DETAILED ACTION
Applicant’s response of October 27, 2025 has been fully considered. Claims 4, 6, 7, 8, and 171 are amended, claims 20-22 are cancelled, and claims 40-42 are added. Claims 1, 2, 4, 6-9, 12, 13, 15, 17, 18, 23-27, 32-34, 36, 37, and 40-42 are pending with claims 12, 13, 15, 17, 18, and 36 withdrawn from consideration.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 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, 23-27, 32-34, 37, and 40-42 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, 32, 34, 37, 40, and 42, Blok et al. teaches a tire tread composition (¶6) comprising from 5% to 99% by weight (¶35) of 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 high Tg elastomer is natural rubber, and the low Tg elastomer is polybutadiene with a level of cis-1,4-structures of greater than 90% (¶52-53); from 20 to 200 phr of total reinforcing filler, which can be completely carbon black (¶70); a plasticizing oil (¶77-79); a hydrocarbon resin (¶80-84); an antioxidant (¶85); and a curative agent (¶86).
While Blok et al. teaches the use of a plasticizing oil and a hydrocarbon resin in the composition, Blok et al. does not teach an amount range for either component. However, Fugier et al. teaches a rubber composition for a tire tread (¶18) comprising 10 to 60 phr of a liquid plasticizing agent (¶18) and 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 liquid plasticizing agent and 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 23-27, Blok et al. teaches that the rubber composition comprises the propylene-ethylene-diene terpolymer, sulfur, zinc oxide (activator), a silane coupling agent such as bis(3-triethoxysilylpropyl) tetrasulfide, and a vulcanizing accelerator (Vulkacit CBS) in the composition (Table 3, Examples 1-8; ¶74). These compounds will functionalize the terpolymer in situ (¶111).
Regarding claim 33, Blok et al. teaches that the Tg of the tire tread composition is from 0 to -60° C (claim 8).
Regarding claim 41, Blok et al. and Fugier et al. do not teach that the elastomeric composition has a loss tangent value at 0° C of about 0.336 to 0.425. 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 0.336 to 0.425, 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 4 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.
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 examples in Table 3 provide a specific amount of filler to use within the composition and that there is no teaching or suggestion to add additional filler to the composition. Applicant also argues that there is no teaching regarding the proportions of filler between carbon black and reinforcing inorganic filler in the overall range of 20 to 200 phr and therefore there is no evidence that carbon black would be any particular percentage or amount within the disclosed range. This argument is unpersuasive. Applicant is correct in noting that Blok et al. does not teach any particular proportion of carbon black or inorganic filler within the disclosed range of 20 to 200 phr. However, Blok et al. does teach that the filler can be carbon black alone (¶70 uses “and/or” and ¶63 says the filler can be carbon black, silica, or a mixture). Therefore, based on this teaching, the whole of the 20 to 200 phr can be carbon black and this range completely overlaps the range claimed by applicant. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123. Additionally, there is no evidence on the record to show that the claimed range of carbon black is critical to the invention. Therefore, this argument is unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 This claim has been amended, but it is also withdrawn. The claim modifier should also state that this claim is withdrawn (withdrawn-currently amended). Please correct in further submissions.