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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/08/2025 has been entered.
Claim Objections
Claim 10 is objected to because of the following informalities: the phrase “a filler system of a precipitated silica of 5% to 15%, a silica of 20% to 30%, and a colourant” in lines 2-3 should be written as –a filler system of 5% to 15% of a precipitated silica, 20% to 30% of a silica, and a colourant— for grammatical clarity. Appropriate correction is required.
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.
Claim(s) 1-4, 6-8, and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over DiRocco et al. (US 4333508) (of record) and Ding et al. (CN 103013382, see machine translation) (of record).
Regarding claim 1, DiRocco discloses a repair patch (Figs. 1-4: 10) for an elastomeric element, particularly for a vehicle tire (Abstract), comprising: a top layer (Figs. 2-4: 34), a base cushion gum (i.e., bonding) layer (Figs. 2-4: 23) for covering a wall (Figs. 1, 3-4: 45) of the elastomeric element (Fig. 1: 12) (Col. 3 lines 30-36, 51-61: wherein the cushion gum layers are held together by the natural tack of the rubber and the patch on the tire is cured, thereby forming a bonding layer at the base cushion gum layer with the tire surface), and at least one intermediate layer (Figs. 2-4: 25, 26, 27, 28, 29, 30, 31) disposed between the bonding layer (Figs. 2-4: 23) and the top layer (Figs. 2-4: 34) (Col. 2 lines 7-10).
DiRocco further discloses that the base cushion gum (i.e., bonding) layer is preferably made of a resilient rubberlike material, such as natural rubber (Col. 3 lines 10-16). However, DiRocco does not expressly recite that, prior to vulcanization with the elastomeric element, the bonding layer has a first and a second natural rubber component, wherein the first natural rubber component has a lower molecular weight Mw than the second natural rubber component.
Ding discloses an adhesive (i.e., bonding layer) for a pre-vulcanized tread which does not generate formaldehyde gas during the rubber compound mixing process and has high bonding strength ([0013]), wherein the bonding layer comprises natural rubber ([0014]-[0016]), and wherein the natural rubber can be one or more of natural rubber RSS3, natural rubber ISO TSR20, natural rubber RSS1, and/or natural rubber RSS2 ([0043]). In other words, Ding discloses prior to vulcanization with the retread (i.e., elastomeric element), the bonding layer has a first and a second natural rubber component. Applicant’s original specification also discloses that the first natural rubber component may be commercially available natural rubber with constant low viscosity, and the second natural rubber component may be natural rubber of constant high viscosity, such as RSS1 or RSS3 type (Page 4). Ding discloses that the bonding layer may include a first natural rubber component of natural rubber ISO TSR20 (i.e., commercially available natural rubber with constant low viscosity) and a second natural rubber component of RSS1 or RSS3, as is also disclosed by Applicant’s specification. Case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. In this case, one of ordinary skill in the art would readily recognize, or alternatively find obvious, that Ding discloses the first natural rubber component has a lower molecular weight Mw than the second natural rubber component because the same types of natural rubber may be used as disclosed by Ding as is disclosed by Applicant’s specification. Although Ding discloses a bonding layer for retreading a tire with a rubber tread band, rather than a bonding layer for a rubber tire patch, one of ordinary skill would readily recognize that the advantages of not generating formaldehyde gas during the rubber compound mixing process and having high bonding strength would also be applicable to and advantageous for bonding a tire patch to a tire as it would for bonding a retread rubber to a tire. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the bonding layer of DiRocco so as to have the first and second natural rubber components as taught by Ding for the advantages as discussed above.
Ding further discloses that a ratio between the first and second natural rubber components can be any ratio ([0043]). In other words, a proportion of the first natural rubber component based on the total mass of the first and second natural rubber components, and a proportion of the second natural rubber component based on the total mass of the first and second natural rubber components may be any desired amount. While Ding does not explicitly disclose the value for a ratio between the amount of first and second natural rubber component based on the total mass of the first and second natural rubber components, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said ratio. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize a proportion of the first natural rubber component based on the total mass of the first and second natural rubber components, and a proportion of the second natural rubber component based on the total mass of the first and second natural rubber components as Ding discloses any ratio between the two natural rubber components may be used. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for a proportion of the first natural rubber component based on the total mass of the first and second natural rubber components, and a proportion of the second natural rubber component based on the total mass of the first and second natural rubber components.
