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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/22/2026 has been entered.
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.
Claims 1, 4, 8, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Destraves (FR3059605, with English equivalent US 20200079159) in view of Dunn (WO 99/29522), Pavageau (US 20190375926), and Tsuji (JP2007-230261, with English machine translation).
Regarding claim 1, Destraves discloses:
A pneumatic tire (see tire, [0065], Fig. 4), comprising:
a tread portion extending in a tire circumferential direction and having an annular shape (tread 89);
a pair of sidewall portions disposed on both sides of the tread portion (sidewalls 83);
and a pair of bead portions disposed on an inner side in a tire radial direction of the sidewall portions (beads 84);
the tire being embedded with a transponder covered with a covering layer (see radiofrequency transponder embedded in mass 112; [0064], Fig. 3; embedded at various locations, Fig. 5);
Destraves is silent as to a modulus M50 (20° C.) at 50% deformation at 20° C. of the covering layer being in a range of from 0.4 MPa to 1.5 MPa. In the same field of endeavor of tires, Dunn discloses a chip and antenna covered with an insulating rubber and that the rubber must have properties which are consistent with its use in the tire. (pg 8, lines 26-28). In particular, Dunn discloses a rubber as having a 50% modulus of 65 to 80 psi (0.4 to 0.6 MPa; pg 8, lines 26-31). While Dunn does not expressly disclose the temperature, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date for the measurement to be taken at ambient temperature and that 20C is substantially equal to ambient/room temperatures. Examiner notes that it is conventional in the art for ambient temperature to be used when the measurement temperature is not specified.
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date to have configured the covering rubber of Destraves with 50% modulus of 0.4 to 1.5 MPa since Dunn discloses providing a covering rubber for a chip/antenna with a 50% modulus of 0.4 to 0.6 MPa (pg 8, lines 26-31). One would have been motivated to ensure the rubber has properties that are consistent with the tire (pg 8, lines 28) and to employ a 50% modulus known to be suitable for covering transponders embedded in a tire.
Destraves does not disclose the ratio of the modulus M50 at 20C vs the modulus M50 at 100C. In the same field of endeavor of tires, Pavageau discloses a rubber composition for rubber components in tires ([0001,0124]). Pavageau discloses that in order to be used in tires, the rubber should have a stiffness that does not change very much as a function of temperature and discloses that the ratio of moduli at 50% measured at 23C and at 100C should be less than or equal to 2 ([0134-0136,0142]). Pavageau discloses the ratio relates to the change in the stiffness as a function of temperature ([0142]). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the covering layer with M50 20C/100C satisfying the claimed 1.0 to 2.5 range in since Pavageau discloses the rubber used in tires should have a stiffness that does not change very much as a function of temperature with a 50% modulus ratio at 23C/100C less than 2.0 ([0134-0136,0142]).
Destraves discloses the transponder as embedded in the bead portion with sidewall rubber member located outwards in the tire width direction from the transponder (Fig. 5). Destraves does not disclose the storage modulus at 2MPa to 12MPa or the storage modulus relationship relative a rubber member having a largest storage modulus of rubber members located on the outer side in the tire width direction of the transponder. It would have been obvious, however, to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the covering layer with modulus as claimed since Tsuji, similarly directed towards a tire with transponder, teaches that, generally, the dynamic elastic modulus of a side rubber part is about 5 to 7 MPa and that the dynamic elastic modulus of a coating rubber composition should be about 2 to 12 MPa, preferably 4 to 7 MPa, so that the tire does not break when the sidewall flexes ([0010]; dynamic elastic modulus is same as storage modulus)--these values lie within the 2 to 12 MPa range and also satisfy the moduli ratio (moduli 4 to 7 / moduli 5 to 7 = 0.6 to 1.4).
Destraves does not disclose the thickness of the covering layer as 0.5 to 1.8 mm; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date to have configured the layer with thickness of 0.5 to 1.8 mm since Tsuji, similarly directed towards a tire with transponder, teaches configuring the rubber covering layer with thickness of 0.5 to 2 mm to enable communication and enhance durability ([0012,0013]).
Regarding claim 4, Destraves teaches a relative dielectric permittivity of less than 6.5 ([0064]).
