DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 29, 2025 has been entered.
Claim 1 is amended and claims 1-6 are pending.
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 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the last limitation of claim 1 recites that the carbon black is preferably 20 to 60 parts by mass per 100 parts by mass of the rubber component. The use of the word “preferably” makes the claim unclear. It is not clear if the range of 20 to 60 parts by mass is a required limitation of the claim or if it is simply a preferable range for the carbon black. For the purpose of further examination, the range of 20 to 60 parts by mass of the carbon black will be considered a required claim limitation. However, correction is required.
Regarding claims 2-6, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
Claim Rejections - 35 USC § 103
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Schweitzer et al. (US 2018/0134086) in view of Aoki et al. (WO 2019/117266). The citations below from Aoki et al. are taken from an English language machine translation included previously.
Regarding claims 1, 2, 4, and 6, Schweitzer et al. teaches a pneumatic tire comprising a carcass and a tread located radially outward of the carcass and extending between the tire sidewalls; the tread providing a radially outermost tread running surface; the tread comprising a first tread layer comprising a first rubber compound and a second tread layer comprising a second rubber compound; wherein the second tread layer is located radially adjacent to the first tread layer; wherein the first rubber compound is compositionally distinct from the second rubber compound; wherein the second tread layer comprises one or more integrally formed extensions of the second tread layer extending radially outwardly toward the tread running surface. The second rubber composition comprises 80 phr of natural rubber, 20 phr of a polybutadiene rubber (20% of the rubber component), 50 phr of carbon black, and 30 phr of silica (Table 5). The silica used in the examples is Solvay Premium SW silica, which is the same silica used in the examples of the instant application. According to Page 26, lines 20-25 of the instant specification, this silica has a CTAB adsorption specific surface area of 250 m2/g, a diameter in the form of aggregates of 82 nm, a primary particle diameter of 10.91 nm, and a value for equation (1) of 424.7. Schweitzer et al. teaches more broadly that the silica is used in 10 to 100 phr (¶78) and the carbon black is used in 10 to 100 phr (¶84). Amounts of silica and carbon black can be chosen from these ranges which result in the carbon black being 80% or more of the total filler. For example, 40 phr of carbon black and 10 phr of silica result in a mass ratio of carbon black of 80% (calculated by Examiner).
Schweitzer et al. does not teach that the polybutadiene rubber is modified by a compound of claim 1. However, Aoki et al. teaches a rubber composition for a tire (Page 1, line 10) comprising a modified conjugated diene polymer, a butadiene polymer (Page 5, lines 29-35), that is modified by tetrakis(3-trimethoxysilylpropyl)-1,3-propanediamine (which is a specific compound listed in instant claim 2) (Page5, lines 18-19). Schweitzer et al. and Aoki et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely diene-based rubber compositions for tire treads. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use tetrakis(3-trimethoxysilylpropyl)-1,3-propanediamine, as taught by Aoki et al., to modify the polybutadiene rubber in the composition, as taught by Schweitzer et al., and would have been motivated to do so in order to improve the low loss property of the tire (Page 2, lines 51-53).
Regarding claims 3 and 5, Schweitzer et al. teaches that the total amount of filler used in the second rubber composition is 50 to 120 phr (¶9).
Response to Arguments
Applicant's arguments filed April 28, 2025 have been fully considered but they are not persuasive.
Applicant argues that none of the prior art of record teach that the rubber composition contains carbon black in an amount of 20 to 60 parts by mass and that the mass of carbon black is 80% or more relative to the total of carbon black and silica. Applicant argues that the examples of Schweitzer et al. do not teach these limitations and that Schweitzer et al. merely discloses broad ranges for the content of each component, which do not lead one of ordinary skill in the art to the limitations of claim 1. This argument is unpersuasive. The Office agrees that the example in Table 5 of Schweitzer et al. does not teach the claimed mass ratio of 80% or more. However, the broader disclosure for the content of each component does lead to these limitations. Schweitzer et al. states that carbon black and silica may each be present in from 10 to 100 parts by mass (¶78, 84). Therefore, there are amounts within those ranges which will produce a mass ratio of 80% or more of carbon black with respect to the total mass content of the carbon black and silica. The rejection of record illustrates this point with an example (40 phr carbon black and 10 phr silica), but there are others. Specifically, amounts of silica of 10-15 parts by mass paired with 40 to 60 parts by mass of carbon black meet the claimed limitations and these amounts are taught as suitable for use by Schweitzer et al. Additionally, there is no evidence of record to show that this amount of carbon black or the claimed mass ratio of carbon black to silica produces an unexpected result or is critical to the invention. Therefore, Schweitzer et al. does render this limitation obvious and the argument is unpersuasive.
Applicant argues that one of ordinary skill in the art would not apply the teaching of the modification of the butadiene rubber of Aoki et al. to the butadiene rubber in the composition of Schweitzer et al. because the compositions are directed to different uses within the tire. Specifically, applicant states that Aoki is directed to providing a balanced rubber composition for use in a tire tread; and the second tread layer in Schweitzer et al. is designed to reinforce ribs and grooves. Applicant also argues that the ribs and grooves are not ground contacting. This argument is unpersuasive. The rubber compositions of Schweitzer et al. and Aoki et al. are both used in the tread of the tire. Simply because one composition is focused on the ribs and grooves of the tread, does not negate that both rubber compositions are situated for use in the tread of the tire. Additionally, both compositions are intended for contact with the ground. Please refer to Figure 1 of Schweitzer et al., numbers 16 and 12 (¶21-22) and Figure 4 of Schweitzer et al., numbers 412 and 416(¶27). These figures and explanations show the second rubber composition being used in portions of the tread which do in fact contact the ground. Therefore, these references are properly combined and applicant’s argument is unpersuasive.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767