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 6/10/2026 have been accepted. Claims 6-7 are amended. Claims 11-13 are new. Claims 3-5 and 8-10 are canceled. Claims 1-2, 6-7, 11-13 are pending. Applicant’s amendments to the claims have overcome the 112(d) rejections previously set forth in the non-final office action mailed 3/24/2026. Applicant’s amendments to the claims have overcome the objections previously set forth.
Claim Objections
Claim 13 is objected to because of the following informalities:
Claim 13 line 4 should read “…of a ground contact width from the tire equatorial plane” because this width was not previously introduced.
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.
Claim 12 is 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. Claim 12 recites the limitation that “the thickness of the cap surface layer is greater than a thickness of the cap intermediate layer”. This is necessarily satisfied and met by the limitation of claim 1 that the ratio of the thickness of the cap surface layer to a thickness of the cap layer is 60-85%. Applicant acknowledges that claim 1 would necessarily satisfy the limitation of claim 12 on pg. 4 of their Remarks: “Specifically, claim 12 is directly supported by claim 1 because a cap surface layer occupying 60% to 85% of the cap layer necessarily has a thickness greater than the remaining cap intermediate layer portion”. As such, it is considered that claim 12 does not further limit the subject matter of the claim upon which it depends. 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 1-2, 6-7, 12 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 6-7, 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).
Regarding claim 11, Matsuda makes obvious a tire wherein the thickness at the ground contact edges is greater than the thickness at the equatorial plane (as annotated Fig. 1 of Matsuda is included below. The thickness of the tread at the shoulder increases slightly at the ground contact edge compared to that at the center. The center thickness is approximately 1.00 via a standard measurement, and that of the ground contact edges respectively measure 1.16 to 1.21, such that the ground contact edge thickness would be greater. And when the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125. One of ordinary skill in the art would have found it obvious that the thickness at the ground contact edge were slightly larger than that at the equator).
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Regarding claim 12, Matsuda makes obvious a tire wherein the thickness of the cap surface layer is greater than a thickness of the cap intermediate layer (when the layers are arranged 60/20/20, as detailed in the rejection of claim 1 above, the cap surface layer would clearly be greater than that of the cap intermediate layer. And additionally, as noted by Applicant in pg. 4 of their Remarks dated 6/10/2026, when claim 1 is met the limitations of claim 12 would necessarily be satisfied).
In the alternate, claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuda (JPH1160810A, of record), optionally in view of Tanaka (WO2021256123A1, of record), and further in view of Maruoka (US2004/0069392A1).
Regarding claim 11, an arrangement with the shoulder tread thickness greater than that of the equator is well-known within the art and for heavy-duty tires. Maruoka teaches a tread thickness Tc which is located at the tread equator, and a tread thickness Tb which is located at a position substantially close to the ground contact edge [see Fig. 2, 0011]. The ratio of the outer tread thickness Tb to that at the equator Tc (Tb/Tc) is set from 0.95 to 1.10. When the ratio is below 1, the shoulder tread thickness would be greater than that of the tread at the equator. 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 modify the tread thickness at the equator compared to that at the shoulders to correspond to that as suggested by Maruoka. One would have been motivated so as to balance the wear of the tire [Maruoka, 0045].
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuda (JPH1160810A, of record), optionally in view of Tanaka (WO2021256123A1, of record), and further in view of Numata (US2007/0084533A1).
Regarding claim 13, Matsuda states that the tire may include belts which are located below the tread rubber [0036], but Matsuda does not give further details of the belt positioning. Numata is tied to a heavy-duty tire [title], wherein below the tread rubbers is located belt layers “7” and a carcass “6” [Fig. 1]. The belt layer may comprise 4 belt plies [Fig. 1, 0024]. Of the belt plies, the second belt ply 7B has the maximum width, where it may range from 0.80 to 0.95 times the tread width TW [0025], and wherein the first and third belt plies would have a maximum width of 85-95% of the maximum width of the belt ply [0025].
One of ordinary skill in the art would have found it obvious to modify the tire of Matsuda to include the belt layers as suggested by Numata. One would have been motivated so as to reinforce essentially the full width of the tread, so as to implement the hoop effect to prevent stress concentration from occurring at the axially outer ends of the belt plies [0025]. As the claim requires for a belt to be located outward of a point at 3/8 of the TW (wherein from the equator, this would be points covering 75% of the total tread width), and as Numata suggests that the belt layer may have a width from 0.80 to 0.95 times the TW, the belt as suggested by Numata would clearly have a width beyond the points required in the claim. 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).
Response to Arguments
Applicant’s arguments have been considered but they are not persuasive.
Applicant argues on pgs. 5-6 of their filed Remarks dated 6/10/2026 that the prior art fails to establish that the claimed thickness ratio and tan delta combination is a result-effective variable.
