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 .
Election/Restrictions
Claims 3 and 16-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Group II and Species A1, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/01/2026. The traversal is on the ground(s) that:
(1) “the reference made therein to unpatentability of the claims is irrelevant to a restriction requirement. A requirement for restriction has nothing to do with unpatentability of claims for any of the inventions being claimed. It is argued that a rejection of any claim cannot be based on unpatentability implied to such a claim due to unpatentability of another claim. The sole basis for unpatentability resides in the statutes. The statutes do not authorize unpatentability to be implied from other claims of the same application. Nothing in the statutes permits unpatentability of claims to be based on unpatentability being implied from unpatentable other claims. A restriction requirement has nothing to do with patentability or unpatentability”;
(2) the examiner’s interpretation of Anzai is incorrect because “[t]he rollers at the exit of creel 21 in Anzai, as shown in Figures 1-2, are stationary guide elements. They are fixed components of the overall apparatus that guide the cords (1) as the cords travel from the creel (21) towards the cord inlay station (25). Anzai's rollers are not collected at the creel and are not subsequently transferred with the cords to the inlay station. Instead, the cords simply pass over or between these fixed rollers. The rollers remain in place while the cord material moves past them. Therefore, Anzai's rollers do not function as the claimed ‘cord collectors,’ which are defined by their ability to be collected and then physically transferred as units”; and
(3) “there is nothing in 35 USC § 121 that gives the Patent Office the authority to require restriction between different statutory classes of claims unless the claims cover ‘independent and distinct inventions.’ It is respectfully submitted that the statutory requirements, not having been met here vis-a-vis Groups I and II respectively.”
This is not found persuasive because:
(1) as discussed in the previous Restriction Requirement, Groups I-II lack unity of invention because the shared technical features of the groups do not make a contribution over the prior art of record, as required for Restriction for Unity of Invention. Thereby, the Restriction is directed to the shared technical feature and whether it makes a contribution over the prior art, and not to the patentability of the claims. Moreover, the examiner notes that the reference cited and discussed in the Restriction Requirement was relied upon to show how the shared technical features of Groups I-II were not special technical features as they did not make a contribution over the prior art of record cited. Thus, while the reference also disclosed the claimed limitations, and thereby touched on the unpatentability of the claims, the main discussion in the Restriction Requirement of the reference in relation to the claims was to illustrate that the special technical features did not make a contribution over the prior art;
(2) while the examiner finds Applicant’s arguments regarding Anzai to be persuasive, the examiner notes that Applicant has amended claim 16 so as to be “in accordance with the method of claim 1,” wherein prior to the Restriction Requirement there was no requirement for the cord collectors to also move and the shared technical feature merely required the cords to be moved. Moreover, the technical features are still known in the prior art as evidenced by the prior art rejection below; and
(3) the argument between different statutory classes of claims needing to be “independent and distinct inventions” is not found persuasive because such a matter is not germane to restriction under Unity of Invention.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The abstract of the disclosure is objected to because of legal phraseology (i.e., “said”) and implied phraseology (i.e., “Disclosed are”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1-2 and 4-14 are objected to because of the following informalities: the examiner suggests removing the dashes (“-“) for ease and clarity of reading the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “said plurality of cords collectors” in line 7 should be written as –said plurality of cord collectors— for grammatical clarity and consistency in claim language. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the phrase “the method further comprise” in line 1 should be written as –the method further comprises— for grammatical clarity. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: the phrase “the relative position” in line 4 should be written as –a relative position— for consistency in claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 9, the phrases “the first cord clamp” in line 1 and “the first cord collector” in line 2 lack sufficient antecedent basis.
Regarding claim 10, the phrases “the first cord clamp” in line 3 and “the first cord collector” in line 3 lack sufficient antecedent basis.
Regarding claim 11, the phrases “the first cord clamp” in line 3 lacks sufficient antecedent basis.
Regarding claim 12, the phrases “a further cord clamp for each further cord collector” in line 3 is unclear as at least a first cord clamp and first cord collector were not previously disclosed, thus it is unclear how there can be further components. For the purposes of examination, the examiner assumes a cord clamp and a cord collector are provided.
