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 .
Response to Amendment
The amendments entered on 2/26/2026 have been accepted. Claims 1-2, 6-7 are amended. There are no new claims. Claims 5 and 10 are canceled. Claims 1-4 and 6-9 are pending. Applicant’s amendments to the claims have overcome the double patenting rejections previously set forth in the non-final office action mailed 12/22/2025. Applicant’s amendments to the claims have overcome the objections previously set forth.
Claim Objections
Claims 3-4 and 6-9 are objected to because of the following informalities:
Claim 3 should read “…the average value of the ratio of the thickness of the cap surface layer to the thickness of the cap layer in the part between tire widthwise positions of the pair of ground contact edges is 85% or less”, because each of these aspects are already introduced in amended claim 1.
Claim 4 should read “…the average value of the ratio of the thickness of the cap surface layer to the thickness of the cap layer in the part between tire widthwise positions of the pair of ground contact edges is 60% or more”, because each of these aspects are already introduced in amended claim 1.
Claims 6-9 should read “…each exist throughout an entire region in the tire width direction between the tire widthwise positions of the pair of ground contact edges”, because each of these aspects are suggested in amended claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3-4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 1 claims a ratio of 60-85%. Claim 3 claims that this same ratio is 85% or less and claim 4 claims that this same ratio is 60% or more. Because each of the cited ranges as claimed in claims 3 and 4 are already fully encompassed by the claimed range of claim 1, it is considered that each of claims 3 and 4 do not further limit the subject matter of the claim upon which it depends (claim 1). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda (JPH1160810A, of record), optionally in view of Tanaka (WO2021256123A1).
Regarding claim 1 and 3-4, Matsuda teaches a heavy-duty tire (title, “10”), wherein
A tread rubber has a cap layer (“12” and “14” in Fig. 1) and a base layer on an inner circumferential side of the cap (base rubber B “16” as in Fig. 1 is the radially innermost of the tread layers),
The cap layer comprises a cap surface layer (cap rubber layer “12”) and a cap intermediate layer (base rubber A “14”),
The cap surface layer has a larger tan δ by 0.06 or more than the cap intermediate layer at conditions of room temperature, amplitude of 2% and 50Hz (Matsuda teaches that the tan delta δ of the upper cap layer should be higher than the cap intermediate layer [see 0009-0010]. Matsuda further includes explicit test results with tan δ values within the claimed range. Translated Table 5 from the machine translation of Matsuda is provided below to facilitate discussion. Table 5 provides several examples of conditions of each of the three tread rubber layers. The tan δ values are taken at room temperature, dynamic strain 2%, and frequency of 52Hz, which are substantially the same as the tan δ conditions specified [0036]. In Example 1 of Table 5 for example, the cap rubber “12” have a tan δ of 0.28 and the base A rubber “14” has a tan δ of 0.18. Thus the cap rubber “12” which is outermost would be highest, and this is a difference of 0.10 which is within the claimed range. It is noted that Examples 2 and 3, as well as comparative example 2, satisfies the claimed range as well).
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Matsuda’s Fig. 1 shows that all three tread layers are present throughout the entire ground contact edges of the tire, where the ground contact edges are considered to be the radially outermost and two axial edges of the tread surface. All three rubber layers have a constant thickness across the axial direction of the tire. As such, a volume of the rubber layers would reasonably correspond with the respective average thickness of the tread layers. Matsuda does not explicitly state that examples 1-3 or comparative example 2 have an average value of a ratio of a thickness of the cap surface layer to a thickness of the cap layer between ground contact edges of 60-85%. However, it would have been obvious for the person of ordinary skill in the art before the effective filing date of the invention to situate the tire of Matsuda as such. Matsuda explicitly suggests that the cap rubber layer (cap surface layer) may have a volume of 10-70% of the tread, and that the base rubber A (cap intermediate layer) may have a volume of 10-70% of the tread [0029]. Depending on the exact volumes chosen, there would be numerous embodiments within each of these suggested ranges of Matsuda that satisfy the claimed range. For example, a volume of 40% of the upper layer and 20% of the intermediate layer, well within the suggested ranges of Matsuda, would suggest a ratio of 66%, within the claimed range. Further, Matsuda suggests that different ratios for each of its rubber layers includes a ratio such as 60/20/20 or the like [0030]. This suggestion would yield a cap surface layer of 60%, a base rubber A “14” is 20%, and a base rubber B “16” is 20%. Based upon this, the ratio of the cap surface layer to the entire cap layer would equal 60 / (60 + 20) = 75%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to work within the suggested volume ranges of the cap layers as suggested by Matsuda, and/or would have found it obvious to apply the suggested volume ratio of 60/20/20 as suggested by Matsuda. One would have been motivated to modify Examples 1-3 or comparative example 2 to have such a ratio, as Matsuda explicitly gives these volume ratios as obvious alternatives to apply to its inventive tire, and because having the volume situated as such may improve the heat generation and hysteresis effects of the tread [0004, 0029-0031, 0039]. And as the thickness of each layer is substantially equal along the width of the tire (see Fig. 1), and because the grooves in the tread are shown to be through both of the cap layers (see Fig. 1), it would be reasonably considered that the volume ratios as suggested by Matsuda would be substantially the same as thickness ratios.
