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 Objections
Claim 1 is objected to because of the following informalities: the phrase “the radially outermost bead interface” should be written as –a radially outermost bead interface— for consistency in claim language with the amendment to “an axially outermost crown interface”. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: the phrase “the plurality of elongated stiffening elements extend” in lines 1-2 should be written as –the plurality of elongated stiffening elements extends— for grammatical clarity. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: the phrase “the plurality of elongated stiffening elements are” in lines 1-2 should be written as –the plurality of elongated stiffening elements is— for grammatical clarity. Appropriate correction is required.
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 7-11 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 7, the phrase “at least one elongated stiffening element” is unclear. It is unclear if this is at least one elongated stiffening element from the plurality of elongated stiffening elements, or a new and separate at least one elongated stiffening element. For the purposes of examination, the examiner assumes that either interpretation will satisfy the claim limitation.
Regarding claim 8, the phrase “at least one elongated stiffening element” is unclear. It is unclear if this is at least one elongated stiffening element from the plurality of elongated stiffening elements, or a new and separate at least one elongated stiffening element. For the purposes of examination, the examiner assumes that either interpretation will satisfy the claim limitation.
Regarding claim 9, the phrase “at least one elongated stiffening element” is unclear. It is unclear if this is at least one elongated stiffening element from the plurality of elongated stiffening elements, or a new and separate at least one elongated stiffening element. For the purposes of examination, the examiner assumes that either interpretation will satisfy the claim limitation.
Claim 10 is indefinite by dependence on claim 9.
Regarding claim 11, the phrase “at least one elongated stiffening element” is unclear. It is unclear if this is at least one elongated stiffening element from the plurality of elongated stiffening elements, or a new and separate at least one elongated stiffening element. For the purposes of examination, the examiner assumes that either interpretation will satisfy the claim limitation.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 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 a plurality of elongated stiffening elements (Fig. 1: 7, 9) extending in length continuously in the toroidal interior cavity such that they are not joined to one another in the toroidal interior cavity (Figs. 1-2), from a crown interface (See annotated Fig. 1 below) to a bead interface (See annotated Fig. 1 below), the plurality of elongated stiffening elements not dividing the toroidal interior cavity into several mutually sealed and independent cavities (Figs. 1-2, 5).
RHP further discloses each of the plurality of elongated stiffening elements (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 plurality of elongated stiffening elements (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 plurality of elongated stiffening elements as a first longitudinal end portion of each of the plurality of elongated stiffening elements 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 each of the plurality of elongated stiffening elements as a second longitudinal end portion of the plurality of elongated stiffening elements 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.
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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 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 plurality of elongated stiffening elements are placed in the toroidal interior cavity so that the first longitudinal end portion and the second longitudinal end portion of each 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 plurality of elongated stiffening elements 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 plurality of elongated stiffening elements 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 plurality of elongated stiffening elements are 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.
Claims 3 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 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 of the instant application recites the same language of claim 2 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. Moreover, the parent application claim recites “at least one elongated stiffening element,” which encompasses embodiments having one or more elements, while the instant claims recite a “plurality of elongated stiffening elements,” which constitutes an obvious subset of the broader scope of the parent application claims. Furthermore, the additional claim limitation of claim 13 does not impart a patentably distinct structural or functional difference from claim 3 of the instant application (claims 1-2 of the parent application) as the requirement that the elements do not intersect the equatorial plane inherently requires that the interfaces defining each element remain on a single axial side of the equatorial plane. Accordingly, the claimed subject matter represents an obvious variation of the parent application claims, lacking a patentably distinct inventive concept.
Response to Arguments
Applicant's arguments filed 03/19/2026 have been fully considered but they are not persuasive.
On pages 8-9 of the Remarks, Applicant argues that the plurality of elements 7, 9 in Figures 1-2 of RHP are joined to one another at the center of the tire cross-section and thereby there is no disclosure in RHP that the plurality of elements extend in length continuously in the toroidal interior cavity without being joined to one another.
The examiner respectfully disagrees and notes that the claim language requires “a stiffening structure, which is distributed circumferentially over an entire circumference of the tire and which comprises a plurality of elongated stiffening elements extending in length continuously in the toroidal interior cavity such that they are not joined to one another in the toroidal interior cavity, from a crown interface, which is integral with the plurality of elongated stiffening elements as a first longitudinal end portion of each elongated stiffening element and which is directly connected as a cured connection to a radially inner face of the crown, to a bead interface, which is integral with the plurality of elongated stiffening elements as a second longitudinal end portion of each elongated stiffening element and which is directly connected as a cured connection to an axially inner face of one of the beads.” In other words, the stiffening structure openly “comprises” a plurality of elongated stiffening elements that each extend in length continuously in the toroidal interior cavity from a crown interface to a bead interface such that they are not joined to one another in the toroidal interior cavity. Not every elongated stiffening element of RHP needs to be considered and included to satisfy the claim limitations as the claim language does not exclude additional pluralities of elongated stiffening elements from being present. The examiner has provided an annotated view of Figures 1-2 below illustrating which elongated stiffening elements may, for example, satisfy the claim limitations. Any plurality of elongated stiffening elements comprising elements that each extend in length continuously in the toroidal interior cavity from a crown interface to a bead interface will satisfy the claim limitation. For instance, at least 2 of the elements 7 on the same axial sides spaced apart in the circumferential direction that are not joined, at least 2 alternating elements 7 on opposite axial sides spaced apart in the circumferential direction that are not joined, etc. Accordingly, as there are a plurality of the elements in the circumferential direction, and they are not connected in the circumferential direction, the claim limitations are satisfied by RHP. The claim language does not expressly recite how the elements are not to be joined to one another in the toroidal interior cavity, nor does it exclude interpretation of several pluralities of elongated stiffening elements.
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On pages 10-11 of the Remarks, Applicant argues that “[t]he pending application describes a specific rationale and criticality for the placement of the stiffening element and makes clear that the invention's geometry directly controls the tire's mechanical stiffness characteristics … Thus, the invention does not adjust the location of the stiffening element for cosmetic or arbitrary reasons.” Applicant further argues “[t]he pending application therefore fixes the element's two connection points (the crown interface and bead interface) and defines distances A and B because those distances control the angle of the elongated stiffening element, and thus stiffness variables Dz and KYY. The claimed limits on A and B are therefore critical to the disclosed stiffness/handling relationship and cannot be characterized as mere result effective variables susceptible to routine-experimentation. RHP fails to teach or suggest the claimed distances of A or B, nor does it disclose that the placement of such a stiffening element governs the stiffness/handling relationship on which the present invention is expressly based.”
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As discussed in the detailed rejection above, RHP discloses that depending on the force application points the side walls will deform and migrate outwards, as a result of which the stiffening elements will remain taut and a lateral displacement of the tread relative to the rim will be minimized. 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, and thereby one of ordinary skill in the art would have been motivated to optimize the axial distance A and 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 an axial distance A and a radial distance B. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. The burden is on Applicant to establish that the results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." See MPEP 716.02(b). Applicant has the burden of explaining any data they proffer as evidence of non-obviousness. See MPEP 716.02(b)(II). Moreover, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 715.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(II). Applicant has not provided the requisite data, evidence, or explanation to determine criticality of the claimed ranges or to establish unexpected results.
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.
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.
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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.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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