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 .
Examiner Interpretation
Based on the examiner interview conducted on 5 May 2026 with Jenny L. Sheaffer, the claim language of “100 parts of conjugated diene-containing polymer or copolymer selected from the group consisting of styrene-butadiene rubber, and polyisoprene and including a majority by weight of a natural rubber” as found in claim 19 and “100 parts of at least one conjugated diene-containing polymer or copolymer selected from the group consisting of styrene-butadiene rubber, and polyisoprene and including a majority by weight of a natural rubber” as found in claim 37, for purposes of examination, will be interpreted to read as “100 parts of conjugated diene-containing polymer or copolymer consisting of a majority of natural rubber by weight and optionally styrene-butadiene rubber and/or polyisoprene” and “100 parts of at least one conjugated diene-containing polymer or copolymer consisting of a majority of natural rubber by weight and optionally styrene-butadiene rubber and/or polyisoprene” for claim 19 and 37, respectively.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 19, 21, 26, 27, 29-31, 33 and 35-40 are rejected under 35 U.S.C. 103 as being unpatentable over Shikakubo (JP2001288434) (of record) in view of Seferin (US8735480) (of record), Kimura (JP2008201994) (of record) (machine translation), either Wang (NPL) (of record) and/or Nakagawa (US20070271899) (of record), and Yasuhara Chemical (NPL) (of record), as evidenced by ThermoFisher Scientific (NPL) (of record), MatWeb(NPL) (of record), American Elements 1 (NPL) (of record), American Elements 2 (NPL) (of record), Flexicon (NPL) (of record) and ChemBK (NPL) (of record).
Regarding claim 19, Shikakubo discloses an adhesive composition consisting of:
a. natural rubber in an amount of 50 to 100 phr ([0005] and exemplified in Example 1 in Table 1, which includes the claimed limitation of 100 parts of conjugated diene-containing polymer or copolymer consisting of a majority of natural rubber and optionally styrene-butadiene rubber and/or polyisoprene), and
b. a solvent ([0005]),
c. at least one reinforcing filler in an amount of 20 to 70 phr ([0005] and exemplified in Example 1 of Table 1 with 30 phr, which overlaps with the claimed range of about 25 to about 75 phr), and
d. optionally a cure package ([0005] via “vulcanizing agent”).
While Shikakubo does not explicitly disclose that the solvent consists of a terpene-based solvent that is liquid at 25 oC and includes orange oil, it would have been obvious to one of ordinary skill prior to the earliest effective priority of the instant application date to do so given that:
A) Shikakubo teaches that any solvent is capable of being used provided it is capable of dissolving the adhesive rubber composition ([0005]), with aliphatic solvents in particular being preferable (but not required, underline added for emphasis) ([0013]);
B1) Seferin, which is within the tire adhesive art, teaches that aliphatic solvents for dissolving natural rubber are highly toxic and it is known to substitute natural solvents, such as d-limonene (a natural terpene-based/citrus terpene solvent), for the aliphatic solvents for the benefit of reduced toxicity (C1 L36-50); or
B2a) alternatively, Seferin teaches that an adhesive composition can comprise of a majority of a natural solvent (and therefore be considered a “terpene-based solvent”), such as d-limonene (C5 L12-17) along with other co-solvents (C4 L58-61, with C5 L20-22 citing dimethyl ether as a possible cosolvent) for the benefit of reduced toxicity (C4 L14-22); and
B2b) dimethyl ether is known to be produced from biomass (as evidenced by Wang: Abstract and/or Nakagawa: [0076]), meaning it could be made as a non-petroleum based solvent;
C) Kimura, which is within the tire adhesive art, teaches that orange oil, a known citrus oil not based on petroleum, is recognized as being composed of mostly d-limonene and can be used as a solvent ([0009]), and it has been held that “the selection of a known material based on its suitability for its intended use” supports a determination of prima facie obviousness (See MPEP 2144.07);
D) d-limonene is known to be a liquid at 25 oC (see ThermoFisher Scientific (NPL)).
Additionally, it would have been obvious to one of ordinary skill in the art to include one or more process aids selected from the group consisting of oils, waxes, antioxidants, tackifying resins, reinforcing resins and peptizers in Shikakubo’s composition given that Yasuhara Chemical teaches the use of terpene resin with rubber, a non-petroleum based tackifying resin, for the benefit of improved tackiness and adhesive (NPL).
Given that the terpene resin is not based on petroleum and dimethyl ether can be made with biomass as a non-petroleum-based solvent, the modified adhesive composition of Shikakubo would consist of no more than 1% by weight of petroleum-based solvents and petroleum-based resins.
In regards to the limitations of the percentage of solvent based on the weight of the adhesive composition being from about 60% to about 95% (or “about 60% to 95%”), the weight % of the solvent is a result effective variable that modifies the amount of composition or solute that can be dissolved within the mixture. Additionally, applicant did not provide any criticality regarding the weight % of the solvent with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)), as there are no experimental results either inside or outside the claimed range showing the impact of the claimed range on the claimed invention, as all example compositions in Fig. 1 and 2 of applicant’s disclosure are either approximately 60% or 90% by weight of solvent. Therefore, one skilled in the art would have found it obvious to optimize the weight % of the solvent through routine experimentation for optimized results (see MPEP 2144.05(II)).
