DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendments entered on 2/17/2026 have been accepted. Claims 1, 3-6, 8-10, 12, 14, 19 are amended. Claims 7, 11, 13 are canceled. Claims 1-6, 8-10, 12, 14-20 are pending. Applicant’s amendments to the claims have overcome the 112(b) and 112(d) rejections previously set forth in the non-final office action mailed 9/15/2025.
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 8-10, 12, 20 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.
Claim 8, which depends on claim 1, requires that the protrusions “comprise a cross-section in a shape of a polygon”. Claim 1 requires that the protrusions “comprise a cross-section in a shape of a circle”, and “the protrusions have a common shape”. The limitation of claim 8 (referring to these same protrusions) directly contradicts what is claimed in claim 1, such that it isn’t clear how the protrusions are to both be in a circle with the same shape, while also being in a shape of a polygon. Applicant is asked to amend and clarify without the addition of new matter.
Claim 9, which depends on claim 1, requires that the protrusions “comprise an amorphous cross-section”. Claim 1 requires that the protrusions “comprise a cross-section in a shape of a circle”, and “the protrusions have a common shape”. This directly contradicts what is claimed in claim 1, such that it isn’t clear how the protrusions are to both be in a circle with the same shape, while also being in an amorphous cross-section. Applicant is asked to amend and clarify without the addition of new matter.
Claim 10 requires “a shape of a cross-section of individual ones of the protrusions differs relative to the shape of the cross-section of other ones of the protrusions”. Claim 1 requires that the protrusions “comprise a cross-section in a shape of a circle”, and “the protrusions have a common shape”. The limitation of claim 10 directly contradicts with the limitations of claim 1, which requires the shape of the protrusions to be the same and to be circles, such that it isn’t clear how both limitations are to be achieved at once. Applicant is asked to amend and clarify without the addition of new matter.
Claim 12 requires for the protrusions to have at least two types of surface contours at a distal end thereof, such that one protrusions surface contour is unique with compared to others. Claim 1 requires that the protrusions “comprise a cross-section in a shape of a circle”, and “the protrusions have a common shape”. The limitation of claim 12 therefore directly contradicts with the limitations of claim 1, wherein it is required for each of the protrusions to have the same shape. The protrusions can not have the same shape if they each have different surface contours which would naturally result in different cross-sections and shapes thereof. Applicant is asked to amend and clarify without the addition of new matter.
Claim 20 requires for some of the protrusions to have different cross-sections compared to other protrusions with different cross-sections. Claim 19, of which 20 depends upon, requires for the protrusions to have “a cross-section in a shape of a circle”, and for all of the protrusions to have a “common shape”. Therefore, claim 20 directly contradicts what is required in claim 19, such that it isn’t clear how the protrusions are to have a common shape while also have different shapes. Applicant is asked to amend and clarify without the addition of new matter.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 8 requires “the protrusions comprise a cross-section in a shape of a polygon”. This is considered to be new matter when relying upon amended claim 1, as claim 1 requires also for the protrusions to be “in a shape of a circle” and wherein the protrusions have the same shape. The instant specification is silent as to having protrusions which have shapes of both circles and polygons in the same protrusion, and the Figures do not depict any embodiments with such a protrusion. For the same rationale, claim 9’s limitation “the protrusions comprise an amorphous cross-section” is considered to be new matter when relying upon claim 1, as the claim requires the same protrusion to have an amorphous-cross-section and a circular cross-section.
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 1-6, 8-10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlhoff (US2017/0050473A1).
Regarding claim 1, Muhlhoff teaches an apparatus comprising a tire with at least one surface (a tire “1”, as shown in Figs. 1-2, has a surface located on the sidewall “3” of the tire),
at least one region on the surface including a plurality of protrusions (the tire surface may comprise protruding elements “401”, as according to Fig. 7 for example, wherein these protrude with respect to the sidewall [0095]),
the protrusions being positioned in a pseudo-random pattern within the region (Muhlhoff suggests that the protrusions may be made to have “variable shapes and variable distance between protruding elements” [0110]. As such, it would have been obvious for a person of ordinary skill in the art to modify the protrusions as shown in Fig. 7, for example, so as to have variable distance between protruding elements. One would have been motivated so as to create randomness in the texture so as to make the elements less visible [0110], which is beneficial in a wide variety of application. As such, modified Muhlhoff would clearly have its protrusions arranged in a random pattern),
the protrusions comprise a cross-section in a shape of a circle (as in Fig. 7, the protrusions “401” would clearly have a circular cross-section when taken at any position along the longitudinal direction of the protrusion),
wherein the protrusions comprise a common shape (the protrusions may all have a shape of the conical overall shape as shown in Fig. 7 [0098]),
and at least a first one of the protrusions is positioned with a first angular position and at least a second one of the protrusions is positioned with a second angular position, where the first and second positions differ (as all of the protrusions have a circular shape, it is considered that the protrusions would necessarily have different angular positions compared to each other. I.e., as the top surface of the protrusions are the same and all circles, the top surface different positions may be considered to be angled away from each other in any number of different possibilities, under the broadest reasonable interpretation of the claim. And additionally/alternatively, because the tire sidewall would necessarily be curved (see Figs. 1-2), the top surface of any number of protrusions would be angled away from each other because the protrusions would be located on a curved surface, which would change each respective angular position of the top surface).
