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 8 is objected to because of the following informalities: the phrase “a ratio of a height of a peak derived from a (010) plane to a height of a peak derived from a (100) plane in X-ray diffraction r(the height of the peak derived from the (010) plane) / (the height of the peak derived from the (100) plane)]” in lines 7-8 should be written as –a ratio of a height of a peak derived from a (010) plane to a height of a peak derived from a (100) plane in X-ray diffraction. Appropriate correction is required.
Claims 13, 16, 18, and 20 are objected to because of the following informalities: the phrase “A retread tire” in line 1 of each respective claim should be written as –[[A]]The retread tire— 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 8-9, 13, 16, 18, and 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 8, the phrase “the laminate” in line 1 lacks sufficient antecedent basis.
Claims 9, 13, 16, 18, and 20 are indefinite by dependence on claim 8.
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) 8-9, 13, 16, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeda et al. (US 20210291496) (of record), Lindsay et al. (US 20130292063), and Tarutani (US 20180086140).
Regarding claims 8, 13, 18, and 20, Takeda discloses a tire comprising a laminate comprising a rubber layer made of a vulcanized rubber (Fig. 1: 2) and a resin layer (Fig. 1: 3) ([0045]), the rubber layer and the resin layer being bonded together, the rubber layer (Fig. 1: 2) comprising a surface-treated layer (Fig. 1: 4) on a surface that is bonded to the resin layer (Fig. 1: 3) ([0020], [0045]-[0046], [0050]), wherein the surface-treated layer of the rubber layer is a chlorinated layer ([0009], [0047], [0091], [0102], [0110], [0117], [0166]), and wherein the resin layer contains polyester resin or polyester-based thermoplastic elastomer ([0019], [0085]-[0087], [0095]).
Takeda further discloses that the surface-treated layer allows the rubber layer and resin layer to be bonded without applying any adhesive ([0032], [0037], [0046]-[0054], [0153], [0165]-[0169], [0199]). Moreover, the surface-treated layer has unevenness (i.e., peaks in various planes), wherein unevenness of the surface of the rubber layer affects reactive factors required for the bonding and the ability to obtain sufficient bond strength with the resin layer ([0050]-[0054]). Takeda also discloses the surface-treated superficial layer forms unevenness on the surface of the rubber layer at the interface, and such unevenness exerts an anchoring effect which increase the bond between the rubber layer and the resin layer ([0169]). Additionally, since the surface-treated layer directly unites the rubber and resin layers with each other without an intervening layer of adhesive, it is possible to prevent a decrease in bond strength due to softening of the adhesive or other factors during high-speed driving when subjected to high temperatures, thereby improving the durability and heat resistance of the tire at high speeds ([0199]). Takeda recognizes that the structure of the bonding interface, including the unevenness of the surface-treated layer, is a result effective variable affecting adhesion between the rubber and resin layers. While Takeda does not expressly recite a surface of the resin layer bonded to the rubber layer having a ratio of a height of a peak derived from a (010) plane to a height of a peak derived from a (100) plane in X-ray diffraction [(the height of the peak derived from the (010) plane) / (the height of the peak derived from the (100) plane)] of 1.1 or more, 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 ratio of a height of a peak derived from a (010) plane to a height of a peak derived from a (100) plane. 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 unevenness of the surface-treated layer, and thereby the claimed a ratio of a height of a peak derived from a (010) plane to a height of a peak derived from a (100) plane, in order to sufficiently adhere the rubber layer and resin layer without adhesive.
Takeda further discloses the resin layer has been molded ([0085]-[0086], [0092]-[0096]) (Figs. 2A-2D). While Takeda teaches that a resin which can be molded by casting or injection method is preferred ([0085]-[0086]), 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.