Alternatively, Shikakubo teaches that the non-solvent components of the adhesive composition ("adhesive rubber composition", [0005]) can make up anywhere between 1 to 25% by volume of the adhesive rubber composition/solvent mixture and also teaches the ranges of the components in the adhesive rubber composition, including natural rubber ([0005] of 0-100 phr and exemplified in Example 1 on Table 1 at 100 phr), vulcanization accelerators ([0010] of 0.1-5 phr and exemplified in Example 1 on Table 1 at 3 phr, with zinc dimethyldithiocarbamate being a possible vulcanization accelerator), vulcanizing agents ([0009] of 1-5 phr and exemplified in Example 1 on Table 1 at 3 phr, with powdered sulfur being a possible vulcanizing agent), and carbon black ([0005] of 20-70 phr and exemplified in Example 1 on Table 1 at 30 phr).
To determine the weight percentage of solvent in an adhesive rubber composition/solvent mixture, component mass amounts for each mixture are selected based on the ranges set forth above along with an estimation for the terpene resin/process aids based on the applicant’s specification and Yasuhara Chemical’s teaching of terpene resin being considered a result effective variable and then converted to volume based on conventional density values for each component (ρNatural rubber: 0.95 g/cm3 from MatWeb, ρZinc dimethyldithiocarbamate: 1.66 g/cm3 from American Elements 1, ρPowdered sulfur: 2 g/cm3 from American Elements 2, ρCarbon black: 2.1 g/cm3 from Flexicon, ρTerpene Resin: 0.98 g/cm3 from ChemBK (Note: the density of YS Resin TO125 (CAS: 64536-06-7) of Yasuhara Chemicals was not available, so examiner used the density of Terpene Resin as an approximate value)). After adding the component volumes together to get the total volume of non-solvent components (VNon-solvent), the mass of the solvent (MSolvent) can be determined with the following equation, with x representing the volume percentage of non-solvent in the mixture (selected between 1 to 25% [0005]) and 0.842 g/cm3 representing the density of the solvent used in modified Shikakubo, d-limonene (from ThermoFisher).
M
S
o
l
v
e
n
t
=
V
N
o
n
-
S
o
l
v
e
n
t
*
(
100
-
x
)
x
*
0.842
g
/
c
m
3
With the mass of the solvent along with the mass of the non-solvent components in the mixture known, the percentage of solvent based on weight can be determined by dividing the mass of the solvent by the sum of the masses of solvent and non-solvent components together.
Through the above calculations, it can be determined that the range of percentage of solvent based on weight of the mixture in modified Shikakubo includes 67.15% (solvent mass of 384.6386 phr) (See Table 1 below). It would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to have a solvent consisting of liquid terpene-based solvent in an amount of about 60% to 95% by weight of liquid solvent based upon the weight of the adhesive composition and for the amount of solvent to be from about 250 to about 2000 phr.
Table 1: Sample Composition based on Modified Shikakubo
Sample Mixture
Non-Solvent Components
Mass (g or phr)
V
(cm3)
VNon-solvent (cm3)
MSolvent
(g or phr)7
% weightSolvent
1
Natural Rubber1
100
105.26
152.28
384.64 w/
%Vsolvent = 25%
67.15%
Vulcanization Accelerator2,3
5
3.012
Vulcanizing Agent4,5
5
2.5
Carbon Black6
70
33.333
Terpene Resin8
8
8.163
[AltContent: textbox (1. Natural rubber density: 0.95 g/cm3 from Mat Web
2. Vulcanization accelerator: zinc dimethyldithiocarbamate (Shikakubo [0010])
3. Zinc dimethyldithiocarbamate density: 1.66 g/cm3 from American Elements 1
4. Vulcanizing Agent: powdered sulfur (Shikakubo [0009])
5. Powdered sulfur density: 2 g/cm3 from American Elements 2
6. Carbon black density: 2.1 g/cm3 from Flexicon
7. D-Limonene density: 0.842 g/cm3 from ThermoFisher
8. Terpene density: 0.98 g/cm3 from ChemBK)] Examiner notes that while the composition of Example 1 in Table 1 of Shikakubo comprises of additional components including rubber oil, Shikakubo in [0005] does not explicitly teach that the rubber oil or the additional components are part of the necessary components to practice the taught composition. It would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to remove the rubber oil for the benefit of simplifying the composition, as rubber oil is not explicitly taught as a necessary component to practice the taught invention.
Regarding claim 21, modified Shikakubo teaches all limitations of claim 19 as set forth above. Additionally, Kimura teaches that orange oil includes a majority by weight of d-limonene ([0009]).
Regarding claim 26, modified Shikakubo teaches all limitations of claim 19 as set forth above. Additionally, Shikakubo teaches that the reinforcing filler in the amount of about 25 to about 75 phr includes carbon black ([0005]).
Regarding claim 27, modified Shikakubo teaches all limitations of claim 26 as set forth above. Additionally, Shikakubo teaches that at least one reinforcing filler in the amount of about 25 to about 75 phr, the carbon black is present in the amount of 20 to 70 (Table 1, which overlaps with the range of about 40 to about 60 phr).
Regarding claim 29, Shikakubo discloses an adhesive composition consisting of:
a. natural rubber in an amount of 50 to 100 phr ([0005] and exemplified in Example 1 in Table 1, which includes the claimed limitation of the conjugated diene-containing polymer or copolymer consisting of natural rubber in an amount of 100 phr), and
b. a solvent ([0005]);
c. at least one reinforcing filler in an amount of 20 to 70 phr ([0005] and exemplified in Example 1 of Table 1 with 30 phr, which overlaps with the claimed range of about 25 to about 75 phr), and
e. a cure package ([0005] via “vulcanizing agent”).
