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 .
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.
Claim(s) 1-2 and 4-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over RHP GmbH (DE 102006046195, see updated machine translation provided) (of record).
Regarding claims 1 and 5-6, RHP discloses a vehicle tire (Fig. 1), configured to be mounted on a nominal rim (Fig. 1: 10) and inflated, the tire comprising: a crown having a radially outer tread surface (Fig. 1: 3), and two axial end portions, each extended radially inwardly by a sidewall (Fig. 1: 1) of the tire and then by a bead (Fig. 1: 6) of the tire configured to come into contact with the rim (Fig. 1: 10); wherein the crown (Fig. 1: 3), the sidewalls (Fig. 1: 1) and the beads (Fig. 1: 6) delimit a toroidal interior cavity (Fig. 1: 4) of the tire, wherein the tire has: an axial width S and a radial height H in a mounted and inflated state of the tire (Fig. 1; see also annotated Fig. 1 below), and an equatorial plane passing through a middle of the tread surface and perpendicular to an axis of rotation of the tire (See annotated Fig. 1 below), wherein the tire further comprises a stiffening structure (Fig. 1: 7, 9), which is distributed circumferentially over an entire circumference of the tire and which comprises at least one elongated stiffening element (Fig. 1: 7, 9) extending in length continuously in the toroidal interior cavity (Fig. 1: 4) from a crown interface (See annotated Fig. 1 below) to a bead interface (See annotated Fig. 1 below), the at least one stiffening element not dividing the toroidal interior cavity into several mutually sealed and independent cavities (Figs. 1-2, 5).
RHP further discloses the at least one elongated stiffening element (Fig. 1: 7, 9) has a first longitudinal end portion directly connected to a radially inner face of the crown and a second longitudinal end portion directly connected to an axially inner face of one of the beads (See annotated Fig. 1 below). RHP also discloses that the at least one elongated stiffening element (Fig. 1: 7, 9) can be entirely covered with rubber, covered with rubber at where there is intersection with rubber (i.e., tire connection points), or covered with rubber at joint portions of crossing elements, and then may be enclosed by vulcanization ([0006]). In other words, the crown interface may be integral with the at least one elongated stiffening element as a first longitudinal end portion of the at least one elongated stiffening element and which is directly connected as a cured connection to a radially inner face of the crown, and the bead interface may be integral with the at least one elongated stiffening element as a second longitudinal end portion of the at least one elongated stiffening element and which is directly connected as a cured connection to an axially inner face of one of the beads.
RHP further illustrates that the axially outermost stiffening element crown interface is positioned, with respect to the equatorial plane, at an axial distance A approximately equal to 0.38 times the axial width S (See annotated Fig. 1 below). While RHP does not state whether the figure is drawn to scale, one of ordinary skill in the art would have nonetheless found it obvious that the axial distance A would be reasonably in the range of at most 0.45 times the axial width S. Therefore, this value falls within the claimed range of at most equal to 0.45 times the axial width S. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the ratio. RHP further discloses that depending on the force application points (Fig. 1: 8) the side walls will deform and migrate outwards, as a result of which the stiffening elements (Fig. 1: 7, 9) will remain taut and a lateral displacement of the tread relative to the rim will be minimized ([0006]). In other words, the locations and positioning of the stiffening elements on the tire are result effective variables that will affect the deformation of the side walls and the lateral displacement of the tread relative to the rim. While RHP does not explicitly disclose the value for an axial distance A, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for an axial distance A. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the axial distance A in order to appropriately deform the side walls and minimize the lateral displacement of the tread relative to the rim. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for an axial distance A.
RHP further illustrates that the radially outermost stiffening element bead interface is positioned, with respect to a radially innermost point of the axially inner face of the bead, at a radial distance B approximately equal to 0.23 times the radial height H (See annotated Fig. 1 below). While RHP does not state whether the figure is drawn to scale, one of ordinary skill in the art would have nonetheless found it obvious that the radial distance B would be reasonably in the range of at most equal to 0.5 times the radial height H. Therefore, this value falls within the claimed range of at most equal to 0.5 times the radial height H. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the ratio. Moreover, RHP further discloses that depending on the force application points (Fig. 1: 8) the side walls will deform and migrate outwards, as a result of which the stiffening elements (Fig. 1: 7, 9) will remain taut and a lateral displacement of the tread relative to the rim will be minimized ([0006]). In other words, the locations and positioning of the stiffening elements on the tire are result effective variables that will affect the deformation of the side walls and the lateral displacement of the tread relative to the rim. While RHP does not explicitly disclose the value for a radial distance B, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for a radial distance B. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the radial distance B in order to appropriately deform the side walls and minimize the lateral displacement of the tread relative to the rim. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a radial distance B.
