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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed on 10/16/2024 and 5/28/2025 has been considered by the Examiner.
Claim Objections
Claims 10, 12, and 17 are objected to because of the following informalities:
Claim 10 should read “…wherein the first sound absorber has the resonance frequency between 210Hz and 225Hz, and the second sound absorber has the resonance frequency between 195Hz and 201Hz”, because the resonance frequencies of the first and second sound absorbers were introduced in claim 1 of which this claim depends.
Claim 12 line 2 should read “…a sixth sound absorber”
Claim 17 line 2 should read “…sound absorbers are disposed on an inner side…”
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/916881. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims 1-2 are merely broader than the copending claim 11. Copending claim 11 requires the tire with the tread portion, the pair of sidewalls, the pair of bead portions, the plurality of Helmholtz sound absorbers which are to an inner side in the axial direction of the pair of sidewall portions, and requires first and second resonance frequencies of the sound absorbers which have a difference between them from 10 to 90Hz. The difference lies in the fact that the copending claim 11 include additional limitations and is thus more specific. Thus the invention of the copending claim 11 is in effect a "species" of the "generic" invention of the instant claims 1-2. It has been held that the generic invention is "anticipated” by the “species". See MPEP 804 Section II(B). Since claims 1-2 are anticipated by copending claim 11, they are not patentably distinct from the copending claims 1-2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-2, 4-6 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Hirano (JP2004168212A).
Regarding claim 1, Hirano teaches a tire teaches a pneumatic tire (see Fig. 1, with the tire “16” with air chamber “20”), comprising:
a tread portion (tread “34”),
a pair of sidewall portions which extend to an inner side from ends of the tread portion (see Fig. 1, the sidewalls each extend respectively from outer ends of the tread radially inwards from the tread),
a pair of bead portions which are located on an inner side of the sidewalls (see Fig. 1, which clearly depicts bead portions at the intersection of the tire with the rim “18”. The bead core and bead apex are clearly evident at the radially inner portions of the tire),
A plurality of Helmholtz sound absorbers on a tire inner cavity surface (the sound absorbing devices “10” which are attached to the tire inner surface comprise boxes “32” which are considered the Helmholtz sound absorbers [0035]. The structure of these absorbing devices are substantially the same as the Helmholtz sound absorbers of the instant application [see Figs. 4-7], wherein there is a box/chamber and an extending cylindrical tubular portion),
the absorbers have a first sound absorber with a first frequency and a second sound absorber with a second frequency which is different from the first (the absorbers may have different absorbers that are tuned to different frequencies [0035-0036], where the boxes are made different from each other leading to two or more frequencies [0022, 0035]),
each of the first/second found absorbers is disposed on an inner side in the axial direction compared to at least one of the sidewalls (as in Fig. 1, the absorbers “32” are clearly located radially inwards of the sidewalls which make up axially outer portions of the tire, as the absorbers are located closer towards a tire equator compared to the sidewall/bead portions which are axially outside. It being noted that there are not specific requirements regarding absorber radial positioning required in the claim).
Regarding claim 2, Hirano teaches a tire comprising first/second sound absorbers disposed on the inner side in the axial direction of either of the bead portions (as in the rejection of claim 1 above, the absorbers “32” are clearly located radially inwards of the bead portions which make up axially outer portions of the tire, as the absorbers are located closer towards a tire equator compared to the sidewall/bead portions which are axially outside. It being noted that there are not specific requirements regarding absorber radial positioning required in the claim).
Regarding claim 4, Hirano teaches a tire wherein the sound absorbers is formed of a resin that does not change shape at 120C or lower (the box of the absorber is formed of a synthetic resin material, wherein it has ample strength and rigidity [0028]. The wording of the claim is such that the resin merely not need change shape during any temperature at 120C or lower. As such, any resin would necessarily not change shape for at least some temperatures of 120C or lower, dependent upon the specific resin chosen, such as at very low temperatures. Additionally, it is noted that as the resin is chosen for providing sufficient rigidity [0028] for the tire intended to be used for automobiles [0001], the resin would thus have sufficient rigidity for a range of temperatures in the running range of the tire).
