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 “an electronic tag arranged within a sidewall portion or an outer surface of the sidewall portion” in lines 3-4 should be written as –an electronic tag arranged within a sidewall portion or on an outer surface of the sidewall portion— for clarity in claim language. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: the phrase “an elastic modulus of the cover” in line 3 should be written as –[[an]]the elastic modulus of the cover— for consistency in claim language. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the phrase “an outer surface of the sidewall portion” in line 2 should be written as –[[an]]the outer surface of the sidewall portion— for consistency in claim language. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: the phrase “an outer surface of the sidewall portion” in line 2 should be written as –[[an]]the outer surface of the sidewall portion— for consistency in claim language. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the phrase “an outer surface of the sidewall portion” in line 2 should be written as –[[an]]the outer surface of the sidewall portion— for consistency in claim language. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: the phrase “an outer surface of the sidewall portion” in line 2 should be written as –[[an]]the outer surface of the sidewall portion— for consistency in claim language. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: the phrase “an elastic modulus of the cover is 90% or more and less than 100% of an elastic modulus of a side rubber” in lines 1-2 should be written as –[[an]]the elastic modulus of the cover is 90% or more and less than 100% of [[an]]the elastic modulus of [[a]]the side rubber— for consistency in claim language. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: the phrase “an elastic modulus of the cover is 90% or more and less than 100% of an elastic modulus of a side rubber” in lines 1-2 should be written as –[[an]]the elastic modulus of the cover is 90% or more and less than 100% of [[an]]the elastic modulus of [[a]]the side rubber— for consistency in claim language. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: the phrase “an elastic modulus of the cover is 90% or more and less than 100% of an elastic modulus of a side rubber” in lines 1-2 should be written as –[[an]]the elastic modulus of the cover is 90% or more and less than 100% of [[an]]the elastic modulus of [[a]]the side rubber— for consistency in claim language. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: the phrase “an elastic modulus of the cover is 90% or more and less than 100% of an elastic modulus of a side rubber” in lines 1-2 should be written as –[[an]]the elastic modulus of the cover is 90% or more and less than 100% of [[an]]the elastic modulus of [[a]]the side rubber— for consistency in claim language. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: the phrase “an elastic modulus of the cover is 90% or more and less than 100% of an elastic modulus of a side rubber” in lines 1-2 should be written as –[[an]]the elastic modulus of the cover is 90% or more and less than 100% of [[an]]the elastic modulus of [[a]]the side rubber— for consistency in claim language. Appropriate correction is required.
Claim 21 is objected to because of the following informalities: the phrase “an elastic modulus of the cover is 90% or more and less than 100% of an elastic modulus of a side rubber” in lines 1-2 should be written as –[[an]]the elastic modulus of the cover is 90% or more and less than 100% of [[an]]the elastic modulus of [[a]]the side rubber— for consistency in claim language. Appropriate correction is required.
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, 4-5, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conwell et al. (US 20060290505) (of record), Balini et al. (US 20210229505), and Morita et al. (US 20240017575).
Regarding claim 1, Conwell discloses a tire comprising: a tire body formed of rubber (Fig. 5); an electronic tag (Fig. 2: 20) arranged on an outer surface of the sidewall portion of the tire body; and a cover (Fig. 2: 24) arranged on the outer surface of the sidewall portion in a width direction of the tire body, wherein when viewed from an outer side along the width direction, the cover (Fig. 2: 24) covers the electronic tag (Fig. 2: 20).
However, Conwell does not expressly recite an elastic modulus of the cover is smaller than an elastic modulus of a side rubber of the sidewall portion.
Conwell further discloses the cover could be vinyl, polyethylene, polypropylene, polyester, polyamide, or any stable solid plastic film with low stiffness properties for conforming to sidewall and tread irregularities ([0045]).
