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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on March 16, 2026 has been entered.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (US Pub. No. 2017/0137615) in view of Kubo (US Pub. No. 2017/0008346).
Regarding claims 1, 4, 6 and 8, Nakajima teaches a pneumatic tire with a circumferential tread rubber 1 with sidewall portions 2 (paragraph [0013]), a rubber composition which contains a terminal-modified styrene-butadiene rubber, a natural rubber, and a butadiene rubber (paragraph [0015]), where the rubber composition has an embrittlement temperature of not higher than –45° C (paragraph [0039]), with specific embodiments having 45 parts by weight of modified SBR having a Tg of –25° C, 35 parts by weight of BR (Nipol BR1220, which has a Tg of –115° C) and 20 parts by weight of NR (SIR 20, which has Tg of –65° C) (table 2, working examples 1-4 and paragraph [0050]), resulting in a Tg for the specific embodiment of the rubber composition of –64.5° C, falling within the claimed range, 66 to 110 parts by weight filler containing not less than 50% by weight, preferably 70 to 100 wt.%, of silica (paragraphs [0027]-[0028]), where the filler can contain carbon black is preferably 0% to 30 wt.% (paragraph [0038]), resulting in overlapping ranges for the amount of silica in the rubber composition and amount of silica in the filler, and a total amount of oil in the tread being from 25 to 50 wt.% (paragraph [0040]), resulting in the oil amount to silica amount range overlapping the claimed range, with a specific embodiment using Extract No. 4S by Showa as the oil (paragraph [0058]), the same aroma oil used in the instant application. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP at 2144.05 citing In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Nakajima does not specifically disclose the tensile data of the rubber composition, however the rubber composition uses the same three types of rubber components, same Tg for the rubber, overlapping ranges of the silica and aroma oil, an overlapping range silica CTAB specific surface area (paragraph [0032]), and specific embodiments having silica CTAB of 159 and 197 meters squared per gram within the claimed range (table 2 and paragraphs [0054]-[0055]), and thus the rubber composition of Nakajima and the instant invention are believed to be the same, and thus the claimed tensile property relationship is taken to be met. “’When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.’” MPEP § 2112.01 citing In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Nakajima does not specifically disclose using a circumferential main groove with a depth of from 7 to 11 mm. Kubo teaches using main grooves with a preferable depth of from 7 to 11 mm (paragraph [0038]), as well as teaching a specific embodiment having a tire size of 205/55R16 (paragraph [0163]), such being a typical passenger car size. It would have been obvious to one of ordinary skill in the art to use a circumferential main groove with a depth of from 7 to 11 mm as taught by Kubo in the tire of Nakajima in order to create a passenger car tire which obtains sufficient drainage performance (see Kubo at paragraph [0038]).
Regarding clam 2, Nakajima teaches using a CTAB surface area of preferably 140 to 184 square meters per gram (paragraph [0032]) and specific embodiments having a CTAB specific surface area of 159 and 197 meters squared per gram (paragraphs [0054]-[0055]).
Regarding claims 3 and 5, Kubo teaches a width of the center main grooves of 3% to 10% of the tread width (paragraphs [0041]-[0042]), and a width of the shoulder main grooves of from 2% to 7% of the tread width (paragraphs [0050]-[0051]), resulting in an area ratio of the main groove of from 10% (2*2%+2*3%) to 34% (2*10%+2*7%), overlapping the claimed ranges.
Regarding claims 7 and 9, Nakajima teaches that the modified styrene-butadiene rubber does not need an additional oil component (paragraph [0021]), and teaches specific embodiments where the only oil other than that of the modified SBR is aroma oil (see table 2, working examples 1-7 and paragraph [0058]), and the total oil and silica percentages set forth above overlap the claimed range of claim 7, and aroma oil can be the only processing oil included in the rubber composition.
Response to Arguments
Applicant’s arguments with respect to claims 1-9 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
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/P.N.S/ Examiner, Art Unit 1749 August 12, 2026
/JUSTIN R FISCHER/ Primary Examiner, Art Unit 1749
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