Regarding claim 13, the phrase “the collection direction” in line 7 lacks sufficient antecedent basis.
Claim 14 is indefinite by dependence on claim 13.
Claim Rejections - 35 USC § 102
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smits (RU 2760779, see machine translation).
Regarding claim 1, Smits discloses a method for organizing cords between a tire building creel and an extruder, wherein the method comprises the steps of: providing a cord inlay station (Figs. 16, 17a, 17b: 300) between the tire building creel (Figs. 16, 17a, 17b: 10) and the extruder for preparing the cords (Figs. 16, 17a, 17b: 9) for insertion into the extruder (Page 7 lines 27-32; Page 13 lines 1-10); collecting groups of the cords in a plurality of cord collectors (Figs. 16, 17a, 17b: 78, 79) at the tire building creel (Page 13 lines 1-24); and transferring said plurality of cord collectors (Figs. 16, 17a, 17b: 78, 79) with the groups of cords (Figs. 16, 17a, 17b: 9) collected therein from the tire building creel (Figs. 16, 17a, 17b: 10) towards the cord inlay station (Figs. 16, 17a, 17b: 300) (Page 13 lines 18-36: wherein collectors 78, 79 are moved from the creel with the collected cords toward 300 via rails 73, and the output pulleys are also used to bring the cords from rollers 76, 77 together and dispense them in direction K to station 300).
Regarding claim 2, Smits further discloses the method further comprises the step of: receiving the plurality of cord collectors (Figs. 16, 17a, 17b: 78, 79) in a collector frame (Figs. 16, 17a, 17b: 71, 72) (Page 13 lines 44-46).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smits (RU 2760779, see machine translation) as applied to claim 1 above, and further in view of Azuma (JP 2005153747, see machine translation).
Regarding claim 13, Smits discloses preparing the cords in the cord inlay station for mutually parallel insertion in a common cord plane into the extruder (Figs. 16, 17a, 17b). While Smits does not expressly recite holding one or more extruder inserts in an insert holder relative to the cord plane at the cord inlay station, it is generally known in the similar art. Azuma discloses a method for organizing cords (Fig. 16: 91) between a tire building creel (in that the cords must be received to the extruder from somewhere, such as a creel as is commonly known and used in Smits) and an extruder (Fig. 16: 9), wherein the method comprises the step of holding one or more extruder inserts in an insert holder (Fig. 16: 93) relative to the cord plane (Fig. 16). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Smits in order to provide an extruder insert so as to guide and align the cords before entering the extruder, as taught by Azuma. Accordingly, Smits in view of Azuma discloses extending the groups of cords in the collection direction from the plurality of cord collectors through the one or more extruder inserts at the insert holder as the cords must pass through the extruder inserts before entering the extruder.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smits (RU 2760779, see machine translation) as applied to claim 1 above.
Regarding claim 15, one of ordinary skill in the art would recognize, or alternatively find obvious, that transferring the plurality of cord collectors from the tire building creel to the cord inlay station may be done in a limited number of ways: (1) manually; or (2) automatically. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the plurality of cord collectors are manually transferred from the tire building creel to the cord inlay station.
Allowable Subject Matter
Claims 4-12 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 4, no prior art of record is considered to teach or suggest the combination of limitations of claims 1-2 and 4. In particular, the limitations “preparing the cords in the cord inlay station for mutually parallel insertion in a common cord plane into the extruder; and juxtaposing at least two cord collectors of the plurality of cord collectors in the collector frame in a lateral direction parallel to the cord plane.”
Regarding claim 5, no prior art of record is considered to teach or suggest the combination of limitations of claims 1 and 5. In particular, the limitation “each cord collector of the plurality of cord collectors comprises a collector body and a plurality of collection channels extending in a collection direction through said collector body, wherein the method further comprises the step of: for each cord collector of the plurality of cord collectors, threading each cord of a respective group of cords through a different collection channel of the plurality of collection channels in the collection direction.”
Claims 6-12 would be allowable by dependence on claim 5.