Balini discloses a tire comprising a sidewall (Fig. 1: 108) having a label (Fig. 1: 120) comprising a protective layer (i.e., cover) (Figs. 2-3: 121), wherein the protective layer comprises polyester or polyether-based polyurethane film exhibiting elastic modulus equal to or higher than about 5 MPa ([0024]). In this manner, it was surprisingly found that a good resistance to abrasion and at the same time a good mechanical strength and flexibility could be obtained by using a protective layer made of cross-linked polymers with reduced thermoplasticity, such as for example, polyester or polyether-based polyurethane films ([0018]). In other words, the elastic modulus of the cover is considered to be a result effective variable. 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 the elastic modulus of the cover. 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 elastic modulus of the cover so as to obtain good resistance to abrasion and at the same time a good mechanical strength and flexibility. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Conwell in order to optimize the elastic modulus of the tire sidewall cover, which may be polyester based, as taught by Balini for the advantages discussed above, which also discloses a tire sidewall cover which may be polyester based.
Morita discloses a tire comprising a sidewall having sidewall rubber with an elastic modulus of preferably from 3.2 to 8.0 MPa so that the sidewall portions are moderately deformed and improve ride comfort ([0062]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the sidewall rubber of Conwell in order to provide a sidewall portion generally known in the tire art for the advantages discussed above, as taught by Morita. Additionally, Morita discloses that the elastic modulus of the sidewall rubber affects how easily the sidewall portion deforms and how it affects ride comfort. In other words, the elastic modulus of the side rubber of the sidewall portion is considered to be a result effective variable. 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 the elastic modulus of the side rubber of the sidewall portion. 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 elastic modulus of the side rubber of the sidewall portion in order to moderately deform the sidewall portions and improve ride comfort.
Accordingly, Conwell in view of Balini discloses the elastic modulus of the cover is preferably equal to or higher than about 5 MPa, and may be optimized, and Conwell in view of Morita discloses the elastic modulus of the side rubber of the sidewall portion is preferably from 3.2 to 8.0 MPa, and may also be optimized, wherein the cover may have an elastic modulus smaller than the side rubber of the side wall portion while still satisfying the provided ranges. Moreover, given the ranges disclosed by the prior art for the elastic moduli of the cover and side rubber, one of ordinary skill in the art would recognize, or alternatively find obvious, that the elastic modulus of the cover as compared to the elastic modulus of the side rubber may be provided in a limited number of ways: (1) an elastic modulus of the cover is smaller than an elastic modulus of a side rubber of the sidewall portion; (2) an elastic modulus of the cover is larger than an elastic modulus of a side rubber of the sidewall portion; or (3) an elastic modulus of the cover is the same as an elastic modulus of a side rubber of the sidewall portion. In other words, there are a finite number of identified, predictable solutions that a skilled artisan may choose from with a reasonable expectation of success. Absent unexpected results, case law holds that when there is a finite number of identified and predictable solutions, a person of ordinary skill has good reason to pursue known options with his or her technical grasp. See MPEP 2144.04(II)(B). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide an elastic modulus of the cover is smaller than an elastic modulus of a side rubber of the sidewall portion.
Regarding claim 4, Conwell further discloses a color of a surface of the cover is different from a color of the sidewall portion ([0044], [0049], [0051]).
Regarding claim 5, Conwell further discloses the electronic tag (Fig. 2: 20) is arranged between the cover (Fig. 2: 24) and the sidewall portion (Fig. 2: 30) ([0045]).
Regarding claim 16, modified Conwell discloses that the elastic modulus of the cover and the elastic modulus of the side rubber of the sidewall portion may be optimized, as discussed above in claim 1. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Conwell such that the elastic modulus of the cover is 90% or more and less than 100% of the elastic modulus of the side rubber of the sidewall portion.
Additionally, as discussed above in claim 1, a preferable range for the elastic modulus of the cover may be equal to or greater than 5 MPa, and a preferable range for the elastic modulus of the side rubber may be 3.2 to 8.0 MPa. Accordingly, the elastic modulus of the cover is 62.5% or more of the elastic modulus of the side rubber of the sidewall portion, which overlaps with 90% or more and less than 100%. 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 elastic modulus of the cover relative to the elastic modulus of the side rubber of the sidewall portion.
Claim(s) 3 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conwell et al. (US 20060290505) (of record), Balini et al. (US 20210229505), and Morita et al. (US 20240017575) as applied to claim 1 above, and further in view of Nishii (JP 6892322, see machine translation).
