DETAILED ACTION
This Office Action is responsive to the amendment filed on 6/13/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim Rejections - 35 USC § 112
Claims 1, 2, 5, 8-10, 14-21, 23, 24, 26-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1: Amended claim 1 states that the elastomeric composition has a loss tangent value at 0 °C of about 0.440 to about 0.613; this limitation is not supported by the original disclosure.
Applicant’s original disclosure does not contain any broad teachings regarding a range of values for the loss tangent value at 0 °C of the disclosed composition. Rather, the specification only discloses specific values for the compositions of each Example (see Tables 6 and 8). In the absence of any broad disclosure with regards to this property, applicant’s disclosure of examples each of which has a discrete value of loss tangent at 0 C does not provide support for claiming all values within the range of anout 0.440 to 0.613.
Claims 2, 5, 8-10, 14-21, 23, 24, 26-30 depend from claim 1 and do not correct this deficiency. The claims are therefore rejected per the same rationale as claim 1.
Regarding claim 26: Amended claim 26 states that the loss tangent value of the elastomeric composition at 40 °C is about 0.142 to about 0.188.
Applicant’s original disclosure does not contain any broad teachings regarding a range of values for the loss tangent value at 40 °C of the disclosed composition. Rather, the specification only discloses specific values for the compositions of each Example (see Tables 6 and 8). In the absence of any broad disclosure with regards to this property, applicant’s disclosure of examples each of which has a discrete value of loss tangent at 40 °C does not provide support for claiming all values within the range of about 0.142 to 0.188. Furthermore, note that none of the samples are reported to have a loss tangent of 0.142 at 40 °C (see Tables 6 and 8); rather, sample TT-12 had a value of 0.142 at 60 C (see Table 8). The newly added limitation therefore is not supported by the original disclosure.
Claims 1, 2, 5, 8-10, 14-21, and 23-29 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.
Claim 21 recites the limitation "the steric acid" in line 5. There is insufficient antecedent basis for this limitation in the claim. The parent claim does not recite any limitations regarding steric acid.
Claim Rejections - 35 USC § 103
Claims 1, 2 5, 8-10, 14, 16-21, and 23-30 are rejected under 35 U.S.C. 103 as being unpatentable over Blok et al, WO2016/053541 (of record), in view of Labrunie et al, WO2015/124679.
As discussed in the previous Action, Blok discloses a rubber composition used for the production of tire treads (for claims 18, 19), wherein said composition comprises 5 to 75% by weight of a diene elastomer, 0 to 40% by weight processing oil (for claims 1, 27, 29), 20 to 80% by weight filler such as silica (for claims 1, 27, 28) (¶0060), a curative agent (for claims 1, 27, 29), and a propylene/ethylene/diene (PEDM) terpolymer (abstract). Blok further teaches the addition of an antioxidant (for claims 1, 27, 29), a silane coupling agent such as a silane polysulfide (for claims 1, 27, 29) (¶0072, 0084), and 2.5 phr stearic acid (for claims 30) (Table 3) to the prior art composition.
Said diene elastomer may comprise 0 to 60% by weight (i.e., 0 to 60 phr) polybutadiene having a cis-1,4-linkage content greater than 80% (¶0047) (¶0058), corresponding to the claimed polybutadiene (for claims 1, 27, 29); 15 to 60% by weight (i.e., 15 to 60 phr) of a styrenic copolymer such as a styrene/butadiene copolymer rubber (¶0057, 0058), corresponding to the claimed styrene/butadiene copolymer (for claims 1, 27, 29); and 0 to 60 wt% natural rubber (¶0058), corresponding to claimed natural polyisoprene rubber (for claims 1, 27, 29).
Regarding the claimed PEDM (for claims 1, 27, 29): The prior art PEDM comprises 60 to 95 wt% propylene, overlapping the claimed range (for claim 1); 5 to 40 wt% ethylene, overlapping the claimed range (for claims 1, 17); and 0.2 to 24 wt% diene such as ethylidene norbornene (¶0015), overlapping the claimed range (for claim 1) (¶0016-0018). The prior art PEDM is present in an amount in the range of 5 to 30 wt% (abstract) (for claim 1), and has a melt flow rate (230, 2.16 kg) ≥ 0.2 g/10 min (¶0025), overlapping the claimed range (for claim 1). Blok teaches that 1) the PEDM may be functionalized to improved its interaction with filler(s) used in the composition (¶00110) and 2) bis(triethoxysilylpropyl) tetrasulfide was a suitable coupling agent to improve interaction with silica filler (¶0075). Blok therefore renders obvious the functionalization of the PEDM with bis(triethoxysilylpropyl) tetrasulfide to improve interaction with the silica filler present in the composition (for claims 2, 28). Blok exemplifies the use of PEDM having glass transition temperatures in the range of -2.1 to -21.9 °C (for claim 16) (Table 2).