While Shikakubo does not explicitly disclose that the solvent consists of a terpene-based solvent that is liquid at 25oC and includes an orange oil, it would have been obvious to one of ordinary skill prior to the earliest effective priority of the instant application date to do so given that:
A) Shikakubo teaches that any solvent is capable of being used provided it is capable of dissolving the adhesive rubber composition ([0005]), with aliphatic solvents in particular being preferable (but not required, underline added for emphasis) ([0013]);
B1) Seferin, which is within the tire adhesive art, teaches that aliphatic solvents for dissolving natural rubber are highly toxic and it is known to substitute natural solvents, such as d-limonene (a natural terpene-based solvent), for the aliphatic solvents for the benefit of reduced toxicity (C1 L36-50); or
B2a) alternatively, Seferin teaches that an adhesive composition can comprise of a majority of a natural solvent (and therefore be considered a “terpene-based solvent”), such as d-limonene (C5 L12-17) along with other co-solvents (C4 L58-61, with C5 L20-22 citing dimethyl ether as a possible cosolvent) for the benefit of reduced toxicity (C4 L14-22); and
B2b) dimethyl ether is known to be produced from biomass (as evidenced by Wang: Abstract and/or Nakagawa: [0076]), meaning it could be made as a non-petroleum based solvent,
C) Kimura, which is within the tire adhesive art, teaches that orange oil, a known citrus oil not based on petroleum, is recognized as being composed of mostly d-limonene and can be used as a solvent ([0009]), and it has been held that “the selection of a known material based on its suitability for its intended use” supports a determination of prima facie obviousness (See MPEP 2144.07);
D) d-limonene is known to be a liquid at 25 oC (see ThermoFisher Scientific).
Additionally, it would have been obvious to one of ordinary skill in the art to include one or more process aids selected from the group consisting of oils, waxes, antioxidants, tackifying resins, reinforcing resins and peptizers in Shikakubo’s composition given that Yasuhara Chemical teaches the use of terpene resin with rubber, a non-petroleum based tackifying resin, for the benefit of improved tackiness and adhesive (NPL).
Given that the terpene resin is not based on petroleum and dimethyl ether can be made with biomass as a non-petroleum-based solvent, the modified adhesive composition of Shikakubo would be essentially free of petroleum-based resins such that no more than 1% by weight of petroleum-based resins and petroleum-based resins is present in the adhesive composition, based upon the weight of the curable adhesive composition, and no more than 0.5% by weight of petroleum-based resins is present in the adhesive composition, based upon the weight of the curable adhesive composition.
In regards to the limitations of the percentage of solvent based on the weight of the adhesive composition, the weight % of the solvent is a result effective variable that modifies the amount of composition or solute that can be dissolved within the mixture. Additionally, applicant did not provide any criticality regarding the weight % of the solvent with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)), as there are no experimental results either inside or outside the claimed range showing the impact of the claimed range on the claimed invention, as all example compositions in Fig. 1 and 2 of applicant’s disclosure are either approximately 60% or 90% by weight of solvent. Therefore, one skilled in the art would have found it obvious to optimize the weight % of the solvent through routine experimentation for optimized results (see MPEP 2144.05(II)).
Alternatively, Shikakubo teaches that the non-solvent components of the adhesive composition ("adhesive rubber composition", [0005]) can make up anywhere between 1 to 25% by volume of the adhesive rubber composition/solvent mixture and also teaches the ranges of the components in the adhesive rubber composition, including natural rubber ([0005] of 0-100 phr and exemplified in Example 1 on Table 1 at 100 phr), vulcanization accelerators ([0010] of 0.1-5 phr and exemplified in Example 1 on Table 1 at 3 phr, with zinc dimethyldithiocarbamate being a possible vulcanization accelerator), vulcanizing agents ([0009] of 1-5 phr and exemplified in Example 1 on Table 1 at 3 phr, with powdered sulfur being a possible vulcanizing agent), and carbon black ([0005] of 20-70 phr and exemplified in Example 1 on Table 1 at 30 phr).
To determine the weight percentage of solvent in an adhesive rubber composition/solvent mixture, component mass amounts for each mixture are selected based on the ranges set forth above and then converted to volume based on conventional density values for each component (ρNatural rubber: 0.95 g/cm3 from MatWeb, ρZinc dimethyldithiocarbamate: 1.66 g/cm3 from American Elements 1, ρPowdered sulfur: 2 g/cm3 from American Elements 2, ρCarbon black: 2.1 g/cm3 from Flexicon, ρTerpene Resin: 0.98 g/cm3 from ChemBK (Note: the density of YS Resin TO125 (CAS: 64536-06-7) of Yasuhara Chemicals was not available, so examiner used the density of Terpene Resin as an approximate value)). After adding the component volumes together to get the total volume of non-solvent components (VNon-solvent), the mass of the solvent (MSolvent) can be determined with the following equation, with x representing the volume percentage of non-solvent in the mixture (selected between 1 to 25% [0005]) and 0.842 g/cm3 representing the density of the solvent used in modified Shikakubo, d-limonene (from ThermoFisher).
M
S
o
l
v
e
n
t
=
V
N
o
n
-
S
o
l
v
e
n
t
*
(
100
-
x
)
x
*
0.842
g
/
c
m
3
With the mass of the solvent along with the mass of the non-solvent components in the mixture known, the percentage of solvent based on weight can be determined by dividing the mass of the solvent by the sum of the masses of solvent and non-solvent components together (see Table 1 above).
Through the above calculations, it can be determined that the range of percentage of solvent based on weight of the mixture in modified Shikakubo includes 67.15% (solvent mass of 384.6386 phr) (See Table 1 above). It would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to have a solvent consisting of liquid terpene-based solvent in an amount of about 60% to 95% by weight of liquid solvent based upon the weight of the adhesive composition and for the amount of solvent to be from about 250 to about 2000 phr.
