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Claims 1-7 and 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Group I and Species B2, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/08/2026. Moreover, during a telephone conversation with Yuki Suzuki on 07/01/2026 a provisional election was made without traverse to prosecute the invention of Species A1. Affirmation of this election must be made by applicant in replying to this Office action.
Specification
The abstract of the disclosure is objected to because of implied phraseology (i.e., “The provided is”). 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
Claim 8 is objected to because of the following informalities: for the sake of clarity, the examiner suggests claim 8 be amended to recite the tire structure independently without referring to the non-elected method of claim 1. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: for the sake of clarity, the examiner suggests claim 18 be amended to recite the tire structure independently without referring to the non-elected method of claim 2. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: for the sake of clarity, the examiner suggests claim 19 be amended to recite the tire structure independently without referring to the non-elected method of claim 3. 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.
Claim 9 is 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 phrase “the electronic device is arranged at a position where a depth from the tire outer surface of the tire side portion is 0.1 to 10.0 mm” is unclear. It is unclear what the boundaries of the depth are. For instance, is the depth from an outer surface of the electronic device to the tire outer surface of the tire side portion, or from a bottom surface of the electronic device to the tire outer surface of the tire side portion, or from a center of the electronic device to the tire outer surface of the tire side portion, or from some other point of the electronic device to the tire outer surface of the tire side portion, etc.? Applicant’s specification discloses a particular example wherein “if the electronic device 6 is an RF tag as illustrated in any of Figures 2A to 2C described later, for example, the thin-plate like IC chip 6a may be attached to the tire outer surface 10o so that the surfaces on both sides in the thickness direction TD of the IC chip 6a (for example, in Figure 2A, the surfaces on the front and back sides of the paper) are aligned with the tire outer surface 10o (i.e. so that they are both approximately parallel), and the center in the thickness direction TD of the IC chip 6a may be arranged at the above-mentioned depth position” ([0023]). For the purposes of examination, the examiner assumes the depth refers to a center of the electronic device to the tire outer surface of the tire side portion.
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) 8 and 18-19 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Destraves et al. (US 20170341323).
Regarding claims 8 and 18-19, Destraves discloses a tire with an electronic device attached to a tire side portion ([0001], [0017]), wherein an electronic device is arranged in at least one of: a tire side portion (Figs. 1-2: 12), an other tire side portion, a vicinity of a tire outer surface of the tire side portion of the tire on the tire side portion (Figs. 1-2: 12), and a vicinity of the tire outer surface of the tire side portion (Figs. 1-2: 12); and a molded and vulcanized tire ([0036]).
The examiner notes that the claim limitation “produced by a method for producing a tire to obtain a tire with an electronic device attached to a tire side portion, wherein a lower mold piece and an upper mold piece are used as a mold for vulcanizing a raw tire, and the method includes: an electronic device arrangement process in which the electronic device is arranged in at least one of: the lower mold piece, the upper mold piece, the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the lower mold piece, and the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the upper mold piece; and a vulcanization process in which the raw tire is set in the mold and vulcanized after the electronic device arrangement process” is a product-by-process limitation wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In this case, the claim limitation does not require a process step, but rather the structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire). Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. The structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire) is clearly present in Destraves as discussed above because Destraves discloses a vulcanized tire having an electronic device provided in one of two side portions of the tire. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that Destraves discloses, or is at least capable of, providing said tire via the claimed method.
The examiner notes that the claim limitation “produced by method for producing a tire to obtain a tire with an electronic device attached to a tire side portion, wherein a lower mold piece and an upper mold piece are used as a mold for vulcanizing a raw tire, and the method includes: an electronic device arrangement process in which the electronic device is arranged in at least one of: the lower mold piece, the upper mold piece, the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the lower mold piece, and the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the upper mold piece; and a vulcanization process in which the raw tire is set in the mold and vulcanized after the electronic device arrangement process, wherein in the electronic device arrangement process, the electronic device is attached to a component separate from the mold and is arranged in the lower mold piece and/or the upper mold piece via the component separate from the mold” is a product-by-process limitation wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In this case, the claim limitation does not require a process step, but rather the structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire). Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. The structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire) is clearly present in Destraves as discussed above because Destraves discloses a vulcanized tire having an electronic device provided in one of two side portions of the tire. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that Destraves discloses, or is at least capable of, providing said tire via the claimed method.