Regarding claim 14, no prior art of record is considered to teach or suggest the combination of limitations of claims 1 and 13-14. In particular, the limitations “transferring the one or more extruder inserts with the groups of cords extended therethrough from the cord inlay station to the extruder; and transferring the plurality of cord collectors with the groups of cords collected therein from the cord inlay station to the extruder.”
The closest prior art of record is considered to be Smits (RU 2760779, see machine translation), Tatara et al. (US 7998298), Park (KR 100693453, see machine translation), Azuma (JP 2005153747, see machine translation), and Bohm (EP 0557615).
Smits discloses the claim limitations of claims 1-2 as discussed in the detailed rejection above. However, Smits does not expressly recite “preparing the cords in the cord inlay station for mutually parallel insertion in a common cord plane into the extruder; and juxtaposing at least two cord collectors of the plurality of cord collectors in the collector frame in a lateral direction parallel to the cord plane.” Instead, Smits discloses preparing the cords in the cord inlay station for mutually parallel insertion in a common cord plane into the extruder, and stacking at least two cord collectors of the plurality of cord collectors in the collector frame in a stacking direction perpendicular to the cord plane (Fig. 16: 78, 79). One of ordinary skill in the before the effective filing date of the claimed invention would not have found it obvious to modify the prior art contrary to its express disclosure, especially without a motivation or teaching to do so.
Furthermore, Smits discloses rollers as the cord collectors (Figs. 16, 17a, 17b: 78, 79). While it is known in the similar art to provide cord collector rollers with channels, such as in Tatara (Figs. 3-9), the combination would not teach or suggest the specifically claimed method steps of “each cord collector of the plurality of cord collectors comprises a collector body and a plurality of collection channels extending in a collection direction through said collector body, wherein the method further comprises the step of: for each cord collector of the plurality of cord collectors, threading each cord of a respective group of cords through a different collection channel of the plurality of collection channels in the collection direction” as the channels are on the collectors and not through them, and the cords aren’t being threaded through the channels but instead are placed into them.
Additionally, it is known in the similar art to provide cords through collectors where the cords are threaded through, such as in Park (Figs. 3a-3c). However, as Smits discloses a specific roller type collector, it would not have been obvious to one of ordinary skill in the art to completely replace the expressly disclosed structure for cord collection with a completely different structure. Moreover, if the combination were to be made, it is not clear how Smits would operate with the different cord collector taught by Park, and if it could still perform its intended functions. Thereby, one of ordinary skill in the before the effective filing date of the claimed invention would not have found it obvious to modify the prior art contrary to its express disclosure, especially without a motivation or teaching to do so.
As discussed above, Azuma discloses modifying Smits with an extruder insert. However, Smits in view of Azuma does not expressly recite the specifically claimed method step of transferring the one or more extruder inserts with the groups of cords extended therethrough from the cord inlay station to the extruder. Azuma does not disclose that the extruder insert is movable/transferable at all, let alone from a cord inlay station to the extruder. One of ordinary skill in the before the effective filing date of the claimed invention would not have found it obvious to modify the prior art contrary to its express disclosure, especially without a motivation or teaching to do so.
Bohm also discloses a method for organizing cords between a tire building creel (Fig. 2: 19) and an extruder (Figs. 1-2), wherein the method comprises the steps of: providing a cord inlay station (Figs. 1-2: 22) between the tire building creel and the extruder for preparing the cords for insertion into the extruder; collecting groups of the cords in a plurality of cord collectors (Figs. 1-2: 22) at the tire building creel; and transferring said plurality of cord collectors with the groups of cords collected therein from the tire building creel towards the cord inlay station. While the cord collectors of Bohm are moveable laterally, Bohm does not disclose that they are moved from the tire building creel towards the cord inlay station, or that they are provided at the tire building creel to begin with. Instead, they are stationary in the direction of movement of the cords, and merely move perpendicular to said direction to align and guide the cords before entering the extruder. One of ordinary skill in the before the effective filing date of the claimed invention would not have found it obvious to modify the prior art contrary to its express disclosure, especially without a motivation or teaching to do so.
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