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 .
Specification
The abstract of the disclosure is objected to because of implied phraseology ("The present invention relates to"). 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 14, 16-17, 24-25, and 28 are objected to because of the following informalities: the examiner suggests removing exemplary abbreviations in parentheses for ease of reading the claims (e.g., big enduro, A, B, X-X, BR, E-SBR, etc.). Appropriate correction is required.
Claims 14, 23, and 32 are objected to because of the following informalities: the examiner suggests removing the dashes (-) for ease of reading the claims. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the phrase “wherein the tread band comprising a central” in line 4 should be written as –wherein the tread band comprises a central— for grammatical clarity. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the term “rang” in line 8 appears to be a typographical error and should be written as –ranging—. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the phrase “90%, of” in line 9 should be written as –90% of— for grammatical clarity. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the phrases “the width” in line 9, “the outermost” in line 10, “the innermost” in line 11, “the entire width” in line 13, and “the entire width” in line 15 should be written as –a width—, --an outermost—,–an innermost—,–an entire width—, and –an entire width— for consistency in claim language. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the phrase “minutes , and” in line 24 has an additional spacing that must be removed. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the phrases “the second compound” in line 24 and “the first compound” in line 25 should be written as –the second elastomeric compound— and –the first elastomeric compound— for consistency in claim language. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: the phrases “the second compound” in line 2 and “the first compound” in line 2 should be written as –the second elastomeric compound— and –the first elastomeric compound— for consistency in claim language. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: the phrases “the second compound” in line 2 and “the first compound” in line 2 should be written as –the second elastomeric compound— and –the first elastomeric compound— for consistency in claim language. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: the phrases “an E’ modulus” in line 2 and “an E’ modulus” in line 3 should be written as –the E’ modulus— and –the E’ modulus— for consistency in claim language. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: the phrases “a hardness IRHD” in line 2 and “a hardness IRHD” in line 3 should be written as –an IRHD hardness— and –an IRHD hardness— for clarity and consistency in claim language. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: the phrase “65 and 71” in line 3 should be written as –65 to 71— for grammatical clarity. Appropriate correction is required.
Claim 23 is objected to because of the following informalities: the phrase “10.5 MPa, , and” in line 4 has an additional comma that should be removed. Appropriate correction is required.
Claim 24 is objected to because of the following informalities: the term “vulcanisable” in 2 should be written as –vulcanizable—, “plasticising” in lines 6 and 7 should be written as –plasticizing—, “emulsion-polymerised” in line 14 should be written as –emulsion-polymerized—, “solution-polymerised” in line 18 should be written as –solution-polymerized—, “chain-functionalised” in line 19 should be written as –chain-functionalized—, and “vulcanising agent” in line 25 should be written as –vulcanizing agent— for consistency in claim language. The examiner further suggests selecting either the American or European terminology for phrases and to consistently use one standard throughout the claims as there are several instances of using both throughout the claims. Appropriate correction is required.
Claim 24 is objected to because of the following informalities: the phrase “the liquid polymer, resin, if present, and plasticising oil” should be written as –the at least one liquid polymer, the at least one resin, and the at least one plasticizing oil— for consistency in claim language and clarity. Appropriate correction is required.
Claim 24 is objected to because of the following informalities: the phrase “the mixture of polymers” in line 9-10 should be written as –the mixture of solid diene elastomeric polymers— for consistency in claim language. Appropriate correction is required.
Claim 25 is objected to because of the following informalities: the phrases “plasticising oil” in line 6 should be written as –plasticizing oil—, “solution-polymerised” in line 15 should be written as –solution-polymerized—, and “vulcanising” in line 21 should be written as –vulcanizing— for consistency in claim language. Appropriate correction is required.
Claim 25 is objected to because of the following informalities: the phrase “the liquid polymer, resin, if present, and plasticizing oil” in line 7 should be written as –the at least one liquid polymer, the at least one resin, and the at least one plasticizing oil— for consistency in claim language and clarity. Appropriate correction is required.