The examiner notes that the claim limitation “produced by method for producing a tire to obtain a tire with an electronic device attached to a tire side portion, wherein a lower mold piece and an upper mold piece are used as a mold for vulcanizing a raw tire, and the method includes: an electronic device arrangement process in which the electronic device is arranged in at least one of: the lower mold piece, the upper mold piece, the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the lower mold piece, and the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the upper mold piece; and a vulcanization process in which the raw tire is set in the mold and vulcanized after the electronic device arrangement process, wherein in the electronic device arrangement process, the electronic device is attached to a component separate from the mold and is arranged in the lower mold piece and/or the upper mold piece via the component separate from the mold, and wherein the component separate from the mold is a serial plate” is a product-by-process limitation wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In this case, the claim limitation does not require a process step, but rather the structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire). Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. The structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire) is clearly present in Destraves as discussed above because Destraves discloses a vulcanized tire having an electronic device provided in one of two side portions of the tire. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that Destraves discloses, or is at least capable of, providing said tire via the claimed method.
The examiner further notes that neither the separate component of the mold nor the serial plate are claimed so as to impart a structure on the tire. For instance, there is no claim limitation that the tire has a “serial” molded into the respective vicinity of a tire outer surface of the tire side portion of the tire where the electronic device is provided. Instead, all that is required is that a separate component, such as a serial plate, is provided in a mold, and as discussed above, the mold is part of the method which is a product-by-process limitation.
Additionally, the examiner notes that Destraves discloses a tire produced by a method for producing a tire to obtain a tire with an electronic device attached to a tire side portion ([0001], [0017]), wherein a mold piece (Figs. 1-2: 1) is used as a mold for vulcanizing a raw tire (Figs. 1-2: 12), and the method includes: an electronic device arrangement process in which the electronic device (Figs. 1-2; 11) is arranged in at least one of: the mold piece (Figs. 1-2: 1), and a vicinity of a tire outer surface of the tire side portion of the raw tire (Figs. 1-2: 12) on the side that comes into contact with the mold piece (Figs. 1-2: 1); and a vulcanization process in which the raw tire is set in the mold and vulcanized after the electronic device arrangement process ([0036]), wherein in the electronic device arrangement process, the electronic device (Figs. 1-2: 11) is attached to a component separate (Figs. 1-2: 3) from the mold (Figs. 1-2: 1) and is arranged in the mold piece via the component separate from the mold (Figs. 1-2).
Claim(s) 8 and 18-19 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Dorfi et al. (US 20150075693) (of record).
Regarding claims 8 and 18-19, Dorfi discloses a tire with an electronic device (Figs. 2A-2C: 200) attached to a tire side portion (Figs. 2A-2C: 130a) ([0033]-[0036]), wherein an electronic device is arranged in at least one of: a tire side portion, and a vicinity of a tire outer surface of the tire side portion of the tire on the tire side portion ([0033]-[0036]); and a molded (Figs. 5A-5B) and vulcanized tire ([0048]-[0049]).
The examiner notes that the claim limitation “produced by a method for producing a tire to obtain a tire with an electronic device attached to a tire side portion, wherein a lower mold piece and an upper mold piece are used as a mold for vulcanizing a raw tire, and the method includes: an electronic device arrangement process in which the electronic device is arranged in at least one of: the lower mold piece, the upper mold piece, the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the lower mold piece, and the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the upper mold piece; and a vulcanization process in which the raw tire is set in the mold and vulcanized after the electronic device arrangement process” is a product-by-process limitation wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In this case, the claim limitation does not require a process step, but rather the structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire). Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. The structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire) is clearly present in Dorfi as discussed above because Dorfi discloses a vulcanized tire having an electronic device provided in one of two side portions of the tire. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that Dorfi discloses, or is at least capable of, providing said tire via the claimed method.
The examiner notes that the claim limitation “produced by method for producing a tire to obtain a tire with an electronic device attached to a tire side portion, wherein a lower mold piece and an upper mold piece are used as a mold for vulcanizing a raw tire, and the method includes: an electronic device arrangement process in which the electronic device is arranged in at least one of: the lower mold piece, the upper mold piece, the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the lower mold piece, and the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the upper mold piece; and a vulcanization process in which the raw tire is set in the mold and vulcanized after the electronic device arrangement process, wherein in the electronic device arrangement process, the electronic device is attached to a component separate from the mold and is arranged in the lower mold piece and/or the upper mold piece via the component separate from the mold” is a product-by-process limitation wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In this case, the claim limitation does not require a process step, but rather the structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire). Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. The structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire) is clearly present in Dorfi as discussed above because Dorfi discloses a vulcanized tire having an electronic device provided in one of two side portions of the tire. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that Dorfi discloses, or is at least capable of, providing said tire via the claimed method.
