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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the at least one conductive path opening to the contact face (claim 15, specification paragraphs 037, 072) and the tire having one prior art sidewall and one sidewall of the invention (claim 16, specification paragraphs 006-007 and 017 (at least one sidewall having the extension Le)) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered (one way to accomplish this would be to add as new drawing figures a block diagram containing the text -- The tire (1, 21) further comprises at least one conductive path opening to the contact face (41, 241). -- , a block diagram containing the text -- The tire (1, 21) further comprises at least one conductive path cut by the sidewall (106). -- , and the associated brief description of each of the new drawing figures).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 10 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 8 already requires the electrically conductive rubber edge cover layer to have a portion contacting the carcass, which necessarily allows electrical charges to pass through the carcass via the portion of the edge cover layer contacting the carcass (specification paragraphs 021, 053). 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.
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 8-16 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.
In claim 8, to provide proper antecedent basis, to clarify the meaning of “conductive” rubber composition (the only definition in the specification is an electrically conductive rubber composition with a volume resistivity of at most 5.00 x 105 Ω•cm, paragraphs 034-035, 050, 061-062), and to clarify that the edge cover layer is on at least one axial side of the tire, applicant should amend the claim such that in line 8 after “provided” is inserted -- on at least one axial side of the tire -- , in line 9 “conductive rubber composition” is changed to -- electrically conductive rubber composition having a volume resistivity of at most 5.00 x 105 Ω•cm -- , and in line 12 “at least one of the sidewalls” is changed to -- at least the one of the sidewalls on the one axial side of the tire -- .
In claim 10 line 2, to provide proper antecedent basis, applicant should change “a portion” to -- the portion -- .
In claim 12, to provide proper antecedent basis, applicant should rewrite the claim as --
12. (Currently Amended) The tire according to claim 8, wherein the at least one ply comprises at least two radially adjacent plies, and wherein each of the at least two radially adjacent plies are provided with the edge cover layer covering the radially inner face, the axially outermost face, and the radially innermost face of each ply. -- .
Claim 14 should be cancelled as redundant as set forth above.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 8-10 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published PCT Application WO 2021/005301 A1 (equivalent to US Patent Application Publication 2022/0250420 A1) in view of Mechanics of Pneumatic Tires.
The only difference between the WO ‘301 radial tire and the claimed tire is that the reference is silent as to whether or not the ply reinforcing elements are parallel with an angle of greater than 10 degrees to the circumferential direction (US ‘420 embodiment of Figs. 1-2, paragraphs 0029-0038, 0048-0053, 0063-0067, 0084-0097: LC2 = at least 10 mm, claimed sidewalls do not exclude the reference sidewalls encompassing both components 80 and 45, one of ordinary skill in the art would have at once envisaged 1x105 Ω•cm from the disclosure of less than or equal to 1x106 Ω•cm, see MPEP 2131.02-2131.03 (“The question of "sufficient specificity" is similar to that of "clearly envisaging" a species from a generic teaching.”, MPEP 2131.03)), however it is well known to provide such radial tires with parallel ply reinforcing elements within the claimed angle range in order to provide sufficient tread rigidity, as evidenced for example by Mechanics of Pneumatic Tires (on the order of 20 degrees, pp. 219-220); it would therefore have been obvious to one of ordinary skill in the art to provide such well-known parallel ply reinforcing elements within the claimed angle range in the above radial tire in order to provide sufficient tread rigidity. As to claim 16, the tire is clearly depicted as having only one side with the linking rubber compound 40 contacting the carcass and thus the other side has the conductive path cut by the sidewall encompassing both components 80 and 45.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published PCT Application WO 2021/005301 A1 (equivalent to US Patent Application Publication 2022/0250420 A1) in view of Mechanics of Pneumatic Tires as applied to claims 8-10 and 14-16 above, and further in view of US Patent Application Publication 2021/0078370 A1.
