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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 18, the claimed limitations are required by claim 1, on which claim 18 is indirectly dependent on (through claim 8, which is directly dependent on claim 1).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-3, 5, 12, 15-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaka (US Patent No. 6,186,204 B1) in view of Blok (US 20180105631 A1) and further in view of Rachita (US 2010/0130664 A1).
Regarding claim 1, Sasaka teaches a pneumatic tire composition (Abstract), and more specifically teaches an inventive example containing 100 parts of SBR rubber, 15 phr of extender oil, 65 parts of carbon black, 20 parts of dicyclopentadiene resin, and 25 parts of aluminum hydroxide (Col. 17-18, Table 3, Example 6), which reads on the claimed “tire comprising a rubber composition.” The amounts of each component overlap the claimed amounts as follows:
100 phr of SBR rubber falls within the claimed range of “70 phr to 100 phr of at least one styrene butadiene rubber”
65 phr of carbon black falls within the claimed range of “from 40 phr to 200 phr of at least one filler”
20 phr of dicyclopentadiene resin falls within the claimed range of “at least 10 phr of at least one hydrocarbon resin”
25 phr of aluminum hydroxide, falls within the claimed range of “at least 5 phr of aluminum hydroxide”
Example 6 of Sasaka does not include the claimed “further diene-based rubber,” however since the allowable range within claim 1 includes 0 phr, Example 6 of Sasaka reads on the claimed limitation. Not including a component is equivalent to including 0phr of said component.
Example 6 of Sasaka teaches the use of 65phr of carbon black as described above, and thus is silent with regard to the limitation of “the filler comprising silica and less than 5 phr of carbon black.”
However, Sasaka teaches the incorporation of carbon black and silica within the same listing of ingredients which may be suitably added in ranges which do not adversely affect the inventive purpose of the composition (col. 14, lines 30-38).
It is prima facie obvious to substitute equivalents known in the art as suitable for achieving the same purpose. See MPEP 2144.06. Therefore, it would have been obvious to one of ordinary skill in the art to substitute silica in place of the carbon black within example 6 of Sasaka, as Sasaka recognizes both as additives generally used in rubber compositions for pneumatic tires. Doing so would generate a composition containing the required amounts and identity of filler within the claimed composition.
Example 6 of Sasaka teaches the use of dicyclopentadiene resin as described above, but is silent with regard to the cyclopentadiene resin having the claimed glass transition temperature.
In the same field of endeavor, Blok teaches hydrocarbon polymer modifiers for elastomeric compositions (Abstract) which are usable in the tire industry ([0003]). Blok teaches that the hydrocarbon polymer modifiers are copolymers containing DCPD and CPD ([0077]) and teaches that the copolymerization of these moieties with other comonomers yields products with tunable results ([0077]). Blok additionally teaches that these DCPD/CPD resins possess glass transition temperatures ranging from 30°C to 110°C ([0082]), which encompasses the claimed range of “35°C to less than or equal to 54°C,” establishing a prima facie case of obviousness. Finally, Blok teaches that these hydrocarbon modifiers are useful for improving additive permanence, wet traction, treadwear, and rolling resistance in tire applications ([0007]).
It is also prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the aromatic DCPD/CPD polymers containing the described aromaticity range as taught by Blok within the formulation of Sasaka for the purpose of achieving a tire with balanced properties and improved additive permanence, treadwear, and rolling resistance characteristics, and because Blok recognizes them as suitable cyclopentadiene resins for use within rubber formulations.
Example 6 of Sasaka includes two SBR rubbers as described above, however Sasaka further differs from claim 1 because it is silent regarding the incorporation of thiol/aminosilane/aminosiloxane groups configured to couple with the silica filler.