Regarding claim 3, modified Conwell does not expressly recite the electronic tag has a rubber-like covering material that covers an internal circuit, and an elastic modulus of the cover is smaller than an elastic modulus of the covering material.
Nishii discloses a tire electronic monitoring device, wherein the tire monitoring device is configured such that a potting material (i.e., covering material) is filled inside a case containing a circuit board and a battery, which are functional components attached to the tire surface and used to detect the condition of the tire, and wherein the potting material has an elastic modulus of 1000 MPa or more ([0005], [0017]-[0018], [0024]). This configuration prevents the potting material from breaking even when the tire rotates at high speed, and ensures that the potting material can withstand the forces exerted by the functional components, thereby improving the durability of the monitoring device ([0005]). Furthermore, by using urethane-based resin or epoxy-based resin as the potting material, the internal structure of functional components within the case can be reliably protected, and the condition of the tire can be reliably obtained ([0005]). When the elastic modulus of the potting material is 1 GPa or more and the material strength is 30 MPa or more, no abnormalities were observed regardless of whether the material was epoxy-based or urethane-based, even when the tire rotation speed was 250 km/h or more ([0023]). On the other hand, when the elastic modulus of the potting material was less than 1 GPa and the material strength was less than 30 MPa, fracture was observed regardless of the material ([0023]). In other words, the elastic modulus and material strength of the covering material are considered to be result effective variables that will affect the properties and durability of the device. Case law holds that it is obvious to vary result-effective variables. See MPEP 2144.05. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the generic RFID insert of Conwell with a known tire monitoring device in the art, such as the tire monitoring device of Nishii, in order to detect the condition of the tire while exhibiting the advantages as discussed above. Moreover, as Nishii discloses a covering material for the electronic tag having an elastic modulus of 1000 MPa or more, and may be optimized, and Conwell in view of Balini discloses the elastic modulus of the cover is preferably equal to or higher than about 5 MPa, and may be optimized, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Conwell such that the electronic tag has a rubber-like covering material that covers an internal circuit, and an elastic modulus of the cover is smaller than an elastic modulus of the covering material.
The examiner notes that “rubber-like” material is very broad and does not require any particular composition or structure to the claim. Accordingly, any material “like” rubber is considered to satisfy the claim limitations.
Regarding claim 17, modified Conwell discloses that the elastic modulus of the cover and the elastic modulus of the side rubber of the sidewall portion may be optimized, as discussed above in claim 1. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Conwell such that the elastic modulus of the cover is 90% or more and less than 100% of the elastic modulus of the side rubber of the sidewall portion.
Additionally, as discussed above in claim 1, a preferable range for the elastic modulus of the cover may be equal to or greater than 5 MPa, and a preferable range for the elastic modulus of the side rubber may be 3.2 to 8.0 MPa. Accordingly, the elastic modulus of the cover is 62.5% or more of the elastic modulus of the side rubber of the sidewall portion, which overlaps with 90% or more and less than 100%. 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 elastic modulus of the cover relative to the elastic modulus of the side rubber of the sidewall portion.
Claim(s) 9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conwell et al. (US 20060290505) (of record), Balini et al. (US 20210229505), Morita et al. (US 20240017575), and Nishii (JP 6892322, see machine translation) as applied to claims 1 and 3 above, and further in view of Borgna et al. (US 20190244074) (of record).
Regarding claims 9 and 13, modified Conwell does not expressly recite the cover contains fibrous materials, or that a back surface of the cover has a rougher surface than the outer surface of the sidewall portion.
Borgna also discloses a tire comprising: a tire body formed of rubber (Figs. 4, 5a-5c, 6, 7) ([0007]); an electronic tag (Figs. 1-2, 5a-5c, 6, 7: 24 in 20; Figs. 3, 5a-5c, 6, 7: 24’ in 120) arranged in a sidewall portion (Figs. 5a-5c, 6, 7: 301) of the tire body; and a cover (Figs. 1-3: 26) arranged on an outer surface of the sidewall portion in a width direction of the tire body ([0053]-[0057]; alternatively [0020], [0027], [0036], [0061]: a concealing composition may also be applied on outer surface), wherein when viewed from an outer side along the width direction, the cover covers the electronic tag. Borgna further discloses the cover (Figs. 1-3: 26) contains fibrous materials ([0055]). The fibrous material is an excellent insulator and aids in insulating and protecting the RFID capabilities and device ([0055]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify the cover of Conwell in order to contain fibrous material for the advantages discussed above as taught by the substantially similar art of Borgna. Moreover, one of ordinary skill in the art would have recognized, or alternatively found obvious, that by adding stable or nonwoven fibers to the cover the surface texture will change and have a rougher surface than an outer surface of the sidewall portion.
