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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 18-26, 28-31, and 35-39 are rejected under 35 U.S.C. 103 as being unpatentable over Sandstrom (US 20100160513) in view of McDowell (US 2018/0002498 A1). McDowell and further secondary references have been cited in a prior Office action. Goodyear (Goodyear, Budene 1207 Technical Data Sheet, attached) is cited as an evidentiary reference.
Regarding claims 18-23, 25-26, 28-31, and 35-39, Sandstrom teaches a rubber composition, suitable for tires, including at least one elastomer, about 30-120 phr silica reinforcing filler, and about 0-30 phr carbon black reinforcing filler, alongside about 3-10 phr rosin acid, and about 1-7 phr zinc oxide, which is a combination used as a processing aid (p. 1, [0008]; p. 3, [0026], [0028]). Sandstrom does not require further reinforcing filler or hydrocarbon resin. The elastomer may be polybutadiene and/or SBR, including an embodiment having 26 phr polybutadiene and 74 phr SBR, which may be functionalized (p. 1, [0014]; p. 5, Table 1; p. 2, [0014]). Sandstrom does not limit the cis-bond content of the polybutadiene, but does teach use of Budene 1207, which Goodyear clarifies has 97% cis-bond content and a Tg of -109℃ (p. 1). 1-20 phr processing oil, which reads on the claimed liquid plasticizer, may be further included (p. 3, [0031]). A cure package may be added in the form of a vulcanizing agent and an accelerator (p. 3, [0033]-[0034]). The silica may have a BET surface area in the range of about 40-600 m2/g (p. 2, [0018]). However, Sandstrom is silent as to use of a terpene phenol resin in the composition.
In the same field of endeavor, McDowell teaches use of a terpene phenol resin having a hydroxyl value of 141-160 in amounts ranging from 51-63 phr (p. 9, [0094]; p. 8, Table 2). These ranges read on the claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps or encompasses the claimed range. See MPEP 2144.05.
McDowell also notes that terpene-phenol resins are efficient plasticizers (p. 4, [0037]) that allow for adjustment of performance characteristics such as Tg (p. 4, [0040]-[0041]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Sandstrom, with the terpene phenol resin of McDowell to arrive at the claimed invention, and to provide a composition with optimal macro dispersion, as taught by McDowell (p. 1, [0007]).
Regarding claims 30-31, Sandstrom and McDowell are silent as to the physical properties of the composition. Nevertheless, Sandstrom in view of McDowell teaches a composition having the same ingredients in the same amounts, which will necessarily possess the same stiffness and wet performance characteristics as the claimed composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01.
Claims 24, 27, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Sandstrom in view of McDowell as applied to claim 18 above, and further in view of Lopitaux (US 2013/0203890 A1; cited in a prior Office action).
Regarding claims 24, 27, and 34, Sandstrom as modified remains as applied to claims 18 and 29 above. However, Sandstrom as modified is silent as to the glass transition temperature of the SBR used. In the same field of endeavor, Lopitaux teaches use of SBR having a content of cis-1,4- units of greater than 80% (p. 2, [0028]) and having a low glass transition temperature, which Lopitaux defines as exhibiting a glass transition temperature between -110℃ and -80℃ (p. 3, [0035]). The prior art range overlaps the instant claim’s range of the cis-bond content and glass transition temperature of the polybutadiene present.
Lopitaux also teaches use of a blend of SBR, BR, and NR with at least 50 phr of SBR (pp. 2-3, [0030] and [0032]), implying content of NR in amounts between 0 phr and 50 phr, because, according to Lopitaux, it is essential to have at least a diene elastomer to produce a tread with improved wet grip (p. 1, [0005]. This prior art range overlaps the claimed range of the amount of NR present. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Sandstrom with the teachings of McDowell and Lopitaux to arrive at the claimed invention and to produce a tread with improved wet grip, as taught by Lopitaux (p. 1, [0005). It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. MPEP 2144.05 (I).
Lopitaux further teaches use of butadiene-styrene copolymers having glass transition temperatures ranging from 0 to -70 ℃. This range reads on the claimed range. A prima facie case of obviousness exists where the prior art range overlaps or encompasses the claimed range. See MPEP 2144.05.
Response to Arguments
Applicant’s arguments with respect to the prior art cited in the previous Office Action have been considered but are moot in view of the new grounds of rejection presented above.
All of Applicant’s arguments are believed to have been addressed in full above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