Optionally applied, Tanaka teaches a tire which may be for truck/bus tires (synonymous with heavy-duty tires) [pg. 15 of machine translation]. The tire may have a first rubber layer “2”, second layer “3”, and third layer “4” [pg. 3 of machine translation]. The thickness of the first layer t1 and the thickness of the second layer t2 may preferably have a ratio (t2/t1) from 0.4 to 5.0. This may be rearranged such that (t1/t2) ranges from 0.2 to 2.5. From these ratios, it may be easily mathematically arranged so as to calculate the ratio of the cap surface layer to the total cap layer thickness, such that (t1/(t1+t2)) = 0.17 to 0.71. The suggested ratios of the cap surface layer to the total cap layer thickness thus overlaps the claimed range of 60 to 85%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have found it obvious to modify the rubber layer thickness of Matsuda to have thicknesses as suggested by Tanaka. One would have been motivated to work within the suggested thickness ratios of the top two rubber layers so as to improve fuel efficiency performance and wet grip performance.
Regarding claim 2, Matsuda makes obvious a tire wherein tan δ of the base layer is lower by 0.03 or more than the cap intermediate layer (as in Table 5 of the machine translation, in example 1 for example, the base rubber A “14” may have a tanδ of 0.18 and the base rubber B “16” which is radially innermost may have a tan δ of 0.11. The base rubber B “16” would therefore be lower by 0.07, which is greater than the claimed 0.03 or more. It is noted that Examples 2 and 3 also show similar ranges that are greater than 0.03 or more as claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claims 6-9, Matsuda makes obvious a tire wherein the cap surface layer, cap intermediate layer, and base layer each exist throughout an entire region between tire widthwise portion of the ground contact edges (as in Fig. 1, the ground contact edges are considered to be the 2 radially outermost points which are located on each respective axial outside of the tread surface. And as in Fig. 1, each of the tread layers is clearly present throughout the entire width of the tread between these points).
Response to Arguments
Applicant’s amendments move dependent claim 5 into claim 1. Applicant’s arguments, see Remarks pg. 6, filed 2/26/2026, with respect to Matsuda not anticipating the limitation of the cap surface layer being in a range of 60-85% of the total cap layer thickness have been fully considered and are persuasive. The 102 rejections of the claims in view of Matsuda have been withdrawn.
However, on further consideration, Matsuda (JPH1160810A) is considered to fully suggest the claims. See 103 rejections above. Optional reference Tanaka is further provided to suggest the thickness ratio of the cap surface layer to the cap layer.
The Examiner respectfully disagrees with the rest of Applicant’s arguments and responds to these arguments below. The Examiner responds primarily in regards to aspects of which Matsuda suggests (as the rejection herein relies upon obviousness and not anticipation).
Applicant argues on pg. 6-7 of their Remarks that Matsuda teaches a volume ratio for the layers, while the claims refer to a thickness ratio.
The Examiner respectfully disagrees. It is noted that as in Fig. 1 of Matsuda, the thickness of each of the layers across the width direction is shown to be substantially the same. Additionally, the grooves that are present in the tread are shown to extend substantially through both of the cap layers (Fig. 1), such that a volume would not significantly change in the cap layer depending upon the grooves being present. The Examiner notes that Matsuda suggests a wide variety of possible ranges for the cap layer thicknesses, (including a volume of each of the top two layers of 10-70%, as well as the specific ratios of 60/20/20), such that the person of ordinary skill in the art would have found it obvious to work within the claimed ranges so as to have the optimum volumes/thicknesses to improve the wear resistance and heat generation of the tire. And as inherency is not being alleged but rather obviousness of the claimed range, it is noted that Applicant’s further arguments to inherency are moot.
Applicant argues on pg. 7 of their Remarks that Matsuda’s Table 4 lists a volume ratio which is outside of the claimed range, such that none of the examples have a ratio within Applicant’s claimed range.
The Examiner respectfully disagrees. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123. While the cited example may have the values that Applicant states, this does not teach away from the greater disclosure of Matsuda which suggests a wide variety of potential cap layer volume/thicknesses, including that of 60/20/20 which is an explicit example listed of ratios which may be utilized. The person of ordinary skill in the art would not limit themselves to only an example which is listed in the testing tables, where the greater disclosure provides suggestions for other, equally pertinent, examples of desirable ratios.
Applicant argues on pgs. 7-8 of their Remarks that the claimed configuration provides distinct unexpected benefits over what is shown in Matsuda.
The Examiner respectfully disagrees. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As Matsuda already explicitly suggests a ratio of 60/20/20 (which would yield a ratio of ~75%), the properties of Matsuda would similarly be expected to have these same beneficial properties.
Conclusion
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749