Regarding claim 8, Destraves teaches the transponder is spaced from carcass ply end 881 by at least 10 mm, preferably at least 15 mm ([0021]). The carcass ply end 881 extends above the bead core (Fig. 5) and thus the transponder would be at least 15 mm from the bead core. Also, Fig. 5 shows the transponder 100 as inwards of the tire maximum width position.
Regarding claim 9, Destraves clearly illustrates the transponder as embedded within the bead portion at a distance of 1 mm or more from the tire surface (Fig. 5, see transponder 100 in between apex layers 91 and 92). Examiner notes that the transponder is spaced from the carcass ply end 881 by at least 10 mm ([0021]) and that the helical antenna has outside diameter of 1.4 mm ([0055])--the rubber layers surrounding the transponder are clearly thicker than the transponder (Fig. 5).
Regarding claim 11, Destraves teaches the transponder has a chip on a circuit board and a helical antenna ([0054-0055]).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Destraves (FR3059605, with English equivalent US 20200079159) in view of Dunn (WO 99/29522), Pavageau (US 20190375926), and Tsuji (JP2007-230261, with English machine translation) as applied to claim 1 above, and further in view of Balnis (US 20170368874).
Regarding claims 5 and 6, Destraves discloses the covering layer as made of elastomer but is silent as to the particular composition. In the same field of endeavor of tire transponders, Balnis discloses a rubber composition for covering a radio device inside tires wherein Balnis discloses the composition as comprising 25 phr or more, including 25 to 40 phr, of non-reinforcing filler ([0048]). The non-reinforcing fillers include a number of white fillers such as titanium dioxide; carbonates including calcium carbonate; and talc ([0049]). Balnis discloses the rubber composition provides improved readability of the radio device ([0081]). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured covering layer of Destraves with the rubber composition disclosed by Balnis, said composition comprising 25 phr or more of a non-reinforcing filler that includes calcium carbonate, for the purpose of improving readability of the transponder ([0048,0049,0081]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Destraves (FR3059605, with English equivalent US 20200079159) in view of Dunn (WO 99/29522), Pavageau (US 20190375926), and Tsuji (JP2007-230261, with English machine translation) as applied to claim 1 above, and further in view of Battocchio (US 20130112324).
Regarding claim 7, Destraves does not disclose the transponder's circumferential position relative to a splice; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the transponder's center as 10 mm or more away from a splice since Battocchio, similarly directed towards a tire with transponder, teaches positioning a transponder diametrically opposed to a weld 16 (i.e., splice) of a sidewall component to ensure a good quality of remote radio communication with the transponder ([0057], see Figs. 2, 3). Examiner notes that conventional vehicle tires have circumferences that are orders of magnitude larger than 10 mm and thus the transponder would be further away from the splice by at least 10 mm.
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive. Applicant argues Destraves describes the thickness as being 2 to 5 mm ([0064]). Application further points to Destraves disclosing the tube thickness and antenna diameter of the structure ([0058,0062]). Applicant argues that it would not have been obvious to use a thickness of less than 2 mm and the range would exclude the range of Tsuji.
Examiner disagrees. Regarding the thickness of the covering sheets, Destraves recites "a thickness of for example between 2 and 5 millimeters" ([0064]). Destraves discloses the thickness range as an example and does not restrict or teach away from using a thickness that lies outside the 2 to 5 mm range. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. MPEP 2123(II). Tsuji is similarly directed towards providing a rubber covering for a transponder embedded within a tire and teaches the thickness of the covering is 0.5 to 2.0 mm ([0012]). Tsuji teaches that a minimum thickness is required to achieve improved communication and durability while excess thickness can cause tire durability issues ([0012-0013]).
It is unclear why the dimensions cited by Applicant for the antenna, tube, and rigid mass necessarily require a covering thickness of at least 2 mm. Examiner notes that the first embodiment in Destraves is contained within the antenna (Fig. 1; no tube or rigid mass as in Fig. 2) and this embodiment is depicted in Fig. 3 with the flexible cover sheets 112. The antenna is disclosed as having a diameter of 1.4 mm ([0055]). These dimensions do not particularly restrict the thickness of a rubber covering.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Uehara (US 2009/015415) discloses covering an RFID module with 0.2-2.0 mm thick rubber sheet having dynamic modulus of elasticity E' of 2-12 and relative permittivity of 7 or less (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