Regarding claim 5, Hirano teaches a tire wherein the first frequency is a maximum, and the second frequency is a minimum (for the plurality of frequencies that may be present per Hirano, it would be considered that the greatest is the maximum and the minimum is the second. For example, if there are two frequencies at 230Hz and 240Hz per [0036], the first frequency would be 240Hz and the second 230Hz).
Regarding claim 6, Hirano teaches a tire wherein the first frequency is 130-350Hz and the second is 120-340Hz (as in the example given above in rejection of claim 5, Hirano teaches a specific example where two differing frequencies are within the cited range at values of 230Hz and 240Hz [0036]).
Claims 13, 15-18 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Hirano (JP2004168212A).
Regarding claim 13, Hirano teaches a tire teaches a pneumatic tire (see Fig. 1, with the tire “16” with air chamber “20”), comprising:
a tread portion (tread “34”),
a pair of sidewall portions which extend to an inner side from ends of the tread portion (see Fig. 1, the sidewalls each extend respectively from outer ends of the tread radially inwards from the tread),
a pair of bead portions which are located on an inner side of the sidewalls (see Fig. 1, which clearly depicts bead portions at the intersection of the tire with the rim “18”. The bead core and bead apex are clearly evident at the radially inner portions of the tire),
A plurality of Helmholtz sound absorbers on a tire inner cavity surface (the sound absorbing devices “10” which are attached to the tire inner surface comprise boxes “32” which are considered the Helmholtz sound absorbers [0035]. The structure of these absorbing devices are substantially the same as the Helmholtz sound absorbers of the instant application [see Figs. 4-7], wherein there is a box/chamber and an extending cylindrical tubular portion),
the absorbers have a first sound absorber with a first frequency and a second sound absorber with a second frequency which is different from the first (the absorbers may have different absorbers that are tuned to different frequencies [0035-0036], where the boxes are made different from each other leading to two or more frequencies [0022, 0035]),
each of the sound absorbers include at least one sound absorption chamber with a space therein and a tube portion connecting the sound absorption chamber to the tire inner cavity (see Figs. 1-7 which depict the box “32” is further detail. Fig. 4 provides one cross-sectional view of the absorber, wherein “40” is a closed internal space inside the box with a surrounding wall “35”. The combination of “40” and “35” may be considered the chamber. And the cylindrical tubular portion “44” protrudes outwards from the through hole connecting to the inner chamber, such that this may be considered the “tube portion”. These components of the absorbers are clearly evident in each of the Figures).
Regarding claims 15-16, Hirano teaches tire wherein each absorption chamber has a first chamber with a first frequency and a second chamber with a second frequency which are integrated (it is noted that the limitation as claimed does not in any way require the first/second frequencies to be different, nor for there to be delineation of any sort between the chambers as claimed. As such, it would reasonably be considered within the broadest reasonable interpretation of the claim that the sound absorber chamber 40, as in Figs. 1-7, would necessarily satisfy the claim language, as one arbitrary portion thereof may be considered the first chamber with a first frequency, and another arbitrary portion thereof would be considered the second chamber with the second frequency which would be the same as the first. And as the chambers would both be portions of the chamber 40, the first/second chambers would also necessarily be integrated with each other).
Regarding claim 17, Hirano teaches a tire wherein the plurality of absorbers are disposed on the inner side in the axial direction relative to either of the pair of bead portions (as in Fig. 1, the absorbers would clearly be disposed axially inside of the bead portions, as the bead portions are axially outside of the center region of the tire), and the plurality of absorbers are at positions opposite to each other (as in Fig. 1, the leftmost absorbers are clearly formed so as to be at an opposite position as the rightmost absorbers, where the leftmost and rightmost in Fig. 1 are considered at opposite positions about a tire equatorial plane which extends in the center of the tire).