The limitation “such that a mixture of the first and second natural rubber components has a bimodal molecular weight distribution” is a recitation of intended use that does not require any additional structure to the repair patch and bonding layer disclosed by DiRocco in view of Ding. The recitation does not result in structural difference between the claimed invention and the prior art because Ding discloses a mixture of a second natural rubber component and a first natural rubber component having a lower molecular weight than the second natural rubber component, which is capable of having a bimodal molecular weight distribution. Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. In this case, because Ding discloses a mixture of a second natural rubber component and a first natural rubber component having a lower molecular weight than the second natural rubber component. Thereby, one of ordinary skill in the art would readily recognize, or alternatively find obvious, that the mixture of the first and second natural rubber components will have a bimodal molecular weight distribution.
Regarding claims 2-4 and 7-8, as discussed above in claim 1, Applicant’s original specification also discloses that the first natural rubber component may be commercially available natural rubber with constant low viscosity, and the second natural rubber component may be natural rubber of constant high viscosity, such as RSS1 or RSS3 type (Page 4). Ding discloses that the bonding layer may include a first natural rubber component of natural rubber ISO TSR20 (i.e., commercially available natural rubber with constant low viscosity) and a second natural rubber component of RSS1 or RSS3, as is also disclosed by Applicant’s specification. Case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. In this case, one of ordinary skill in the art would readily recognize, or alternatively find obvious, that Ding discloses a Mooney viscosity of the first natural rubber component and the second natural rubber component is different by at least a factor of 2 because the same types of natural rubber may be used by Ding as is disclosed by Applicant’s specification. For the same reasons, the Mooney viscosity ML=1+4/100 * C of the first natural rubber component may be 35 to 40 MU, the Mooney viscosity ML=1+4/100 * C of the second natural rubber component may be 70 to 90 MU, the first natural rubber component has a molecular weight of Mw = 1 x 106 g/mol, and the second natural rubber component may have a molecular weight of Mw = 2 x 106 g/mol.
The examiner notes that the claim limitation “the molecular weight is determined by diffusion-sedimentation and/or osmosis” is a product-by-process limitation wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In this case, the claim limitation does not require a process step, but rather the structure that is implied by the step (i.e., the first natural rubber component has a molecular weight, and the second natural rubber component has a molecular weight). Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01. The structure that is implied by the step (i.e., the first natural rubber component has a molecular weight, and the second natural rubber component has a molecular weight) is clearly present in modified DiRocco as discussed above because DiRocco in view of Ding discloses the bonding layer having a first and second natural component, both of which will necessarily have a molecular weight. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that modified DiRocco discloses, or is at least capable of, providing the molecular weight is determined by diffusion-sedimentation and/or osmosis.
Regarding claim 6, Ding further discloses the first natural rubber component and/or the second natural rubber component consist of a single natural rubber ([0014]-[0016], [0043]).
Regarding claim 11, Ding further discloses the bonding layer comprises 2 to 3.3% sulfur ([0014]-[0015], [0025]), which overlaps with the claimed range of at least 2%.Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of sulfur in the bonding layer.
Regarding claim 12, DiRocco further discloses a removable protective film is provided (Col. 3 lines 54-57).
The limitation “which protects the bonding layer from contamination until it is used” is a recitation of intended use that does not require any additional structure to the repair patch disclosed by DiRocco. The recitation does not result in structural difference between the claimed invention and the prior art because DiRocco discloses a repair patch with a removable protective film which is capable of protecting the bonding layer from contamination until it is used.
Regarding claim 13, DiRocco further discloses the intermediate layer (Figs. 2-4: 25, 26, 27, 28, 29, 30, 31) comprises a plurality of fibrous inserts arranged in a substantially structured manner (Figs. 2-4) (Col. 2 lines 7-10, 15-60).
Regarding claim 14, DiRocco further discloses the repair patch is used for repairing a damaged vehicle tire (Col. 1 lines 20-22, 61-64).
The examiner further notes that the limitation “the repair patch is used for repairing a damaged vehicle tire” is a recitation of intended use that does not require any additional structure to the repair patch disclosed by DiRocco.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over DiRocco et al. (US 4333508) (of record) and Ding et al. (CN 103013382, see machine translation) (of record) as applied to claim 1 above, and further in view of any of Kono et al. (JP 2011207165, see machine translation) (of record), Fujiwara et al. (JP 2006272809, see machine translation) (of record), and/or Delfino et al. (US 20080029215) (of record).
Regarding claim 10, Ding further discloses the bonding layer additionally comprises a filler system of a precipitated silica of 3% to 8% ([0014]-[0015], [0032], [0018]), which overlaps with the claimed range of 5% to 15%, as well as carbon black and zinc oxide (i.e., colorants) ([0017], [0019], [0031], [0033]). Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of precipitated silica in the bonding layer.
Ding further discloses that the bonding layer comprises 30% to 42% carbon black ([0017], [0031]). However, modified DiRocco does not expressly recite that the bonding layer additionally comprises 20% to 30% of a silica.
Nevertheless, it is generally known in the tire art to provide silica interchangeably with carbon black as a reinforcing filler/agent in a cushion or bonding layer provided on a tire. For instance, Kono discloses a tire comprising a cushion rubber, wherein carbon black or silica may be used as the reinforcing agent, wherein silica is more preferable ([0077]). Additionally or alternatively, Fujiwara discloses a tire having an adhesive layer that improves tackiness and peel resistance, wherein the adhesive includes inorganic filler, such as silica, and/or carbon black ([0029]). Additionally or alternatively, Delfino discloses that rubber compositions used in tires are known to include reinforcing fillers, such as carbon black or silica ([0074], [0109]). Case law holds that it is prima facie obvious to substitute equivalents known for the same purpose. See MPEP 2144.06. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify the bonding layer of modified DiRocco in order to provide silica in place of carbon black as the reinforcing filler, as they are known to be equivalents that are interchangeable for the same purpose in the tire art, as taught by the prior art above. Accordingly, modified DiRocco discloses that the bonding layer may include silica in the amount of 30% to 42%, which overlaps with the claimed range of 20% to 30%. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of silica in the bonding layer.
Response to Arguments
Applicant's arguments filed 09/30/2025 have been fully considered but they are not persuasive.
On page 7 of the Remarks, Applicant argues “[t]he technical effect achieved by the … newly introduced distinguishing features can be taken directly from the description of the present patent application, reciting, ‘Thus, a good adhesive strength and an improved intensity of load may be advantageously ensured at the same time’” wherein “[t]he objective technical problem resulting from said technical effect is to design a repair patch that adheres better and is more resilient than previous products.”
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. The burden is on Applicant to establish that the results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." See MPEP 716.02(b). Applicant has the burden of explaining any data they proffer as evidence of non-obviousness. See MPEP 716.02(b)(II). Moreover, whether the 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 715.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(II). The examiner refers to pages 10-12 of the 07/08/2025 Final Rejection as to why Applicant has not established criticality and unexpected results.
The examiner further notes that Applicant is arguing the newly introduced distinguishing features (i.e., a proportion of the first natural rubber component is 44 wt.% based on a total mass of the first and second natural rubber components, and a proportion of the second natural rubber component is 56 wt.% based on the total mass of the first and second natural rubber components) result in “a good adhesive strength and an improved intensity of load may be advantageously ensured at the same time” (Specification Page 5 first paragraph). However, the paragraph cited by Applicant recites “the bonding layer's adhesive strength may be adjusted via the proportion of the first natural rubber component and the intensity of load via the second natural rubber component … the proportion of the first and second natural rubber components in the mixture is not limited. However, in a preferred embodiment, a proportion of the first natural rubber component may be 25 to 50 wt% based on the total mass of the first and second natural rubber components, and a proportion of the second natural rubber component may be 50 to 75% wt% based on the total mass of the first and second natural rubber components. Particularly preferably the proportion of the first natural rubber component may be 35 to 45 wt% and the proportion of the second natural rubber component may be 55 to 65 wt%. Even further particularly preferably the proportion of the first natural rubber component may be 44 wt% and the proportion of the second natural rubber component may be 56 wt%. Advantageously, however, greater importance is attached to the adhesive strength, so that the proportion of the first natural rubber component is selected so that the adhesive strength is high even with improved intensity of load.” Such disclosure establishes that these values represent preferred embodiments, rather than a critical or narrowly required composition. The original disclosure does not attribute any unexpected results, technical threshold, or unique effect to the claimed 44 wt%/56 wt% proportions as compared to surrounding ranges. Instead, the disclosure teaches that adhesive strength and load resistance may be achieved across a range of proportions, indicating that the weight percentages may be adjusted as a matter of routine optimization. Accordingly, the cited paragraph teaches that the claimed proportions are a selection from a broader, non-limited disclosure and therefore do not distinguish the claimed proportions over the prior art.
On page 7 of the Remarks, Applicant argues that Table 2 of Ding discloses “in column 4: a mixture of 60% RSS3 and 40 %RSS2” and “in column 6: a mixture of 30% RSS3 and 30% RSS2 and 20 %ISOTSR20 and 20 %ISO TSR10,” wherein “Ding gives no pointer to the specific composition of amended claim 1 having ‘44 wt.% based on the total mass of the first and second natural rubber components, and a proportion of the second natural rubber component is 56 wt.% based on the total mass of the first and second natural rubber components.’” Applicant further argues “Ding give[s] no hint that relates its compositions of table 2 as indicated above with the technical effect of the indicated distinguishing features of amended claim 1, at all.”
By column 4, the examiner assumes Applicant intended Example 2 of Table 2 ([0060]), and by column 6, the examiner assumes Applicant intended Example 4. While Ding may teach the two example embodiments as cited by Applicant, these are merely preferable examples and do not explicitly limit the disclosure to such limitations. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. It is also well settled that an applied reference may be relied upon for all that it would have reasonably suggested to one of the ordinary skill in the art, including not only preferred embodiments, but less preferred and even non-preferred. See MPEP 2123. Furthermore, as set forth in the detailed rejection above, Ding discloses adhesive compositions comprising natural rubber components selected from RSS grades and ISOTSR grades, including RSS3, RSS2, RSS1, ISOTSR20, and ISOTSR10, and further teaches that these natural rubbers may be used alone or in combination. Table 2 of Ding provides exemplary mixtures of different natural rubber grades in varying proportions, thereby evidencing that the relative ratio between first and second natural rubbers is a variable parameter. Moreover, Ding does not teach away from the claimed ranges as it does not criticize, discredit, or discourage alternative natural rubber combinations or ratios. Rather, it affirmatively teaches flexibility in selecting natural rubber types and proportions, indicating that different ratios are workable depending on application needs. With respect to the asserted technical effects, Ding is directed to adhesive compositions for tire applications and inherently seeks to provide sufficient adhesive strength and durability under load. Applicant has not provided evidence demonstrating that the alleged effects are uniquely achieved at a ratio of 44 wt%/56 wt%, or that compositions within the ranges exemplified by Table 2 of Ding would fail to achieve comparable results. In the absence of such evidence, the claimed ratio represents routine optimization of a result-effective variable.
On page 7 of the Remarks, Applicant further argues “the compositions of table 2 are not even made intendedly. The difference between RSS3 and RSS4, as well as between TSR20 and TSR10, is regarding its quality standards. RSS3, for example, is a typical mid-range grade of RSS where small air bubbles or inclusions may occur, but overall, the material must be dry, solid, and free of stains, splashes, sand, or packaging contamination. The molecular weight is out of focus in that point of view. Therefore, with regard to obviousness, Ding does not even render obvious the feature of claim 1 of a bimodal molecular weight distribution with regard to the two rubbers comprised.” Applicant thereby argues that “Ding cannot prompt the skilled person towards the specific distinguishing features of amended claim 1.”
As previously discussed, Ding discloses adhesive compositions comprising natural rubber types selected from RSS grades and ISOTSR grades, and teaches that such rubbers may be used alone or in combination. Table 2 of Ding provides examples of mixtures of different natural rubber grades, regardless of whether Applicant characterizes such mixtures as “intentional”. The disclosure of mixtures in Table 2 evidences that combining different natural rubber grades is contemplated and enabled by Ding. Applicant’s arguments that the differences between RSS and ISOTSR grades are merely quality-based and unrelated to molecular weight is unsupported by objective evidence. As previously stated, Applicant’s own specification identifies RSS1 and RSS3 as high molecular weight natural rubbers, and ISOTSR20 is a known commercially available low molecular weight natural rubber. Ding discloses these same rubber types and teaches their use in adhesive compositions. Thus, Ding discloses the same categories of natural rubbers relied upon by Applicant to define the claimed bimodal molecular weight distribution. Moreover, the examiner notes that Applicant has not provided any factual support regarding the statement “RSS3, for example, is a typical mid-range grade of RSS where small air bubbles or inclusions may occur, but overall, the material must be dry, solid, and free of stains, splashes, sand, or packaging contamination [and thereby the] molecular weight is out of focus in that point of view,” and thus it is counselor’s opinion. See MPEP 716.01(c)(II), 2145(I). It is further unclear why, even if this statement were true and supported, RSS3 being a typical mid-grade of RSS needing certain requirements would put the molecular weight out of focus. If there is more as to this argument, Applicant is invited to further provide evidence and support, as well as further discussion and explanation as to this point. Further, Ding does not teach away from the claimed invention because it does not criticize, discredit, or discourage the use of different natural rubber grades in combination, nor does it suggest that mixing such rubbers would be undesirable or inoperable. To the contrary, it teaches that various RSS and ISOTSR rubbers may be combined in different ratios to achieve suitable adhesive performance. Accordingly, the combination of high and low molecular weight natural rubbers is known and taught by Ding, and the selection of particular ratios represents routine optimization of a result-effective variable.
On page 8 of the Remarks, Applicant argues “the alleged combination of the references does not even recognize the problems addressed by the claims, let alone teach or suggest (and thus provides a much different structure than) a solution similar to that of the claims.”
As discussed in the previous Final Rejection and reiterated here for convenience, it is not necessary that the prior art suggest to achieve the same advantage or result discovered by Applicant. In this case, the prior art of record discloses all of the current claim limitations as discussed in the detailed rejection above. Applicant alleges that the combination of references provides a much different structure than the claimed invention, but does not elaborate or explain how or why.
On page 8 of the Remarks, Applicant argues “that these references are unrelated and would not have been combined as alleged by the Examiner since the configuration defined in the claims is much more precise than the generic functional difference articulated by the Examiner in the rejection. Thus, a person of ordinary skill in the art would not have considered combining these disparate references, absent impermissible hindsight.”
As discussed in the previous Final Rejection and reiterated here for convenience, the examiner respectfully disagrees that the references are unrelated and disparate. DiRocco discloses a bonding layer for a rubber tire patch and Ding discloses a bonding layer for retreading a tire with a rubber tread band. While they may be bonding layers used in different areas of a tire, they are both still directed at solving the same problem of ensuring improved and sufficient bonding of tire components within the same field of endeavor. Accordingly, one of ordinary skill would readily recognize that the advantages of not generating formaldehyde gas during the rubber compound mixing process and having high bonding strength would also be applicable to and advantageous for bonding a tire patch to a tire as it would for bonding a retread rubber to a tire. The examiner further notes that a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. MPEP 2141.01(a)(I). In this case, both references are from the same field of endeavor as the claimed invention (i.e., bonding tire components), even if they might allegedly address different problems. Moreover, both references are also reasonably pertinent to the problem faced by the inventor, which is bonding layers of tire components together. Thereby, both tests are satisfied and the references are considered to be analogous art.
Furthermore, as discussed in the previous Final Rejection and reiterated here for convenience, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner refers to the detailed rejection above (as well as the discussion below) as to how the claim limitations are met by the prior art of record, what each prior art references discloses, and how the prior art is modified relying on the advantages taught by the prior art to satisfy the claim limitations.
On page 8 of the Remarks, Applicant argues “that there is no motivation or suggestion in the references or elsewhere (and thus no predictability for one of ordinary skill in the art) to urge the combination as alleged by the Examiner.”
As discussed in the previous Final Rejection and reiterated here for convenience, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ding discloses an adhesive (i.e., bonding layer) for a pre-vulcanized tread which does not generate formaldehyde gas during the rubber compound mixing process and has high bonding strength, wherein the bonding layer has a first and a second natural rubber component, and wherein the first natural rubber component has a lower molecular weight Mw than the second natural rubber component. As discussed in the detailed rejection above, one of ordinary skill in the art would have found it obvious to modify the bonding layer of DiRocco in order to have the first and second rubber components taught by Ding so as to not generate formaldehyde gas during the rubber compound mixing process and so as to have high bonding strength.
Contact Information
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749