Regarding claim 2, Muhlhoff suggests a tire wherein the surface is on a sidewall of the tire (see Figs. 1-3, where the pattern/protrusions are clearly located on the surface of the sidewall).
Regarding claims 3-4, Muhlhoff suggests a tire wherein the pseudo-random pattern is defined by a predefined minimum distance and maximum distance between any two adjacent ones of the protrusions (the protrusions may have a width between some or all of the protruding elements in a range from 0.05 to 0.5mm [0029, 0099, 0108]. Therefore, the protrusions would clearly have a min and max distance between adjacent protrusions that is predefined by Muhlhoff).
Regarding claims 5, Muhlhoff suggests a tire wherein protrusion heights are less than 1mm in height (the height of protrusions may range from 0.05mm to 0.5mm [0108]).
Regarding claim 6, Muhlhoff suggests a tire wherein a max width of the protrusions are less than 1mm (all of the protruding elements may have a length from 0.05 to 0.5mm [0029, 0099, 0108], and also the mean width may be 0.02 to 0.25mm [0099]).
Regarding claim 8, Muhlhoff suggests a tire wherein the protrusion comprises a cross-section in a shape of a polygon (Muhlhoff suggests that the protrusion cross-sections may be different in order to increase randomness [0110], and examples of protrusions cross-sections include polygonal shapes [see Figs. 14-15]. As such, it would have been obvious to modify the circular cross-section of the protrusions to have polygonal different cross-sections as suggested by Muhlhoff so as to increase the randomness. Additionally, case law shows that changes in shape would be considered as a matter of choice for a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP2144.04).
Regarding claim 9, Muhlhoff suggests a tire wherein the protrusion comprises an amorphous cross-section (Muhlhoff suggests that the protruding elements may be arranged to have variable shapes, such that it is not limited to what is shown in Fig. 15 [0110]. Case law shows that changes in shape would be considered as a matter of choice for a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP2144.04. In this case, as any “random” shape may be used to create randomness in the texture, it would have been obvious to utilize such a shape as a matter of choice. It being noted that Applicant’s specification does not attach any benefit or significance to these alternative shapes, such that it would have been considered obvious to modify the protrusions so as to be any possible shape, including those of amorphous shapes).
Regarding claim 10, Muhlhoff suggests a tire wherein a shape of cross-section of individual protrusions differ relative to other protrusions (Muhlhoff suggests that a variety of different shapes may be utilized so as to increase randomness and to make the elements less visible [0110, Fig. 15]. Therefore, it would have been obvious to modify the tire of Muhlhoff (such as Fig. 7) to include a variety of different shapes/cross-sections for the benefit of increasing randomness and making element less visible [0099], such that that some protrusions would clearly differ in cross-section from other ones).
Regarding claim 12, Muhlhoff suggests a tire wherein each of the protrusions has a surface contour which are disposed at a distal end of each protrusion, where a one of the contours is unique compared to a plurality of other contours (Muhlhoff suggests that a variety of different sizes and shapes of protrusions may be provided [0110, Fig. 15], in order to increase randomness and hide the elements [0110], such that a surface contour may clearly be different between at least some of the other protrusions. Additionally, it is noted that as the protrusions are provided on the sidewall of the tire which curves [see Figs. 1-2], the protrusions would necessarily be located at different positions and have relatively different contours from one another. For example, the protrusion at a radially inner portion of the sidewall would have its contour angled at a different angle compared to the protrusions located higher up at a radially outer portion of the sidewall which would have its contour angled differently).
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlhoff (US2017/0050473A1).
Regarding claim 14, Muhlhoff teaches a method comprising creating a plurality of protrusions on a tire with at least one surface (a tire “1”, as shown in Figs. 1-2, has a surface located on the sidewall “3” of the tire. The tire surface may comprise protruding elements “401”, as according to Fig. 7 for example, wherein these protrude with respect to the sidewall [0095]),
the protrusions being positioned in a pseudo-random pattern within the region (Muhlhoff suggests that the protrusions may be made to have “variable shapes and variable distance between protruding elements” [0110]. As such, it would have been obvious for a person of ordinary skill in the art to modify the protrusions as shown in Fig. 7, for example, so as to have variable distance between protruding elements. One would have been motivated so as to create randomness in the texture so as to make the elements less visible [0110], which is beneficial in a wide variety of application. As such, modified Muhlhoff would clearly have its protrusions arranged in a random pattern),
the protrusions comprise a cross-section in a shape of a circle (as in Fig. 7, the protrusions “401” would clearly have a circular cross-section when taken at any position along the longitudinal direction of the protrusion),
wherein the protrusions comprise a common shape (the protrusions may all have a shape of the conical overall shape as shown in Fig. 7 [0098]),
and at least a first one of the protrusions is positioned with a first angular position and at least a second one of the protrusions is positioned with a second angular position, where the first and second positions differ (as all of the protrusions have a circular shape, it is considered that the protrusions would necessarily have different angular positions compared to each other. I.e., as the top surface of the protrusions are the same and all circles, the top surface different positions may be considered to be angled away from each other in any number of different possibilities, under the broadest reasonable interpretation of the claim. And additionally/alternatively, because the tire sidewall would necessarily be curved (see Figs. 1-2), the top surface of any number of protrusions would be angled away from each other because the protrusions would be located on a curved surface, which would change each respective angular position of the top surface).
