DETAILED ACTION
Applicant’s response of October 27, 2025 has been fully considered. Claims 1, 7, 11, 13, and 14 are amended, claims 21 and 22 are cancelled, and claims 42 and 43 are added. Claims 1-3, 7, 8, 11, 13-16, 19, 20, 25, 28-32, 34-37, 42, and 43 are pending with claims 8, 15, 19, 20, 25, 26, and 28-30 withdrawn from consideration.
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 .
Terminal Disclaimer
The terminal disclaimer filed on October 27, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,350,967 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
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, 11, 13, 14, 31, 32, 34-37, 42, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Block et al. (WO 2019/199835).
Regarding claim 1, Block et al. teaches a tire tread composition (¶8) comprising from 40 to 70 phr (parts by weight per hundred parts of total elastomer) of a high Tg elastomer as a blend with about 30 to about 50 phr, of a low Tg elastomer (¶6, 44), wherein the high Tg elastomer is styrene-butadiene copolymer and the low Tg elastomer is a polybutadiene exhibiting a cis-1,4 structure content of greater than 90% (¶43); a curative agent (¶81), an antioxidant (¶80), from 20 to 200 phr of total filler (carbon black and silica) (¶58); a silane coupling agent (¶64); and from 5 to 40 phr of an ethylene-propylene-diene terpolymer (¶26). Composition TT-11 in Table 5 teaches the inclusion of silica (ZEOSIL 1165MP) in 67 phr and carbon black in about 7phr (half of X 50S is carbon black so 5.25 phr contributed from this component; and the PEDM 2 Compound contains 8 phr of carbon black (Table 3) and when used in 20 phr, contributes about 1.4 phr of carbon black to the composition, for a total of about 7 phr).
Block et al. does not teach that the composition comprises about 5 to about 25 phr of polybutadiene rubber. However, the term “about” generally includes amounts slightly above and slightly below the range claimed/disclosed. In this case, Block et al. teaches that the composition contains about 30 phr of polybutadiene and the claims recite an amount of polybutadiene of about 25. Amounts slightly below 30 and slightly above 25 are very close. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). MPEP 2144.05. 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 polybutadiene in the composition in an amount of about 25, and would have been motivated to do so by a reasonable expectation of success in producing a composition with similar properties to the very same composition except containing about 30 phr of polybutadiene. Additionally, there is no evidence on the record to show that the claimed range of about 5 to about 25 phr of polybutadiene is critical to the invention.
Regarding claims 3 and 31, Block et al. teaches that the propylene-ethylene-diene terpolymer is functionalized with bis-[3-(triethoxysilyl)-propyl]-tetrasulfide (functionalized with sulfur) (claim 2).
Regarding claims 11, 13, and 14, Block et al. teaches an ethylene-propylene-diene terpolymer containing 87.04% propylene, 10.30% ethylene, and 2.66% of ethylidene norbornene (ENB) (Table 1, PEDM2).a
Regarding claim 32, Block et al. teaches that the silane coupling agent is bis(triethoxysilylpropyl)tetrasulfide (Table 3).
Regarding claims 34 and 35, Block et al. teaches that the composition contains 15 phr of a hydrocarbon resin (ESOREZ 5340) and 15 phr of natural rubber (SMR 20) (Table 5, Component TT-11).
Regarding claim 36, Block et al. teaches that the composition can contain from 5 to 80 phr of a glycerol triester (processing oil) (¶70).
Regarding claim 37, Block et al. does not teach that the composition has a Tg of from about 20° C to about -60° C. However, Block et al. teaches that the composition comprises 40 to 70 phr of one or more high Tg diene elastomers exhibiting a Tg of from -70° C to 0° C, such as styrene butadiene and natural rubber; and 30 to 50 phr of one or more low Tg elastomers exhibiting a Tg of from -110° C to -80° C, such as polybutadiene (¶43-44). Taking the amounts of these rubbers and their Tg ranges into consideration, as well as the overlap of this teaching with the instant claims, the claimed composition should have a Tg within the claimed range. Further, even if it did not, one of ordinary skill in the art would know how to optimize the amounts of the above rubbers to achieve the desired Tg of the overall composition.
Regarding claims 42 and 43, Block et al. does not teach that the elastomeric composition has a loss tangent at 0° C of about 0.539 to about 0.788, more preferably about 0.621 to about 0.788. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a loss tangent at 0° C of about 0.539 to about 0.788, more preferably about 0.621 to about 0.788, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Block et al. (WO 2019/199835) as applied to claim 1 above, and further in view of Takai (US 6,031,054).
Block et al. teaches the composition of claim 1 as set forth above. Block et al. does not teach that the ethylene-propylene-diene terpolymer (EPDM) is epoxidized. However, Takai teaches a rubber composition comprising a diene rubber, a vulcanizing agent and an epoxidized EPDM as well as a filler (Col. 10, lines 40-43; Col. 11, lines 19-28). Block et al. and Takai are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of rubber compositions for moldings comprising EPDM. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to functionalize the EPDM terpolymer, as taught by Block et al., with an epoxide, as taught by Takai, and would have been motivated to do so in order to increase coating characteristics of the EPDM terpolymer (Col. 10, lines 53-54, 63-65), which in turn affects the processibility of the rubber composition as a whole.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Block et al. (WO 2019/199835) as applied to claim 1 above, and further in view of Newman (US 4,051,083).
Block et al. teaches the composition of claim 1 as set forth above. Block et al. does not teach that the ethylene-propylene-diene terpolymer (EPDM) is halogenated. However, Newman teaches a rubber composition comprising a halogenated EPDM (Col. 1, lines 51-57). Block et al. and Newman are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of rubber compositions for tires comprising EPDM terpolymer. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to halogenate, as taught by Newman, the EPDM terpolymer, as taught by Block et al., and would have been motivated to do so in order to improve the flex, ozone, and weather resistance of general-purpose rubbers used in tire sidewalls, coverstrips, or treads (Col. 1, lines 50-68).
Response to Arguments
Applicant's arguments filed October 27, 2025 have been fully considered but they are not persuasive.
Applicant argues that Block et al. does not disclose the limitation of “about 5 to about 25 phr of polybutadiene having a cis-1,4 linkage content of at least 95%,” and instead teaches that the composition comprises about 30 to about 50 phr of polybutadiene having a cis-1,4 linkage content of at least 95%. Applicant concludes that one of ordinary skill in the art would not be motivated to alter the teaching of Block et al. to arrive at the claimed amount of polybutadiene. This argument is not persuasive. While applicant is correct in that Block et al. teaches a lower bound of about 30 phr of polybutadiene rubber in the composition, as stated above in the rejection of record, this teaching includes amounts of polybutadiene that are slightly below 30 phr. Additionally, the upper end of the claimed range is “about 25 phr” and this will include amounts of polybutadiene that are slightly above 25 phr. Amounts slightly below 30 phr and slightly above 25 phr are very close. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). MPEP 2144.05. The rejection of record is based on this rationale. Additionally, there is no evidence on the record which shows the claimed range to be critical to the invention. Therefore, applicant’s argument is unpersuasive.
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.
Correspondence
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767