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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 16 and 18-31 are rejected under 35 U.S.C. 103 as being unpatentable over Makiuchi (US Pub. No. 2012/0157585) in view of Yamana (JP2015-120804; machine translation relied upon), Nayrat (US Pub. No. 2017/0349728) and/or Darnaud (US Pub. No. 2015/0322241).
Regarding claims 16, 18, 21 and 31 Makiuchi teaches a rubber composition for a tire (such a tire inherently requiring outer sidewalls), where the composition can be for a sidewall (paragraph [0043]), the composition comprising an elastomer which can comprise polybutadienes, natural rubber, synthetic polyisoprenes, and mixtures of these elastomers (paragraph [0039]), including using a BR/NR or BR/IR mixture (paragraphs [0042] and [0046]), 0.2 to 10 phr of an acetylacetonate of an alkali or alkaline earth metal (paragraph [0088]), at least one reinforcing filler (paragraphs [0048]-[0052]), a crosslinking system (paragraph [0075]) and can comprise medium extracted solvate (MES) oils (taken to be the claimed plasticizing oil) in an amount one of ordinary skill in the art will know how to determine (paragraph [0095]). Makiuchi does not specifically disclose the ranges of isoprene elastomer, polybutadiene, and plasticizing oil. In a rubber composition similarly used in a sidewall rubber, Yamana teaches using a total amount of butadiene rubbers of still more preferably 50% to 70% by mass (such a range fully encompassed by the claimed range) and an amount of isoprene rubber of more preferably 30% to 50% by mass (such a range fully encompassed by the claimed range) (machine translation at page 4, second through fifth paragraphs) and from 1-30 parts by mass of process oil (overlapping the claimed range), more preferably 3-10 parts by mass (fully encompassed by the claimed range) (machine translation at page 5, last paragraph – page 6, first paragraph). It would have been obvious to one of ordinary skill in the art to use isoprene, polybutadiene and oil amounts as taught by Yamana in the tire of Makiuchi in order to have good processability, rubber strength, fuel economy, crack resistance, and/or handling stability (see Yamana machine translation at page 4, second through fifth paragraphs and page 5, last paragraph – page 6, first paragraph). Makiuchi (combined) does not specifically disclose the glass transition temperature of the plasticizing oil. Nayrat teaches a composition that can be used in a sidewall (paragraph [0119]) having a preferred plasticizing oil which is a low Tg oil which has a Tg of preferably less than -40° C (paragraph [0097]) which can be an MES oil (paragraph [0099]), and Darnaud teaches a composition that can be used in a sidewall (paragraph [0133]) having a preferred plasticizing oil which is a low Tg oil which has a Tg of preferably less than -40° C (paragraph [0108]) which can be an MES oil (paragraph [0110]). It would have been obvious to one of ordinary skill in the art to use an oil with a Tg of less than -40° C as taught by Nayrat and/or Darnaud in the tire sidewall composition of Makiuchi as a known preferable Tg of an oil for use in a sidewall composition.
Regarding claim 19, Makiuchi teaches specific embodiments where the elastomer is 100 phr natural rubber (table 1, embodiments C-2 – C-4), as well as teaching that the rubber composition comprises a blend of a high Tg and a low Tg elastomer, where the high Tg elastomer is natural rubber and or synthetic polyisoprene and the low Tg rubber is polybutadiene (paragraph [0046]), these teachings together suggesting using 100 phr of total content of isoprene elastomer and polybutadiene. Accordingly, it would have been obvious to one of ordinary skill in the art to use 100 phr of total content of isoprene elastomer and polybutadiene because Makiuchi teaches using 100 phr of natural rubber, as well as teaching using a combination of isoprene elastomer and polybutadiene (see Makiuchi at table 1, embodiments C-2 – C-4 and paragraph [0046]).
Regarding claim 20, Makiuchi teaches a specific embodiment having a low Tg diene elastomer having a Tg of between -110 and -80 degrees C, where the low Tg diene elastomer is preferably polybutadiene (paragraph [0046]).
Regarding claims 22-23, Makiuchi teaches that the alkali or alkaline earth metal in the acetylacetonate is preferably lithium, sodium, potassium, magnesium, calcium, and mixtures thereof, with a particularly preferable embodiment using magnesium acetylacetonate (paragraph [0091]).
Regarding claim 24, Makiuchi teaches a particularly preferable range of between 0.5 and 4 phr (paragraph [0089]), such a range being taken to teach the claimed range of this claim with sufficient specificity as to anticipate the claim.
Regarding claim 25, Makiuchi teaches that the filler is preferably carbon black, silica, or a mixture of silica and carbon black (paragraph [0052]).
Regarding claim 26, Makiuchi teaches that the filler is preferably carbon black, silica, or a mixture of silica and carbon black, the configuration where the filler is carbon black without silica reading on the claimed predominately comprising carbon black (paragraph [0052]).
Regarding claim 27, Makiuchi teaches numerous specific carbon blacks within applicant’s broad claimed range of BET specific surface area of between 30 and 100 m2/g, including N326, N330, N339, N347, N375, N550, N683, and N772 (paragraph [0054]).
Regarding claim 28, Makiuchi teaches a particularly preferable range of reinforcing filler of 40 to 80 phr (paragraph [0052]), overlapping the claimed range. Accordingly, it would have been obvious to one of ordinary skill in the art to use an amount of reinforcing filler within the claimed range because Makiuchi teaches an overlapping range (see Makiuchi at paragraph [0052]).
Regarding claim 29, Makiuchi teaches that the crosslinking system is based on sulfur or a sulfur-donating agent (paragraph [0075]).
Regarding claim 30, Makiuchi teaches a preferable range of sulfur of 0.5 to 12 phr (paragraph [0076]), overlapping the claimed range. Accordingly, it would have been obvious to one of ordinary skill in the art to use an amount of sulfur within the claimed range because Makiuchi teaches an overlapping range (see Makiuchi at paragraph [0076]).
Response to Arguments
Applicant’s amendments and arguments with respect to the rejection(s) of claim(s) 16 and 18-30 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nayrat and/or Darnaud as is set out above.
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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/P.N.S/ Examiner, Art Unit 1749 February 13, 2026
/JUSTIN R FISCHER/ Primary Examiner, Art Unit 1749