In the same field of endeavor, Rachita teaches a series of terminating compounds and which can provide terminating groups on polymers for tire compositions (Abstract), and teaches that the inventive terminating groups are specifically useful for providing reactivity to silica filler ([0025]). Rachita specifies that suitable polymers include copolymers of 1,3 butadiene and styrene ([0030]), and teaches that the terminating agent can include thiol and amino substitution ([0016]) in addition to hydrolysable alkoxysilane groups ([0015]-[0016]). Finally, Rachita teaches that the incorporation of the inventive functional groups imparts a dispersing and reinforcing effect between the polymer and silica ([0026]), and teaches the incorporation of at least one terminating group ([0012]). Therefore, it would have been obvious to one having ordinary skill in the art to incorporate the terminating groups of Rachita into the formulation of Sasaka for the purpose of imparting a dispersion/reinforcing effect on the inventive composition. In doing so, the polymers of Sasaka as modified by Rachita would optionally contain one or both of the claimed functional groups, and which would be configured to react with silica, as claimed.
Regarding claim 2¸ as described above, Example 6 of Sasaka teaches 21.7 phr of aluminum hydroxide, which reads on the claimed range of “from 5 phr to 80 phr of aluminum hydroxide.”
Regarding claim 3, as described above, Example 6 of Sasaka teaches 17.4 phr of cyclopentadiene resin, which reads on the claimed range of “from 15 phr to 80 phr of the hydrocarbon resin.”
Regarding claim 5, Blok teaches that the hydrocarbon modifiers contain aromatic hydrogen amounts ranging from 8 to 30% ([0077]), which reads on the claimed “aromatically modified.”
Regarding claim 12, Sasaka teaches an inventive example (Example 6, col. 17-18, Table 3) including 56.5 phr of carbon black, and further teaches that silica may be used instead of carbon black (col. 14, lines 25-28).
Regarding claim 15, Example 6 of Sasaka contains no further resins, and contains no oils (Example 6, col. 17-18, Table 3), which reads on the claimed “0 phr to less than 5 phr of further resins apart from said hydrocarbon resin” and “0 phr to less than 5 phr of oil.”
Regarding claim 16, Blok teaches that the hydrocarbon modifiers contain aromatic hydrogen amounts ranging from 8 to 30% ([0077]), which encompasses the claimed range of “8% to 12%,” establishing a prima facie case of obviousness.
Regarding claim 17, the dicyclopentadiene resin used in Example 6 of Sasaka has a softening point of 105°C (See footnote number 6 in col. 18, just below Table 3, which corresponds to the DCPD resin), which reads on the claimed range of “88°C to 110°C.”
Regarding claim 20, Sasaka teaches that the composition may be applied as the cap rubber of a tire tread (col. 8, lines 7-14).
Claims 1-3,5, 7, and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yan (US 20180171053 A1) in view of Ono (US 20190160870 A1), Blok (US 20180105631 A1), and Rachita (US 2010/0130664 A1).
Regarding claim 1, Yan teaches a rubber composition ([0007]) which may be used for the formation of a tire ([0003]), and which therefore reads on the claimed “tire comprising a rubber composition,” comprising:
0-90 parts of at least one diene monomer-containing polymer which may be Styrene-butadiene rubber ([0007])
10-100 parts of at least one functionalized diene monomer-containing polymer ([0011]) which reads on the claimed “at least one further diene-based rubber”
0-100 phr of at least one silica filler ([0011]) which reads on the claimed “at least one filler.”
An additional plasticizing resin in amounts ranging from 5 to 60 phr, which may be DCPD or CPD resins ([0086]), which reads on the claimed “DCPD resins, CPD resins, and C5 resins”
Yan teaches the incorporation of aluminum hydroxide as a filler ([0066]), but differs from claim 1 because it is silent as to the content of aluminum hydroxide within the formulation being at least 5 phr.
In the same field of endeavor, Ono teaches a rubber tire tread which contains diene rubbers and SBR Rubber ([0010] and [0044]) which show improved grip performance (Abstract), and which includes between 1 and 50 phr of aluminum hydroxide ([0107]). Ono teaches that the incorporation of this range of aluminum hydroxide is useful for improving the grip performance of the tire tread, while still maintaining valuable abrasion resistance ([0107]). Therefore, it would have been obvious to one of ordinary skill in the art to incorporate the amount of aluminum hydroxide as taught by Ono to the formulation of Yan for the purpose of improving the grip performance of the tire without sacrificing the tire’s abrasion resistance.
