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 .
Response to Amendment
The amendment filed April 28, 2026 has been entered. Claims 1-5 and 11-22 remain pending in the application.
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 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.
Claims 1-5 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0210881 (Miyazaki) in view of US 2014/0275331 (Kondo).
Regarding claim 1, Miyazaki discloses a tire comprising a tread at least partially comprising a tread rubber composition containing, based on 100% by mass of a rubber component therein, 60% by mass or more of a styrene-butadiene rubber (see paragraph 0033), which is within the claimed range of 50% by mass or more, having a styrene content of 35% by mass or more (see paragraphs 0032, 0137), as recited in the claim, and a vinyl content of 46% by mass or more (see paragraph 0137), which is within the claimed range of 45% mass or higher. Miyazaki also discloses the composition may include polybutadiene rubber of any type, including those commonly used in the tire industry (see paragraph 0034). In the analogous field of rubber compositions for tires, Kondo teaches that the use of polybutadiene rubber having a cis content of 50% by mass or lower helps to improve the dispersibility of filler and improves balance between rolling resistance and durability (see paragraph 0031). It therefore would have been obvious to one having ordinary skill in the art before the effective filing date to use a low cis polybutadiene rubber in the Miyazaki rubber composition in order to achieve improved filler dispersibility and improved balance between rolling resistance and durability, as taught by Kondo.
Miyazaki also discloses a rubber composition comprising, per 100 parts by mass of a rubber component therein, 30-150 parts by mass of carbon black (see paragraph 0013), which overlaps the claimed range of 10-50 parts by mass. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
The rubber composition of Miyazaki also comprises, per 100 parts by mass of a rubber component therein, 20-75 parts by mass of an oil (see paragraph 0093), which overlaps the claimed range of 5-30 parts by mass. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Miyazaki does not disclose the complex modulus of the rubber composition measured at temperatures of -30° C and -10° C, or the tan δ measured at 0° C or 30° C; however, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Thus, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 2, Miyazaki does not disclose the complex modulus of the rubber composition measured at temperatures of -30° C and -10° C; however, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Thus, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 3, Miyazaki does not disclose the complex modulus of the rubber composition measured at temperatures of -30° C and -10° C; however, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Thus, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 4, Miyazaki does not disclose the tan δ measured at 0° C or 30° C, therefore a ratio cannot be determined; however, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Thus, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 5, Miyazaki does not disclose the tan δ measured at 0° C or 30° C, therefore a ratio cannot be determined; however, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Thus, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 11, Miyazaki also discloses that the tread rubber composition comprises, per 100 parts by mass of a rubber component therein, 30 to 150 parts by mass of silica (see paragraph 0013).
Regarding claim 12, Miyazaki also discloses that the tread rubber composition comprises a silane coupling agent (see paragraph 0122).
Regarding claim 13, Miyazaki also discloses an embodiment where the amount of silane coupling agent, per 100 parts by mass of the silica is 4.8, 4.4 or 6.4 (see Table 2), which is within the claimed range of 3 to 20 parts by mass.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0210881 (Miyazaki) in view of US 2014/0275331 (Kondo) further in view of US 2015/0218298 (Sato et al.).
Miyazaki and Kondo disclose a tire as discussed above.
Regarding claim 14, Miyazaki does not state the specific type of silane coupling agent used. In the analogous field of tire tread rubber compositions containing silica, Sato teaches that silane coupling agents with a mercaptosilane can improve dispersibility of silica in diene rubbers (see paragraphs 0005 and 0006). It would have been obvious to one having ordinary skill in the art before the effective filing date to use a mercapto silane coupling agent as the silane coupling agent of Miyazaki in order to improve dispersibility of silica as taught by Sato.
Regarding claim 15, the mercapto silane coupling agent of Sato also contains linking units A and B of formulas (I) and (II) as claimed (see paragraphs 0011-0015).