Examiner notes that while the composition of Example 1 in Table 1 of Shikakubo comprises of additional components including rubber oil, Shikakubo in [0005] does not explicitly teach that the rubber oil or the additional components are part of the necessary components to practice the taught composition. It would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to remove the rubber oil for the benefit of simplifying the composition, as rubber oil is not explicitly taught as a necessary component to practice the taught invention.
Regarding claim 30, modified Shikakubo teaches all limitations of claim 29 as set forth above. Additionally, Shikakubo teaches that the cure package includes sulfur and at least one vulcanization accelerator ([0005]).
Regarding claim 31, modified Shikakubo teaches all limitations of claim 30 as set forth above. Additionally, Shikakubo teaches that the sulfur is present in an amount of 1 to 5 phr ([0005, 0009] which overlaps with the claimed range of about 1 to about 5 phr) and exemplified at 3 phr in Example 1 of Table 1, and the at least one vulcanization accelerator is present in an amount of 0.1 to 5 ([0005], which overlaps with the claimed range of about 0.5 to about 5 phr) and exemplified in Example 1 on Table 1 at 3 phr.
Regarding claim 33, modified Shikakubo teaches all limitations of claim 29 as set forth above. Additionally, Kimura teaches that the orange oil includes a majority by weight d-limonene ([0009]).
Regarding claim 35, modified Shikakubo teaches all limitations of claim 29 as set forth above. Additionally, Shikakubo teaches that the at least one reinforcing filler in the amount of about 25 to about 75 phr includes carbon black ([0005]).
Regarding claim 36, modified Shikakubo teaches all limitations of claim 33 as set forth above. Additionally, Shikakubo teaches that the at least one reinforcing filler in the amount of about 25 to about 75 phr includes carbon black ([0005]).
Regarding claim 37, Shikakubo discloses a process for adhering two tire components together (“base tire” and “precure tread”), the process comprising:
a. providing a first tire component having a first rubber surface (surface of “base tire”) and applying to at least a portion of the first rubber surface a curable adhesive composition ([0002]) comprising:
i. 100 parts of at least one conjugated diene-containing polymer or copolymer including natural rubber in an amount of 50 to 100 phr ([0005] and exemplified in Example 1 on Table 1, which includes the claimed limitation of 100 parts of conjugated diene-containing polymer or copolymer consisting of a majority by weight of natural rubber and optionally styrene-butadiene rubber and/or polyisoprene), and
ii. a solvent ([0005]);
iii. at least one reinforcing filler in an amount of 20 to 70 phr ([0005] and exemplified in Example 1 on Table 1 with 30 phr, which overlaps with the claimed range of about 25 to about 75 phr), and
iv. a cure package ([0005] via “vulcanizing agent”);
thereby forming an adhesive-containing first rubber surface ([0002]);
b. providing a second tire component having a second rubber surface (inner side of “precured tread”)
c. contacting at least a portion of the second rubber surface with at least a portion of the adhesive-containing first rubber surface to form two adhered components ([0002]).
While Shikakubo does not explicitly disclose that the solvent consists of a terpene-based solvent that is liquid at 25 oC and includes an orange oil, it would have been obvious to one of ordinary skill prior to the earliest effective priority of the instant application date to do so given that:
A) Shikakubo teaches that any solvent is capable of being used provided it is capable of dissolving the adhesive rubber composition ([0005]), with aliphatic solvents in particular being preferable (but not required, underline added for emphasis) ([0013]);
B1) Seferin, which is within the tire adhesive art, teaches that aliphatic solvents for dissolving natural rubber are highly toxic and it is known to substitute natural solvents, such as d-limonene (a natural terpene-based solvent), for the aliphatic solvents for the benefit of reduced toxicity (C1 L36-50); or
B2a) alternatively, Seferin teaches that an adhesive composition can comprise of a majority of a natural solvent (and therefore be considered a “terpene-based solvent”), such as d-limonene (C5 L12-17) along with other co-solvents (C4 L58-61, with C5 L20-22 citing dimethyl ether as a possible cosolvent) for the benefit of reduced toxicity (C4 L14-22); and
B2b) dimethyl ether is known to be produced from biomass (as evidenced by Wang: Abstract and/or Nakagawa: [0076]), meaning it could be made as a non-petroleum based solvent,
C) Kimura, which is within the tire adhesive art, teaches that orange oil, a known citrus oil not based on petroleum is recognized as being composed of mostly d-limonene and can be used as a solvent ([0009]), and it has been held that “the selection of a known material based on its suitability for its intended use” supports a determination of prima facie obviousness (See MPEP 2144.07);
D) d-limonene is known to be a liquid at 25 oC (see ThermoFisher Scientific (NPL)).
Additionally, it would have been obvious to one of ordinary skill in the art to include one or more process aids selected from the group consisting of oils, waxes, antioxidants, tackifying resins, reinforcing resins and peptizers in Shikakubo’s composition given that Yasuhara Chemical teaches the use of terpene resin with rubber, a non-petroleum based tackifying resin, for the benefit of improved tackiness and adhesive (NPL).
Given that the terpene resin is not based on a petroleum and dimethyl ether can be made with biomass as a non-petroleum-based solvent, the modified adhesive composition of Shikakubo would consist of no more than 1 weight % of petroleum-based resins and petroleum-based solvents.