The examiner notes that the claim limitation “produced by method for producing a tire to obtain a tire with an electronic device attached to a tire side portion, wherein a lower mold piece and an upper mold piece are used as a mold for vulcanizing a raw tire, and the method includes: an electronic device arrangement process in which the electronic device is arranged in at least one of: the lower mold piece, the upper mold piece, the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the lower mold piece, and the vicinity of a tire outer surface of the tire side portion of the raw tire on the side that comes into contact with the upper mold piece; and a vulcanization process in which the raw tire is set in the mold and vulcanized after the electronic device arrangement process, wherein in the electronic device arrangement process, the electronic device is attached to a component separate from the mold and is arranged in the lower mold piece and/or the upper mold piece via the component separate from the mold, and wherein the component separate from the mold is a serial plate” is a product-by-process limitation wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In this case, the claim limitation does not require a process step, but rather the structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire). Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. The structure that is implied by the step (i.e., a vulcanized tire having an electronic device provided in one of two side portions of the tire) is clearly present in Dorfi as discussed above because Dorfi discloses a vulcanized tire having an electronic device provided in one of two side portions of the tire. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that Dorfi discloses, or is at least capable of, providing said tire via the claimed method.
The examiner further notes that neither the separate component of the mold nor the serial plate are claimed so as to impart a structure on the tire. For instance, there is no claim limitation that the tire has a “serial” molded into the respective vicinity of a tire outer surface of the tire side portion of the tire where the electronic device is provided. Instead, all that is required is that a separate component, such as a serial plate, is provided in a mold, and as discussed above, the mold is part of the method which is a product-by-process limitation.
Additionally, the examiner notes that Dorfi discloses a tire produced by a method for producing a tire to obtain a tire with an electronic device attached to a tire side portion ([0033-[0036]), wherein a mold piece (Fig. 5A: 600) is used as a mold for vulcanizing a raw tire ([0048]-[0050]), and the method includes: an electronic device arrangement process in which the electronic device (Fig. 5A: 400) is arranged in at least one of: the mold piece (Fig. 5A: 600, 620) ([0048]-[0050]); and a vulcanization process in which the raw tire is set in the mold and vulcanized after the electronic device arrangement process ([0048]), wherein in the electronic device arrangement process, the electronic device (Fig. 5A: 400) is attached to a component separate (Fig. 5A: 620) from the mold (Fig. 5A: 600, 610) and is arranged in the mold piece via the component separate from the mold ([0048]-[0050]).
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) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Destraves et al. (US 20170341323) as applied to claim 8 above.
Regarding claim 9, Destraves further discloses that if the electronic module is designed to carry out a localized measurement function or a function relating to a power generation system, the position is determined on the basis of the physical parameters concerned ([0042]). Moreover, in the case of a system without a measurement function, such as a stand-alone mounting, or an autonomous function of the RFID data transmission type, the position of the patch comprising the electronic module is determined with the aim of achieving a satisfactory compromise between the mechanical stresses on the tire during use, on the one hand, and ease of access to the mould, on the other hand ([0043]). In other words, the positioning of the electronic device in the tire, and thereby the depth from the outer surface, is considered to be a result effective variable that will affect the features of the tire as discussed above. While Destraves does not explicitly disclose the value for a depth from the tire outer surface of the tire side portion of the electronic device, 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 depth. 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 depth from the tire outer surface of the tire side portion of the electronic device for the advantages as discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kubota et al. (JP 2013107460, machine translation) discloses a tire produced by a method for producing a tire to obtain a tire with an electronic device (Fig. 1: 12) attached to a tire side portion (Fig. 1: 3G), wherein a mold piece (Fig. 8: 25) is used as a mold for vulcanizing a raw tire (Fig. 8), and the method includes: an electronic device arrangement process in which the electronic device (Fig. 5A: 400) is arranged in at least one of: a vicinity of a tire outer surface of the tire side portion of the raw tire (Figs. 1, 8); and a vulcanization process in which the raw tire is set in the mold and vulcanized (Pages 6-7, 9).
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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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.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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