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 .
This action is in response to applicant’s amendments and arguments filed 12/05/2025. Claims 1, 3-4, and 7-9 are currently pending for examination on the merits.
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.
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.
Claims 1, 3, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Miki (JP 2014009265 with English Machine Translation) (of record) in view of Sakamoto (JP 2007161817 with English Machine Translation) and Kato (US 2019/0031864) (of record).
Regarding claim 1, Miki discloses a tire (title), comprising a tread comprising a rubber composition (title; abstract), the rubber composition including a rubber component comprising styrene-butadiene rubber (SBR) ([0019]-[0020]). Furthermore, in each of the inventive examples of the rubber composition, Miki nowhere discloses that the rubber composition includes coumarone-indene resin, terpene resin, or rosin ester resin (see Table 1; [0080]-[0081]), suggesting the limitation that the rubber composition does not include coumarone-indene resin, terpene resin, or rosin ester resin. Miki further discloses that the rubber composition comprises at least one solid resin (SYLVARES SA85), wherein the rubber composition comprises, per 100 parts by mass of at least one rubber component therein, 15 parts by mass of the at least one solid resin (see Examples 1-6 in Table 1; see also [0064]), suggesting the claimed range of 5 to 15 parts by mass. Miki further teaches that the rubber composition comprises at least one plasticizer (liquid diene polymer) ([0055]-[0058]), wherein the rubber composition comprises, per 100 parts by mass of at least one rubber component therein, 20 to 120 parts by mass of the at least one plasticizer (liquid diene polymer) ([0058]), overlapping the claimed range of 2 to 20 parts by mass. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for Miki to have satisfied the claimed range based on the overlapping range disclosed by Miki.
Regarding the claimed relationships 1) to 3), examiner notes that the instant specification clearly states that each of the relationships 1) to 3) can be achieved by having a plasticizer with an iodine value of 100 to 150 g/100 g (see [0023]; [0026]; and [0028] of the instant specification), which is also claimed in claim 1. Specifically, the instant specification describes the use of a 50 mol% hydrogenated product of RICON 100 as an acceptable plasticizer since it has an iodine value of 143 g/100 g (see [0110] of the instant specification). Furthermore, Miki discloses that the plasticizer can be RICON 100 ([0080]; see also [0056]). While Miki does not disclose that the plasticizer is a 50 mol% hydrogenated product of RICON 100, it is known in the art to use a 50 mol% hydrogenated product of RICON 100 as an alternative to RICON 100 for use as a plasticizer. For instance, Sakamoto teaches a similar tire rubber composition (title), wherein the rubber composition comprises a liquid SBR as a plasticizer ([0019]-[0020]). Specifically, Sakamoto teaches that a 50 mol% hydrogenated product of RICON 100 (mistranslated as Lycon 100 in the machine translation) can be used as an alternative to non-hydrogenated RICON 100 as the liquid SBR ([0033]). Sakamoto further teaches that using a hydrogenated product of the liquid SBR helps to improve tire wear resistance while maintaining grip performance ([0025]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the RICON 100 plasticizer disclosed by Miki with the hydrogenated product of RICON 100 taught by Sakamoto because they would have had a reasonable expectation that doing so would improve the wear resistance of the tire while maintaining grip performance. If the composition and structure of the prior art are substantially identical to that of the claims, claimed properties are presumed to be inherent (see MPEP 2112.01). Therefore, since modified Miki includes a plasticizer (50 mol% hydrogenated product of RICON 100) that has an iodine value of 143 g/100 g which falls within the claimed range 100 to 150 g/100 g, it is considered inherent that the rubber composition would satisfy the claimed relationships 1) to 3).
Modified Miki further discloses that the amount of the styrene-butadiene rubber based on 100% by mass of the rubber components in the rubber composition is 60 to 100% by mass (Miki: [0010]; [0022]), overlapping the claimed range of 90% by mass or more. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Miki to have satisfied the claimed range based on the overlapping range disclosed by modified Miki. Modified Miki further discloses that the styrene-butadiene rubber (SBR) can be various types of styrene-butadiene rubber (Miki: [0020]). However, modified Miki fails to explicitly disclose that the styrene-butadiene rubber is hydrogenated styrene-butadiene rubber.