In regards to the limitations of the percentage of solvent based on the weight of the adhesive composition, the weight % of the solvent is a result effective variable that modifies the amount of composition or solute that can be dissolved within the mixture. Additionally, applicant did not provide any criticality regarding the weight % of the solvent with sufficient specificity as to render the claimed range non-obvious over the prior art (see MPEP 2131.03(II)), as there are no experimental results either inside or outside the claimed range showing the impact of the claimed range on the claimed invention, as all example compositions in Fig. 1 and 2 of applicant’s disclosure are either approximately 60% or 90% by weight of solvent. Therefore, one skilled in the art would have found it obvious to optimize the weight % of the solvent through routine experimentation for optimized results (see MPEP 2144.05(II)).
Alternatively, Shikakubo teaches that the non-solvent components of the adhesive composition ("adhesive rubber composition", [0005]) can make up anywhere between 1 to 25% by volume of the adhesive rubber composition/solvent mixture and also teaches the ranges of the components in the adhesive rubber composition, including natural rubber ([0005] of 0-100 phr and exemplified in Example 1 on Table 1 at 100 phr), vulcanization accelerators ([0010] of 0.1-5 phr and exemplified in Example 1 on Table 1 at 3 phr, with zinc dimethyldithiocarbamate being a possible vulcanization accelerator), vulcanizing agents ([0009] of 1-5 phr and exemplified in Example 1 on Table 1 at 3 phr, with powdered sulfur being a possible vulcanizing agent), and carbon black ([0005] of 20-70 phr and exemplified in Example 1 on Table 1 at 30 phr).
To determine the weight percentage of solvent in an adhesive rubber composition/solvent mixture, component mass amounts for each mixture are selected based on the ranges set forth above along with an estimation for the terpene resin/process aids based on the applicant’s specification and Yasuhara Chemical’s teaching of terpene resin being considered a result effective variable and then converted to volume based on conventional density values for each component (ρNatural rubber: 0.95 g/cm3 from MatWeb, ρZinc dimethyldithiocarbamate: 1.66 g/cm3 from American Elements 1, ρPowdered sulfur: 2 g/cm3 from American Elements 2, ρCarbon black: 2.1 g/cm3 from Flexicon, ρTerpene Resin: 0.98 g/cm3 from ChemBK (Note: the density of YS Resin TO125 (CAS: 64536-06-7) of Yasuhara Chemicals was not available, so examiner used the density of Terpene Resin as an approximate value)). After adding the component volumes together to get the total volume of non-solvent components (VNon-solvent), the mass of the solvent (MSolvent) can be determined with the following equation, with x representing the volume percentage of non-solvent in the mixture (selected between 1 to 25% [0005]) and 0.842 g/cm3 representing the density of the solvent used in modified Shikakubo, d-limonene (from ThermoFisher).
M
S
o
l
v
e
n
t
=
V
N
o
n
-
S
o
l
v
e
n
t
*
(
100
-
x
)
x
*
0.842
g
/
c
m
3
With the mass of the solvent along with the mass of the non-solvent components in the mixture known, the percentage of solvent based on weight can be determined by dividing the mass of the solvent by the sum of the masses of solvent and non-solvent components together.
Through the above calculations, it can be determined that the range of percentage of solvent based on weight of the mixture in modified Shikakubo includes 67.15% (solvent mass of 384.6386 phr) (See Table 1 above). It would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to have a solvent consisting of liquid terpene-based solvent in an amount of about 60% to 95% by weight of liquid solvent based upon the weight of the adhesive composition and for the amount of solvent to be from about 250 to about 2000 phr.
Examiner notes that while the composition of Example 1 in Table 1 comprises of additional components including rubber oil, Shikakubo in [0005] does not explicitly teach that the rubber oil or the additional components are part of the necessary components to practice the taught composition. It would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to remove the rubber oil for the benefit of simplifying the composition, as rubber oil is not explicitly taught as a necessary component to practice the taught invention
Regarding claim 38, modified Shikakubo teaches all limitations of claim 37 as set forth above. Additionally, Shikakubo teaches that the curable adhesive composition is applied to at least a portion of the second rubber surface of the second tire component prior to (c) ([0002]).
Regarding claim 39, modified Shikakubo teaches all limitations of claim 19 as set forth above. Additionally, as the adhesive composition as set forth above is free of petroleum-based resins via the use of well-known terpene resins, modified Shikakubo also teaches that the amount of petroleum-based resin is no more than 0.5% by weight based upon the weight of the curable adhesive composition.
Regarding claim 40, modified Shikakubo teaches all limitations of claim 29 as set forth above. Additionally, as no petroleum-resin is used in the composition and dimethyl ether can be produced based off of biomass, modified Shikakubo also teaches that the amount of petroleum-based resins is no more than 0% by weight based upon the weight of the curable adhesive composition.
Claims 19, 21, 26, 27, 29-31, 33 and 35-40 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura (JP2008201994) (of record, previously noted as Kazutoshi) (machine translation) as evidenced by ThermoFisher Scientific (NPL) (of record).
Regarding claim 19, Kimura discloses a curable adhesive composition consisting of:
a. 100 parts of one conjugated diene-containing polymer or copolymer consisting of a majority of natural rubber ([0010] and exemplified in rubber compound B on Table 1, in that component b can comprise of only natural rubber as the conjugated diene-containing polymer or copolymer, which includes the claimed limitation of 100 parts of conjugated diene-containing polymer or copolymer consisting of a majority of natural rubber and optionally styrene-butadiene rubber and/or polyisoprene), and
b. solvent consisting of liquid terpene-based solvent ([0009], in that D-limonene alone can be used or with orange oil) wherein the liquid terpene-based solvent is liquid at 25 oC (as d-limonene is known to be a liquid at 25 oC (see ThermoFisher Scientific (NPL))
c. at least one reinforcing filler in an amount of 60 phr ([0013] and exemplified in rubber compound B on Table 1, represented by “(6) HTC#GA manufactured by Shin Nikka Carbon Co., Ltd.” in [0022], which overlaps with the claimed range of about 25 to about 75 phr), and
d. a cure package ([0013] and exemplified in rubber compound B on Table 1, represented by “(7) stearic acid”, “(8) Zinc Oxide”, “(9) Sulfur” and “(10) Noxeler DM” in [0022]), and
e. a process aid selected from the group consisting of oil (rubber compound B on Table 1, represented by Process oil/“(11) Desolex No. 3 manufactured by Showa Shel Sekiyu Co, Ltd.” in [0022]) and tackifying resin ([0014-0015]).
