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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
One of ordinary skill in the art would have understood a cap layer as recited in claim 2 to be a layer having parallel reinforcing elements at an angle with the circumferential direction of ±5°, as evidenced for example by US Patent Application Publication 2007/0144649 A1 (paragraphs 0014-0016), therefore this understanding controls the broadest reasonable interpretation of the one or more cap layers recited in claim 2.
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 1-4 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.
In claim 1 to clarify the units of measurement applicant should amend the claim such that in line 7 “165 (mm)” is changed to -- 165 mm -- , in line 9 “SW (mm)” is changed to -- SW in mm -- , in line 10 “OD (mm)” is changed to -- OD in mm -- , and in line 11 the formula is changed to read -- OD ≥ -0.0187 x SW2 + 9.15 x SW - 380 -- .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent Application 2008-126716 A cited by applicant in view of US Patent Application Publications 2014/0138003 A1 cited by applicant, 2022/0016943 A1 cited by applicant, and 2022/0024250 A1 cited by applicant.
The only differences between the JP ‘716 tire and the claimed tire are the SW and OD limitations (embodiments of Figs. 4, 5, 7, and 8, translation: basic tire structure including the claimed carcass and bead portions understood to be present unless otherwise specified; as to claim 2, it would have been obvious to one of ordinary skill in the art to combine embodiments to further reinforce the one side of the tire absent unexpected results), however it is well known to reduce rolling resistance and thus increase fuel efficiency by providing SW and OD values meeting the claimed inequalities, as evidenced for example by US ‘003 (paragraphs 0017 and 0051-0053), US ‘943 (paragraphs 0039, 0049), and US ‘250 (paragraphs 0030, 0040); it would therefore have been obvious to one of ordinary skill in the art to provide such well-known SW and OD values meeting the claimed inequalities in the above tire in order to reduce rolling resistance and thus increase fuel efficiency.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent Application 2008-126716 A cited by applicant in view of US Patent Application Publications 2014/0138003 A1 cited by applicant, 2022/0016943 A1 cited by applicant, and 2022/0024250 A1 cited by applicant as applied to claims 1 and 2 above, and further in view of European Patent Application 1 792 755 A2 cited by applicant.
EP ‘755 teaches to provide a higher carcass turnup on the outside of a tire in order to improve handling (paragraphs 0024-0025); it would therefore have been obvious to one of ordinary skill in the art to provide a higher carcass turnup on the outside of the above tire in order to improve handling.
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/100,577 in view of Japanese Patent Application 2008-126716 A cited by applicant. JP ‘716 teaches to provide on the inside of the tire the claimed layer and increased cap layer cord density in order to reduce uneven wear when the tire has a negative camber (embodiments of Figs. 4, 5, 7, and 8, translation; as to claim 2, it would have been obvious to one of ordinary skill in the art to combine embodiments to further reinforce the one side of the tire absent unexpected results); it would therefore have been obvious to one of ordinary skill in the art to provide on the inside of the copending claim tire the claimed layer and increased cap layer cord density in order to reduce uneven wear when the tire has a negative camber.
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. European Patent Application 0 548 735 A1 discloses a tire similar to that of JP ‘716 and German Patent Application 10 2014 222 303 A1 also teaches a higher carcass turnup on the outer side of the tire.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrienne C. Johnstone whose telephone number is (571)272-1218. The examiner can normally be reached M-F 1PM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ADRIENNE C. JOHNSTONE
Primary Examiner
Art Unit 1749
Adrienne Johnstone /ADRIENNE C. JOHNSTONE/ Primary Examiner, Art Unit 1749 April 20, 2026
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