Claim 25 is objected to because of the following informalities: the phrase “the mixture of polymers” in line 9-10 should be written as –the mixture of solid diene elastomeric polymers— for consistency in claim language. Appropriate correction is required.
Claim 28 is objected to because of the following informalities: the phrase “11 mm and 15 mm” in line 2 should be written as –11 mm to 15 mm— for grammatical clarity. Appropriate correction is required.
Claim 28 is objected to because of the following informalities: the phrase “0 1.0 mm and 3 mm” in lines 3-4 should be written as –1.0 mm to 3 mm— for grammatical clarity. Appropriate correction is required.
Claim 29 is objected to because of the following informalities: the phrases “the second compound” in line 2 and “the first compound” in line 2 should be written as –the second elastomeric compound— and –the first elastomeric compound— for consistency in claim language. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: the phrases “the second compound” in line 2 and “the first compound” in line 2 should be written as –the second elastomeric compound— and –the first elastomeric compound— for consistency in claim language. Appropriate correction is required.
Claim 31 is objected to because of the following informalities: the phrases “an E’ modulus” in line 2 and “an E’ modulus” in line 3 should be written as –the E’ modulus— and –the E’ modulus— for consistency in claim language. Appropriate correction is required.
Claim 32 is objected to because of the following informalities: the phrases “a load” in line 2, “a load” in line 3, “a load” in line 5, and “a load” in line 6 should be written as –the load—, –the load—, –the load—, and –the load— for consistency in claim language. Appropriate correction is required.
The examiner has noted several instances of typographical and grammatical errors, as well as inconsistencies in claim language, and believes they have all been addressed, but suggests Applicant also review for and correct any errors that may have been overlooked by the examiner.
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 14-32 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 14, the phrases “the tension-compression mode” in line 23 and “the % ratio” in line 24 lack sufficient antecedent basis.
Claims 15-32 are indefinite by dependence on claim 14.
Regarding claim 19, the phrase “the difference” in line 1 lacks sufficient antecedent basis.
Regarding claim 19, it is unclear how the difference between the first and second elastomeric compound E’ moduli can range from 0.3 to 2.3 MPa when in claim 14 the first elastomeric compound has an E’ modulus of 5 to 6.5 MPa and the second elastomeric compound has an E’ modulus of 4.5 to 4.6 MPa which can only have a difference ranging from 0.4 to 3.0 MPa as its upper and lower bounds. Accordingly, a value of less 0.4 MPa cannot be obtained with the ranges disclosed in claim 14. For the purposes of examination, the examiner assumes a range of 0.4 to 2.3 MPa.
Claim 30 is indefinite by dependence on claim 19.
Regarding claim 24, the phrase “the sum” in line 7 lacks sufficient antecedent basis.
Regarding claim 25, the phrase “the sum” in line 7 lacks sufficient antecedent basis.
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.
Claim(s) 14-23 and 26-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda (JP H0495508, see machine translation) and Delbast et al. (US 20230249497).
Regarding claims 14, 17-20, 26, and 29-31, Ikeda discloses a tyre comprising a tread band (Fig. 2: 2) of total radial thickness S (Fig. 2: see how tread 2 has thickness in radial direction including 4 and 5), wherein the tread band (Fig. 2: 2) comprises a central annular portion (Fig. 2: 4) arranged symmetrically straddling the equatorial plane and a pair of annular shoulder portions (Fig. 2: 5) arranged symmetrically on opposite sides with respect to the central annular portion and adjacent to it.