Yan further differs from claim 1 because it teaches the incorporation of 10-100 phr of carbon black ([0007]) in contrast to claim 1, which requires “less than 5phr of carbon black.”
However, Yan teaches that tire compositions are frequently reinforced with carbon black and/or silica ([0003]), implying that compositions with only silica are common. Yan further teaches that the carbon black in the formulation is specifically performing the function of a reinforcing filler ([0061]), and teaches the use of other reinforcing fillers which are suitable alternatives to carbon black, including clay ([0066]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06), and Yan does not teach away from compositions which utilize a different reinforcing filler besides carbon black. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to substitute any of the other reinforcing fillers as taught by Yan in place of the carbon black within the inventive tire composition to produce a tire composition which contains a reinforcing filler. Doing so would result in a composition which meets all of the compositional limitations of claim 1.
Yan further differs from claim 1 because it is silent with regard to the DCPD or CPD resins having the claimed glass transition temperature.
In the same field of endeavor, Blok teaches hydrocarbon polymer modifiers for elastomeric compositions (Abstract) which are usable in the tire industry ([0003]). Blok teaches that the hydrocarbon polymer modifiers are resins containing DCPD and CPD ([0077]) and teaches that the copolymerization of these moieties with other comonomers yields products with tunable results ([0077]). Blok additionally teaches that these DCPD/CPD resins possess glass transition temperatures ranging from 30°C to 110°C ([0082]), which encompasses the claimed range of “35°C to less than or equal to 54°C,” establishing a prima facie case of obviousness. Finally, Blok teaches that these resins are useful for improving additive permanence, wet traction, treadwear, and rolling resistance in tire applications ([0007]).
It is also prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the aromatic DCPD/CPD polymers containing the described aromaticity range as taught by Blok within the formulation of Yan for the purpose of achieving a tire with balanced properties and improved additive permanence, treadwear, and rolling resistance characteristics, and because Blok recognizes them as suitable cyclopentadiene resins for use within rubber formulations.
Yan as modified further differs from claim 1 because it is silent regarding the claimed functional groups configured to couple to silica.
In the same field of endeavor, Rachita teaches a series of terminating compounds and which can provide terminating groups on polymers for tire compositions (Abstract), and teaches that the inventive terminating groups are specifically useful for providing reactivity to silica filler ([0025]). Rachita specifies that suitable polymers include copolymers of 1,3 butadiene and styrene ([0030]), and teaches that the terminating agent can include thiol and amino substitution ([0016]) in addition to hydrolysable alkoxysilane groups ([0015]-[0016]). Finally, Rachita teaches that the incorporation of the inventive functional groups imparts a dispersing and reinforcing effect between the polymer and silica ([0026]), and teaches the incorporation of at least one terminating group ([0012]). Therefore, it would have been obvious to one having ordinary skill in the art to incorporate the terminating groups of Rachita into the formulation of Yan as modified, for the purpose of imparting a dispersion/reinforcing effect on the inventive composition. In doing so, the polymers of Yan as modified by Rachita would optionally contain one or both of the claimed functional groups, and which would be configured to react with silica, as claimed.
Regarding claim 2, Ono teaches that the amount of aluminum hydroxide is preferably between 1 and 50 phr ([0107]), which overlaps the claimed range of “5phr to 80 phr of aluminum hydroxide,” establishing a prima facie case of obviousness.
Regarding claim 3, Yan teaches that the plasticizing resin (which reads on the claimed “hydrocarbon resin”) may be included in amounts ranging from 5 to 60 phr ([0086]), which overlaps the claimed range of “15 phr to 80 phr,” establishing a prima facie case of obviousness.
Regarding claim 5, Blok teaches that the hydrocarbon modifiers contain aromatic hydrogen amounts ranging from 8 to 30% ([0077]), which reads on the claimed “aromatically modified.”
Regarding claim 7, Yan teaches that the styrene-containing polymer may be synthesized using solution polymerization ([0040]), and that the functionalized diene-monomer based rubber is produced using at least one conjugated diene monomer ([0005]) which may be isoprene (claim 5).