PNG
media_image1.png
524
738
media_image1.png
Greyscale
The limitation “configured to be mounted on a nominal rim and inflated to a nominal pressure P” is a recitation of intended use that does not require any additional structure to the tire disclosed by RHP. The recitation does not result in a structural difference between the claimed invention and the prior art because RHP discloses a tire that is mounted on a rim and inflated which is capable of being mounted on a nominal rim and inflated to a nominal pressure P. Moreover, it is consistent with the fundamentals of tire construction to inflate a tire to a nominal pressure.
The limitation “configured to come into contact with the ground” is a recitation of intended use that does not require any additional structure to the tire tread disclosed by RHP. The recitation does not result in a structural difference between the claimed invention and the prior art because RHP discloses a tire tread with a surface that has a very smooth application of a lane profile onto a road (Fig. 1) ([0012]) which is capable of coming into contact with the ground. Moreover, it is consistent with the fundamentals of tire construction to have a tire tread surface come in into contact with the ground.
Regarding claim 2, RHP further discloses the at least one elongated stiffening element comprises several elongated stiffening elements that are not joined to one another in the toroidal interior cavity (Fig. 2).
Regarding claim 4, RHP further discloses the stiffening structure is symmetric with respect to the equatorial plane (Fig. 1; see also annotated Fig. 1 above in claim 1).
Regarding claim 7, RHP further discloses the at least one elongated stiffening element comprises several elongated stiffening elements that are identical to each other (Figs. 1-2: 7, 9).
Regarding claim 8, RHP further discloses the at least one elongated stiffening element (Fig. 1: 7, 9) comprises a metal material or a carbon-type material (Claims).
Regarding claim 9, RHP further discloses the at least one elongated stiffening element (Fig. 1: 7, 9) may be a band or fabric (i.e., a two-dimensional element) ([0006]-[0007], [0009]-[0010], [0012]).
Regarding claim 10, RHP further discloses that the at least one elongated stiffening element is made up of a reinforcing fabric (Abstract, Claims, [0006]), and that the reinforcing fabric comprises reinforcing elements covered in rubber (i.e., coated in an elastomer compound) ([0006]).
Regarding claim 11, RHP further discloses the at least one elongated stiffening element (Fig. 1: 7, 9) may be a thread or wire (i.e., a one-dimensional element and is of filament or cord type) ([0006]).
Regarding claim 12, the examiner notes that the claim limitation “the at least one elongated stiffening element is placed in the toroidal interior cavity so that the first longitudinal end portion and the second longitudinal end portion of the at least one elongated stiffening element are positioned respectively on the radially inner face of the crown and on the axially inner face of the bead before the tire is cured” is a product-by-process limitation wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In this case, the claim limitation does not require a process step, but rather the structure that is implied by the step (i.e., the at least one elongated stiffening element having the first longitudinal end portion and the second longitudinal end portion cured respectively on the radially inner face of the crown and on the axially inner face of the bead). Moreover, 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. The structure that is implied by the step (i.e., the at least one elongated stiffening element having the first longitudinal end portion and the second longitudinal end portion cured respectively on the radially inner face of the crown and on the axially inner face of the bead) is clearly present in RHP as discussed above in claim 1. There is no structural difference between the connection points of the stiffening element being attached before or after curing. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that RHP discloses providing, or is at least capable of providing, the at least one elongated stiffening element is placed in the toroidal interior cavity so that the first longitudinal end portion and the second longitudinal end portion of the at least one elongated stiffening element are positioned respectively on the radially inner face of the crown and on the axially inner face of the bead before the tire is cured.
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.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12227040 (parent application 16/771,173). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 (incorporating the language of claims 1 and 3) of the instant application recites the same language of claim 1 of the parent application, with the difference of broader numerical ranges recited for axial distance A and radial distance B in the instant application (i.e., A is at most 0.45 times S, B is at most 0.50 times H) versus the parent application (i.e., A is 0.05 to 0.15 times S, B is at most 0.10 times H). The broader numerical ranges for the axial distance A and the radial distance B compared to the parent claim define a genus that encompasses the species defined by claim 1 of the parent application. A genus claim that encompasses a previously claimed species is not patentably distinct from that species, as the species is fully within the scope of the genus. See MPEP 806.04. Accordingly, the broader recited ranges in the instant application represent an obvious generalization of the parent claim and reflect dimensional variations that would have been obvious to one of ordinary skill in the art.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE (née AYALP) 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 (née WHATLEY) 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