US ‘370 teaches to make the ply edging rubber of such tires conductive with a resistivity of at most 1x106 Ω•cm in order to improve the conductive pathway (embodiments of Fig. 1-2, paragraphs 0037-0105, edging rubber 36) and one of ordinary skill in the art would have at once envisaged 1x105 Ω•cm from the disclosure of at most 1x106 Ω•cm, see paragraph 11 above and MPEP 2131.02-2131.03 (“The question of "sufficient specificity" is similar to that of "clearly envisaging" a species from a generic teaching.”, MPEP 2131.03); it would therefore have been obvious to one of ordinary skill in the art to make the ply edging rubber of the above tire conductive with a resistivity of at most 1x106 Ω•cm such as 1x105 Ω•cm in order to improve the conductive pathway.
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published PCT Application WO 2021/005301 A1 (equivalent to US Patent Application Publication 2022/0250420 A1) in view of Mechanics of Pneumatic Tires as applied to claims 8-10 and 14-16 above, and further in view of US Patent Application Publication 2021/0078370 A1 as applied to claim 11 above, and further in view of Cappa (3,799,233).
It is well known to wrap tire ply edging rubber around the ply edges to further reduce stresses leading to belt edge separation, as evidenced for example by Cappa (embodiments of Figs. 1-6 with the wraparound alternative in Fig. 5, col. 1 line 48 - col. 5 line 37); it would therefore have been obvious to one of ordinary skill in the art to wrap the ply edging rubber around the ply edges in the above tire in order to further reduce stresses leading to belt edge separation.
Claim(s) 8-11 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published PCT Application WO 2024/149423 A1 in view of Published PCT Application WO 2021/005301 A1 (equivalent to US Patent Application Publication 2022/0250420 A1) and Mechanics of Pneumatic Tires.
The only differences between the WO ‘423 radial tire and the claimed tire are that the edge cover layer is not disclosed as having a resistivity of at most 5.00 x 105 Ω•cm and the reference is silent as to whether or not the parallel ply reinforcing elements have an angle of greater than 10 degrees to the circumferential direction (embodiment of Fig. 1, translation: preferred L-Le value of 15.0 mm disclosed with sufficient specificity (p. 7 line 28 - p. 8 line 4), resistivity less than or equal to 1x108 Ω•cm (p. 10 lines 18-21)), however WO ‘301 teaches to make the resistivity of such conductive strips less than or equal to 1x106 Ω•cm in order to have a sufficiently strong conductive path and one of ordinary skill in the art would have at once envisaged 1x105 Ω•cm from the disclosure of less than or equal to 1x106 Ω•cm, see paragraph 11 above and MPEP 2131.02-2131.03 (“The question of "sufficient specificity" is similar to that of "clearly envisaging" a species from a generic teaching.”, MPEP 2131.03), and it is well known to provide such radial tires with parallel ply reinforcing elements within the claimed angle range in order to provide sufficient tread rigidity, as evidenced for example by Mechanics of Pneumatic Tires (on the order of 20 degrees, pp. 219-220); it would therefore have been obvious to one of ordinary skill in the art to make the resistivity of the conductive element 14 and conductive edge-side bandage part 3b in the above tire less than or equal to 1x106 Ω•cm such as 1x105 Ω•cm in order to have a sufficiently strong conductive path and to provide such well-known parallel ply reinforcing elements within the claimed angle range in the above radial tire in order to provide sufficient tread rigidity. As to claim 16, only one side can be provided with the conductive element 14 (p. 2 line 4-p. 3 line 4 and p. 4 line 16 - p. 5 line 11, not required on both sides of the tire) and thus the other side has the conductive path cut by the sidewall.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim(s) 8-11 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published PCT Application WO 2024/109997 A1 in view of Published PCT Application WO 2021/005301 A1 (equivalent to US Patent Application Publication 2022/0250420 A1) and Mechanics of Pneumatic Tires.