Regarding claim 18, Hirano teaches a tire wherein the plurality of absorbers have unit widths for adjacent absorbers which are equal and are 3 to 10Hz (the tire may be arranged so as to have resonators tuned to two different frequencies, such as at 230Hz and 240Hz [0036]. In this case, these resonators would have a unit width of 10Hz, within the claimed range).
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 3, 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hirano (JP2004168212A), as applied to claim 1 above, and further in view of Hirano (JP2004168212A).
Regarding claim 3, Hirano makes obvious a tire wherein each of the bead portions has an annular bead core extending in a circumferential direction (the roughly square bead core is evident in Fig. 1 of Hirano, near the connecting portion of the tire with the rim “18”. As Fig. 1 is a cross-section of the tire, it would necessarily extend in the circumferential direction along the extent of the tire) and a bead apex extending to an outer side of the bead core (in Fig. 1, the bead apex is located immediately radially above each of the bead cores),
Each of the first/second sound absorbers is disposed in a range from an inner end of either bead core to an outer end of corresponding bead apexes (Hirano teaches that the sound absorbing device is not limited to the inner peripheral surface of the tread, and that it may be mounted onto any portion of the inner surface of the air chamber [0052]. Hirano explicitly states that the absorbing devices may be placed to be on the inner surface of the bead portion of the tire [0052]. Because the bead portion would necessarily be at least partially within the ranges as defined in the claims (from a bead inner portion to an outer end of a bead apex), the claim would be met when the absorbers are arranged on the bead portion of the tire as suggested by Hirano. One of ordinary skill in the art would have found it obvious to modify the sound absorber locations to be located on the bead portion inner surface, as Hirano explicitly suggests that the absorbers may be located there [0052]. And one of ordinary skill in the art would have expected for the location on the tire cavity in such a location to lead to appropriate sound-absorbing effect of a variety of frequencies [0034, 0044, 0052-0055]).
Regarding claim 7, Hirano further teaches that the Heltzholm sound-absorbing resonators “32” are formed to tune a specific frequency. Hirano explicitly states that the plurality of resonators may be tuned to “a plurality of frequency ranges” which is accomplished by making the boxes “32” “different from each other” [0035], and wherein it is explicitly said that this may be to two or more frequency ranges [0022]. And Hirano further states that the frequency of each resonator may be tuned so as to maximize the effect of the invention [0018]. Because the frequencies are tuned by the resonators to this plurality of ranges, there may be accomplished an effective sound-absorbing effect [0005, 0044]. Therefore, one of ordinary skill in the art would have found it obvious to include a plurality of frequency ranges as suggested by Hirano (such that there would be a third different frequency), and one would have been motivated so as to accomplish a more effect sound-absorbing effect over a variety of frequencies [0005, 0044]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 8-9, Hirano further makes obvious the plurality of Helmholtz sound absorbers have unit widths that are substantially equal for adjacent absorbers frequencies and for the widths to be 3 to 10Hz (as above in claim 7, Hirano explicitly states that the plurality of resonators may be tuned to a plurality of frequency ranges including two or more ranges [0022, 0035], wherein each resonator may be tuned so as to maximize the effects of the invention [0018]. The fine tuning of the resonators frequencies within the range of about 200Hz to 300Hz results in an effective sound-absorbing effect [0004-0005, 0044]. Hirano has the explicit example wherein adjacent resonators have a difference in frequency of 10Hz [0036] which is within the claimed difference range of 3 to 10Hz. Additionally, Hirano provides the specific method of fine tuning the specific frequencies of each of the absorbers in order to appropriately set the frequency dependent on the size of the device [0037-0038].
