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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 21, 2025 has been entered.
Response to Amendment
The amendments filed on July 21, 2025 have been entered. Claims 1-15, 17-18, and 20 remain pending in the application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-15, 17-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Van Raalten et al (US 2021/0198437 A1) in view of Tahon et al (US 2021/0179748 A1) and Aoyagi et al (EP 3845591 A1).
Regarding Claims 1 and 10: Van Raalten discloses a tire (para. 0061) comprising a rubber composition (para. 0009, reinforced elastomer) with a rubber (para. 0054), 10 to 120, or preferably 40 to 50, phr of interconnected crystalline carbon nanofilaments (para. 0047, interconnected crystalline carbon nanofibre structures), and 5 to 25 phr of a silica (para. 0048).
Van Raalten is silent to the tire comprising metal wires and the rubber composition coating the wires as wire coat rubber composition in a ply of the tire.
Tahon teaches a pneumatic tire (para. 0067) comprising a rubber composition with 20 to 25 phr of a silica filler and 20 to 25 phr of an inorganic carbon filler/carbon black (para. 0022). The tire further comprises metal wires (para. 0008) used for reinforcement (para. 0016), and Tahon teaches that the rubber composition is particularly suitable for use as a wire coating composition in plies (para. 0008). The selection of a material for its art recognized suitability for an intended purpose supports a prima facie case of obviousness. MPEP 2144.07. Tahon and Van Raalten are analogous art because they are directed toward the same field of endeavor, namely rubber compositions for use in tires.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include metal wires in the tire of Van Raalten to achieve a reinforcing effect and to use the composition of Van Raalten as a wire coating composition due to its art-recognized suitability for that purpose.
Van Raalten is silent to the rubber composition comprising a pyrazolone.
Aoyagi teaches a rubber composition (Abstract) containing from 0.2 to 10 phr of pyrazolone (para. 0199), with specific examples citing 1 phr of 3-methyl-5-pyrazolone (Tables 2-4). Aoyagi teaches that including a pyrazolone in this amount in a rubber tire composition improves tear strength and wet grip performance (para. 0023-25). Aoyagi is analogous art because it is directed to the same field of endeavor, namely reinforced rubber tire compositions.
One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to add pyrazolone to the composition of Van Raalten, as taught by Aoyagi, in order to obtain a tire with improved tear strength and wet grip performance.
Regarding Claims 2-3: Van Raalten discloses that the interconnected crystalline carbon nanofilaments have a BET specific surface area of 40 to 120 m2/g (para. 0038) and a pore volume of 0.59 to 0.91 cm3/g (para. 0037).
Regarding Claims 4-5: Van Raalten discloses an amorphous silica with a BET specific surface area of 30-400 m2/g (para. 0045, precipitated silica), such as Zeosil 1165MP (para. 0050), which the instant specification teaches has a BET specific surface area of 160 m2/g (para. 0084, 4B).
Regarding Claim 6: Van Raalten discloses cis-1,4-polyisoprene rubber (para. 0054, natural rubber).
Regarding Claim 7: Van Raalten discloses a silane coupling agent (para. 0052).
Regarding Claim 8: Van Raalten teaches all of the limitations of claim 1 as set forth above. However, Van Raalten is silent to the composition containing sulfur at 4 to 10 phr.
Tahon teaches a reinforced rubber composition that contains 6 to 10 phr of sulfur, which is suitable for vulcanizing the rubber (para. 0026-27). Tahon is analogous art because it is directed to the same field of endeavor, namely reinforced rubber tire compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Van Raalten with sulfur, as taught by Tahon, in order to obtain a cured rubber product.
Regarding Claim 9: Van Raalten is silent to the composition containing oil.
Tahon teaches an oil included at up to 10 phr in the rubber composition (para. 0025). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). Tahon further teaches that the oil can act as a processing aid or extend the elastomeric component (para. 0040). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Van Raalten with an oil in an overlapping amount and would have been motivated to do so to improve processability and extend the elastomer, and Tahon teaches the disclosed amount of oil is acceptable to achieve the disclosed effect.
Regarding Claim 11: Van Raalten does not disclose a resin.
Regarding Claim 12: Van Raalten discloses zinc oxide in an amount of 5 phr (para. 0104).
Regarding Claim 13: Van Raalten is silent to the use of an antioxidant or antidegradant.
Tahon discloses the use of an antidegradant (para. 0017) in an amount of 2.5 phr (Table 1).
One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to add an antidegradant to the composition of Van Raalten in the disclosed amount and would have been motivated to do so to prevent degradation of the rubber.
Regarding Claim 14: Van Raalten discloses a cobalt salt (para. 0057) but is silent to the amount.
Tahon discloses a cobalt salt in an amount of 0.2 to 2 phr and teaches that this amount is acceptable to achieve improved adhesion of the rubber composition to a metal wire (para. 0063).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a cobalt salt in the disclosed amount in the composition of Van Raalten in order to improve the wire adhesion of the composition.
Regarding Claim 15: Van Raalten discloses a fatty acid in an amount of 1 phr (para. 0101, stearic acid).
Regarding Claims 17-18: Van Raalten does not disclose the wire adhesion, rebound, or tan delta at 100°C. However, the references all of the claimed ingredients in the claimed amounts made by a substantially similar process. 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 amount. Therefore, the claimed effects and physical properties, i.e. wire adhesion, rebound, and tan delta at 100°C, 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 the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 20: Van Raalten teaches that the tire may be a truck or a passenger tire (para. 0061).
Response to Arguments
Applicant's arguments filed July 21, 2025 have been fully considered but they are not persuasive.
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 argument that the improved tear strength of Aoyagi’s composition teaches away from the present invention because Aoyagi teaches carbon black instead of the claimed interconnected crystalline carbon filaments does not take into account the teachings of Van Raalten that are relied upon in the rejection, in combination with Aoyagi. Furthermore, the only composition in the present invention that displays an enhanced tear strength is Inventive Example 2, which is also the only example that contains a pyrazolone compound. This is consistent with the teachings of Aoyagi, wherein a pyrazolone compound is added for the purpose of improving tear strength.
Applicant’s argument of unexpected results (improved hysteresis, better flexibility and toughness, enhanced wire adhesion, and reduced stiffness and hardness) are not persuasive. Aoyagi and Van Raalten in combination teach several desirable properties corresponding to those cited in the remarks, such as high tear strength, low tan delta, high flexibility, and low stiffness. The fact that these properties are present in the current invention would be expected.
In response to applicant's argument that the claimed invention displays enhanced wire adhesion, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767