The only differences between the WO ‘997 tire and the claimed tire are that an L-Le value is not disclosed, the edge cover layer is not disclosed as having a resistivity of at most 5.00 x 105 Ω•cm, and the reference is silent as to whether or not the belt layers have parallel ply reinforcing elements with an angle of greater than 10 degrees to the circumferential direction (embodiment of Fig. 1, translation: second belt edge padding 5 has resistivity less than 1x107 Ω•cm (p. 4 lines 26-28), carbon center beam conductive path opening to the tread contact face not shown in the drawings), however WO ‘301 teaches to provide an L-Le value of at least 10 mm and to make the resistivity of such conductive belt edge padding less than or equal to 1x106 Ω•cm in order to have a sufficiently strong conductive path and one of ordinary skill in the art would have at once envisaged 1x105 Ω•cm from the disclosure of less than or equal to 1x106 Ω•cm, see paragraph 11 above and MPEP 2131.02-2131.03 (“The question of "sufficient specificity" is similar to that of "clearly envisaging" a species from a generic teaching.”, MPEP 2131.03), and it is well known to provide such tires with parallel ply reinforcing elements within the claimed angle range in order to provide sufficient tread rigidity, as evidenced for example by Mechanics of Pneumatic Tires (on the order of 20 degrees, pp. 219-220); it would therefore have been obvious to one of ordinary skill in the art to provide an L-Le value of at least 10 mm in the above tire and to make the resistivity of the conductive second belt edge padding 5 in the above tire less than or equal to 1x106 Ω•cm such as 1x105 Ω•cm in order to have a sufficiently strong conductive path, and to provide such well-known parallel ply reinforcing elements within the claimed angle range in the above radial tire in order to provide sufficient tread rigidity. As to claim 16, only one side can be provided with the conductive second belt edge padding 5 (p. 8 lines 15-20, not required on both sides of the tire) and thus the other side has the conductive path from the conductive belt bandage 12 cut by the sidewall 15.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim(s) 8-11 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published PCT Application WO 2020/143958 A1 in view of Published PCT Application WO 2021/005301 A1 (equivalent to US Patent Application Publication 2022/0250420 A1) and Mechanics of Pneumatic Tires.
The only differences between the WO ‘423 radial tire and the claimed tire are that an L-Le value is not disclosed, the edge cover layer is not disclosed as having a resistivity of at most 5.00 x 105 Ω•cm and the reference is silent as to whether or not the parallel ply reinforcing elements have an angle of greater than 10 degrees to the circumferential direction (embodiment of Fig. 1, translation: resistivity less than or equal to 1x108 Ω•cm (p. 2 line 27 - p. 3 line 4 and p. 4 lines 18-21)), however WO ‘301 teaches to provide an L-Le value of at least 10 mm and to make the resistivity of such conductive strips less than or equal to 1x106 Ω•cm in order to have a sufficiently strong conductive path and one of ordinary skill in the art would have at once envisaged 1x105 Ω•cm from the disclosure of less than or equal to 1x106 Ω•cm, see paragraph 11 above and MPEP 2131.02-2131.03 (“The question of "sufficient specificity" is similar to that of "clearly envisaging" a species from a generic teaching.”, MPEP 2131.03), and it is well known to provide such radial tires with parallel ply reinforcing elements within the claimed angle range in order to provide sufficient tread rigidity, as evidenced for example by Mechanics of Pneumatic Tires (on the order of 20 degrees, pp. 219-220); it would therefore have been obvious to one of ordinary skill in the art to provide an L-Le value of at least 10 mm and to make the resistivity of the conductive strip 11 and conductive belt bandage 3 in the above tire less than or equal to 1x106 Ω•cm such as 1x105 Ω•cm in order to have a sufficiently strong conductive path and to provide such well-known parallel ply reinforcing elements within the claimed angle range in the above radial tire in order to provide sufficient tread rigidity. As to claim 16, only one side can be provided with the conductive element 14 (p. 2 line 27-p. 3 line 20 and p. 4 line 16 - p. 6 line 24, not required on both sides of the tire) and thus the other side has the conductive path cut by the sidewall.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Published PCT Application WO 2024/149424 A1 discloses a tire similar to that of WO ‘423 but wherein the tread underlayer rather than the belt bandage is conductive.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrienne C. Johnstone whose telephone number is (571)272-1218. The examiner can normally be reached M-F 1PM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ADRIENNE C. JOHNSTONE
Primary Examiner
Art Unit 1749
Adrienne Johnstone /ADRIENNE C. JOHNSTONE/ Primary Examiner, Art Unit 1749
April 30, 2026
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