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 .
Election/Restrictions
Claims 23-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/01/2026.
Specification
The abstract of the disclosure is objected to because of legal phraseology (“said”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 12 is objected to because of the following informalities: the phrase “the projecting elements” in line 1 should be written as –the protruding elements— for consistency in claim language. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: the phrase “cylinders or square-based prisms or triangular” in lines 1-2 should be written as –cylinders, [[or ]]square-based prisms, or triangular— for grammatical clarity. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: the phrase “nonacosane-4,10-diol, nonacosane-5,10-diol, nonacosane-10,13-diol” in line 2 should be written as –nonacosane-4,10-diol, nonacosane-5,10-diol, and nonacosane-10,13-diol— for grammatical clarity. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: the phrase “the compound” in line 1 should be written as –the rubber compound— for consistency in claim language. 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 17-18 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 17, the phrase “the surface” in line 2 lacks sufficient antecedent basis.
Regarding claim 17, the phrase “the groove” is unclear as a plurality of grooves was disclosed in claim 11. For the purposes of examination, the examiner assumes the respective groove from the plurality of grooves.
Claim 18 is dependent upon claim 17.
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) 11-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agoretti et al. (IT 102017000047751, see US 20200190294 as English equivalent), Cambon et al. (US 20170066292), and Kim et al. (KR20190094889, see machine translation).
Regarding claims 11 and 13-16, Agoretti discloses a tread for a tire, the tread comprising a rubber compound comprising at least one cross linkable unsaturated chain polymeric base, a filler, a vulcanization system, and a wax composed of at least 50% by weight of nonacosandiols ([0001], [0007]).
Agoretti further discloses the wax present in the rubber compound is hydrophobic ([0008]).
While Agoretti does not expressly recite that the tread comprises grooves, it is consistent with the fundamentals to provide treads with grooves for grip performance in wet and dry conditions.
However, Agoretti does not expressly recite the method for producing the tread comprising a plurality of grooves, wherein the method comprises: producing, for at least part of the grooves, a hydrophobic surface structure using an action of a laser beam comprising a power ranging between 10 and 50 W, a frequency ranging between 1 and 10 kHz, a resolution ranging between 0.01 and 1 mm, and a scanning velocity of between 1 and 1000 mm/s; wherein the hydrophobic surface structure is composed of a plurality of protruding elements.
Cambon discloses a method for producing a tread comprising a plurality of grooves (Figs. 1, 3), wherein the method comprises: producing, for at least part of the grooves, a surface structure (Figs. 3-7) using an action of a laser beam via a mold ([0008], [0038]). The formed grooves having protruding elements make it possible to notably to evacuate water and thereby improve the grip of the tire on a wet road surface, while also having grooves with level lines ([0038]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Agoretti in order to produce grooves in the tread that comprise a surface structure composed of a plurality of protruding elements for the advantages discussed above, as taught by Cambon.
While modified Agoretti does not expressly recite the specific parameters at which a laser beam operates, Kim discloses a method of using a laser on a tire surface (Fig. 1) to form a surface structure composed of a plurality of protruding elements (Figs. 2a, 2b) using a laser beam comprising: a power ranging 15 W or more and less than 100 W ([0018], [0022], [0062]), which overlaps with the claimed range of between 10 and 50 W and thereby between 20 and 40 W; and a scanning velocity of 80 mm/s or more and less than 1000 mm/s ([0018], [0022], [0062]), which overlaps with the claimed range of between 1 and 1000 mm/s and thereby between 300 and 700 mm/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 power and scanning velocity of the laser beam. Using a laser marking machine as such only requires the initial cost of purchasing the machine with no other material costs needed, and takes a short amount of time with a very durable pattern that has a low possibility of being worn out or damaged ([0035], [0049]).
While Kim teaches that the frequency is 100 kHz or more and less than 500 kHz ([0018], [0022], [0062]), this is merely a preferable example and does not explicitly limit the disclosure to such a limitation. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123.
Kim further discloses that the laser can take various marking modes depending on factors such as speed, power, and frequency ([0057]). In other words, the various parameters of the laser beam are considered to be result effective variables that may be varied depending on the desired marking mode. 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 power, frequency, resolution, and scanning velocity of the laser beam. 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 power, frequency, resolution, and scanning velocity of the laser beam in order to obtain the desired marking mode.
Moreover, because modified Agoretti discloses producing a tread having the claimed rubber compound and groove surface structure, one of ordinary skill in the art would recognize, or alternatively find obvious, that the groove surface produced will be a hydrophobic surface structure. 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.
Regarding claim 12, Cambon further discloses the protruding elements are cylinders (Fig. 4), square-based prisms (Fig. 6), or triangular (Fig. 5). Moreover, case law holds that changes in shape are matters of design choice that a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed invention is significant. See MPEP 2144.04.
Regarding claim 17, Cambon further discloses the protruding elements each have a height ranging between 0.05 to 0.5 mm ([0022]), which overlaps with the claimed range of between 0.01 and 2 mm. 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 a height of each protruding element.
Cambon further discloses the protruding elements each have an axis of extension that forms a perpendicular angle (i.e., about 90o) with a surface of the groove (Figs. 3-7), which falls within the claimed range of between 60 and 120o. 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 an angle of an axis of extension of each protruding element.
Regarding claim 18, Cambon further discloses the protruding elements are spaced apart therebetween by a distance ranging between 0.05 to 0.5 mm ([0022]), which overlaps with the claimed range of between 0.01 and 5 mm. 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 distance between protruding elements.
Regarding claim 19, Agoretti further discloses the nonacosandiols comprise a C2-C6 chain arranged between the two hydroxyl groups ([0011]).
Regarding claim 20, Agoretti further discloses the nonacosandiols are included in a group comprising nonacosane-4,10-diol, nonacosane-5,10-diol, and nonacosane-10,13-diol ([0012]).
Regarding claim 21, Agoretti further discloses the wax is derived from lotus leaves ([0013]).
Regarding claim 22, Agoretti further discloses the wax is present within the rubber compound in a quantity ranging between 0.3 and 30 phr ([0013]), which overlaps with the claimed range of 0.5 and 10 phr. 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 amount of wax present in the rubber compound.
Contact Information
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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