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 Amendments and Arguments
Applicant’s amendments and arguments, filed August 19, 2025, with respect to the rejection(s) under 35 U.S.C. 112(d) have been fully considered and they are persuasive. Applicant has amended the claims such that the range for an amount of carbon black recited in claim 2 falls within and further limits the range recited in claim 1. Accordingly, the rejection is withdrawn.
Applicant’s amendments and arguments, filed August 19, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Minakoshi and Ichikawa (cited in the previous Office Action) have been fully considered and they are persuasive. Applicant has increased the claimed range for a total content of carbon black to 46 parts by mass or more and 100 parts by mass or less with respect to 100 parts by mass of the rubber component. Minakoshi teaches that the total amount of carbon black (i.e., the sum of a carbon black A and a carbon black B, A+B) may be within the range of greater than 20 and less than or equal to 40 phr ([0010]), which does not overlap with the amended range. However, after further consideration, a new grounds of rejection is made in view of Minakoshi, Ichikawa (cited in the previous Office Action), and Kushida et al. (JP2008088311A, English translation provided for citations, hereinafter referred to as “Kushida”).
Applicant’s arguments and amendments are considered fully responded to within the comments above and the rejections 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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over of Minakoshi et al. (JP2000230079, English translation provided for citations, hereinafter referred to as “Minakoshi”) in view of Kushida et al. (JP2008088311A, English translation provided for citations, hereinafter referred to as “Kushida”) and further in view of Ichikawa (US20140005319, hereinafter referred to as “Ichikawa”).
As to Claim 1: Minakoshi teaches a rubber composition suitable for tires comprising a natural rubber and a butadiene rubber which is blended with carbon black ([0006]). Minakoshi teaches various exemplary compositions wherein the proportion of natural rubber is less than 80% by mass (see [0017], Table 1, Row 1). Minakoshi further teaches that the carbon black may be a mixture of two types of carbon black having different nitrogen adsorption specific surface areas (N2SA), wherein one carbon black exhibits an N2SA of less than 120 m2/g and the other carbon black exhibits an N2SA of 120 m2/g or more ([0006]), which overlaps with the claimed ranges for a nitrogen adsorption specific surface area of the claimed carbon black A and carbon black B. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Minakoshi suggests, that the overlapping portion is a useable range for the nitrogen adsorption specific surface areas of two different carbon black additives to rubber compositions with properties balanced to exhibit both wear resistance and ice/snow performance ([0012]). Minakoshi does not require a third carbon black or include further carbon blacks within exemplary compositions (Table 1), which reads on wherein the claimed carbon black C is 0.
Minakoshi further teaches that the total amount of carbon black (i.e., the sum of a carbon black A and a carbon black B, A+B) may be within the range of greater than 20 and less than or equal to 40 phr ([0010]), which does not overlap with the claimed range. However, Minakoshi merely notes that including a higher amount of carbon black increases hardness of the rubber which decreases performance on snow and ice ([0011]).
Kushida teaches a carbon black that can be compounded with rubber to impart a balance of high abrasion resistance and low rolling resistance when used in treads for automobile tires ([0001]). Kushida further teaches that the composition contains 20 to 150 parts by weight of total carbon black per 100 parts by weight of rubber ([0015]). Minakoshi and Kushida are considered analogous art because they are directed towards the same field of endeavor, namely, rubber compositions comprising carbon black additives for use in tires. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to increase the total amount of carbon black within the composition of Minakoshi with reasonable expectation of success at least up to 150 parts by weight per 100 parts by weight of rubber, such as that taught by Kushida, and the motivation would have been that Kushida teaches that such an amount of carbon black is known within the art to provide a balance between reinforcing effect and kneading processability ([0032]) as well as high abrasion resistance and low rolling resistance when used in treads for automobile tires ([0001]). While Minakoshi notes that carbon black in excess of 40 phr increases hardness of the rubber which decreases performance on snow and ice ([0011] of Minakoshi), doing so would not appear to render the composition of Minakoshi unusable for its intended purpose of forming a tire. Accordingly, a person having ordinary skill in the art would understand based on the teaching of Kushida that increasing the amount of carbon black within the composition of Minakoshi beyond 40 phr, such as up to 150 phr, would impart high abrasion resistance and low rolling resistance (see [0001] of Kushida) at the cost of performance on snow and ice ([0011] of Minakoshi).
