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
From the Office Action dated 19 February 2026, The Applicant submits the following:
-- Claims 16-20, 22, 23, 25, 27, 28, 31, 33 & 34 have been amended for clarity.
-- Claims 24, 26, 29, 30, 32, 35 & 36 have been canceled.
-- No new matter has been identified.
The Applicant's arguments filed 19 February 2026 have been fully considered but are found unpersuasive in view of the amended claims.
The Applicant states their invention yielded unexpected & surprising results (Remarks, p. 6-9). Postulates
Examiner notes the empirical data of the inventive embodiment, C1, in contrast with two controls, T1 & T2, presented in Table 1 (Specification, p. 22 & 23). As Applicant’s provide data of one embodiment of their invention, and postulates unexpected results, however, said results are insufficient as said data is not commensurate with the scope of the claims. The objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP § 716.02(d).
The Applicant points to deficiencies in Crochet as Crochet is silent on specific details of the paraffinic oil, such as content and glass transition temperature thereof (Remarks, p. 9, bottom half). The Applicant points to deficiencies in Abad, stating there is no motivation in Abad that would inspire a person of ordinary skill in the art to select the claimed paraffin oil (Remarks, p. 10).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Applicant states there is no motivation for the combination of references (i.e., Crochet in view of Abad) and challenges the obviousness thereof (Remarks, p. 11 & 12).
This Office Action does not rely upon any teaching from Abad, in combination with another reference or alone. Therefore, The Applicant’s arguments concerning the combination of Crochet in view of Abad are moot in view of the new ground of rejection presented below.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 16-20, 22, 23, 25, 27, 28, 31, 33 & 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).
Regarding claims 16 & 17, Crochet teaches a rubber composition comprising polyisoprene (i.e., natural rubber), an ethylene/1,3-diene copolymer, carbon black and a crosslinking system (Abstract). Said 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 is 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. 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.
Modification of Crochet in view of Pruitt as detailed above reads on all limitations established by claims 16 & 17.
Regarding claims 18-20, maintaining the modification of Crochet in view of Pruitt 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 claims 22 & 23, maintaining the modification of Crochet in view of Pruitt previously detailed, the natural rubber (i.e., polyisoprene) is present in amounts of greater than 50 phr (p. 4, [0055]). 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 25, the modification of Crochet in view of Pruitt (detailed above) results in inclusion of a paraffin oil compositionally identical to the claimed paraffin oil, and having a glass transition temperature within the claimed range. Although the prior art does not expressly disclose a degree of crystallinity at 20°C, chemical compositions and their properties are inseparable, and products of identical chemical compositions cannot have mutually exclusive properties. Therefore, the claimed degree of crystallinity will necessarily be present. 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.
Regarding claims 27 & 28, maintaining the modification of Crochet in view of Pruitt 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, 33 & 34, the modification of Crochet in view of Pruitt 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, 33 & 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
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