DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 21, 2025 has been entered.
Claim 1 is amended and claims 1-8 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitsuharu et al. (JP 2015189797). The citations below are taken from an English language equivalent included herewith.
Regarding claims 1-3 and 8, Mitsuharu et al. teaches a rubber composition comprising 50 parts by weight of polybutadiene, 50 parts by weight of natural rubber, 35 parts by weight of silica, and 5 parts by weight of basic magnesium sulfate inorganic fibers (Page 8, lines 41-51). The fibers have an average fiber length of 15µm and an average fiber diameter of 0.5µm (Page 7, lines 44-45), which provides an aspect ratio of 30 (calculated by Examiner; Length/Diameter). Mitsuharu et al. additionally teaches that the rubber composition may contain a silane coupling agent (Page 7, lines 4-10). The rubber composition is used for tire components such as for tire treads (includes a cap tread) (Page 7, lines 33-34).
Regarding claim 4, the basic magnesium sulfate inorganic fibers are MOS-HIGE fibers available from Ube Materials, Inc., (Page 1, lines 52-53), which according to the instant specification in the comments of Table 1, have a solubility in water at 0° C of 0.03 g/L.
Regarding claim 5, Mitsuharu et al. teaches that the polybutadiene may modified with disulfur dichloride, monosulfur monochloride, or other sulfur compounds, which would provide a functional group on the terminal of the polymer (Page 2, lines 15-16).
Regarding claim 6, the only components present in the invention of Mitsuharu et al. that contribute to the glass transition temperature of the composition are the natural rubber and the polybutadiene rubber. It is well known that natural rubber and polybutadiene rubber have glass transition temperatures below -60° C, especially for high cis polybutadienes, which is used in Mitsuharu et al. (Page 2, lines 38-39). Additionally, the examples of the instant specification use 55 phr of natural rubber and 45 phr of polybutadiene and have a Tg of -67° C (Table 1). The example of Mitsuharu et al. uses 50 phr of natural rubber and 50 phr of polybutadiene, which increases the proportion of the rubber component with the lower Tg. Therefore, the rubber composition of Mitsuharu et al. meets this limitation.
Regarding claim 7, this claim is a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the rubber composition is the same as a product of the prior art and there is no evidence on the record that the claimed process leads to a different composition. Therefore, the process of this claim carries little patentable weight.
Response to Arguments
Applicant’s arguments with respect to claims 1-8 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/ANGELA C SCOTT/Primary Examiner, Art Unit 1767