Ikeda further discloses the central annular portion (Fig. 2: 4) extends axially for a width (Fig. 2: S) ranging from 30% to 85% of a width of the tread band (Fig. 2: W) (Page 3 lines 17-20; Page 4 lines 13-19; Page 5 lines 16-19), which overlaps with the claimed ranges of from 70% to 90% and from 75% to 85%. In this manner, sufficient wear resistance can be obtained and ultra-high-speed durability is sufficient (Page 5 lines 16-19). Furthermore, because Ikeda discloses the central annular portion (Fig. 2: 4) extends axially for a width (Fig. 2: S) ranging from 30% to 85% of a width of the tread band (Fig. 2: W), Ikeda also discloses each annular shoulder portion extends axially for a width ranging from 7.5% to 35% of the width of the tread band and is made of the under-layer (Fig. 2: 5) for the entire total radial thickness S of the tread band, which overlaps with the claimed ranges of from 5% to 15% and from 7.5% to 12.5%. 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 axial widths of the central annular portion and the annular shoulder portions.
Ikeda further discloses the central annular portion comprises a rolling layer (Fig. 2: 4) of radial thickness S1 in an outermost radial position and an under-layer (Fig. 2: 5) of radial thickness S2 adjacent to it arranged in an innermost radial position, the tread band having the total radial thickness S=S1+S2 (Fig. 2: see how tread band 2 includes only 4 and 5 and thereby the thickness of tread band is made up of the radial thicknesses of 4 and 5), the rolling layer (Fig. 2: 4) extending axially across an entire width of the central annular portion and the under-layer (Fig. 2: 5) extending axially across an entire width of the central annular portion and across the entire width of each annular shoulder portion.
While Ikeda does not expressly recite the rolling layer comprises a first elastomeric compound characterized by an E' modulus, the under-layer comprises a second elastomeric compound characterized by an E' modulus, a % ratio between the E' modulus of the second elastomeric compound and the E' modulus of the first elastomeric compound, or a difference between E’ moduli of the first and second compounds, Ikeda does disclose a tire tread having a central portion and shoulder portions formed from different rubber compounds (Page 4 lines 1-21; Page 5 lines 1-6; Page 6 lines 1-16). As E’ modulus is a known parameter in the art characterizing elastic stiffness of rubber compounds, in view of Ikeda’s teaching of using different rubber compositions in different tread regions to obtained desired tire performance, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select and/or optimize the E’ modulus of the respective compounds through routine experimentation to achieve the desired balance of tire tread performance characteristics. Accordingly, while Ikeda does not explicitly disclose the values for E’ moduli of the first and second elastomeric compounds, 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 E’ moduli. 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 E’ moduli of the first and second elastomeric compounds in order to achieve the desired balance of tire tread performance characteristics.
However, Ikeda does not expressly recite the tread band includes a plurality of blocks and grooves defining in the tread band a void/solid ratio ranging from 0.40 to 0.65.
Delbast discloses a tire comprising a tread band including a plurality of blocks and grooves defining in the tread band a surface-area void ratio ranging from 0.27 to 0.45 ([0084]), which overlaps with the claimed range of from 0.40 to 0.65. 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 void/solid ratio. In this manner, effective drainage of water under conditions of running on wet ground is ensured ([0086]). The examiner notes Applicant’s specification defines “solid/void ratio” as “the ratio between the overall surface of the grooves of a given annular portion of the tyre tread pattern (possibly of the entire tread band or the tread pattern) and the surface of the given tread pattern portion (possibly of the entire tread band or tread pattern)” (Page 9 lines 25-29). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Ikeda in order to provide the void/solid ratio as taught by Delbast for the advantages as discussed above, especially because Ikeda is a general teaching of a tire and is silent as to the tread patterns of the tire.
The limitation “for in-/off-road motorcycles” is a recitation of intended use that does not require any additional structure to the tire that differentiates it from the tire disclosed by modified Ikeda. The recitation does not result in structural difference between the claimed invention and the prior art because modified Ikeda discloses the claimed tire which is capable of being used for in-/off-road motorcycles.
