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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 18-31 and 34-39 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. . The specification provides support for 0 phr titanium dioxide at p. 35, [0079]-[0080]. Independent claims 18 and 29 have been amended to recite 0 phr titanium oxide. Titanium oxide refers to a compound of the formula TiO. In some cases, “titanium oxide” is used to describe a genus comprising species such as titanium monoxide, titanium dioxide, dititanium trioxide, trititanium oxide, dititanium oxide, etc. (see, e.g., Galizio at p. 6, [0052]). The instant specification does not provide support for either the specific compound (TiO) or the genus of compounds sometimes associated with titanium oxide. The disclosure is limited to titanium dioxide and therefore lacks adequate support for exclusion of titanium oxide. Claims 19-28 and claims 30, 31, and 34-39 are dependent upon claims 18 and 29, respectively, and are similarly drawn to new matter.
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 18-20, 22, 24-26, and 28-39 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashiro (EP 3263360 A1, attached) in view of Khripin (WO 2018/125654 A1, cited in a prior Office action).
Regarding claims 18-20, 22, 24-26, and 28-39, Yamashiro teaches a tire composition having a rubber component of two rubbers, including 20-90% by mass of one and 10-80% by mass of another, and filler, including 10-200 phr of silica (p. 2, [[0005] and [0009]). Yamashiro does not require any titanium oxide (0 phr titanium oxide) or liquid plasticizer (0 phr liquid plasticizer). Yamashiro does permit plasticizer, however--specifically, the reference teaches use of 25 phr process oil in the composition (pp. 7-8, Table 1). Yamashiro's rubber component may contain SBR, and BR with at least 90% cis-bond content (p. 2, [0006]; p. 3, [0032]). Yamashiro teaches content of elastomer A, which may be SBR, is 20-90% by mass (p. 3, [0025] and [0017]), combined with elastomer B, which may be BR, in amounts ranging from 10-80% by mass (p. 4, [0037] and [0030]), which leaves content of elastomer C at 0-70% by mass, and C may be natural rubber and/or isoprene rubber (pp. 4-5, [0039]). 3-200 phr carbon black may also be added (p. 5, [0049]). No other hydrocarbon resin is required (0 phr). Yamashiro teaches use of silica filler having a BET surface area ranging from 20 m2/g to about 400 m2/g (p. 8, [0059]). Yamashiro further teaches inclusion of a coupling agent in the silica, including mercapto silanes (p. 5, [0045]).
Yamashiro is silent as to use of a terpene phenol resin in the composition. In the same field of endeavor, Khripin teaches inclusion of 0 phr to 150 phr of suitable terpene phenol resins such as Sylvares TP2040, which has a glass transition temperature of 80℃ and a hydroxyl number of 135-150 (p. 16, [0063]-[0064]). These prior art ranges overlap the claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05. 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 Khripin with the teachings of Yamashiro to arrive at the claimed invention, and to adjust the processability and final cured properties of the composition (p. 16, [0061]).
Regarding claims 30-31, Yamashiro as modified remains as applied to claim 29 above. Yamashiro as modified teaches a composition having the same ingredients in the same amounts, which will necessarily possess the same stiffness, wet performance, tan δ, and rolling resistance characteristics as the claimed composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashiro in view of Khripin as applied to claim 18 above, and further in view of Khripin ‘016 (US 2016/0312016).
Regarding claim 21, Yamashiro as modified remains as applied to claim 18 above. Modification in view of Khripin results in inclusion of 30-150 phr of suitable terpene phenol resins such as Sylvares TP2040, which has a glass transition temperature of 80℃ and a hydroxyl number of 135-150 (p. 16, [0063]-[0064]). Yamashiro suggests the use of other compounding agents and additives generally used in the tire industry, but does not teach a terpene phenol resin having a hydroxyl value of 50 or less as claimed.
Khripin ‘016 teaches rubber compositions used for making tires (p. 1, [0003]). In addition to an elastomer, the composition includes a plasticizing resin (p. 6, [0067]). Suitable plasticizing resins include terpene phenolic resins (p. 7, [0071]) such as Sylvares TP105 with a hydroxyl number of 40 (p. 7, [0073]). Including the plasticizing resin in amounts of 67 phr leads to an increase in Tg as well as improved wet traction (Abstract; p. 1, [0013]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Yamashiro in view of Khripin as applied to claim 18 above, and further in view of Khripin ‘016 to include 67 phr of a plasticizer such as Sylvares TP105 to take advantage of the increase in Tg and improved wet traction. Combining 67 phr of Sylvares TP105 with 30-150 phr of Khripin’s terpene phenol resin results in inclusion of a terpene phenol resin having a hydroxyl value of less than 50 in an amount of approximately 44.67 wt% or greater based on the weight of a terpene phenol resin having a hydroxyl value of 80 or greater. This overlaps the claimed range of up to 80 wt%.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashiro in view of Khripin as applied to claim 18 above, and further in view of Shimizu (EP 3888939 A1, attached).
Regarding claim 23, Yamashiro as modified remains as applied to claim 18 above. Yamashiro is silent as to the glass transition temperature of the BR. In the same field of endeavor, Shimizu teaches use of butadiene rubber having a Tg of -85*C or lower as being suitable for use in tire tread compositions (p. 4, [0019]). This prior art range encompasses the claimed range. A prima facie case of obviousness exists where the prior art range encompasses the claimed range. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the butadiene rubber of Shimizu for use in the composition of Yamashiro, as modified by Khripin, to arrive at the claimed invention and because of its art-recognized suitability for the intended purpose. See MPEP 2144.07.
Claims 25, 27, 36, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashiro in view of Khripin as applied to claims 18 and 29 above, and further in view of Lopitaux (US 2013/0203890 A1; cited in a prior Office action).
Regarding claims 25, 27, 36, and 39, Yamashiro in view of Khripin and Pan remains as applied to claim 20 above. Yamashiro 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, Yamashiro 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 Yamashiro with the teachings of Khripin 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).
Response to Arguments
Applicant’s arguments, see page 5, filed 07 November 2025, with respect to the rejections of claims 18-31 and 34-39 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 over Yamashiro in view of Khripin. The new rejection does not require any titanium oxide.
Regarding Applicant’s argument as to the rejection of claim 31, Examiner thanks Applicant for noting the typographical error in the rejection. It is fixed above. The previous Office action rejected claim 31 on the basis of inherency; this rejection is maintained 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.
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