Lindsay discloses that it is conventionally known that retreaded tires provide an economical way to gain additional use from tire casings after the original tread or retread has become worn ([0003]). According to a conventional method of retreading, worn tire tread and other materials on a used tire are removed to create a buffed, generally smooth, treadless surface along the circumference of the tire casing to which a new layer of tread may be bonded ([0003]). Then, the buffed surface may be sprayed with a tire cement that provides a tacky surface for application of bonding material and new tread, followed by a cushion ([0004]). However, there are also other known methods that may eliminate the need for cement or cushion gum ([0004]). In other words, Lindsay discloses conventional teachings that retreading tires is economical, that retreaded tires are known to have buffed tire frame surfaces, and that tread rubbers are applied onto the buffed surfaces with or without adhesive. One of ordinary skill in the art would have found it obvious to modify Takeda in order to reuse a resin frame formed via molding and then buff the surface of the resin prior to bonding of any further layers, such as a tread rubber layer, so as to be economical while using conventionally known steps in the art, as taught by Lindsay.
Tarutani discloses a tire comprising a resin member (i.e., resin layer) and a tread layer (i.e., rubber layer) ([0036]), wherein adhesion of the rubber layer and resin layer may include pretreatment of both layers, such as simply by buffing ([0148]). Tarutani further discloses the tread may also be a precured crown for a retreaded tire, wherein the adhering step of the precured crown to the outer peripheral surface of the based tire of the retreaded tire is the same ([0186]). Case law holds that it is prima facie obvious to substitute equivalents known for the same purpose. See MPEP 2144.06. In this case, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that the tire frame may be a new or retreaded tire frame. Moreover, although Tarutani discloses buffing and adhesion region so as to apply an adhesive, Tarutani also generally teaches that a resin tire layer may be roughened via buffing before application and bonding of any further layers so as to increase adhesion forces between the two layers. One of ordinary skill in the art would have found it obvious to modify Takeda in order to form the resin frame via molding and then buff the surface of the resin prior to bonding of any further layers, such as a tread rubber layer, so as to increase adhesion forces between the components while forming a non-pneumatic tire in a known manner, as taught by Tarutani.
The examiner notes that the claim limitation “the resin layer having been molded and subjected to a buffing treatment” 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 rubber layer bonded to the resin layer with a treated surface therebetween). 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 is clearly present in modified Takeda as discussed above because modified Takeda discloses a tire comprising the claimed treated rubber layer and resin bonded laminate. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that modified Takeda discloses, or is at least capable of, providing the resin layer having been molded and subjected to a buffing treatment. Additionally, to the extent that the buffing of the resin layer imparts a particular structure, the examiner refers to the rejection above.
The examiner notes that the claim limitation “in X-ray diffraction” 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., a ratio of a height of a peak derived from a (010) plane to a height of a peak derived from a (100) plane). 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., a ratio of a height of a peak derived from a (010) plane to a height of a peak derived from a (100) plane) is clearly present in modified Takeda as discussed above because modified Takeda discloses the claimed tire structure comprising a ratio of a height of a peak derived from a (010) plane to a height of a peak derived from a (100) plane. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that modified Takeda discloses, or is at least capable of, providing a ratio of a height of a peak derived from a (010) plane to a height of a peak derived from a (100) plane in X-ray diffraction.
Regarding claim 9, Takeda further discloses the tire is a non-pneumatic tire comprising an inner cylinder that is to be mounted on a wheel ([0001], [0007], [0028], [0038]), an outer cylinder (Fig. 3: 14) that surrounds the inner cylinder (Fig. 3: 15) from an outer side in a tire radial direction, a plurality of connecting members (Fig. 3: 16) arranged along a tire circumferential direction between the inner cylinder and the outer cylinder to connect the cylinders, and a tread member (Fig. 3: 12) provided on an outer side of the outer cylinder in the tire radial direction, and the outer cylinder is the resin layer, and the tread member is the rubber layer ([0102], [0105], [0108]).
Regarding claim 16, Takeda further discloses that the resin is a crystalline resin ([0078]-[0081]), wherein the crystalline resin affects adhesive durability to the rubber layer ([0078]), and wherein the crystalline resin exists in the form of particles (i.e., crystals) ([0079]). Accordingly, the resin layer necessarily includes crystalline regions having an average length of crystal size at a particular depth. Takeda further discloses that owing to the crystalline resin existing in the form of particles (i.e., crystals), the elasticity and rigidity of the rubber layer are enhanced, and as a result, the strength thereof is improved ([0079]). Takeda recognizes that the crystal particle form/structure, including the crystal size, is a result effective variable affecting the strength between the rubber and resin layers. While Takeda does not explicitly disclose the value for an average length of crystal sizes in a region up to a depth, 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 said length/depth. 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 an average length of crystal sizes in a region up to a depth in order to obtain sufficient strength between the rubber and resin layers.