The limitation “the E' moduli are measured at 70 °C 10 Hz, using a dynamic device in the tension-compression mode on specimens cross-linked at 170oC for 10 minutes” is a recitation of intended use that does not require any additional structure to the tire that differentiates it from the tire disclosed by modified Ikeda. The recitation does not result in structural difference between the claimed invention and the prior art because modified Ikeda discloses the claimed tire having elastomeric compounds with the aforementioned E’ moduli, wherein the E’ moduli are capable of being measured using a dynamic device in the tension-compression mode on specimens cross-linked at 170oC for 10 minutes.
The limitation “the tyre is for predominantly off-road use” is a recitation of intended use that does not require any additional structure to the tire that differentiates it from the tire disclosed by modified Ikeda. The recitation does not result in structural difference between the claimed invention and the prior art because modified Ikeda discloses the claimed tire which is capable of predominantly off-road use.
Regarding claims 15-16 and 27-28, Ikeda further discloses that the thickness of the tread and the central part of the tread affect wear resistance and ultra-high-speed durability (Page 5 lines 7-20; Page 6 lines 1-16). In other words, the radial thicknesses of the tread, rolling layer in the central annular portion, and the radial thickness of the under-layer in the central annular portion are considered to be result effective variables that will affect the wear resistance and ultra-high-speed durability of the tire. While Ikeda does not explicitly disclose the value for the aforementioned thicknesses, 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 aforementioned thicknesses. 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 aforementioned thicknesses in order to ensure wear resistance and sufficient ultra-high-speed durability.
Regarding claim 21, as discussed above, tan delta is a known parameter in the art characterizing viscoelastic properties of rubber compounds, in view of Ikeda’s teaching of using different rubber compositions in different tread regions to obtained desired tire performance, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select and/or optimize the tan delta of the respective compounds through routine experimentation to achieve the desired balance of tire tread performance characteristics. Accordingly, while Ikeda does not explicitly disclose the values for the tan delta of the first and second elastomeric compounds, 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 tan delta. 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 tan delta of the first and second elastomeric compounds in order to achieve the desired balance of tire tread performance characteristics.
Regarding claim 22, as discussed above, IRHD hardness is a known parameter in the art characterizing elastic stiffness of rubber compounds, in view of Ikeda’s teaching of using different rubber compositions in different tread regions to obtained desired tire performance, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select and/or optimize the IRHD hardness of the respective compounds through routine experimentation to achieve the desired balance of tire tread performance characteristics. Accordingly, while Ikeda does not explicitly disclose the values for the IRHD hardness of the first and second elastomeric compounds, 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 IRHD hardness. 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 IRHD hardness of the first and second elastomeric compounds in order to achieve the desired balance of tire tread performance characteristics.
Regarding claims 23 and 32, as discussed above, load at various percentage elongations are known parameter in the art characterizing viscoelastic properties of rubber compounds, in view of Ikeda’s teaching of using different rubber compositions in different tread regions to obtained desired tire performance, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select and/or optimize the load at 100% elongation and load at 300% elongation of the respective compounds through routine experimentation to achieve the desired balance of tire tread performance characteristics. Accordingly, while Ikeda does not explicitly disclose the values for the load at 100% elongation and load at 300% elongation of the first and second elastomeric compounds, 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 the load at 100% elongation and load at 300% elongation. 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 load at 100% elongation and load at 300% elongation of the first and second elastomeric compounds in order to achieve the desired balance of tire tread performance characteristics.
The limitation “wherein the loads CA1 and CA3 are measured at 23 °C according to the UNI 6065:2001 standard” is a recitation of intended use that does not require any additional structure to the tire that differentiates it from the tire disclosed by modified Ikeda. The recitation does not result in structural difference between the claimed invention and the prior art because modified Ikeda discloses a tire having first and second rubber compounds which are capable of having loads CA1 and CA3 measured at 23 °C according to the UNI 6065:2001 standard.