Regarding claim 11, Yan teaches the incorporation of between 10 and 100 phr of carbon black in the formulation ([0007]) and teaches that silica may be incorporated in amounts ranging from 0-100 phr. The range of silica in the formulation taught by Yan overlaps the claimed range of “at least 40 phr of silica,” establishing a prima facie case of obviousness. Additionally, while the range taught by Yan lies just outside of the claimed range of “less than 10 phr carbon black,” the differences between these ranges are very close to one another. A prima facie case of obviousness exists when the claimed ranges or amounts do not overlap with prior art but are merely close (see MPEP 2144.05.I.).
Regarding claim 12, Yan teaches that silica may be incorporated in amounts ranging from 0-100 phr. The range of silica in the formulation taught by Yan overlaps the claimed range of “at most 85 phr of silica,” establishing a prima facie case of obviousness.
Regarding claim 13, Ono teaches that the aluminum hydroxide has a BET specific surface area of 5-50 m2/g ([0105]) and an average particle size of preferably between 0.1 and 3.0 µm ([0106]), both of which overlap the respective claimed ranges of “1 m2/g to 20 m2/g” and “0.2 µm to 5 µm,” establishing prima facie cases of obviousness.
Regarding claim 14¸ Yan teaches that the silica may have a BET surface area of 32- 400 m2/g ([0063]), which encompasses the claimed “within a range of 150 m2/g and 220 m2/g,” establishing a prima facie case of obviousness. Yan also teaches the use of ZeosilTM 1165 MP ([0064]) which the instant specification also states is a usable commercially available silica (See instant specification [00061]).
Regarding claim 15, Yan teaches that additional resins may be incorporated into the formulation ([0084]), and further specifies that terpene-based resins may be incorporated alongside the DCPD/CPD resins in amounts together totaling between 5 and 60 phr ([0086]). Further, Yan teaches the incorporation of oils into the formulation ([0085]) which may be included in amounts ranging from 1 to 70 phr ([0085]) which overlaps the claimed range of “0 phr to less than 5 phr,” establishing a prima facie case of obviousness. Finally, Yan also teaches that these components are optional ingredients ([0084]). When the components are not present, they are included in the amount of 0 phr, which also falls within the claimed range.
Regarding claim 16, Blok teaches that the hydrocarbon modifiers contain aromatic hydrogen amounts ranging from 8 to 30% ([0077]), which encompasses the claimed range of “8% to 12%,” establishing a prima facie case of obviousness.
Regarding claim 17, Blok teaches that the hydrocarbon modifiers have a softening point ranging from 80°C to 160°C ([0081]), which overlaps the claimed range of “88°C to 110°C,” establishing a prima facie case of obviousness.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yan (US 20180171053 A1) in view of Ono (US 20190160870 A1), Blok (US 20180105631 A1), and Rachita (US 2010/0130664 A1), and further in view of Colvin (US 20180229553 A1).
Regarding claim 8, Yan as modified teaches all of the limitations of claim 1 as described above. Yan teaches that the diene-monomer containing copolymer (which reads on the claimed styrene-butadiene rubber) may comprise more than one polymer (i.e., two polymers) ([0007]). Yan further teaches multiple SBR polymers with glass transitions between -36°C and -35°C ([0094], Table 2). Yan differs from claim 8 because it is silent with regard to one of the SBR rubbers having a glass transition temperature between -86°C and -51°C.
In the same field of endeavor, Colvin teaches a tire tread composition containing rubber resin and a hydrocarbon additive (Abstract). Colvin further teaches that the glass transition temperature (Tg) of SBR rubber can be controlled to values ranging between -75°C or lower to 0°C or higher ([0004]), which overlaps the claimed range of “between -86°C and -51°C.” Colvin finally teaches that the tuning of SBR rubber within this glass transition temperature range is useful because it allows for optimization of both the Tg of the entire tread and the ratio of SBR rubber to other polymer components within the tread. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to tune the glass transition temperature of the SBR rubber within Yan’s formulation within the range taught by Colvin for the purpose of optimizing the glass transition and compositional ratios within the overall tire tread component.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Yan (US 20180171053 A1) in view of Ono (US 20190160870 A1), Blok (US 20180105631 A1), and Rachita (US 2010/0130664 A1), and further in view of Cohen (US Patent Number 5,698,619).
