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 .
Specification
The disclosure is objected to because of the following informalities: Table 1 has instances of typographical errors, such as “3,0” instead of –3.0—.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: the phrase “in a toroid manner” in line 2 should be written as –in a toroidal manner— for grammatical clarity. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “the carcass with being wound” in line 3 should be written as –the carcass [[with ]]being wound— for grammatical clarity. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “not only a stress-strain curve” in line 5 should be written as –[[not only ]]a stress-strain curve— for clarity. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the phrase “but also a ratio” in line 7 should be written as –[[but also]]and wherein a ratio— for clarity. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: the phrase “wherein not only” in line 1 should be written as –wherein[[ not only]]— for clarity. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: the phrase “but also a ratio” in lines 2-3 should be written as –[[but also ]]and wherein a ratio— for clarity. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the phrase “the steel filaments” in line 2 should be written as –the plurality of shaped steel filaments— for consistency in claim language. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: the phrase “wherein not only” in line 1 should be written as –wherein[[ not only]]— for clarity. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: the phrase “but also a ratio” in line 2 should be written as –[[but also ]]and wherein a ratio— for clarity. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: the phrase “the steel filaments” in line 2 should be written as –the plurality of shaped steel filaments— for consistency in claim language. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: the phrase “the steel filaments” in line 2 should be written as –the plurality of shaped steel filaments— for consistency in claim language. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: the phrase “the steel filaments” in line 2 should be written as –the plurality of shaped steel filaments— for consistency in claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
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 1, 3, and 8 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. Applicant’s specification does not provide adequate written description of the claimed ratio EVH/EVL, where EVH is the elastic modulus in the high elastic modulus region and EVL is the elastic modulus in the low elastic modulus region. The specification describes the low and high elastic modulus regions generally with reference to Figure 3 and identifies a general inflection point P separating the regions. However, Figure 3 is merely qualitative and provides no numerical stress or strain values, no ranges or end points defining the respective regions, and no methodology for determining the slopes of the corresponding EVH and EVL values. The illustrated stress-strain curve is nonlinear, such that the slope of a region is not necessarily a single, uniquely determinable value absent identification of the portion of the curve or a method for calculating the slope. The specification also does not provide experimental stress-strain data or calculations explaining how the EVH and EVL values reported in the Table were obtained. Accordingly, although the specification generally describes elastic modulus as associated with the slope of the stress-strain curve, it does not adequately describe how the particular EVH and EVL values are identified and determined so as to obtain the claimed ratio. The same issues exist for the stress-strain curve and related ratios and values of elastic moduli of the belt cord taken out of the tire as well as the belt cord not covered with rubber before vulcanization.
Claims 2-20 are dependent upon claim 1, and claims 13-16 are dependent upon claim 3.
The examiner notes that until the 35 USC 112(a) issues are resolved, a prior art rejection under 35 USC 102 and/or 103 cannot be made.
Claims 1-20 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.
Regarding claim 1, as discussed above, the specification does not provide objective criteria for determining the portions of the stress-strain curve corresponding to the high and low elastic modulus regions or for calculating respective slopes so as to determine the ratio EVH/EVL. Figure 3 is merely qualitative and provides no numerical ranges for the stress and strain axes, no endpoints for the extent of each respective region, and no calculation methodology. Accordingly, different skilled artisans could obtain different ratios EVH/EVL from the same stress-strain curve, such that the scope of the claim cannot be determined with reasonable certainty.
Regarding claim 1, the phrase “the strain range” in line 6 lacks sufficient antecedent basis.
Claims 2-20 are indefinite by dependence on claim 1.
The examiner notes that until the 35 USC 112(b) issues are resolved, a prior art rejection under 35 USC 102 and/or 103 cannot be made.
Regarding claim 2, the phrase “the stress-strain curve of the belt cord not covered with rubber before vulcanization” in lines 1-2 lacks sufficient antecedent basis because claim 1 previously discloses a stress-strain curve of the belt cord taken out from the tire, which is different from a stress-strain curve of the belt cord not covered with rubber before vulcanization.
Claims 8-12 are indefinite by dependence on claim 2.