Allowable Subject Matter
Claims 24-25 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 24, no prior art of record is considered to teach or suggest the combination of limitations of claims 14 and 24. In particular, the limitations “the first elastomeric compound for the rolling layer comprises a vulcanizable elastomeric composition, wherein the vulcanizable elastomeric composition, before vulcanization, comprises: from 0 phr to 30 phr of at least one liquid polymer, from 0 phr to 20 phr of at least one resin, from 10 phr to 60 phr of at least one plasticizing oil, wherein a sum of the at least one liquid polymer, at least one resin, and at least one plasticizing oil ranges from 20 phr to 90 phr, 100 phr of a mixture of solid diene elastomeric polymers, wherein the mixture of solid diene elastomeric polymers comprises: from 10 phr to 50 phr of at least one solid polybutadiene (BR) having a weight average molecular weight Mw ranging from 300,000 g/mol to 600,000 g/mol and a cis double bonds content of at least 95%, from 10 phr to 70 phr of at least one emulsion-polymerized solid styrene butadiene copolymer (E-SBR) having a Tg ranging from -60 0C to -20 0C, a Mooney viscosity at 160 0C ranging from 30 MU to 70 MU, and a styrene content ranging from 15% to 50%, from 10 phr to 80 phr of at least one solution-polymerized solid styrene butadiene copolymer (S-SBR), chain-functionalized with multi-branch coupling agents, having one or more of: a weight average molecular weight Mw greater than 500,000 g/mol; an amount of styrene ranging from 25% to 50% and an amount of vinyl ranging from 10% to 50%; a Tg ranging from -50 0C to -20 0C; and a Mooney viscosity at 160 0C ranging from 60 MU to 100 MU, at least 40 phr of at least one reinforcing filler, and at least 1.0 phr of at least one vulcanizing agent.”
Regarding claim 25, no prior art of record is considered to teach or suggest the combination of limitations of claims 14 and 25. In particular, the limitations “the second elastomeric compound for the under-layer comprises a vulcanizable elastomeric composition, wherein before vulcanization, the vulcanizable elastomeric composition comprises: from 0 phr to 20 phr of at least one liquid polymer, from 5 phr to 40 phr of at least one resin, from 10 phr to 60 phr of at least one plasticizing oil, wherein a sum of the at least one liquid polymer, at least one resin, and at least one plasticizing oil ranges from 15 phr to 120 phr, 100 phr of a mixture of solid diene elastomeric polymers, wherein the mixture of solid diene elastomeric polymers comprises: 10 to 40 phr of at least one solid polybutadiene (BR), with a weight average molecular weight Mw ranging from 200,000 g/mol to 600,000 g/mol and a cis double bonds content of at least 30%, from 60 phr to 90 phr of at least one end-functionalized, produced in continuous, solution-polymerized solid styrene butadiene copolymer (S-SBR), with one or more of: a weight average molecular weight Mw greater than 500,000 g/mol; an amount of styrene ranging from 25% to 50% and an amount of vinyl between 10% and 70%; a Tg ranging from -50 0C to -10 0C; and a Mooney viscosity at 100 0C ranging from 50 MU to 100 MU, at least 50 phr of at least one reinforcing filler, and at least 1.0 phr of at least one vulcanizing agent.”
The closest prior art of record is considered to be Ikeda (JP H0495508, see machine translation) and Delbast et al. (US 20230249497).
Ikeda discloses very specific rubber compositions for the first and second elastomeric compounds (Page 3 lines 17-20; Page 4 lines 1-21; Page 5 lines 1-6; Page 6 lines 1-20; Page 7 line 1), which differs from the claimed compositions in claims 24 and 25. While there is some overlap with the components in the compositions of the claimed invention and Ikeda (e.g., either solution or emulsion polymerized styrene butadiene copolymer with an amount of styrene content of 5 to 30%, high-vinyl structure rubber, fillers, vulcanizing agent), they are also different and one of ordinary skill in the art before the effective filing date of the claimed invention would not have found it obvious to modify the specifically disclosed compositions of the first and second elastomeric compounds having specific purposes of Ikeda in order to include the specific components and amounts as claimed, 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.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749