The Examiner respectfully disagrees. First, it is noted that the Examiner does not particularly argue the matter of result-effective variables. Rather, the Examiner relies on the specific suggestion of Matsuda of tangent delta values that satisfy the claimed ranges, and the suggestion of Matsuda to utilize a 60/20/20 ratio of its cap layer to cap inner layer to base layer. Result effective variable is for routine optimization within the prior art conditions, wherein this is not a routine experimentation as the prior art is already suggesting the given ranges/values of the tan delta and of the layer thicknesses, such that result effective is not particularly relevant. 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).
Further, Matsuda actually does recognize the relationship between the volume/thickness of the rubber layers and that of the heat generation durability of the tire [0004]. The hysteresis loss and the wear resistance are recognized by Matsuda as to be affected by the amount of each of the rubber layers and of the loss tangent [0004], such that this would reasonably be considered a result effective variable such that the wear/heat generation would be adjustable by modifying these factors. And as Matsuda specifically suggests the ratio of 60/20/20 as an example of an ideal arrangement of the rubber layers, Matsuda clearly suggests that such layers would be beneficial to utilize for those purposes. Even if the result-effective variable wasn’t suggested, it is noted that this is only one aspect and would not be the determining aspect of obviousness MPEP 2144.05 III. C. As Matsuda readily suggests a tread rubber relationship that both has an embodiment satisfying the claim (60/20/20) and suggests a range of thicknesses [0030], as well as the tan delta relationship, this is still considered to form a prima facie case of obviousness that overcomes any alleged arguments pertaining to optimization.
Further, Applicant dismisses Tanaka as being tied to passenger type vehicles. This is clearly not the case, as Tanaka explicitly states that its pneumatic tires may be utilized in trucks/buses which are art recognized types of heavy-duty tires [pg. 15 of machine translation]. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Tanaka specifically suggests that such rubber layer thicknesses results in improved fuel efficiency and wet grip. Applicant does not address the obviousness of the suggested thickness ranges of Tanaka’s tread layers nor provides any specific arguments against Tanaka.
Applicant argues on pgs. 6-7 that the rejection relies on impermissible hindsight and arbitrary prying apart of the prior art.
The Examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, all information and rationale are only taken from the prior art’s suggestions to a person of ordinary skill in the art of Matsuda. Matsuda provides the specific suggestions that the ratios may be arranged as 60/20/20 (and/or in the greater individual %’s as suggested) and specifically provides the tan delta values of these individual layers. Because Matsuda specifically suggests that a ratio of 60/20/20 may be utilized, it would have been obvious for the person of ordinary skill in the art to utilize such a ratio with the expectation of having sufficient heat generation properties [0004].
Applicant is further using a very strict interpretation of the prior art and is not considering what the person of ordinary skill in the art would glean from the art. Applicant states that by “Looking strictly at the specific testing profiles”, showing that Applicant is overly limiting the prior art to that of testing examples and not what the prior art, taken as a whole, would suggest to the person of ordinary skill in the art. 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 Merc & Co v. Biocraft Labs, Inc., 874 F 2d 804,807 10 USPQ 2nd 1843, 1846 (Fed. Cir. ). When properly considering the prior art of Matsuda, one would reasonably find the utilization of suggested rubber layers of 60/20/20 with the given tan delta values.
Additionally, it is again noted that Applicant presents no arguments on the reference of Tanaka, which is optionally provided to suggest the claimed thickness of the rubber layers. Tanaka is further considered to suggest these contested aspects.
Applicant argues on pgs. 8 that the claimed range achieves critical and unexpected technological benefits.
The Examiner respectfully disagrees. The Examiner notes that the recited results do not appear to meet the standard for criticality. "[A] modification of a process parameter may be patentable if it ‘produce[s] a new and unexpected result which is different in kind and not merely in degree from the results of the prior art." (citing Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 693, 2023 USPQ2d 448 (Fed. Cir. 2023) ("A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent." See MPEP 2144.05. In this case, the cited evidence of criticality (that being improved heat resistance while provide a thick cap surface layer) appears to be the same type of results which are present in Matsuda and does not present results which are different in kind. The tire and ranges of Matsuda result in improved wear resistance, heat generation durability, and wandering resistance [0036-0037, 0039], and wherein the cap layer may have a thickness of 60% or up to 70% [0030], such that the given results do not appear to result in a difference in kind (at most a slight difference in degree). Further, Applicant has not demonstrated any criticality of the claimed range but comparing a sufficient number of tests both inside and outside of the claimed range, MPEP 716.02(d) II. Applicant’s cited section of the specification does not appear to provide any unexpected results (examples of such in MPEP 716.05(a)). And additionally, Applicant provides no arguments against the optionally supplied reference of Tanaka as to the suggestion of these ranges.
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.
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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