Regarding claims 15-16, Muhlhoff suggests a method wherein the protrusions are created by way of a mold and by way of laser engraving (Muhlhoff teaches that the projecting elements are molded by part of a mold, and having undergone a pulsed laser etching operation [0111]. Therefore, it may be considered that the protrusions are made by both laser engraving and by way of mold, as both are utilized in the formation of the protrusions).
Regarding claim 17, Muhlhoff suggests a method wherein the pseudo-random pattern is defined by a predefined minimum distance and maximum distance between any two adjacent ones of the protrusions (the protrusions may have a width between some or all of the protruding elements in a range from 0.05 to 0.5mm [0029, 0099, 0108]. Therefore, the protrusions would clearly have a min and max distance between adjacent protrusions that is predefined by Muhlhoff).
Regarding claim 18, Muhlhoff suggests a method where protrusions are less than 1mm in height and 1mm in width (the height of protrusions may range from 0.05mm to 0.5mm [0108]. All of the protruding elements may have a length from 0.05 to 0.5mm [0029, 0099, 0108]).
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlhoff (US2017/0050473A1).
Regarding claim 19, Muhlhoff teaches an apparatus comprising an item with a rubber surface (a tire “1”, as shown in Figs. 1-2, has a surface located on the sidewall “3” of the tire. The sidewall surface “3” is considered to be the rubber surface),
at least one region on the surface including a plurality of protrusions (the tire surface may comprise protruding elements “401”, as according to Fig. 7 for example, wherein these protrude with respect to the sidewall [0095]),
the protrusions being positioned in a pseudo-random pattern within the region (Muhlhoff suggests that the protrusions may be made to have “variable shapes and variable distance between protruding elements” [0110]. As such, it would have been obvious for a person of ordinary skill in the art to modify the protrusions as shown in Fig. 7, for example, so as to have variable distance between protruding elements. One would have been motivated so as to create randomness in the texture so as to make the elements less visible [0110], which is beneficial in a wide variety of application. As such, modified Muhlhoff would clearly have its protrusions arranged in a random pattern),
the protrusions comprise a cross-section in a shape of a circle (as in Fig. 7, the protrusions “401” would clearly have a circular cross-section when taken at any position along the longitudinal direction of the protrusion),
wherein the protrusions comprise a common shape (the protrusions may all have a shape of the conical overall shape as shown in Fig. 7 [0098]),
and at least a first one of the protrusions is positioned with a first angular position and at least a second one of the protrusions is positioned with a second angular position, where the first and second positions differ (as all of the protrusions have a circular shape, it is considered that the protrusions would necessarily have different angular positions compared to each other. I.e., as the top surface of the protrusions are the same and all circles, the top surface different positions may be considered to be angled away from each other in any number of different possibilities, under the broadest reasonable interpretation of the claim. And additionally/alternatively, because the tire sidewall would necessarily be curved (see Figs. 1-2), the top surface of any number of protrusions would be angled away from each other because the protrusions would be located on a curved surface, which would change each respective angular position of the top surface).
Regarding claim 20, Muhlhoff suggests an apparatus wherein a shape of cross-section of individual protrusions differ relative to other protrusions (Muhlhoff suggests that a variety of different shapes may be utilized so as to increase randomness and to make the elements less visible [0110, Fig. 15]. Therefore, it would have been obvious to modify the tire of Muhlhoff (such as Fig. 7) to include a variety of different shapes/cross-sections for the benefit of increasing randomness and making element less visible [0099], such that that some protrusions would clearly differ in cross-section from other ones).
Response to Arguments
Applicant’s arguments filed 2/17/2026 have been considered but they are not convincing.
Applicant argues that the rejection of Muhlhoff under 103 of claims 7 and 9 in the previous rejection is unclear.
The Examiner respectfully disagrees. The rejection was clearly under the “103” header and explanation in paragraphs 77-79, such that the rejection as cited was intended to be a 103 rejection. While paragraph 80 did refer to this as 102(a)(1) which is how the reference qualifies as prior art, the rest of paragraph 80, as well as 81-82, make it abundantly clear that this is a 103 obviousness type rejection which is taking the rejection as applied to claim 1 above (under 102), and further considering the reference of Muhlhoff under obviousness rationale so as to address the limitations of claims 7 and 9. This is further detailed in paragraphs 81 and 82 which refer to specific obviousness rationale which would only be relevant under 103 and not under 102. Therefore, it is considered that this rejection was clearly explained, and the inclusion of a single reference to “102” was a clear and obvious typographical error.
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