The prior art composition is prepared via a process comprising the steps of 1) combining all components except the curative at a temperature of 110 to 190 °C (for claim 20, 21), 2) adding the curative at a temperature of 40 to 110 °C (for claims 20, 21) and 3) recovering the composition (for claim 20) (¶00106-00107). The composition is then cured in forming the tread (for claim 21) (¶0085). Blok teaches that the addition of the EPDM improves the wet traction and rolling resistance of the final tire (for claim 21) (¶0010-0011).
Regarding claim 5: The prior art filler may be a blend of silica and carbon black (¶0062).
Regarding claims 8-10 and 14: As noted above, the prior art composition may comprise carbon black. Blok further teaches that the total amount of filler is up to 200 phr. An ordinary artisan will therefore recognize that the amount of carbon black in the overall composition may be 200 phr or less, overlapping the claimed range (for claims 8, 10). Blok exemplifies the addition of 11.2 phr (Table 3) of a polysulphurized alkoxysilane (for claim 14) coupling agent (for claim 9).
Regarding the requirement that the PEDM comprises the carbon black/coupling agent: As written, the claimed invention is a composition wherein all of the listed components are combined. As such, it is reasonably expected that the prior art composition obtained by combining all components would be the same as that obtained if a portion of the filler and/or coupling agent were combined with the PEDM prior to its addition to the other components.
Alternatively, the selection of any order of mixing ingredients is prima facie obvious; see In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (MPEP § 2144.04(C)). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to mix a portion of the carbon black (for claims 8, 10) or coupling agent (for claims 9, 14) with the PEDM as a masterbatch prior to its addition to the remaining components.
It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Note that the difference between the amount of coupling agent exemplified by Blok (11.2 phr) and the claimed value of 10.5 is small-less than 1 phr. Given that this difference is small and that it is known in the art that the coupling agent is added to have a reinforcing effect on the rubber (¶0070), it would have been obvious to one of ordinary skill in the art to vary the amount of coupling agent to adjust the mechanical properties of the final composition as desired.
Blok is silent regarding the addition of about 10 to 30 phr of a hydrocarbon resin which comprises a dicyclopentadiene homo- or copolymer.
Labrunie discloses a plasticizing system which is used in compositions for tire treads (abstract; page 27: ¶0134). Said plasticizing system comprises 2 to 80 phr (for claim 1) of a plasticizing oil such as sunflower oil (for claims 1, 22) (page 19: 0091) and 15 to 70 phr (for claim 1) of a low glass transition temperature (Tg) hydrocarbon resin (page 18: ¶0087; page 22: ¶0107)). Said low Tg hydrocarbon resin may be a dicyclopentadiene homopolymer, corresponding to the claimed hydrocarbon resin (for claims 1, 23, 27) (page 21: ¶0103). Labrunie teaches that the use of the prior art plasticizing system results in a final tire tread having an improved balance of rolling resistance, adhesion to wet and dry ground, and hardness (page 2: ¶0008).
Blok and Labrunie are both directed towards rubber compositions used in the production of tires. As taught by Labrunie, it was known in the art to include a plasticizing system comprising 2 to 80 phr of a plasticizing oil such as sunflower oil and 15 to 70 phr of a low Tg hydrocarbon resin such as a dicyclopentadiene homopolymer in such rubber compositions in order to obtain a final product having an improved balance of rolling resistance, adhesion to wet and dry ground, and hardness. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Blok by adding the plasticizing system of Labrunie, with the reasonable expectation of obtaining a final rubber composition which could be used to prepare tire treads having the improved balance of properties taught by Labrunie (for claims 1, 27).
Regarding the claimed loss tangent value (for claims 1, 25, 26), tensile strength (for claim 24), modulus (for claim 24), and elongation (for claim 24): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As discussed in the previous paragraphs, the prior art renders obvious the production of a composition which comprises the same components combined in the same ratio as the claimed composition. As the composition rendered obvious by the prior art appears to be the same, it is reasonably expected that it would have the same properties as those used to define the claimed composition. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the prior art.