Minakoshi is silent towards the toluene coloring transmittance of the carbon black.
Ichikawa teaches a related rubber composition comprising a carbon black component for a tire having balanced abrasion resistance properties (Abstract). Ichikawa further teaches that the carbon black component preferably has a light transmittance of toluene extract (interpreted as analogous to the claimed toluene coloring transmittance) of 80% or higher, which is the same as the claimed range. Minakoshi and Ichikawa are considered analogous art because they are directed towards the same field of endeavor, namely rubber compositions for tires. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a carbon black having a toluene coloring transmittance/light transmittance of toluene extract of 80% or more for at least the carbon black component of Minakoshi that reads on the claimed carbon black A, and the motivation would have been, as Ichikawa suggests, carbon black having a light transmittance of toluene extract of 80% or more exhibit improved abrasion resistance ([0042]), which is a property explicitly sought by Minakoshi ([0001]).
As to Claim 2: Minakoshi, Kushida, and Ichikawa teach the rubber composition of claim 1 (supra).
Minakoshi further teaches that the total amount of carbon black (i.e., the sum of a carbon black A and a carbon black B, A+B) may be within the range of greater than 20 and less than or equal to 40 phr ([0010]), which does not overlap with the claimed range. However, Minakoshi merely notes that including a higher amount of carbon black increases hardness of the rubber which decreases performance on snow and ice ([0011]).
Kushida teaches a carbon black that can be compounded with rubber to impart a balance of high abrasion resistance and low rolling resistance when used in treads for automobile tires ([0001]). Kushida further teaches that the composition contains 20 to 150 parts by weight of total carbon black per 100 parts by weight of rubber ([0015]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to increase the total amount of carbon black within the composition of Minakoshi at least up to 100 parts by weight per 100 parts by weight of rubber, such as that taught by Kushida, and the motivation would have been that Kushida teaches that such an amount of carbon black is known within the art to provide a balance between reinforcing effect and kneading processability ([0032]) as well as high abrasion resistance and low rolling resistance when used in treads for automobile tires ([0001]). While Minakoshi notes that carbon black in excess of 40 phr increases hardness of the rubber which decreases performance on snow and ice ([0011] of Minakoshi), doing so would not appear to render the composition of Minakoshi unusable for its intended purpose of forming a tire. Accordingly, a person having ordinary skill in the art would understand based on the teaching of Kushida that increasing the amount of carbon black within the composition of Minakoshi beyond 40 phr, such as up to 100 phr, would impart high abrasion resistance and low rolling resistance (see [0001] of Kushida) at the cost of performance on snow and ice ([0011] of Minakoshi).
As to Claim 3: Minakoshi, Kushida, and Ichikawa teach the rubber composition of claim 1 (supra).
Minakoshi further teaches an exemplary composition comprising 20 phr of carbon II (analogous to the claimed carbon black A) and 10 phr of carbon I (analogous to the claimed carbon black B) ([0017], Table 1, Example 3), which yields a ratio of
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As to Claim 5: Minakoshi, Kushida, Ichikawa teach the rubber composition of claim 2 (supra).
Minakoshi further teaches an exemplary composition comprising 20 phr of carbon II (analogous to the claimed carbon black A) and 10 phr of carbon I (analogous to the claimed carbon black B) ([0017], Table 1, Example 3), which yields a ratio of
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Claims 4, and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over of Minakoshi et al. (JP2000230079, English translation provided for citations, hereinafter referred to as “Minakoshi”) in view of Kushida et al. (JP2008088311A, English translation provided for citations, hereinafter referred to as “Kushida”) and further in view of Ichikawa (US20140005319, hereinafter referred to as “Ichikawa”).