Claim(s) 6-7, 10-11, 14-15, and 18-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conwell et al. (US 20060290505) (of record), Balini et al. (US 20210229505), and Morita et al. (US 20240017575) as applied to claim 1 above, and further in view of Borgna et al. (US 20190244074) (of record).
Regarding claims 6-7, 10-11, and 14-15, modified Conwell does not expressly recite the cover contains fibrous materials, or that a back surface of the cover has a rougher surface than the outer surface of the sidewall portion.
Borgna also discloses a tire comprising: a tire body formed of rubber (Figs. 4, 5a-5c, 6, 7) ([0007]); an electronic tag (Figs. 1-2, 5a-5c, 6, 7: 24 in 20; Figs. 3, 5a-5c, 6, 7: 24’ in 120) arranged in a sidewall portion (Figs. 5a-5c, 6, 7: 301) of the tire body; and a cover (Figs. 1-3: 26) arranged on an outer surface of the sidewall portion in a width direction of the tire body ([0053]-[0057]; alternatively [0020], [0027], [0036], [0061]: a concealing composition may also be applied on outer surface), wherein when viewed from an outer side along the width direction, the cover covers the electronic tag. Borgna further discloses the cover (Figs. 1-3: 26) contains fibrous materials ([0055]). The fibrous material is an excellent insulator and aids in insulating and protecting the RFID capabilities and device ([0055]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify the cover of Conwell in order to contain fibrous material for the advantages discussed above as taught by the substantially similar art of Borgna. Moreover, one of ordinary skill in the art would have recognized, or alternatively found obvious, that by adding stable or nonwoven fibers to the cover the surface texture will change and have a rougher surface than an outer surface of the sidewall portion.
Regarding claims 18-21, modified Conwell discloses that the elastic modulus of the cover and the elastic modulus of the side rubber of the sidewall portion may be optimized, as discussed above in claim 1. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify Conwell such that the elastic modulus of the cover is 90% or more and less than 100% of the elastic modulus of the side rubber of the sidewall portion.
Additionally, as discussed above in claim 1, a preferable range for the elastic modulus of the cover may be equal to or greater than 5 MPa, and a preferable range for the elastic modulus of the side rubber may be 3.2 to 8.0 MPa. Accordingly, the elastic modulus of the cover is 62.5% or more of the elastic modulus of the side rubber of the sidewall portion, which overlaps with 90% or more and less than 100%. 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 elastic modulus of the cover relative to the elastic modulus of the side rubber of the sidewall portion.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-7, 9-11, and 13-21 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.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tucker (US 20170305088) discloses a tire comprising: a tire body (Fig. 1: 100) formed of rubber ([0027]); an electronic tag (Fig. 1: 170) arranged within a sidewall portion (Fig. 1: 130, 140) or on an outer surface of the sidewall portion (Fig. 1: 130, 140) of the tire body ([0010], [0028]); and a cover (Fig. 4: 240) arranged on the outer surface of the sidewall portion in a width direction of the tire body ([0010], [0013], [0034]-[0035]), wherein when viewed from an outer side along the width direction, the cover covers the electronic tag (Fig. 1) ([0029], [0034]-[0035]). Tucker further discloses the improved tire has a flexible RFID tag having increased read range or distances ([0029]). Moreover, the cover is preferably formed of a nonconductive rubber material ([0035]), wherein nonconductive materials may be a nonconductive rubber, elastomer, or polymer that preferably has similar properties to the material of the final tire product ([0029]). For instance, the nonconductive rubber material preferably has similar properties to the rubber of the tire so that if a completed tire is cut, little or no differentiation in the rubbers of the substrate and sidewall is detectable ([0029]).
Contact Information
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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