Response to Arguments
Applicant's arguments filed 6/13/2025 have been fully considered but they are not persuasive.
Regarding the rejection under 35 U.S.C.112(a): Applicant argues that the newly added limitations are supported by the original disclosure, citing Nalpropion Pharmaceuticals, Inc. v. Actavis. Laboratories FL, Inc., 934 F.3d 1344 (Fed. Cir. 2019).
In response, it is noted that the written disclosure issue under consideration in the cited case was whether a claim to a process had adequate written description support because the data relied on in the specification was obtained using a different method than the one required by the patented claim. The Court’s ruling that the claims had adequate support because an ordinary artisan would have considered the two methods to be substantially equivalent is not pertinent to the issue of new matter with regards to the instant claims. Furthermore, the Court noted that the data related only to resultant in vitro parameters, and were not directed towards operative steps of the claimed process. In contrast, the limitations at issue in the instant claims are properties that the claimed composition are required to have. Finally, the Court’s decision was further based on expert testimony that was directed to the particulars of the patent at issue. In view of these differences, applicant has not demonstrated that the are adequately supported by the original disclosure as discussed earlier in this Action.
Regarding the rejection over Blok in view of Labrunie: Applicant argues that the claimed invention yields unexpected results with respect to the loss tangent value at 0 °C, citing the data in the Tables of the specification.
Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967). A greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (MPEP § 716.02).
Applicant argues that the claimed invention yields unexpected improvements in loss tangent value at 0 °C and compares the instant invention to the composition of Blok’s Example 5; however, the difference between the claimed invention and the composition of Blok is not only the choice of specific comonomer content(s) in the PEDM. Rather, the claimed composition further comprises a hydrocarbon resin which is a dicyclopentadiene (co)polymer.
Note that applicant’s specification teaches that loss tangent value at 0 °C is related to wet traction performance, with higher loss tangent values corresponding to better traction (specification ¶0097). As discussed earlier in this Action and in previous Office Actions, Labrunie teaches a plasiticizing composition comprising a processing oil and a dicyclopentadiene resin which is used in compositions for tires. As taught by Labrunie, it was known that the use of such additives resulted in final compositions having improved wet adhesion (i.e., wet traction) properties (¶0008). Contrary to applicant’s arguments, one of ordinary skill in the art would have expected that adding the plasticizing composition of Labrunie to the composition of Blok would have resulted in a final composition having improved wet traction performance (i.e., a higher loss tangent at 0 °C). The single comparison cited by applicant does not demonstrate that the allegedly unexpected results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage as required.
With regards to applicant’s argument that the prior art would not have rendered obvious a PEDM having an ethylene content in the claimed range, it is noted that, as discussed earlier in this Action, Blok broadly teaches that the prior art PEDM may have an ethylene content as high as 40 wt% (¶0017). It has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971) (MPEP § 2123 [R-5]). Contrary to applicant’s arguments, the prior art’s disclosure of examples wherein the PEDM having a lower ethylene content does not teach away from its broader disclosure that the ethylene content may be as high as 40 wt%.
Applicant similarly argues that the prior art does not teach a melt flow rate (230 C, 2.16 kg) of about 7.13 to 7.66 g/10 min, arguing that the examples of Blok disclose a PEDM having a melt flow rate of 4.. Contrary to applicant’s argument, the disclosure of Blok is not limited to its examples. Blok broadly teaches that the prior art PEDM may have a melt flow rate ≥ 2, preferably in the range of 0.5 to 200 g/10 min (¶0025). The mere fact that the prior art example does not meet the claimed limitation does not teach away from Blok’s broader disclosure which teaches that the PEDM may have a melt flow rate in a range that overlaps the claimed range of 7.13 to 7.66 g/10 min.
Furthermore, to the extent that applicant argues that the melt flow rate of the PEDM results in benefits in the final composition, the examiner notes that the passages cited by applicant from the specification (0010 and 0106) merely generically allege that the addition of the claimed PEDM to the composition result in improved properties. The cited passages do not provide any evidence and/or arguments that the alleged improvements are dependent on the melt flow rate of the PEDM.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). Blok teaches that the prior art PEDM has a melt flow rate in a range that overlaps the claimed range. Contrary to applicant’s arguments, it therefore would have been prima facie obvious to use a PEDM having the required ethylene content and melt flow rate in view of the teachings of Blok.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY S LENIHAN/Examiner, Art Unit 1765