Note that a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person' s skill. While evaluating obviousness, one must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions; see KSR Int. v. Teleflex 550 US (2007). To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art; ibid. The analysis need not seek out precise teachings directed to the challenged claimed specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed; ibid. Note also that “A person of ordinary skill is also a person of ordinary creativity, not an automaton”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
Further, the reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Therefore, it is considered that the modification of Hirano’s sound absorbers to have differences in adjacent frequencies which are substantially equal and in the range of 3 to 10Hz would have been an obvious modification and a routine optimization of the prior art in order to improve the sound-absorbing effects of the tire [0005, 0044]. As the balance in the frequencies of the sound absorbers (and thus the noise absorbing properties of the tire overall) may be adjusted by modifying the size of the Helmholtz sound absorbers, the precise interval would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the interval cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the interval in Hirano so as to obtain the desired balance in noise suppression frequencies (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).” Given that Hirano discloses a pneumatic tire with a plurality of Helmholtz sound absorbers, where there may be greater than 2 types of frequencies, where the difference between adjacent frequencies may be 10Hz, and where the details for modifying the absorber frequency via absorber size are laid out, one of ordinary skill in the art would have optimized the sound absorption properties of the tire and have landed upon the claimed limitations.
Regarding claims 10-12, Hirano makes obvious first through seventh sound absorbers which are arranged at the claimed frequencies (Hirano explicitly states that the plurality of resonators may be tuned to a plurality of frequency ranges including two or more ranges [0022, 0035], wherein each resonator may be tuned so as to maximize the effects of the invention [0018], wherein this is accomplished by making the boxes “32” different from each other [0035]. The fine tuning of the resonators frequencies within the range of about 200Hz to 300Hz results in an effective sound-absorbing effect [0004-0005, 0044]. Additionally, Hirano provides the specific method of fine tuning the specific frequencies of each of the absorbers in order to appropriately set the frequency dependent on the size of the device [0037-0038]. In other words, Hirano suggests the use of a plurality of resonators which may be tuned to a plurality of different frequencies, wherein the frequencies may be tuned in to effectively improve the sound absorbing effect of the tire, within a range wherein all of the first through seventh absorbers are tuned.
Note that a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person' s skill. While evaluating obviousness, one must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions; see KSR Int. v. Teleflex 550 US (2007). To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art; ibid. The analysis need not seek out precise teachings directed to the challenged claimed specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed; ibid. Note also that “A person of ordinary skill is also a person of ordinary creativity, not an automaton”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
Further, the reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Therefore, it is considered that the modification of Hirano’s sound absorbers to have multiple different frequencies (such that there are first through seventh sound absorbers tuned to the specific claimed frequencies) would have been an obvious modification and a routine optimization of the prior art in order to improve the sound-absorbing effects of the tire [0005, 0044]. As the balance in the frequencies of the sound absorbers (and thus the noise absorbing properties of the tire overall) may be adjusted by modifying the size of the Helmholtz sound absorbers, the precise interval would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the intervals cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the interval in Hirano so as to obtain the desired balance in noise suppression frequencies for the plurality of absorbers (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).” Given that Hirano discloses a pneumatic tire with a plurality of Helmholtz sound absorbers, where there may be greater than 2 types of frequencies, where the total range of frequencies may range from about 200-300Hz, and where the details for modifying the absorber frequency via the absorber dimensions are laid out, one of ordinary skill in the art would have optimized the sound absorption properties of the tire and have landed upon the claimed limitation. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 14-16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hirano (JP2004168212A), as applied to claim 13 above, and further in view of Hirano (JP2004168212A).
Regarding claim 14, Hirano makes obvious a tire wherein the sound absorption chamber has a hemispherical shape with the tube portion extending along the chamber (Hirano suggests that the box is not limited to any specific size and shape, and that instead of the rectangular shape shown, the box may be formed as a cylindrical body or as a dome-shaped box [0050]. When the box is arranged as a dome as suggested by Hirano, for example, the chamber would reasonably be considered to have a “hemispherical” shape within the broadest reasonable interpretation of the claim. And the tube portion 42/44 would similarly necessarily extend along at least a portion of the chamber (under the broadest reasonable interpretation of the claim), such as extending along the outer portion of the chamber as in Fig. 5 for example. One of ordinary skill in the art would have found it obvious to modify the box/chamber of Hirano to have the dome-shape as suggested by Hirano. And one would have found it obvious so as to lead to an appropriate sound-absorbing effect of a variety of frequencies, with a reasonable expectation of success [0034, 0044, 0052-0055]. Additionally, as Hirano presents this alternate “dome” shape as an alternative to the rectangular base shape, it would have been considered “obvious to try” by the person of ordinary skill in the art given the few specific different arrangements of shape that are explicitly given by Hirano (including rectangular, cylindrical, and dome shaped boxes).