Response to Arguments
Applicant’s arguments with respect to claim(s) 8-9, 13, 16, 18, and 20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 08/28/2026 have been fully considered but they are not persuasive.
On pages 11-12 of the Remarks, Applicant argues “Takeda does not disclose a preformed resin layer that is subjected to buffing before being bonded to the rubber layer. Takeda instead places a vulcanized rubber member in a mold cavity, supplies fluid resin into the remaining cavity space so that the fluid resin contacts the surface-treated rubber member, and then hardens the resin to form the laminate.” Applicant further argues “[t]he buffing limitation is not relied upon merely as a statement of manufacturing history … the buffing treatment acts directly on the bonding surface of the molded resin layer and accelerates crystallization of the surface. The resulting buffed bonding surface differs from the as-molded resin surface formed by Takeda's insert-molding process.”
As discussed in the rejection above, while Takeda discloses a preferred embodiment of injection molding the resin layer, this is merely a preferable example. 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. Moreover, as discussed above, Takeda in view of the newly cited prior art discloses a retreaded tire that may be have a buffed surface to which the treated rubber layer is applied without an adhesive therebetween.
Furthermore, as discussed above, the claim limitation “the resin layer having been molded and subjected to a buffing treatment” is a product-by-process limitation. Applicant’s assertion that buffing accelerates crystallization of the resin surface is noted. The examiner further notes that Applicant’s specification discloses “[i]t is believed that this buffing treatment removes the skin layer of the resin and accelerates crystallization of the surface of the resin-made skeleton member compared to a new product” ([0076]). This has not been demonstrated with evidence or support, but instead is Applicant’s belief disclosed in the specification. To the extent Applicant contends that the buffing proves imparts a structural characteristic that distinguishes the claimed product from the resin surface disclosed by the prior art, Applicant may provide supporting evidence via declaration demonstrating such a distinction.
On pages 12-13 of the Remarks, Applicant argues “Takeda does not identify the particular source or grade of the polyester resin used in its relevant examples or the specific injection-molding temperature. Because the polyester resin type and injection-molding temperature affect the resulting peak-height ratio, Takeda does not establish that a ratio of 1.1 or more necessarily results from its disclosure.” Applicant further argues “Takeda describes unevenness of the surface-treated rubber layer and an associated anchoring effect. The claims, by contrast, require a particular crystallographic orientation at the bonding surface of the resin layer. The rejection does not identify evidence or technical reasoning establishing that Takeda's rubber-surface unevenness makes the claimed resin-layer X-ray diffraction ratio a recognized result-effective variable. Accordingly, the claimed ratio cannot properly be treated as a parameter that a skilled artisan would have routinely optimized. Takeda neither identifies the claimed ratio nor recognizes a relationship between that ratio and bonding strength. Without such recognition, the rejection does not establish why a person of ordinary skill would have selected and controlled the relevant resin and molding conditions to obtain the claimed ratio.”
As discussed above, Takeda was relied on for routine optimization of result effective variables to disclose the claimed ratio. In other words, it was not stated that Takeda inherently disclosed the claimed ratio in the claimed range. Instead, Takeda discloses the surface-treated layer has unevenness (i.e., peaks in various planes), wherein unevenness of the surface of the rubber layer affects reactive factors required for the bonding and the ability to obtain sufficient bond strength with the resin layer ([0050]-[0054]). Takeda also discloses the surface-treated superficial layer forms unevenness on the surface of the rubber layer at the interface, and such unevenness exerts an anchoring effect which increase the bond between the rubber layer and the resin layer ([0169]). Takeda recognizes that the structure of the bonding interface, including the unevenness of the surface-treated layer, is a result effective variable affecting adhesion between the rubber and resin layers. Because there is unevenness in the present with peaks, there will also be respective heights of those peaks in particular planes. Additionally, as noted above, the limitation for “X-ray diffraction” is a product-by-process limitation that is merely a way of analyzing a variable and does not impart structure onto the tire. Thereby, the peaks formed in the unevenness of the surface, and the fact that they affect reactive factors required for the bonding and anchoring, would lead one of ordinary skill in the art to recognized them as result effective variables. Accordingly, the ratio formed of the heights of the peaks in planes are also result effective variables that one of ordinary skill in the art would have found obvious to routinely optimize.