However, hydrogenated styrene-butadiene rubber is a known alternative to nonhydrogenated styrene-butadiene rubber. For instance, Kato teaches a similar tire (title) comprising a tread including a rubber composition ([0008]), wherein the rubber composition includes a rubber component comprising styrene-butadiene rubber (SBR) ([0009]). Kato specifically teaches that this SBR can be non-hydrogenated SBR or hydrogenated SBR ([0021]). Kato further teaches that including SBR in the rubber composition ensures good initial grip performance and abrasion resistance ([0016]; [0008]). Kato also teaches that hydrogenated SBR can improve the abrasion resistance of the tire ([0025]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have at least tried configuring the SBR rubber component disclosed by modified Miki as hydrogenated SBR, as suggested by Kato, because they would have had a reasonable expectation that doing so could help ensure initial grip performance and abrasion resistance of the tire. Thus, modified Miki satisfies all of the limitations in claim 1.
Regarding claim 3, modified Miki discloses all of the limitations as set forth above for claim 1. As set forth above, modified Miki discloses that the plasticizer includes RICON 100 (Sakamoto: [0033]; Miki: [0080]), which is a liquid aromatic vinyl polymer resin (Miki: [0060]-[0061]), suggesting all of the limitations in claim 3.
Regarding claim 7, modified Miki discloses all of the limitations as set forth above for claim 1. Modified Miki further discloses that the rubber composition comprises at least one carbon black (Miki: [0006]), and the rubber composition comprises, per 100 parts by mass of at least one rubber component therein, 10 to 50 parts by mass of the at least one carbon black (Miki: [0011]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Miki (JP 2014009265 with English Machine Translation) (of record) in view of Sakamoto (JP 2007161817 with English Machine Translation) and Kato (US 2019/0031864) (of record) as applied to claim 1 above, and further in view of Yamashiro et al. (US 2017/0226233) (Yamashiro) (of record).
Regarding claim 4, modified Miki discloses all of the limitations as set forth above for claim 1. Modified Miki fails to explicitly disclose, however, the degree of hydrogenation of the hydrogenated styrene-butadiene rubber (SBR).
Yamashiro teaches a similar tire rubber composition (title; abstract), wherein the rubber composition includes a rubber component comprising hydrogenated styrene-butadiene rubber ([0006]-[0009]), wherein the degree of hydrogenation based on the toral conjugated diene units before hydrogenation is 75 mol% or more ([0006]; [0017]; [0024]), overlapping the claimed range of 65 mol% or higher and 95 mol% or lower. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Yamashiro further teaches that configuring the hydrogenation rate in this way leads to improved rubber tensile strength and abrasion resistance ([0018]; [0024]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the hydrogenated styrene-butadiene rubber disclosed by modified Miki to have the claimed degree of hydrogenation, as suggested by Yamashiro, because they would have had a reasonable expectation that doing so would improve the rubber tensile strength and abrasion resistance.
Claim 8 are rejected under 35 U.S.C. 103 as being unpatentable over Miki (JP 2014009265 with English Machine Translation) (of record) in view of Sakamoto (JP 2007161817 with English Machine Translation) and Kato (US 2019/0031864) (of record) as applied to claim 7 above, and further in view of Yamada (JP 2010023770 with English Machine Translation) (of record).
Regarding claim 8, modified Miki discloses all of the limitations as set forth above for claim 7. Modified Miki fails to disclose, however, that the carbon black comprises a high structure carbon black having a dibutyl phthalate oil absorption of 250 ml/100 g or more and a nitrogen adsorption specific surface area of 350 m2 /g or more.
