments
Applicant's arguments filed 07/09/2026 have been fully considered but they are not persuasive.
On pages 8-10 of the Remarks, Applicant argues that claim 13 has been amended to include the tire is not suitable for running flat, and that the prior art of record teaches away from such a limitation as the references teach tires that are suitable for running flat. Applicant further argues that a sidewall insert as claimed, including the modulus at 10% extension and maximum thickness limitations, is particular directed to a tire not suitable for running flat. Applicant further argues “in a tire not suitable for running flat, the claimed modulus and thickness ranges define a sidewall insert that improves handling by reducing sidewall bending without forming the thick structure used for run-flat operation” and that “independent claim 13 has been amended to describe that the tire is not suitable for running flat and includes a specific range for a modulus at 10% extension and a specific thickness of the rage for a maximum thickness for the rigid elastomeric composition, which are tailored for a tire not being suitable for running flat.”
The examiner refers to the detailed rejection above and again notes that the limitation “the tire not being suitable for running flat” is a recitation of intended use that does not require any additional structure to the tire that differentiates it from the tire disclosed by Jardine. The recitation does not result in structural difference between the claimed invention and the prior art because Jardine discloses a tire comprising the claim limitations as discussed above and does not need to be used while running flat. Accordingly, Applicant’s arguments directed to said limitation are not found to be persuasive. If there is a particular structure to the tire associated with “not being suitable for running flat,” then the examiner suggests that be included into the claim limitations.
Furthermore, a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. However, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." MPEP 2141.02(VI). As discussed above, the prior art does not criticize, discredit, or otherwise discourage from modifying the ranges for the modulus at 10% extension or the thickness of the rage for a maximum thickness for the rigid elastomeric composition. In fact, as discussed above, Jardine discloses that the ranges are preferable, overlapping or approaching the claimed ranges, and that the dimensions may be changed, such as to be made smaller. There is no teaching away from the claimed ranges, and the intended use for the tire not suitable for running flat does not hold patentable weight for whether the prior art teaches away or not.
The statements “in a tire not suitable for running flat, the claimed modulus and thickness ranges define a sidewall insert that improves handling by reducing sidewall bending without forming the thick structure used for run-flat operation” and “that the tire is not suitable for running flat and includes a specific range for a modulus at 10% extension and a specific thickness of the rage for a maximum thickness for the rigid elastomeric composition, which are tailored for a tire not being suitable for running flat” are counselor’s opinion. Applicant has not provided any factual support or evidence for these statements, and thus it is attorney argument. Attorney arguments cannot take the place of evidence where the asserted relationship involves technical properties of materials. See MPEP 716.01(c)(II), 2145(I). Applicant may provide further declaration and evidence to show that the claimed specific ranges for a modulus at 10% extension and a thickness of the rage for a maximum thickness for the rigid elastomeric composition are only tailored for a tire not being suitable for running flat and that a tire suitable for running flat could not operate or function as intended with such modifications.
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. The burden is on Applicant to establish that the results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." See MPEP 716.02(b). Applicant has the burden of explaining any data they proffer as evidence of non-obviousness. See MPEP 716.02(b)(II). Moreover, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 715.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(II). In this case, Applicant has not provided any evidence, data, or discussion as to the criticality of the claimed ranges. Moreover, the originally filed specification and figures also do not provide any evidence, data, or discussion to demonstrate the criticality of the claimed ranges.
The examiner further notes that claim 13 has been amended to recite the at least one rigid elastomeric composition of the sidewall insert having a modulus at 10% extension is greater than or equal to 6 MPa and less than 13 MPa. However, as discussed in the detailed rejection above, Jardine discloses a range of 5 to 13 MPa, which still overlaps with the claimed range. Moreover, claim 13 has been amended to recite a maximum thickness of the at least one rigid elastomeric composition being from 1.0 mm to 2.5 mm. As discussed in the detailed rejection above, Jardine discloses a range of 3 to 20 mm, which approaches the claimed range. The examiner further refers to the detailed rejection above as to how Jardine also suggests routine optimization for the thickness.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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 on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The fax phone number for the examiner is (571) 273-5031.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
Prosecution Insights