Additionally, as the solvent would be non-petroleum based ([0009]) and optional tackifying natural terpene resins can be used ([0014]), modified Kimura teaches that the adhesive composition is essentially free of petroleum-based solvents and petroleum-based resins and therefore meets the claim limitation wherein no more than 1% by weight of petroleum-based solvents and petroleum-based resins is present in the adhesive composition.
While Kimura does not explicitly disclose that the liquid terpene-based solvent is in an amount of about 60% to 95% (or “about 60% to about 95%”) by weight and present in an amount of about 250 to about 2000 phr, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Kimura teaches that the natural rubber is present in amount of 0.1 to 10 parts by weight per 100 parts of the solvent ([0010], meaning for an amount of 10 parts by weight of natural rubber per 100 parts of the solvent, a composition of 100 phr rubber would be in a solvent solution of 1000 phr, which is within the claimed range of about 250 to about 2000 phr) which combined with the amount of rubber, reinforcing filler, process aid and cure package as presented by rubber compound B (Table 1, with natural rubber: 100 phr, reinforcing filler: 60 phr, process oil: 5 phr, cure package: 10 phr) would result in the composition an amount of liquid terpene-based solvent being 85.1% by weight (85.1% = 100% * (1000 phr/(1000 phr +100 phr+60 phr+10 phr+5 phr)), which is within the claimed range of about 60% to 95%). 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).
Regarding claim 21, Kimura teaches all limitations of claim 19 as set forth above. Additionally, Kimura teaches that a majority by weight of the liquid terpene-based solvent comprises d-limonene ([0009]).
Regarding claim 26, Kimura teaches all limitations of claim 19 as set forth above. Additionally, Kimura teaches that the reinforcing filler can comprises of carbon black ([0013]).
Regarding claim 27, Kimura teaches all limitations of claim 26 as set forth above. Additionally, Kimura teaches that the carbon black is present in an amount of 60 phr (rubber compound B on Table 1, represented by “(6) HTC#GA manufactured by Shin Nikka Carbon Co., Ltd.” in [0022], which overlaps with the claimed range of about 40 to about 60 phr.
Regarding claim 29, Kimura discloses a curable adhesive composition comprising of:
a. 100 parts of conjugated diene-containing polymer or copolymer including natural rubber ([0010] and exemplified in rubber compound B on Table 1, in that component b can comprise of only natural rubber as the only conjugated diene-containing polymer, which meets the limitation of the conjugated diene-containing polymer or copolymer consisting of natural rubber in an amount of 100 phr), and
b. solvent consisting of liquid terpene-based solvent ([0009], in that D-limonene alone can be used along with orange oil) wherein the liquid terpene-based solvent is liquid at 25 oC (as d-limonene is known to be a liquid at 25 oC (see ThermoFisher Scientific (NPL))
c. at least one reinforcing filler in an amount of 60 phr ([0013] and exemplified in rubber compound B on Table 1, represented by “(6) HTC#GA manufactured by Shin Nikka Carbon Co., Ltd.” in [0022], which is within the claimed range of about 25 to about 75 phr), and
d. a process aid selected from the group consisting of oil at 5 phr (rubber compound B on Table 1, represented by Process oil/“(11) Desolex No. 3 manufactured by Showa Shel Sekiyu Co, Ltd.” in [0022]) and tackifying resin in an amount of 0.1 to 10 parts by weight of solvent ([0014], [0015]), which separately or combined overlaps with the claimed range of no more than about 42 phr,
e. a cure package ([0013] and exemplified in rubber compound B on Table 1, represented by “(7) stearic acid”, “(8) Zinc Oxide”, “(9) Sulfur” and “(10) Noxeler DM” in [0022]),
Additionally, as the solvent would be non-petroleum based ([0009]) and optional tackifying natural terpene resins can be used ([0014]), Kimura teaches that the adhesive composition is made wherein no more than 1% by weight of petroleum-based solvents and petroleum-based resins is present in the adhesive composition, based upon the weight of the curable adhesive composition, and no more than 0.5% by weight of petroleum-based resins is present in the adhesive composition, based upon the weight of the curable adhesive composition.
While Kimura does not explicitly disclose that the liquid terpene-based solvent is in an amount of about 60% to 95% (or “about 60% to about 95%”) by weight and present in an amount of about 250 to about 2000 phr, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Kimura teaches that the natural rubber is present in amount of 0.1 to 10 parts by weight per 100 parts of the solvent ([0010], meaning for an amount of 10 parts by weight of natural rubber per 100 parts of the solvent, a composition of 100 phr rubber would be in a solvent solution of 1000 phr, which is within the claimed range of about 250 to about 2000 phr) which combined with the amount of rubber, reinforcing filler, process aid and cure package as presented by rubber compound B (Table 1, with natural rubber: 100 phr, reinforcing filler: 60 phr, process oil: 5 phr, cure package: 10 phr) would result in the composition an amount of liquid terpene-based solvent being 85.1% by weight (85.1% = 100% * (1000 phr/(1000 phr +100 phr+60 phr+10 phr+5 phr)), which is within the claimed range of about 60% to 95%). 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).