Moreover, the statement “Takeda does not identify the particular source or grade of the polyester resin used in its relevant examples or the specific injection-molding temperature. Because the polyester resin type and injection-molding temperature affect the resulting peak-height ratio, Takeda does not establish that a ratio of 1.1 or more necessarily results from its disclosure” is counselor’s opinion. Applicant has not provided any factual support or evidence for this statement, and thus it is attorney argument. Attorney arguments cannot take the place of evidence where the asserted relationship involves technical properties of materials. See MPEP 716.01(c)(II), 2145(I). There is no disclosure in the originally filed specification as to source or grade of polyester or to specific injection-molding temperature or how they affect the ratio. Applicant alleges that the polyester resin type and injection-molding temperature affect the resulting peak-height ratio, but has not provided any evidence to support this statement.
As noted above, the prior art of record discloses all of the current claim limitations as discussed in the detailed rejection above. The reasoning or use in the prior art references does not need to be the same or identical to those discovered by Applicant so long as there is some teaching, suggestion, or motivation to make the combination, which the prior art references provide. In this case, it does not matter that Takeda discloses the unevenness affects anchoring and bonding strength while the claimed invention may not.
On page 13 of the Remarks, Applicant argues Takeda “describe[s] a crystalline thermoplastic elastomer incorporated as a discontinuous particle phase in the rubber layer … [and does] not disclose the average length of crystal sizes within a region extending to a depth of 250 µm from the bonding surface of the resin layer.”
As discussed above, Takeda discloses that the resin is a crystalline resin ([0078]-[0081]), wherein the crystalline resin affects adhesive durability to the rubber layer ([0078]), and wherein the crystalline resin exists in the form of particles (i.e., crystals) ([0079]). Accordingly, the resin layer necessarily includes crystalline regions having an average length of crystal size at a particular depth. Takeda further discloses that owing to the crystalline resin existing in the form of particles (i.e., crystals), the elasticity and rigidity of the rubber layer are enhanced, and as a result, the strength thereof is improved ([0079]). Takeda recognizes that the crystal particle form/structure, including the crystal size, is a result effective variable affecting the strength between the rubber and resin layers. The examiner has provided a detailed discussion as to why the claimed properties are considered result effective variables and would be routinely optimized. However, Applicant has merely stated that Takeda “describe[s] a crystalline thermoplastic elastomer incorporated as a discontinuous particle phase in the rubber layer … [and does] not disclose the average length of crystal sizes within a region extending to a depth of 250 µm from the bonding surface of the resin layer” without explaining why this distinction would not lead one of ordinary skill in the art to optimize the variables.
On pages 13-14 of the Remarks, Applicant argues unexpected results and refers to Table 1 and paragraph [0106]). Applicant argues “comparative data have a direct nexus to the amended claims because they test the same combination now recited in the claims: a molded and buffed resin bonding surface having the specified X-ray diffraction peak-height ratio. Nothing in Takeda would have led a person of ordinary skill to expect that controlling this particular crystal-plane ratio would improve bonding despite the adhesion disadvantage associated with the buffed resin surface.”
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). All of the Comparative Examples apply a buffing treatment, and not all of Applicant’s own examples apply a buffing treatment (i.e., Example 1). Moreover, the claimed ratio is 1.1 or more and there are only two comparative examples at values 0.9 and 1.0, and all of the examples are for values of 1.4 and 1.5, which is also right around the boundary of the claimed range. It is not clear what occurs far below 1.1, and what occurs far above 1.1. Additionally, there are more factors in the table as well (i.e., area ratio, cooling method, other treatments, average crystal length) that have not been explained and it is not clear if these factors also affect the results or if it is buffing and the claimed ratio that exhibit the improved results Applicant alleges. There is not sufficient information provided in the Table and specification to determine criticality and 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
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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