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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 3-5, 14, 15, 18, 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki et. al., (US20140066548, herein Miyazaki), in the view of Amiralian et. al., (US20170333602, herein Amiralian).
Regarding claims 1, 3, 4, 5, 14, 15, 20-22, Miyazaki teaches tire composition comprising: natural rubber [0009], which is elastomer and reads on the polymer; masterbatch obtained by mixing rubber latex, microfibrillated plant fibers [0008], reads on nanocellulose dispersion, Miyazaki further teaches the weight ratio between MB (masterbatch) to NR and SBR1, is 30/75, [Page 12, Example 2, Table 4], lie in the claimed ranges, and carbon black [0057] reads on carbon black additive.
Miyazaki teaches masterbatch obtained by mixing rubber latex, microfibrillated plant fibers [0008], and the masterbatch may contain other components as long as the effects of the present invention are not inhibited [0050], but does not teach the specific nanocellulose dispersion composition as claimed. However, Amiralian teaches masterbatch including nanocellulose, elastomer, carbon black [0051]. Miyazaki and Amiralian are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of nanocellulose and carbon black-based rubber composition formation via masterbatch preparation toward tire application. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miyazaki and add the teachings of Amiralian, and provide the masterbatch including nanocellulose, elastomer, carbon black [0051], and further apply into the rubber composition formation. Doing so would lead to the adequate dispersion [0051] while the nanocellulose and carbon black are been introduced into rubber during the masterbatch processing.
Miyazaki does not explicitly teach the formation of the partitioning agent. However, such limitations are product-by-process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113]. In the present case, Miyazaki teaches tire composition comprising: natural rubber [0009], reads on the polymer; masterbatch obtained by mixing rubber latex, microfibrillated plant fibers [0008], reads on nanocellulose dispersion, Miyazaki further teaches the weight ratio between MB (masterbatch) to NR and SBR1, is 30/75, [Page 12, Example 2, Table 4], lie in the claimed ranges, and carbon black [0057] reads on carbon black additive. Moreover, Amiralian teaches masterbatch including nanocellulose, elastomer, carbon black [0051]. Miyazaki and Amiralian are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of nanocellulose and carbon black-based rubber composition formation via masterbatch preparation toward tire application. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miyazaki and add the teachings of Amiralian, through routine experimentation and lead to the partitioning agent formation, and further lead to the partitioning agent to the nanocellulose is in a range from about 0.1:1 to about 25:1. Doing so would lead to the adequate dispersion [0051] while the nanocellulose and carbon black are been introduced into rubber during the masterbatch processing.
Regard to the dispersion index, area fraction of undispersed material, fatigue life, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Miyazaki and Amiralian teach all of the claimed ingredients, in the claimed amounts, and Miyazaki teaches the composition as being made by a substantially similar process as of masterbatch with mixing and drying [0050]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, instant application discloses mixing, drying [Instant App. US20230071816; 0063]. Therefore, the claimed effects and physical properties, i.e. dispersion index, area fraction, fatigue life, would necessarily arise from a composition with all the claimed ingredients and amounts. "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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding claim 18, Miyazaki teaches the tire composition contains: cellulose fiber 5/(55+20+30+37+10+3+2+5+2+1+1.5+3.13+2+1.44+1.1)=2.87% [Page 12, Example 2, Table 4], lies in the claimed range; carbon black 37/ (55+20+30+37+10+3+2+5+2+1+1.5+3.13+2+1.44+1.1) =21.26%, [Page 12, Example 2, Table 4], lies in the claimed range. Miyazaki further teaches Oil: vivatec 500 made by H&R [0118], which is hydrocarbon oil, and the concentration of 12/(15+5+1+35+45+10+75+12+12+1.5+3+1+3+2.5+6+1.5+2+2)=5.16% [Page 15, Example 28, Table 5], lies in the claimed range.
Regarding claims 23, 24, Miyazaki teaches pneumatic tire [0016], and the rubber composition is preferably for use in a tread [0014].
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki et. al., (US20140066548, herein Miyazaki), in the view of Amiralian et. al., (US20170333602, herein Amiralian).
Regarding claim 2, Miyazaki teaches tire composition comprising: natural rubber [0009], reads on the polymer; masterbatch obtained by mixing rubber latex, microfibrillated plant fibers [0008], reads on nanocellulose dispersion, Miyazaki further teaches the weight ratio between MB (masterbatch) to NR and SBR1, is 30/75, [Page 12, Example 2, Table 4], lie in the claimed ranges, and carbon black [0057] reads on carbon black additive.