Regarding claim 30, modified Kimura teaches all limitations of claim 29 as set forth above. Additionally, Kimura teaches that the cure package comprises sulfur and at least one vulcanization accelerator ([0013] and Table 1, represented by “(8) Zinc Oxide” and “(9) Sulfur” in [0022]).
Regarding claim 31, modified Kimura teaches all limitations of claim 30 as set forth above. Additionally, Kimura teaches that the sulfur is present in an amount of 3 phr (rubber compound B on Table 1, which is within the claimed range of about 1 to about 5 phr), and the at least one vulcanization accelerator is present in an amount of 5 phr (rubber compound B on Table 1, which is within the claimed range of about 0.5 to about 5 phr).
Regarding claim 33, modified Kimura teaches all limitations of claim 29 as set forth above. Additionally, Kimura teaches that a majority by weight of the liquid terpene-based solvent comprises d-limonene ([0009]).
Regarding claim 35, modified Kimura teaches all limitations of claim 29 as set forth above. Additionally, Kimura teaches that the reinforcing filler can comprises of carbon black ([0013]).
Regarding claim 36, modified Kimura teaches all limitations of claim 32 as set forth above. Additionally, Kimura teaches that the reinforcing filler can comprises of carbon black ([0013]).
Regarding claim 37, Kimura discloses a process for adhering two tire components together ([0002], [0007], in that the adhesive composition can be used in tire manufacture), the process comprising:
a. providing a first tire component having a first rubber surface and applying to at least a portion of the first rubber surface a curable adhesive composition ([0002], [0007]) comprising:
i. 100 parts of at least one conjugated diene-containing polymer or copolymer including natural rubber ([0010] and exemplified in rubber compound B on Table 1, in that component b can comprise of only natural rubber, which meets the claim limitation of at least one conjugated diene-containing polymer or copolymer consisting of a majority by weight of natural rubber and optionally of styrene-butadiene rubber and/or polyisoprene), and
ii. solvent consisting of liquid terpene-based solvent ([0009], in that D-limonene alone can be used along with orange oil) wherein the liquid terpene-based solvent is liquid at 25 oC (as d-limonene is known to be a liquid at 25 oC (see ThermoFisher Scientific (NPL))
iii. at least one reinforcing filler in an amount of 60 phr ([0013] and exemplified in rubber compound B on Table 1, represented by “(6) HTC#GA manufactured by Shin Nikka Carbon Co., Ltd.” in [0022], which overlaps with the claimed range of about 25 to about 75 phr), and
iv. a cure package ([0013] and exemplified in rubber compound B on Table 1, represented by “(7) stearic acid”, “(8) Zinc Oxide”, “(9) Sulfur” and “(10) Noxeler DM” in [0022]), and
v. a process aid selected from the group consisting of oil (rubber compound B on Table 1, represented by Process oil/“(11) Desolex No. 3 manufactured by Showa Shel Sekiyu Co, Ltd.” in [0022]) and tackifying resin ([0014], [0015]),
thereby forming an adhesive-containing first rubber surface ([0002], [0007]);
b. providing a second tire component having a second rubber surface ([0002], [0007])
c. contacting at least a portion of the second rubber surface with at least a portion of the adhesive-containing first rubber surface to form two adhered components ([0002], [0007]).
Additionally, as the solvent would be non-petroleum based ([0009]) and optional tackifying natural terpene resins can be used ([0014]), Kimura teaches that the curable adhesive composition is made wherein no more than 1 weight % of petroleum-based solvents and petroleum-based resins is present in the adhesive composition.
While Kimura does not explicitly disclose that the liquid terpene-based solvent is in an amount of about 60% to 95% (or “about 60 to about 95%”) by weight and present in an amount of about 250 to about 2000 phr, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Kimura teaches that the natural rubber is present in amount of 0.1 to 10 parts by weight per 100 parts of the solvent ([0010], meaning for an amount of 10 parts by weight of natural rubber per 100 parts of the solvent, a composition of 100 phr rubber would be in a solvent solution of 1000 phr, which is within the claimed range of about 250 to about 2000 phr) which combined with the amount of rubber, reinforcing filler, process aid and cure package as presented by rubber compound B (Table 1, with natural rubber: 100 phr, reinforcing filler: 60 phr, process oil: 5 phr, cure package: 10 phr) would result in the composition an amount of liquid terpene-based solvent being 85.1% by weight (85.1% = 100% * (1000 phr/(1000 phr +100 phr+60 phr+10 phr+5 phr)), which is within the claimed range of about 60% to 95%). 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).
Regarding claim 38, Kimura teaches all limitations of claim 37 as set forth above. Additionally, Kimura teaches that the curable adhesive composition is applied to at least a portion of the second rubber surface of the second tire component prior to (c) ([0007]).
Regarding claim 39, Kimura teaches all limitations of claim 19 as set forth above. Additionally, as no petroleum-resin is used in the composition, Kimura teaches that the amount of petroleum-based resins is no more than 0.5% by weight based upon the weight of the curable adhesive composition.
Regarding claim 40, Kimura teaches all limitations of claim 29 as set forth above. Additionally, as no petroleum-resin is used in the composition, Kimura also teaches that the amount of petroleum-based resins is no more than 0% by weight based upon the weight of the curable adhesive composition.
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive.