Regarding claim 16, Miyazaki also discloses that the tread rubber composition comprises, per 100 parts by mass of a rubber component therein, 1 to 70 parts by mass of a resin (see paragraph 0090), which overlaps the claimed range of 1 to 30 parts by mass. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claims 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0210881 (Miyazaki) in view of US 2014/0275331 (Kondo) further in view of US 2015/0218298 (Sato et al.) further in view of US 2019/0061425 (Broemmel et al.).
Miyazaki in view of Kondo and Sato disclose a tire as discussed above.
Regarding claim 17, Miyazaki also discloses that the tread rubber composition may include a wax (see paragraph 0122). Miyazaki does not state the amount the wax is present; however, Broemmel in the analogous field of tire tread rubber compositions teaches that wax is conventionally present in amounts from 1 to 5 parts by mass of a rubber component therein (see paragraphs 0040 and 0071), which is within the claimed range of 0.3 to 20 parts by mass. It would have been obvious to one having ordinary skill in the art before the effective filing to use wax in a conventional amount for the Miyazaki rubber composition.
Regarding claim 18, Miyazaki also discloses embodiments where the tread rubber composition comprises, per 100 parts by mass of a rubber component therein, 2 parts by mass of antioxidant 1 and 1 part by mass of antioxidant 2 (see Tables 1 and 2), total antioxidant of 3 parts by mass which is within the claimed range of 0.5 to 10 parts by mass.
Regarding claim 19, Miyazaki also discloses embodiments where the tread rubber composition comprises, per 100 parts by mass of a rubber component therein, 3 parts by mass of stearic acid (see Tables 1 and 2), which is within the claimed range of 0.5 to 10 parts by mass.
Regarding claim 20, Miyazaki also discloses that the tread rubber composition comprises, per 100 parts by mass of a rubber component therein, 0.5 to 10 parts by mass of a zinc oxide (see paragraph 0124), as recited in the claim.
Regarding claim 21, Miyazaki also discloses that the tread rubber composition comprises, per 100 parts by mass of a rubber component therein, 0.1 to 10 parts by mass of a sulfur (see paragraph 0057), as recited in the claim.
Regarding claim 22, Miyazaki also discloses that the tread rubber composition comprises, per 100 parts by mass of a rubber component therein, 1 to 10 parts by mass of a vulcanization accelerator (see paragraph 0127), as recited in the claim.
Response to Arguments
Applicant's arguments filed April 28, 2026 have been fully considered but they are not persuasive. Applicant argues that Comparative examples presented in Table 1 of the instant specification are within the range recited by Miyazaki and are shown to have complex modulus and tan δ relationships that are outside the claimed range. This argument is not convincing since Miyazaki discloses the claimed composition limitations, including that the styrene content is present within the range of 19-60% by mass or higher (see paragraph 0032), which overlaps the claimed range of 35% by mass or higher. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Embodiments that are outside of the specific examples disclosed by Miyazaki are possible. Further, the claims as currently written do not require that there is no SBR 2, SBR 3 or SBR 4 present. Additionally, Miyazaki makes no requirement that an SBR2 is present, only stating that at least one SBR having a styrene content within a preferable range of 35% by mass or more and 60% by mass or less is present (see paragraphs 0029 and 0032). Applicant has not provided evidence showing unexpected results excluding the composition disclosed by Miyazaki.
Applicant also argues that Kondo is premised on the rubber component containing 50 mass% or more of NR, and provides no motivation to employ a rubber composition in which the NR content is less than 50 mass%, therefore one would not use it in the Miyazaki composition. This argument is not convincing since paragraph 0019 of Kondo only states that it is preferably not less than 50% by mass, not strictly required. Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Additionally, Miyazaki discloses that NR may be included in an amount of 15% by mass or more with no upper limit (see paragraph 0037). One having ordinary skill in the art would have been motivated to us low-cis BR to achieve the improved dispersibility of silica and balance between rolling resistance and durability taught by Kondo at paragraph 0031, in the silica containing composition of Miyazaki regardless of the NR content.
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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/WENDY L BOSS/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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