As to Claim 4: Minakoshi teaches a rubber composition and tires formed thereof ([0029]) comprising a natural rubber and a butadiene rubber which is blended with carbon black ([0006]). Minakoshi teaches various exemplary compositions wherein the proportion of natural rubber is less than 80% by mass (see [0017], Table 1, Row 1). Minakoshi further teaches that the carbon black may be a mixture of two types of carbon black having different nitrogen adsorption specific surface areas (N2SA), wherein one carbon black exhibits an N2SA of less than 120 m2/g and the other carbon black exhibits an N2SA of 120 m2/g or more ([0006]), which overlaps with the claimed ranges for a nitrogen adsorption specific surface area of the claimed carbon black A and carbon black B. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Minakoshi suggests, that the overlapping portion is a useable range for the nitrogen adsorption specific surface areas of two different carbon black additives to rubber compositions with properties balanced to exhibit both wear resistance and ice/snow performance ([0012]). Minakoshi does not require a third carbon black or include further carbon blacks within exemplary compositions (Table 1), which reads on wherein the claimed carbon black C is 0.
Minakoshi further teaches that the total amount of carbon black (i.e., the sum of a carbon black A and a carbon black B, A+B) may be within the range of greater than 20 and less than or equal to 40 phr ([0010]), which does not overlap with the claimed range. However, Minakoshi merely notes that including a higher amount of carbon black increases hardness of the rubber which decreases performance on snow and ice ([0011]).
Kushida teaches a carbon black that can be compounded with rubber to impart a balance of high abrasion resistance and low rolling resistance when used in treads for automobile tires ([0001]). Kushida further teaches that the composition contains 20 to 150 parts by weight of total carbon black per 100 parts by weight of rubber ([0015]). Minakoshi and Kushida are considered analogous art because they are directed towards the same field of endeavor, namely, rubber compositions comprising carbon black additives for use in tires. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to increase the total amount of carbon black within the composition of Minakoshi at least up to 150 parts by weight per 100 parts by weight of rubber, such as that taught by Kushida, and the motivation would have been that Kushida teaches that such an amount of carbon black is known within the art to provide a balance between reinforcing effect and kneading processability ([0032]) as well as high abrasion resistance and low rolling resistance when used in treads for automobile tires ([0001]). While Minakoshi notes that carbon black in excess of 40 phr increases hardness of the rubber which decreases performance on snow and ice ([0011] of Minakoshi), doing so would not appear to render the composition of Minakoshi unusable for its intended purpose of forming a tire. Accordingly, a person having ordinary skill in the art would understand based on the teaching of Kushida that increasing the amount of carbon black within the composition of Minakoshi beyond 40 phr, such as up to 150 phr, would impart high abrasion resistance and low rolling resistance (see [0001] of Kushida) at the cost of performance on snow and ice ([0011] of Minakoshi).
Minakoshi is silent towards the toluene coloring transmittance of the carbon black.
Ichikawa teaches a related rubber composition comprising a carbon black component for a tire having balanced abrasion resistance properties (Abstract). Ichikawa further teaches that the carbon black component preferably has a light transmittance of toluene extract (interpreted as analogous to the claimed toluene coloring transmittance) of 80% or higher, which is within the claimed range. Minakoshi and Ichikawa are considered analogous art because they are directed towards the same field of endeavor, namely rubber compositions for tires. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a carbon black having a toluene coloring transmittance/light transmittance of toluene extract of 80% or more for at least the carbon black component of Minakoshi that reads on the claimed carbon black A, and the motivation would have been, as Ichikawa suggests, carbon black having a light transmittance of toluene extract of 80% or more exhibit improved abrasion resistance ([0042]), which is a property explicitly sought by Minakoshi ([0001]).
As to Claim 6: Minakoshi, Kushida, and Ichikawa teach the rubber composition of claim 2 (see above).
Minakoshi further teaches tires formed from said rubber composition ([0029]), which reads on the claimed tire using the rubber composition of claim 2.
As to Claim 7: Minakoshi, Kushida, and Ichikawa teach the rubber composition of claim 3 (see above).
Minakoshi further teaches tires formed from said rubber composition ([0029]), which reads on the claimed tire using the rubber composition of claim 3.
As to Claim 8: Minakoshi, Kushida, and Ichikawa teach the rubber composition of claim 5 (see above).
Minakoshi further teaches tires formed from said rubber composition ([0029]), which reads on the claimed tire using the rubber composition of claim 5.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767