Yamada teaches a similar tire (title) comprising a tread (3) comprising a rubber composition (see Fig. 1; abstract; [0032]-[0033]). Yamada further teaches that the rubber composition comprises a carbon black which comprises a high structure carbon black (Ketjen black) having a dibutyl phthalate oil absorption of 300 to 500 ml/100 g and a nitrogen adsorption specific surface area of 700 to 1300 m2 /g ([0033]), suggesting the claimed ranges of 205 ml/100 g or more and 350 m2 /g or more. Yamada further teaches that this high structure carbon black (Ketjen black) improves the thermal conductivity of the rubber ([0033]), which can improve the tire durability ([0007]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the carbon black disclosed by modified Miki to have the high structure carbon black taught by Yamada because they would have had a reasonable expectation that doing so would improve the thermal conductivity of the rubber and improve the tire durability.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Miki (JP 2014009265 with English Machine Translation) (of record) in view of Sakamoto (JP 2007161817 with English Machine Translation) and Kato (US 2019/0031864) (of record) as applied to claim 1 above, and further in view of Tomomatsu (US 2022/0063341) (of record).
Regarding claim 9, modified Miki discloses all of the limitations as set forth above for claim 1. Modified Miki fails to explicitly disclose, however, that that the tire comprises a carcass, a belt disposed radially outward of the carcass, and a belt-reinforcing layer disposed radially outward of the belt; the tread is disposed radially outward of the belt-reinforcing layer; the tread has a multi-layer structure including a base tread and a cap tread that comprises the rubber composition; and the cap tread has two or more circumferential grooves and a plurality of land portions defined by the circumferential grooves. Modified Miki also fails to explicitly disclose that the tire satisfies the claimed relationships 4) and 5).
However, the claimed tire structure in claim 9 is known in the art. For instance, Tomomatsu teaches a tire (title) comprising a carcass (13), a belt (141, 142) disposed radially outward of the carcass (13), and a belt-reinforcing layer (143) disposed radially outward of the belt (141, 142) (see Figs. 1 and 3; [0020]-[0024]); the tread (15) is disposed radially outward of the belt (141, 142) (see Figs. 1 and 3); the tread (15) has a multi-layer structure including a base tread (152) and a cap tread (151) (see Figs. 1 and 3; [0027]); the cap tread (151) has two or more circumferential grooves (21, 22, 23, 24) and a plurality of land portions (31, 32, 33, 34, 35) defined by the circumferential grooves (21, 22, 23, 24) (see Figs. 1 and 2; [0032]). Tomomatsu further teaches that a thickness t0 (Ga_ce) from the belt-reinforcing layer (143) to an outer surface of the center land portion (33) and a thickness t1 (Ga_ce – UT_ce) of a rubber layer that forms the cap tread (151) have the relationship: 0.20≤(t0-t1)/t0 (0.20≤UT_ce – Ga_ce) ([0061]; see Fig. 3), encompassing the claimed relationship of 0.30≤(t0-t1)/t0≤0.40. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Tomomatsu further teaches that a thickness (UT_g) and a thickness (Ga_g) have the relationship: 0.08≤UT_g/Ga_g≤0.60 ([0074]; see Fig. 5). Thus, Tomomatsu necessarily teaches that a thickness t2 (Ga_g) from the belt-reinforcing layer (143) to an outer surface of a bottom portion that is a deepest part of the circumferential grooves (21, 22, 23, 24) and a thickness t3 (Ga_g – UT_g) of a rubber layer that forms the cap tread (151) have the relationship: 0.40≤t3/t2≤0.92 (1 – 0.60≤1 – (UT_g/Ga_g)≤1 – 0.08), overlapping the claimed relationship of 0.50≤t3/t2≤1.00. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Tomomatsu further teaches that this tire and tread design help to improve tire rolling resistance and improve the durability of the tire ([0007]; [0059]; [0087]; [0089]; [0108]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used the rubber composition disclosed by modified Miki for the cap tread taught by Tomomatsu because they would have had a reasonable expectation that doing so would improve tire rolling resistance and improve the durability of the tire.
Response to Arguments
Applicant’s arguments with respect to amended independent claim 1 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.
As such, claims 1, 3-4, and 7-9 stand rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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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/B.C.D./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749