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 2 is objected to because of the following informalities: the phrases “elastic modulus” in line 1, “elastic modulus” in line 2, and “side rubber” in line 2 should be written as –an elastic modulus—, –an elastic modulus—, and –a side rubber— for grammatical clarity. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: the phrases “elastic modulus” in line 3 and “elastic modulus” in line 3 should be written as –an elastic modulus— and –an elastic modulus— for grammatical clarity. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: the phrases “color” in line 1 and “color” in line 2 should be written as –a color— and –a color— for grammatical clarity. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the phrase “the outer surface” in lines 2-3 should be written as –an outer surface— for consistency in claim language. Appropriate correction is required.
Claims 12-15 are objected to because of the following informalities: the phrase “the outer surface” in line 2 should be written as –an outer surface— 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 5, 11, and 15 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 5, because claim 1 recites “an electronic tag arranged in a sidewall portion”, it is unclear how in claim 5 “the electronic tag is arranged between the cover and the sidewall portion” as being “in a sidewall portion” in claim 1 implies it is embedded and being “arranged between” implies that it is arranged at an interface, which are two different spatial relationships (see Applicant’s disclosure (e.g., [0016], [0030], [0033], [0037], [0076]: see particularly how in [0076] specification appears to differentiate embodiments where the tag is “in” and “between”) and in Figures 2/5 and 8). Does “in” the sidewall portion not require embedding such that it may be placed at the surface (e.g. directly on surface, in recess on surface, etc.) of the sidewall portion, in which case it may also still be between the cover and sidewall portion, or is “in a sidewall portion” the sidewall area in general and not the sidewall itself? Or does “in” the sidewall portion require it be embedded, in which case it cannot be arranged “between” as well unless being between only requires being between the cover and one surface of the sidewall portion rather than at an interface between the cover and the sidewall portion? Further clarification is requested. For the purposes of examination, the examiner assumes any of the aforementioned interpretations will satisfy the claim limitation.
Claims 11 and 15 are indefinite by dependence on claim 5.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Noel et al. (US 20200070597).
Regarding claim 1, Noel discloses a tire comprising: a tire body formed of rubber (Fig. 1) ([0014]); an electronic tag (Fig. 1: 30) arranged in a sidewall portion (Fig. 1: 16) of the tire body; and a cover (Fig. 1: 36) arranged on an outer surface of the sidewall portion (Fig. 1: 16) in a width direction of the tire body, wherein when viewed from an outer side along the width direction (Fig. 1: see how 36 overlaps with 30 in width direction view), the cover (Fig. 1: 36) covers the electronic tag (Fig. 1: 30).
Regarding claim 4, Noel further discloses a color of a surface of the cover is different from a color of the sidewall portion ([0039]: wherein the cover 36 is locator indicia that will have different symbols, patterns, etc. to have a clear visual design, and thereby necessarily a different color(s) than the sidewall surface).
Regarding claim 5, Noel further discloses the electronic tag is arranged between the cover and the sidewall portion ([0037]: wherein the tag may be embedded within the tire and thereby will be between the cover and at least one surface of the sidewall portion and thereby between the cover and the sidewall portion).
Claim(s) 1, 4-6, and 10-11 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Borgna et al. (US 20190244074).
Regarding claim 1, Borgna further 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.
Regarding claim 4, Borgna further discloses a color of a surface of the cover (Figs. 1-3: 26) is different from a color of the sidewall portion ([0009]: wherein the face layer 26 may be colored for identification and branding).
Regarding claim 5, Borgna further discloses the electronic tag (Figs. 1-2, 5a-5c, 6, 7: 24 in 20; Figs. 3, 5a-5c, 6, 7: 24’ in 120) is arranged between the cover (Figs. 1-3: 26) and the sidewall portion (Figs. 1-3, 5a-5c, 6, 7: wherein the face layer 26 is arranged on the tag 24, 24’ and then placed on the surface of the sidewall portion either within a recess or just on the surface; alternatively the composition may also be applied on outer surface of the tag and sidewall portion as well) ([0020], [0027], [0036], [0053]-[0057], [0061]).
Regarding claims 6 and 10-11, Borgna further discloses the cover (Figs. 1-3: 26) contains fibrous materials ([0055]).
Claim Rejections - 35 USC § 103
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) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noel et al. (US 20200070597) as applied to claim 1 above.
Regarding claim 2, Noel discloses that the cover may be an adhesive label ([0039]), which one of ordinary skill in the art before the effective filing date of the claimed invention would have found obvious will have an elastic modulus of the cover that is smaller than an elastic modulus of a side rubber of the sidewall portion as it is consistent with tire construction for tire adhesive labels to be more flexible and pliable than tire sidewall rubbers and thereby have lower elastic moduli.
Regarding claim 3, Noel further discloses the electronic tag has a polymer (i.e., rubber-like) covering material that covers an internal circuit and is typically semi-rigid ([0004], [0036]). Because the polymer is typically semi-rigid as compared to the cover ([0039]: which may be an adhesive label), one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that an elastic modulus of the cover will be 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, such as the polymer of Noel.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noel et al. (US 20200070597) as applied to claim 1 above, and optionally further in view of Borgna et al. (US 20190244074).
Regarding claim 4, Noel discloses the limitations as discussed above. Optionally, Borgna discloses a substantially similar tire to Noel, wherein Borgna discloses a color of a surface of the cover (Figs. 1-3: 26) is different from a color of the sidewall portion ([0009]: wherein the face layer 26 may be colored for identification and branding). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that the clear visual design required by the cover of Noel may include the cover having a different color than the sidewall for identification and branding as taught by the substantially similar art of Borgna.
Claim(s) 6-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noel et al. (US 20200070597) as applied to claims 1-5 above, and further in view of Borgna et al. (US 20190244074).
Regarding claims 6 and 8-11, Noel does not expressly recite the cover contains fibrous materials.
Borgna discloses a tire substantially similar to Noel, as discussed above, and 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 modify the cover of Noel in order to contain fibrous material for the advantages discussed above as taught by the substantially similar art of Borgna.
Regarding claims 7 and 12-15, Noel does not expressly recite a back surface of the cover has a rougher surface than an outer surface of the sidewall portion or the cover contains fibrous materials.
Borgna discloses a tire substantially similar to Noel, as discussed above, and 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 modify the cover of Noel 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) 7 and 14-15 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Borgna et al. (US 20190244074).
Regarding claims 7 and 14-15, Borgna further discloses that the cover has staple fibers or a nonwoven fiber ([0055]). One of ordinary skill in the art before the effective filing date of the claimed invention 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Conwell et al. (US 20060290505) discloses a tire comprising: a tire body formed of rubber (Fig. 5); an electronic tag (Figs. 1-2, 5: 10) arranged in a sidewall portion of the tire body; and a cover (Figs. 1-2: 24) arranged on an outer surface of the sidewall portion in a width direction of the tire body (Fig. 5), wherein when viewed from an outer side along the width direction, the cover covers the electronic tag (Figs. 1-2).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE 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 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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