DETAILED ACTION
Applicant’s response of October 27, 2025 has been fully considered. Claims 1, 4, 6-8, and 171 are amended, claims 15 and 16 are cancelled, and claims 29 and 30 are added. Claims 1-9, 11-14, 17-26, 29 and 30 are pending with claims 11-14, 17-21, and 25 withdrawn from consideration.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 .
Claim Objections
Claim 4 is objected to because of the following informalities:
Regarding claim 4, in line 2, “is” should be deleted as it is a repeated word.
Appropriate correction is required.
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, 6-8, 22-24, 26, 29, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Blok et al. (US 2017/0292013) in view of Fugier et al. (US 2013/0299053).
Regarding claims 1, 26, and 29, Blok et al. teaches a tire tread composition (¶6) comprising a propylene-ethylene-diene terpolymer (¶9); from 30 to 100 phr of a high Tg elastomer as a blend with 0 to 70 phr of a low Tg elastomer, wherein the blend is polybutadiene with a level of cis-1,4-structures of greater than 90%, as the low Tg elastomer, with at least one styrene butadiene rubber, as the high Tg elastomer (¶53-54); from 20 to 200 phr of total reinforcing filler (carbon black and silica) (¶70); a silane coupling agent (¶74); a hydrocarbon resin (¶80-84); an antioxidant (¶85); and a curative agent (¶86). Examples 1-8 in Table 3 teach that the compositions contain about 12 phr of the propylene-ethylene-diene terpolymer and about 5.6 phr of silane coupling agent (amount of X50S divided by 2). Additionally, these compositions contain about 7.4 phr of carbon black (5.6 phr from X50S and 1.81 additional carbon black). As for the amount of the silica, subtracting the amount of carbon black used in the examples from the total amount of filler that may be used, provides that silica may be present within the range of about 13 to about 192 phr (calculated by Examiner). This range of silica overlaps with the claimed range.
While Blok et al. teaches the use of a hydrocarbon resin in the composition, Blok et al. does not teach an amount. However, Fugier et al. teaches a rubber composition for a tire tread (¶18) comprising 10 to 60 phr of a hydrocarbon resin (¶77). Blok et al. and Fugier et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely rubber compositions based on diene rubbers used 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 from 10 to 60 phr of a hydrocarbon resin, as taught by Fugier et al., in the composition, as taught by Blok et al., and would have been motivated to do so to provide the rubber composition for a tire tread with the desired plasticity and processability.
Regarding claims 6-8, Blok et al. teaches a propylene-ethylene-diene terpolymer with an ethylene content of 10%, an ethylidene norbornene content of 4.1%, and a propylene content of 85.9% (calculated by Examiner) (Table 2, PEDM1).
Regarding claims 22 and 23, Blok et al. teaches that the rubber composition comprises the propylene-ethylene-diene terpolymer, sulfur, and zinc oxide (activator) in the mixing stage of the composition (Table 3, Examples 1-8). These compounds will functionalize the terpolymer in situ (¶111).
Regarding claim 24, Blok et al. teaches that the Tg of the tire tread composition is from 0 to -60° C (claim 8).
Regarding claim 30, Blok et al. and Fugier et al. do not teach that the elastomeric composition has a loss tangent value at 0° C of about 0.463 to about 0.498. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach 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 value at 0° C of about 0.463 to about 0.498, 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 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Blok et al. (US 2017/0292013) in view of Fugier et al. (US 2013/0299053) as applied to claim 1 above, and further in view of Takai (US 6,031,054).
Regarding claims 2-4, Blok et al. and Fugier et al. teach the composition of claim 1 as set forth above. Blok et al. does not teach that the ethylene-propylene-diene terpolymer is partially functionalized with an epoxy group. 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). Takai also teaches that even pulverizing the terpolymer, the epoxidation ratio is 80 to 90%, which makes the terpolymer partially epoxidized (Col. 4, line 63 to Col. 5, line 7). Blok 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 Blok 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.
Regarding claim 5, the amine or phosphine ionomer functionalized polymer being partially functionalized is not required as this limitation further defines optional functional groups.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Blok et al. (US 2017/0292013) in view of Fugier et al. (US 2013/0299053) as applied to claim 1 above, and further in view of Newman (US 4,051,083).
Blok et al. and Fugier et al. teach the composition of claim 1 as set forth above. Blok 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). Blok 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 Blok 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 Blok et al. does not teach or suggest a composition comprising “about 70 to about 95 phr of polybutadiene having a cis-1,4 linkage content of at least 95%,” as required by amended claim 1. Applicant cites paragraph 59 of Blok et al. as teaching that composition comprising 0 or 5% to 60% by weight of a polybutadiene polymer wherein the weight percentage is based on the total composition. This argument is unpersuasive. As stated in the above rejection of record, Blok et al. teaches an embodiment of the invention wherein the rubber composition comprises from 30 to 100 phr of a high Tg elastomer as a blend with 0 to 70 phr of a low Tg elastomer, wherein the blend is polybutadiene with a level of cis-1,4-structures of greater than 90%, as the low Tg elastomer, with at least one styrene butadiene rubber, as the high Tg elastomer (¶53-54). Based on this teaching, the inventive composition can comprise 30 phr of styrene-butadiene rubber and 70 phr of polybutadiene rubber with a cis-1,4 linkage content of at least 90%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. Therefore, this argument is unpersuasive.
Applicant also argues that the instant invention has achieved unexpected results based on the amounts of the polybutadiene rubber and styrene butadiene rubbers used in the composition. This argument is unpersuasive. In response to applicant’s argument that the instant invention has achieved unexpected results, the Office points out that enhancing and improving upon existing properties is not necessarily equated to the generation of unexpected results. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP §716.02. Further, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
In this case, the instant invention has not achieved unexpected results. Applicant argues that the unexpectedness of the results is based on the amount of the polybutadiene rubber and styrene butadiene rubber used in the composition. However, the primary reference of record teaches the claimed amount of these rubbers as stated above. One cannot obtain unexpected results based on following the explicit teaching of the primary reference of record. The obviousness rejection of record is based on using from 10 to 60 phr of a hydrocarbon resin as taught by Fugier et al. in the composition as taught by Blok et al. However, none of the examples of record show the criticality of the claimed range of about 50 to about 80 phr of the hydrocarbon resin. Therefore, the examples do not provide evidence of unexpected results and this 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
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
1 In the claims submitted on October 27, 2025, claim 17 is not indicated as withdrawn in the claim modifier. Please correct upon further submissions.