Regarding p.7-8 of applicant’s remarks, applicant argues that as Shikakubo teaches the importance of a low boiling point for the solvent based on [0013] and [0018] and that “low boiling point solvents are needed to ensure that the solvent evaporates during vulcanization and no foaming would occur”. Examiner disagrees, noting that at no point in Shikakubo does it explicitly state that a low boiling solvent is “needed to ensure that the solvent evaporates during vulcanization and no foaming would occur”. The exact wording of [0013] and [0018] are given below with underlining to emphasize particular passages:
[0013]
Next, the rubber cement composition (B) of the present invention will be described. The rubber cement (B) of the present invention contains the above-mentioned adhesive rubber composition (A), an organic solvent capable of dissolving the adhesive rubber composition, and a vulcanization accelerator (b). The organic solvent capable of dissolving the adhesive rubber composition (A) is preferably an organic solvent having a relatively low boiling point, and aliphatic and alicyclic hydrocarbons such as pentane, hexane, cyclohexane, heptane, octane, and rubber volatile solvents and mixtures thereof are preferably used. This is because, when the boiling point is low, no solvent remains during vulcanization, and foaming can be prevented. The organic solvent is blended in an amount such that the concentration of the rubber cement composition (B) is 1 to 25 vol%.
[0018]
The rubber cement composition (B) is applied to both surfaces of the unvulcanized rubber sheet thus obtained and to a total of 4 surfaces of surfaces to be bonded of both vulcanized rubbers as adherends. In the method of the present invention, the rubber cement composition (B) is applied to 4 surfaces to be bonded, each containing a predetermined amount of the vulcanization accelerator (b), and the vulcanization accelerator (a) is also present in the bonding rubber composition (A) present in the center thereof, so that short-time vulcanization can be achieved by these synergistic effects during vulcanization. The vulcanized rubber and the adhesive rubber composition sandwiched therebetween are pressure-bonded after the coated surface coated with the rubber cement composition (B) is dried. This is because if a solvent remains on the coating surface, the solvent is foamed during vulcanization, and there is a concern that physical properties may be deteriorated. The pressure bonding is performed under conditions of a vulcanization temperature of 50 to 100°C and a pressure bonding force of 1 kg/cm2or more. When the vulcanization temperature is as high as 120°C or higher, the physical properties are deteriorated although the time required for vulcanization is small. On the other hand, the lower the vulcanization temperature, the longer the vulcanization time, but the vulcanization temperature of 70 to 90°C is particularly preferable because there is no risk of deterioration of physical properties due to burning and the balance with the vulcanization time is good.
While it is true in [0013] that a solvent with a relatively low boiling point solvent is preferable, the only necessity of the solvent is for it to be “capable of dissolving the adhesive rubber composition”, and the teaching of a preferred embodiment does not constitute teaching away from other embodiments disclosed within the specification (See MPEP 2123 II). With regards to the teaching of vulcanization temperature in [0018] and relating it to the choice of solvent, Shikakubo doesn’t teach that the vulcanization temperature must be in the preferred range of 70 to 90oC to practice the invention, rather that the choice of vulcanization temperature is a balance between minimizing the length of vulcanization vs minimizing the possibility of physical property deterioration. A person of ordinary skill in the art may determine that the risk of physical property deterioration is outweighed by the reduction in vulcanization time and choose a higher vulcanization temperature, which applicant argues would correlate to higher boiling point solvents.
Regarding p.8 of applicant’s remarks, applicant argues that Seferin requires the use of a co-solvent. Examiner disagrees, noting that “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (See MPEP 2123(I)). While it is true that the focus of Seferin’s invention includes the use of a natural solvent with a co-solvent, the explicit disclosure of the replacement of aliphatic solvents by natural solvents in the “Background of the Invention” is an explicit teaching for the replacement of aliphatic solvents with natural solvents for lower toxicity. Furthermore, examiner notes that the claim limitation regarding solvent is that it is “consisting of liquid terpene-based solvent” (underline added for emphasis), meaning that while there must be a majority of terpene-related components, it does not exclude the inclusion of other components and Seferin teaches that the adhesive composition comprises a majority of a terepene natural solvent such as d-limonene (C5 L12-1-24).
Regarding p.9-10 of applicant’s remarks, applicant’s arguments are directed towards prior rejections based off the prior art of Brown (US4808657) which was not used as a basis for any rejection made in the most-recent previous office action and are considered moot.
Regarding p.10-11 of applicant’s remarks towards unexpected results, applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art; the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements.
Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)). Additionally, a showing
of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d
1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997). With regards to the evidence, applicant points to a comparison between of examples 2-3 versus example 1 as a nexus of proof for using an orange-oil based adhesive composition containing SBR and natural rubber vs a petroleum based solvent and a comparsion between examples 5-6 versus example 4 as a nexus for proof of an orange oil-based adhesive composition containing only natural rubber vs a petroleum based solvent. Examiner notes that between examples 2-3 vs example 1, example 3 comprises a different amount of solvent (60%) when compared to both example 1 or 2 (90%) and can’t be directly compared to example 1 as it comprises both a change in solvent amount and solvent type. Instead, the only proper comparison can be made between examples 1 and 2 as they are identical except for choice of solvent, in which case, example 1 with its petroleum-based solvent performed better than that of example 2 (511 N Average Force Peaks vs 472 N Average Force Peaks). With regards to examples 5-6 vs example 4, again, example 6 comprises a different amount of solvent (60%) compared to examples 4-5 (91%) and can’t be directly compared to example 4 as it comprises both a change in solvent amount and solvent type. Instead, the only proper comparison that can be made is between examples 4 and 5, where the different in Average Force Peaks (N) is only 1. By comparison, examiner notes how when comparing example 7 to example 9 and example 10 to example 12, where the only difference between the compared examples is the inclusion of carbon black, the difference in Average Force Peaks (N) is greater than 100 N and would be considered some amount of evidence of 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.
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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