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 .
Response to Arguments
In response to the non-final Office Action (dated 24 March 2026), the Applicant submits the following:
-- Claims 16, 18, 19 & 31 have been amended.
-- Claims 17, 21-27, 29, 30, 32, 33, 35 & 36 have been cancelled.
-- No new matter has been entered.
The Applicant’s arguments with respect to claims 16-20 & 22-36 have been fully considered but are moot in view of the new grounds of rejection presented below.
This rejection is FINAL.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16, 18-20, 28, 31 & 34 are rejected under 35 U.S.C. § 103 as being unpatentable over Crochet et al. (WO 2020/074806 A1; US 2021/0340359 A1 referenced herein as English equivalent) in view of Pruitt (US 2011/0094647 A1) and Abad et al. (US 2014/0076473 A1).
Regarding claim 16, Crochet teaches a rubber composition comprising polyisoprene (i.e., natural rubber), an ethylene/1,3-diene copolymer, carbon black and a crosslinking system (Abstract). The natural rubber is present in amounts greater than 50 phr (p. 2, [0024]). The copolymer is present in amounts of 20-40 phr (p. 5, claim 3). Said rubber composition is particularly intended for use in a tire sidewall (p. 1, [0002]), and may comprise additives typically found in compositions intended for tires, such as paraffinic oils (p. 3, [0032]). Crochet does not teach the glass transition temperature (Tg) of said paraffinic oil.
In the same field of endeavor, Pruitt teaches a tire comprising a rubber composition suitable for use in the sidewall of said tire. Said rubber composition comprises diene elastomers and paraffinic processing oils (Abstract). Pruitt expressly discloses the benefits of using paraffinic oils as said oils aid in lowering the glass transition temperature of the rubber composition, which allows for the benefit of reducing the propensity for cracking of rubber compositions for this purpose. Useful paraffinic oils of this nature may be characterized as having a glass transition temperature of less than -75°C, or alternatively in the range of -100°C to -75°C (p. 2, [0023], [0025]). Paraffinic oils are present in amounts of 5-25 phr (p. 4, Claim 1).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the glass transition temperature of -100°C to -75°C for the paraffinic oil taught by Pruitt as a guide when selecting a paraffinic oil for use in Crochet’s invention, in amounts of 5-25 phr, as Pruitt expressly discloses the benefits of paraffinic oils of this nature and within this content range in similar compositions for use in tire sidewalls.
Modification of Crochet in view of Pruitt results in a rubber composition for tires reading on all limitations established by the independent base claim 16, however, both Crochet & Pruitt are silent on the paraffin oil’s degree of crystallinity, as required by the claim.
In the same field of endeavor, Abad teaches rubber compositions comprising elastomers wherein said compositions are intended for tires (Abstract). Abad uses Liquid plasticizer 2 as the paraffin oil in amounts of 20 phr (p. 7 & 8, Table 1). Said liquid plasticizer is taught to be paraffin oil Extensoil 51 (p. 8, Table 1, fn. 8).
It would have been obvious to select Extensoil 51 for use as the plasticizer in the modification of Crochet in view of Pruitt as said plasticizer is demonstrated & recognized by the prior art as suitable for this purpose, in similar compositions.
A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
This paraffin oil is the same paraffin oil employed by the inventors of the instant application. Inventive composition (C1) also employed Extensoil 51 in amounts of 20 phr (p. 22 & 23, Table 1), which is demonstrated by the prior art as suitable for this exact purpose in this exact quantity (see Abad - p. 7 & 8, Table 1, fn. 8.). Therefore, the modification of Crochet in view of Pruitt & Abad detailed above will inherently possess all the limitations pertaining the paraffin oil as required by the claims.
Chemical compositions and their properties are inseparable. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP § 2112.01.
Modification of Crochet in view of Pruitt & Abad as detailed above reads on all limitations established by claim 16.
Regarding claims 18-20, maintaining the modification of Crochet in view of Pruitt & Abad previously detailed, Crochet teaches the 1,3-diene is 1,3-butadiene (p. 6, claim 5). The ethylene/1,3-butadiene copolymer is preferably a random copolymer comprising 50-90 mol.% ethylene units (p. 1 & 2, [0013]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 28, maintaining the modification of Crochet in view of Pruitt & Abad previously detailed, Crochet teaches carbon black as the reinforcing filler (p. 2, [0027]). Crochet claims a carbon black content of 25-65 phr (p. 6, Claim 9). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 31 & 34, the modification of Crochet in view of Pruitt & Abad remains as applied above. Neither Crochet nor Pruitt require the inclusion of a hydrocarbon resin; therefore, the modification of Crochet in view of Pruitt reads on limitations established by claims 31 & 34. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