Miyazaki teaches masterbatch obtained by mixing rubber latex, microfibrillated plant fibers [0008], and the masterbatch may contain other components as long as the effects of the present invention are not inhibited [0050], but does not teach the specific nanocellulose dispersion composition. However, Amiralian teaches masterbatch including nanocellulose, elastomer, carbon black [0051]. Miyazaki and Amiralian are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of nanocellulose and carbon black-based rubber composition formation via masterbatch preparation toward tire application. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miyazaki and add the teachings of Amiralian, and provide the masterbatch including nanocellulose, elastomer, carbon black [0051], and further apply into the rubber composition formation. Doing so would lead to the adequate dispersion [0051] while the nanocellulose and carbon black are been introduced into rubber during the masterbatch processing.
Miyazaki does not explicitly teach the formation of the partitioning agent. However, such limitations are product-by-process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113]. In the present case, Miyazaki teaches tire composition comprising: natural rubber [0009], reads on the polymer; masterbatch obtained by mixing rubber latex, microfibrillated plant fibers [0008], reads on nanocellulose dispersion, Miyazaki further teaches the weight ratio between MB (masterbatch) to NR and SBR1, is 30/75, [Page 12, Example 2, Table 4], lie in the claimed ranges, and carbon black [0057] reads on carbon black additive. Moreover, Amiralian teaches masterbatch including nanocellulose, elastomer, carbon black [0051]. Miyazaki and Amiralian are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of nanocellulose and carbon black-based rubber composition formation via masterbatch preparation toward tire application. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miyazaki and add the teachings of Amiralian, through routine experimentation and lead to the partitioning agent formation. Doing so would lead to the adequate dispersion [0051] while the nanocellulose and carbon black are been introduced into rubber during the masterbatch processing.
Regard to the fatigue life, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Miyazaki and Amiralian teach all of the claimed ingredients, in the claimed amounts, and Miyazaki teaches the composition as being made by a substantially similar process as of masterbatch with mixing and drying [0050]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, instant application discloses mixing, drying [Instant App. US20230071816; 0063]. Therefore, the claimed effects and physical properties, i.e., fatigue life, would necessarily arise from a composition with all the claimed ingredients and amounts. "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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 6, 7, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki et. al., (US20140066548, herein Miyazaki) and Amiralian et. al., (US20170333602, herein Amiralian), as applied in the claim 1 set forth above, in the view of Evangelo et. al., (US20160122515, herein Evangelo).
Regarding claims 6, 7, 8, Miyazaki and Amiralian teach the tire composition as set forth above in claim 1, Miyazaki teaches cellulose nanofibers [0028], but does not teach the specific nanocellulose as claimed, however, Evangelo teaches “the nanocellulose comprises lignin-coated cellulose nanofibrils and/or lignin-coated cellulose nanocrystals” [0009]; “hydrophobic nanocellulose composition with a cellulose crystallinity of about 70% or greater” [0137]. Miyazaki and Evangelo are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of cellulose and carbon black-based rubber composition formation toward tire application. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miyazaki and substitute the teachings of Evangelo, and provide the “the nanocellulose comprises lignin-coated cellulose nanofibrils and/or lignin-coated cellulose nanocrystals” [0009]; “hydrophobic nanocellulose composition with a cellulose crystallinity of about 70% or greater” [0137], and further apply into the rubber composition formation. Doing so would lead to the manufacturing sustainability, wherein the specific nanocellulose which can replace a portion of carbon black and silica [0048-49] with mechanically strong fibers or good physical reinforcing properties [0028], as taught by Evangelo.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki et. al., (US20140066548, herein Miyazaki) and Amiralian et. al., (US20170333602, herein Amiralian), as applied in the claim 1 set forth above, in the view of Lechtenboehmer et. al., (US20110136939, herein Lechtenboehmer).
Regarding claim 9, Miyazaki and Amiralian teach the tire composition as set forth above in claim 1, Miyazaki is silent on wherein the nanocellulose dispersion composition (NDC) further comprises a hydrocarbon oil. However, Lechtenboehmer teaches the processing oil used may include both extending oil present in the elastomers, and process oil added during compounding; TDAE oil [0026] which reads on the hydrocarbon oil and indicates the oil is added with elastomer, which is in the nanocellulose/elastomer dispersion. Miyazaki and Lechtenboehmer are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of cellulose and carbon black-based rubber composition for tire application. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miyazaki and add the teachings of Lechtenboehmer, and provide the processing oil used may include both extending oil present in the elastomers, and process oil added during compounding; TDAE oil [0026] into the rubber composition formation. Doing so would lead to the improved mixing process and dispersity.
Claims 10, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki et. al., (US20140066548, herein Miyazaki) and Amiralian et. al., (US20170333602, herein Amiralian) as applied in claim 1 above, in the further view of Vargantwar et. al., (US20170321045, herein Vargantwar).
