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
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 non-obviousness.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020-105379A (hereinafter, TAKAHASHI).
Regarding claims 1, 3, 5, and 7-9, TAKAHASHI teaches a method for producing a rubber composition for a tire (e.g., pneumatic tire) an aromatic vinyl-conjugated diene copolymer is hydrogenated copolymer, which is obtained by gel permeation chromatography. A rubber component containing a hydrogenated copolymer having a measured weight average molecular weight of 300,000 or more and a hydrogenation rate of a conjugated diene portion of 80 mol% or more, and a compounding agent excluding a crosslinking agent were blended which is done in a non-pro kneading step of kneading with a closed kneader (i.e., Banbury mixer) (Abstract; pp. 2, 5, and 7). The blending ratio of the hydrogenated copolymer in the rubber component is 70 to 100% by mass (p. 7). The compounding agent includes reinforcing fillers such as silica (p. 7). In the non-pro kneading step, the kneaded material is discharged when a temperature of 150oC or less (p. 7).
In the professional kneading step, a crosslinking compound agents is added to the kneaded product obtained in the non-pro kneading step and kneaded. The crosslinking compound include vulcanizing agents and vulcanization accelerators including sulfenamide, thiuram, thiazole, thiourea, guanidine, dithiocarbamate (pp. 7-8). The discharge temperature is not limited, preferably 80 to 120oC (p. 7). The professional kneading step satisfies the claimed third step of the present invention.
The method for producing a rubber composition for a tire can be used for various tires of passenger cars, light trucks, buses, and the like (p. 9).
However, TAKAHASHI does not specifically teach a first step of mixing 50 mass% to 95% of 100 mass% of the hydrogenated copolymer with a total amount of the silica and a second step of mixing a rest of the hydrogenated copolymer with mixture obtained in the first step (claim 1) and wherein a ratio of the hydrogenated copolymer to be compounded in the first step is 50 mass% to 90 mass% of 100 mass% of the hydrogenated copolymer (claim 7).
Given TAKAHASHI teaches the non-pro kneading step of kneading the rubber component containing a hydrogenated copolymer having a measured weight average molecular weight of 300,000 or more and a hydrogenation rate of a conjugated diene portion of 80 mol% or more, and a compounding agent (e.g., silica) (pp. 5 and 7). The blending ratio of the hydrogenated copolymer in the rubber component is 70 to 100% by mass (p. 7), it would have been obvious to a person of ordinary skill in the art to expect the non-pro kneading step of TAKAHASHI to satisfy the first and second steps of the present invention because the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959). Furthermore, changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex Parte Rubin, 128 USPQ 440,441,442 (POBA 1959). MPEP 2144.04(C).
Regarding claims 2, 4, and 6, as discussed in paragraphs 6-8 above, More specifically, TAKAHASHI teaches a non-pro kneading step and a professional kneading step wherein the non-pro kneading step, the kneaded material (rubber component containing hydrogenated copolymer and silica) is discharged when a temperature of 150oC or less (p. 7) and in the professional kneading step (mixture of rubber containing hydrogenated copolymer and silica is combined with the crosslinking compound) the discharge temperature is not limited, preferably 80 to 120oC (p. 7). The non-pro kneading step reads on the discharge temperature in the first step and the professional kneading step reads on the discharge temperature in the second step.
Response to Arguments
Applicant's arguments filed 08/05/2025 have been fully considered but they are not persuasive. In view of the amendments received 08/05/2025, the Office Action mailed 06/09/2025 has been modified accordingly. The response is insufficient to rebut the obviousness rejection. Despite the applicant’s arguments in view of the teachings of the prior art, the position is maintained.
The applicant argues that “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results,” the present application provides compelling evidence that the claimed two-step mixing process yields unexpected results not taught or suggested by TAKAHASHI. More specifically, in Table 1 of the application compares Examples 1-5 (implanting the claimed two-step mixing method) with Comparative Example 3 (which uses a single-step mixing process in which 100% hydrogenated SBR is added at once). The data show that the claimed two-step process significantly improves fuel cost performance and abrasion resistance, representing a non-obvious technical advance over the single-step approach. Specifically, Table 1 demonstrates unexpected results.
The examiner has considered the applicant’s examples for a showing of unexpected results but the examples are not commensurate in scope with the claims because the claims are not limited to the specific component (i.e., hydrogenated SBR ) in Table 1 of the present specification. Therefore, it has been held that to overcome a reasonable case of prima facie obviousness given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. More specifically, the claims recite, “a rubber component of a hydrogenated aromatic vinyl-conjugated diene copolymer,” however, the Examples and Comparative Examples only use a specific rubber component (i.e., hydrogenated SBR) and SBR (non-hydrogenated) to show unexpected results which is not commensurate in scope for the broadly claimed rubber component. Therefore, until further data is shown, the unexpected results is only true for hydrogenated SBR and not the broadly claimed rubber component.
THIS ACTION IS MADE FINAL. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763