Regarding claim 3, as discussed above, the specification does not provide objective criteria for determining the portions of the stress-strain curve corresponding to the high and low elastic modulus regions or for calculating respective slopes so as to determine the ratio EUH/EUL. Figure 3 is merely qualitative and provides no numerical ranges for the stress and strain axes, no endpoints for the extent of each respective region, and no calculation methodology. Accordingly, different skilled artisans could obtain different ratios EUH/EUL from the same stress-strain curve, such that the scope of the claim cannot be determined with reasonable certainty.
Regarding claim 3, the phrase “the stress-strain curve of the belt cord not covered with rubber before vulcanization” in lines 1-2 lacks sufficient antecedent basis because claim 1 previously discloses a stress-strain curve of the belt cord taken out from the tire, which is different from a stress-strain curve of the belt cord not covered with rubber before vulcanization.
Claims 13-16 are indefinite by dependence on claim 3.
Regarding claim 8, as discussed above, the specification does not provide objective criteria for determining the portions of the stress-strain curve corresponding to the high and low elastic modulus regions or for calculating respective slopes so as to determine the ratio EUH/EUL. Figure 3 is merely qualitative and provides no numerical ranges for the stress and strain axes, no endpoints for the extent of each respective region, and no calculation methodology. Accordingly, different skilled artisans could obtain different ratios EUH/EUL from the same stress-strain curve, such that the scope of the claim cannot be determined with reasonable certainty.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
As noted above, until the 35 USC 112(a) and 112(b) issues are resolved, a prior art rejection under 35 USC 102 and/or 103 cannot be made. However, relevant prior art is cited below in an effort to provide compact prosecution.
Isaka (US 20130160915) discloses a motorcycle tire comprising a spiral belt (Fig. 1: 7, 10) in which a carcass (Fig. 1: 6) striding between paired bead portions (Fig. 1: 4) and extending in a toroid manner serves as a skeleton and a belt cord (Figs. 1, 2a, 2b: 11) is formed outside in a tire radial direction of the carcass being wound in a spiral manner in a tire circumferential direction (Fig. 1) ([0026], [0028]-[0030], [0032]-[0033]), wherein the belt cord is a steel cord of 1 x 5 structure (Fig. 2b) ([0038]), with twisted steel filaments (Figs. 2a, 2b: 14) having a twisting pitch of not more than 13 mm and not less than 7 mm (overlapping with the claimed range of 5.2 to 8.8 mm) (Fig. 2a: P1) ([0040], [0044]), and a steel filament diameter (Fig. 2b: L1) of not more than 0.30 mm and not less than 0.10 mm ([0048]), with at least one shaped steel filament (Fig. 2b: 14t) ([0049]). Accordingly, Isaka discloses a belt cord diameter of approximately slightly more than 0.2 to slightly less than 0.9 mm (Fig. 2b: see how diameter of cord 11 is more than 2 and less than 3 of the filaments with diameter L1) (overlapping with the claimed range of 0.59 to 0.71 mm), and a shaping height of the steel filaments of approximately the same as the diameter of the belt cord as the shaping height is taken to be the height reached by the filaments from top to bottom of the belt cord diameter (overlapping with the claimed range of 0.70 to 0.80 mm). The examiner notes that shaping height is not defined by Applicant’s specification and therefore is given the broadest reasonable interpretation. Because Isaka discloses a motorcycle tire comprising a spiral belt with belt cords made of steel as described in Applicant’s specification, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that the same steel belt cords of Isaka would also have, or be capable of having, a stress-strain curve of the belt cord taken out from the tire having an inflection point PV in a strain range of 0.20 to 0.90%, and a ratio EVH/EVL of an elastic modulus EVH in a high-elastic modulus region of more than the inflection point PV to an elastic modulus EVL in a low-elastic modulus region of the inflection point PV or less, with respect to the belt cord taken out from the tire, being 2.0 to 8.0. Case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. Isaka further illustrates a load-elongation curve for the cord (Fig. 3), which one of ordinary skill in the art would have readily recognize correlates similarly to a stress-strain curve for the cord.
The examiner further notes that the claims are directed to a motorcycle tire (i.e., a product), but the claims have limitations directed to the properties of a belt cord when not within the tire product (i.e., a belt cord taken out of the tire, and a belt cord not covered with rubber before vulcanization), which may raise issues for product-by-process and/or intended use limitations that do not hold patentable weight for the claimed tire product.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KATELYN SMITH can be reached on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The fax phone number for the examiner is (571) 273-5031.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