Regarding claims 10, 13, Miyazaki and Amiralian teach the tire composition as set forth above in claim 1. Miyazaki further teaches Wax: OZOACE 0355 made by NIPPON SEIRO CO., LTD [0119], which is specialized, petroleum-derived wax primarily composed of saturated straight-chain hydrocarbons (normal paraffins) and branched-chain hydrocarbons (isoparaffins), hence, read on both non-branched alkane paraffin wax, and petroleum refined branched paraffin wax.
Miyazaki teaches carbon black, but does not teach the specified carbon black. However, Vargantwar teaches Carbon black N234 [0060] reads on the specific carbon black claimed, hence, exhibit the related properties as claimed. Miyazaki and Vargantwar are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of cellulose and carbon black- based rubber composition formation. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miyazaki and substitute the teachings of Vargantwar, and provide the specified carbon black taught by Vargantwar into the rubber composition formation. Doing so would lead to a desirable property of this invention achieves simultaneous improvements in processing of tire compounds and subsequent μ (ratio of G′ from RPA @ 5% strain to M300 modulus) characteristics in tires made using these compounds without significantly deteriorating other tire physical and performance characteristics. [0052], as taught by Vargantwar.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki et. al., (US20140066548, herein Miyazaki) and Amiralian et. al., (US20170333602, herein Amiralian), as applied in claim 1, in the further view of Martin et. al., (US20170333602, herein Martin).
Regarding claim 17, Miyazaki and Amiralian teach the tire composition as set forth above in claim 1. Miyazaki does not explicitly teach the stable dispersion of the mixture, however, Martin teaches “The nanocellulose may also be incorporated into the elastomer at the point of compounding where solid elastomer is combined with other agents such as carbon black; the good performance of nanomaterials as reinforcing agents in polymer composites requires good dispersion of the nanomaterial throughout the polymer.” [0051] which indicates the good dispersity and stability of the carbon black and nanocellulose mixture. Martin further teaches the drying step, “the method comprising forming a mixture of the nanocellulose and a suspension or solution of elastomeric material, dipping a mould or a former into the mixture, removing the mould or the former from the mixture such that an adherent layer of the mixture is formed on a surface of the mould or the former and allowing the adherent layer of the mixture to dry or set.” [0064] which indicates the drying process of the afore-developed stable mixture. Miyazaki and Martin are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of cellulose and carbon black- based rubber composition. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Miyazaki and add the teachings of Martin, and provide the mixing process taught by Martin into the rubber composition formation. Doing so would lead to a desirable property of “excellent dispersion of the nanocellulose in the elastomer can be achieved since the mixing process occurs at a point in the process when the elastomer is in a dissolved form and highly mobile.” [0051], as taught by Martin, and can further lead to the product formation.
Response to Arguments
Applicant’s arguments, filed 2/4/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Miyazaki et. al., (US20140066548, herein Miyazaki), and Amiralian et. al., (US20170333602, herein Amiralian)., as set forth above.
In this case, the applicant’s arguments are directed toward the amendment to independent claim 1, which has been addressed by the new rejection set forth above. In particular, the newly added reference_ Amiralian teaches masterbatch including nanocellulose, elastomer, carbon black [0051].
In response to the “The cited references do not teach or suggest a tire composition with the claimed weight ratio of the polymer to the nanocellulose dispersion composition (polymer:NDC)”, is not persuasive.
In this case, the newly added reference_ Amiralian teaches masterbatch including nanocellulose, elastomer, carbon black [0051].
In response to applicant's argument that Lechtenboehmer is not analogous art, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the rejection applied above, Lechtenboehmer is not being relied upon for the carbon black filler in the elastomer/cellulose masterbatch, in contrast, Lechtenboehmer is relied upon merely for teaching that the processing oil used may include both extending oil present in the elastomers, and process oil added during compounding; TDAE oil [0026].
Lechtenboehmer provides clear teaching that the processing oil used may include both extending oil present in the elastomers, and process oil added during compounding; TDAE oil [0026] is suitable for compositions similar to those of Miyazaki, and therefore one having ordinary skill in the art would be motivated to add them into the composition of Miyazaki. This motivation would not require the complete adoption of every teaching of Lechtenboehmer with respect to the carbon black filler in the elastomer/cellulose masterbatch, but would merely indicate to one having ordinary skill in the art that said the processing oil used may include both extending oil present in the elastomers, and process oil added during compounding; TDAE oil [0026] is suitable for the intended purpose. The incorporation therefore would have been obvious. Hence, Lechtenboehmer does not teach away the instant application.
In response to the “unexpected results”, is not persuasive.
When Examples 1-15 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison.
Claim 15 is open to the content of wherein a weight ratio of the partitioning agent to the nanocellulose is in a range from about 0.1:1 to about 5:1. However, Examples 2, 3, 5, 6, 11, 14 only show data for LCNF one single value of the 5 phr. Hence, the Examples 2, 3, 5, 6, 11, 14 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness 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. See MPEP 716.02(d).
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 extension fee 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 Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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