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 Galizio (US 2016/0177070) in view of McDowell (US 2018/0002498 A1). All references have been cited in a prior Office action.
Regarding claims 18, 21-24, 28, 29, 35, and 38-39, Galizio teaches rubber composition comprising at least one rubber, as well as tires comprising the composition (Abstract). The rubber component may comprise up to 100 phr of polybutadiene rubber (p. 3, [0031]) having a cis 1,4 bond content of 95% or greater (p. 4, [0034]). The composition may further comprise 5-100 phr of carbon black (p. 7, [0057]) and 35-150 phr of silica (p. 8, [0060]). These ranges overlap the claimed ranges. Galizio also teaches the use of vulcanizing agents and other components used in curing (i.e. a cure package (p. 10, [0066]). Other ingredients including resins may be included (p. 10, [0072]). Galizio further teaches use of as little as 5 phr of carbon black (p. 7, [0056]). Galizio also teaches use of silica coupling agents of the mercapto, blocked mercapto, and sulfide types (p. 10, [0071]). Galizio does not require any additional reinforcing filler, additional terpene phenol resin having a hydroxyl value of 50 or less, or additional hydrocarbon resin.
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 Galizio, as modified, 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 19-20, Galizio as modified remains as applied to claim 18 above. Galizio further teaches use of silica filler having a BET surface area ranging from about 32 m2/g to about 400 m2/g (p. 8, [0059]).
Regarding claims 23, 25, and 36, Galizio as modified remains as applied to claims 18 and 29 above. Galizio further teaches use of about 5 to about 100 phr of functionalized elastomer, which may be SBR (p. 5, [0039]-[0040]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use functionalized SBR in the composition, as recognized in the art by Galizio.
Regarding claims 26 and 37, Galizio as modified remains as applied to claims 18 and 29 above. Galizio further teaches use of 3 to 50 phr of processing oils, which read on the claimed liquid plasticizer (p. 10, [0073]).
Regarding claims 30-31, Galizio as modified remains as applied to claims 18 and 29 above. . Galizio further teaches compositions having tan δ of 1.00-1.05 at 0℃ (p. 14, Table 2B). This range satisfies the claimed range of at least 0.45. As discussed above in reference to claim 20, Galizio in view of McDowell teaches a composition having the same ingredients in the same amounts, which will necessarily possess the same stiffness characteristics as the claimed composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01.
Claims 27 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Galizio 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 27 and 34, Galizio as modified remains as applied to claims 18 and 29 above. Galizio further teaches that SBR is recognized in the art as suitable for use as a functionalized rubber in the composition (p. 5, [0039]-[0040]). However, Galizio 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 Galizio 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.
Applicant continues to argue that the instant application demonstrates unexpected results. As previously stated in a prior Office action: whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Additionally, applicants have the burden of explaining the data proffered as evidence of non-obviousness. See MPEP 716.02(b). The examples in the specification are not reasonably commensurate in scope with the claims.
In the most recent Remarks, Applicant has attempted to provide an explanation regarding how the exemplified results could reasonably be extended to the full scope of the claims. However, Applicant’s arguments pertain solely to parts of the claimed ranges (i.e. 95-120 phr silica as opposed to the claim limitation “91 to 140 phr of reinforcing silica filler”) (Remarks, p. 7). The overlapping ranges discussed in the rejection above are sufficient to maintain a prima facie case of obviousness. Further, the declaration provides no actual values for either wet performance or stiffness of the embodiments, only a statement of whether or not the embodiment falls within one of two infinite ranges—the significance of the experimental data cannot be evaluated without these values. The examples are therefore insufficient to establish non-obviousness of the claims.
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.
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.
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, 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.
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.
ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights