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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-4, 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 claims 1, 3-4, and 7-8, 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 preferably has a molecular weight of Mw = 1 x 106 g/mol, the second natural rubber component preferably has a molecular weight of Mw = 2 x 106 g/mol, wherein commercially available products with corresponding molecular weights may be used, such as the first natural rubber component being commercially available natural rubber with constant low viscosity, and the second natural rubber component being natural rubber of constant high viscosity, such as RSS1 or RSS3 type (Page 4). Moreover, it is known in the art that molecular weight is a primary factor influencing Mooney viscosity, as is also noted by Applicant’s specification (Pages 4, 8). In other words, Applicant’s specification clearly provides examples of natural rubbers that may be used that will satisfy the claimed molecular weight values for the first and second natural rubber components, wherein it is also known that molecular weight will influence Mooney viscosity. 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. Furthermore, 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. 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 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.
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 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 05/26/2026 have been fully considered but they are not persuasive.
On page 6 of the Remarks, Applicant argues “Ding necessarily and inevitably does not lead to the following features of amended claim 1” and that “Ding does not measure or disclose molecular weights, does not disclose methods for determining molecular weight, does not disclose viscosity ratios, and does not require bi-modality.”
As discussed above, 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 comprises natural rubber, 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. Applicant’s original specification also discloses that the first natural rubber component preferably has a molecular weight of Mw = 1 x 106 g/mol, the second natural rubber component preferably has a molecular weight of Mw = 2 x 106 g/mol, wherein commercially available products with corresponding molecular weights may be used, such as the first natural rubber component being commercially available natural rubber with constant low viscosity, and the second natural rubber component being natural rubber of constant high viscosity, such as RSS1 or RSS3 type. Accordingly, while Ding may not disclose the values for the molecular weights of the natural rubber RSS3, natural rubber ISO TSR20, natural rubber RSS1, and/or natural rubber RSS2, Ding discloses the exact natural rubbers that Applicant’s specification discloses as having the claimed molecular weight values. Additionally, as Ding discloses using different natural rubbers, wherein the natural rubbers are disclosed by Applicant has having different molecular weights, Ding also discloses that there is bi-modality. Furthermore, as discussed above in the rejection, it is known in the art that molecular weight is a primary factor influencing Mooney viscosity, as is also noted by Applicant’s specification. Accordingly, Ding also satisfies the properties for the viscosity based upon the disclosed natural rubbers for the same reasons as discussed above. Moreover, Ding need not disclose how the molecular weights of the natural rubbers are determined as that is a product-by-process limitation wherein determination of patentability is based on the product itself, and the patentability of a product does not depend on its method of production. See MPEP 2113.
The examiner notes under MPEP 2112.01, "[w]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. Applicant has not provided the requisite evidence. If Applicant believes that the products of the applicant and the prior art are not the same, a declaration stating as such may be filed for consideration by the examiner.
On page 6 of the Remarks, Applicant argues “[t]he focus is no longer on "selecting a mixing ratio," but rather on selecting specific molecular architectures with defined rheological separation.” Applicant further argues “MPEP 2144.05 applies only if: the parameter in question is known to be relevant to the result, and the prior art provides guidance or direction in this regard. Ding does not meet either of these criteria.”
The examiner refers to the detailed rejection and discussion above as to how Ding discloses the same natural rubbers as Applicant’s specification and thereby satisfies the same “molecular architectures with defined rheological separation.” Moreover, the examiner is unsure of which exact dual step criteria in 2144.05 Applicant is referring. The examiner notes that MPEP 2144.05(II)(B) requires “the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range.” As discussed above, 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.
On page 6 of the Remarks, Applicant argues “the bimodal distribution is now based on: quantified molecular weight data, a defined viscosity separation, and objective measurement methods. It is therefore neither a statement of intended use nor a purely functional claim feature.”
The examiner refers to the detailed rejection and discussion above regarding Ding’s disclosure of the same natural rubbers as Applicant’s specification and thereby how it will satisfy the claimed properties, including molecular weight and viscosity, and how measurement methods are product-by-process limitations. Moreover, the examiner notes that the claim limitation “such that a mixture of the first and second natural rubber components exhibit a bimodal molecular weight distribution” is still a statement 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 examiner further refers to the detailed rejection and discussed above as to how the structural claim limitations are met, and thereby the intended use limitation is also satisfied. Additionally, the newly added claim limitation “the molecular weight being determined by diffusion-sedimentation and/or osmosis” is a product-by-process limitation as discussed above. See further MPEP 2112.01, 2113. As the claims are directed to a repair patch (i.e., product) the examiner suggests Applicant focus on including claim limitations that modify the structure of the product and not those that are directed to use or process steps. For instance, specifying the structure and/or characteristics of the top layer of the patch to differentiate it from the top layer disclosed by DiRocco (e.g., the top layer is formed only on an upper surface of the intermediate layer without extending down and overlapping/covering the sides of the intermediate and bonding layers, and/or the top layer having no ready-made tack before and after repair, see Applicant’s Fig. 1 and Specification Page 7).
On page 7 of the Remarks, Applicant argues “[e]ven when combining DiRocco's teachings with Ding's: DiRocco does not mention targeted molecular weight architecture; Ding's adhesive for retreading does not require a controlled bimodal viscoelastic response; and there is no reasonable expectation of success for bonding a repair patch under localized stress.”
The examiner refers to the detailed rejection and discussion above regarding Ding’s disclosure of the same natural rubbers as Applicant’s specification and thereby how it will satisfy the claimed properties, including molecular weight architecture, bimodality, and viscosity. Moreover, Applicant alleges “there is no reasonable expectation of success for bonding a repair patch under localized stress” without explaining why and without providing further evidence. Accordingly, said statement is counselor’s opinion. Applicant has not provided any factual support or evidence for this statement, and thus it is attorney argument. Attorney arguments cannot take the place of evidence where the asserted relationship involves technical properties of materials. See MPEP 716.01(c)(II), 2145(I). Furthermore, the examiner has provided detailed discussion in the rejection and response above wherein, 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. If Applicant believes differently, a declaration stating as such may be filed for consideration by the examiner.
Applicant further 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.”
The reasoning or use in the prior art references does not need to be the same or identical to those discovered by Applicant so long as there is some teaching, suggestion, or motivation to make the combination, which the prior art references provide as discussed in the detailed rejection above. In particular, DiRocco discloses the base cushion gum (i.e., bonding) layer is preferably made of a resilient rubberlike material, such as natural rubber, and 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]). 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.
Applicant further argues “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.”
The examiner respectfully disagrees. As discussed above, both references relate to bonding rubber layers for tires. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). See also MPEP 2141.01(a)(I). In this case, both references are in the same field of endeavor as the claimed invention and each other (i.e., bonding rubber layers used in tires), even if they address different problems. Thereby, the references are very much related and not disparate. Moreover, the examiner notes that it was not a “generic functional difference” cited in the rejection, but instead was a reliance on the natural rubber types disclosed by the reference and those disclosed by Applicant, and noting that they will have the same properties as they were the same rubbers. 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.
Furthermore, in response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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). As discussed in the detailed rejection and response above, DiRocco was modified in view of Ding for the various advantages disclosed by Ding, and not based on improper hindsight reasoning. Applicant’s specification was merely relied upon to demonstrate that the prior art of record disclosed the same natural rubbers disclosed by Applicant and thereby would satisfy the claimed properties.
Applicant further argues “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.”
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, the detailed rejection and response above discuss how and why DiRocco would be modified in view of Ding for the advantages disclosed by Ding.
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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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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