Regarding claim 18, Yan as modified teaches all of the limitations of claim 8 as described above. Yan further teaches the use of silica coupling agents ([0067]) which may react with the vulcanizable polymers in the formulation to form a bridge between the silica and the polymer ([0069]), and further teaches that the silica coupling agents may comprise mercapto groups ([0069]), which reads on the claimed “thiol group.” However, Yan is silent with regard to the incorporation of at least one amino silane or amino siloxane group on one of the first and second SBR rubbers.
In the same field of endeavor, Cohen teaches silica-filled rubber compositions containing aminosilanes (Abstract). Cohen teaches that the aminosilane may be incorporated on the surface of a silica carrier (col. 4, lines 62-67), and teaches that the incorporation of aminosilanes in the formulation yield improved rolling resistance in tire treads when used in conjunction with sulfur-containing organosilicon compounds (col. 12, lines 6-12). Therefore, it would have been obvious to one of ordinary skill in the art to incorporate the aminosilanes taught by Coen onto the functionalized silica as taught by Yan for the purpose of bridging the DCPD/CPD polymer and silica filler with aminosilane functionality for the purpose of improving the rolling resistance of the resulting tire tread.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yan (US 20180171053 A1) in view of Ono (US 20190160870 A1), Blok (US 20180105631 A1), and Rachita (US 2010/0130664 A1) and further in view of Hirayama (US 20090056846 A1).
Regarding claim 20, Yan as modified teaches all of the limitations of claim 1 as described above. Yan teaches that the composition may be used to form a tire tread, but is silent with regard to the specific incorporation as a “radially outermost tread cap layer.”
In the same field of endeavor, Hirayama teaches a tire structure comprising a base tread and a cap tread layer (Abstract), which reads on the claimed “radially outermost tread cap layer.” Hirayama further teaches that the base and cap treads may both be made of SBR rubber ([0016], [0027], and [0029]). Therefore, it would have been obvious to one of ordinary skill in the art to use the SBR formulation of Yan as modified to form the claimed tread cap layer.
Response to Arguments
As an initial matter, the Examiner thanks the Applicant for pointing out the mathematical error on p. 2 of the previous office action, regarding the improper normalization of rubber compounds from 115 parts to 100. The math has been corrected accordingly in the foregoing rejections.
Applicant’s arguments, see Applicant’s Remarks, filed December 1, 2025, with respect to the rejections of claims 1-5, 7, 9, and 11-17under 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 the previously applied prior art documents, and further in view of Rachita.
Applicant’s convincing arguments (presented last in the Applicant’s response, pages 5-6) relate to the absence of teachings within the previously applied prior art concerning the incorporation of the claimed functional groups which are configured to couple to silica. However, as described above, Rachita provides a motivation for incorporation the claimed functional groups into, inter alia, SBR rubbers for tire formulations.
Applicant’s remaining arguments are unpersuasive.
Applicant argues that Sasaka fails to read on the claimed disclosure. Applicant first asserts that the disclosure of 65 phr in the examples of Sasaka constitutes a teaching away from the claimed amount of carbon black.
However, Sasaka does not state that carbon black is an essential ingredient; rather, carbon black is merely indicated as one of a series of “other ingredients” which are suitable for use in the inventive composition (c.f. col. 14, lines 30-38). The indication of compositions which include carbon black do not refute the incorporation/teaching of compositions which do not include carbon black.
Applicant next argues that carbon black is not a suitable alternative to silica within the context of tire formulations. However, as described above and in previous Office Actions, Sasaka lists carbon black and silica together as optional ingredients therein (col. 14, lines 30-38). Additionally, newly cited reference Rachita similarly includes carbon black and silica as fillers within tire formulations ([0042]). Finally, prior art document Yan likewise discloses silica and carbon black together, even indicating interchangeability of the two ([0060], where silica may be added or not added to a carbon black-containing formulation, indicating that carbon black may stand in place of silica). Finally, the Applicant has provided no evidence for the assertion that substitution of the two would “alter the fundamental property balance” of the resulting formulation.
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.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762