Regarding claims 15-16, Hirano makes obvious an absorption chamber with a first resonance frequency and a second resonance frequency, where the first and second chambers are integrated with each other (In this alternative rejection to claims 15-16 over 102 above, Hirano teaches that the plurality of absorbers may be tuned to different frequencies [0035-0036], which leads to an improvement in sound properties of the tire. Hirano suggests that the plurality of the absorbers may be made to be an “integrally formed product by mutually connecting them” [0033]. As Hirano explicitly suggests that the sound absorbers may therefore be integrally formed to each other, one of ordinary skill in the art would have found it obvious to arrange the absorption chambers as such to be connected in order to exhibit effective rigidity [0033], as well as the greater aim of thus allowing for the combination of sound-absorbers to appropriately tune the frequency of the tire to improve the sound effects thereof [0034, 0044]. And as chambers integrally formed together may have the different frequencies as suggested by Hirano, there would clearly be a first chamber with a first frequency integrally formed to a second chamber with a second frequency).
Regarding claims 19-20, Hirano makes obvious Hirano makes obvious first through fourth sound absorbers which are arranged at the claimed frequencies (Hirano explicitly states that the plurality of resonators may be tuned to a plurality of frequency ranges including two or more ranges [0022, 0035], wherein each resonator may be tuned so as to maximize the effects of the invention [0018], wherein this is accomplished by making the boxes “32” different from each other [0035]. The fine tuning of the resonators frequencies within the range of about 200Hz to 300Hz results in an effective sound-absorbing effect [0004-0005, 0044]. Additionally, Hirano provides the specific method of fine tuning the specific frequencies of each of the absorbers in order to appropriately set the frequency dependent on the size of the device [0037-0038]. In other words, Hirano suggests the use of a plurality of resonators which may be tuned to a plurality of different frequencies, wherein the frequencies may be tuned in to effectively improve the sound absorbing effect of the tire, within a range wherein all of the first through fourth absorbers are tuned.
Note that a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person' s skill. While evaluating obviousness, one must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions; see KSR Int. v. Teleflex 550 US (2007). To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art; ibid. The analysis need not seek out precise teachings directed to the challenged claimed specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed; ibid. Note also that “A person of ordinary skill is also a person of ordinary creativity, not an automaton”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
Further, the reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Therefore, it is considered that the modification of Hirano’s sound absorbers to have multiple different frequencies (such that there are first through fourth sound absorbers tuned to the specific claimed frequencies) would have been an obvious modification and a routine optimization of the prior art in order to improve the sound-absorbing effects of the tire [0005, 0044]. As the balance in the frequencies of the sound absorbers (and thus the noise absorbing properties of the tire overall) may be adjusted by modifying the size of the Helmholtz sound absorbers, the precise interval would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the intervals cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the interval in Hirano so as to obtain the desired balance in noise suppression frequencies for the plurality of absorbers (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).” Given that Hirano discloses a pneumatic tire with a plurality of Helmholtz sound absorbers, where there may be greater than 2 types of frequencies, where the total range of frequencies may range from about 200-300Hz, and where the details for modifying the absorber frequency via the absorber dimensions are laid out, one of ordinary skill in the art would have optimized the sound absorption properties of the tire and have landed upon the claimed absorber frequencies. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS F SCHNEIDER whose telephone number is (571)272-4857. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
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/T.F.S./Examiner, Art Unit 1749
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749