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 Objections
Claims 20, 21 are objected to because of the following informalities: the parentheses with “see paragraph numbers” should not be included in the claims, please remove them accordingly.
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.
Claims 1, 6, 10, 15, 19, 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Naomi (JP2014037550, herein Naomi, a machine translation is being used for citation purpose).
Regarding claims 1, 6, 19, Naomi teaches a rubber composition [0015] comprising:
Silica [0091] in a diene rubber [0026].
Naomi teaches “3-aminopropyltriethoxysilane” [0099] reads on the nitrogen-containing alkoxysilane; “octadecyltriethoxysilane” [0094] reads on alkylalkoxysilane, structure see below [n-Octadecyltriethoxysilane AldrichCPR 7399-00-0], wherein, the C18 chain lies in the claimed R1 range.
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Naomi teaches “20 to 70 parts by mass of an inorganic reinforcing agent (C) per 100 parts by weight of a vulcanizable rubber (A), the amount of silica in the inorganic reinforcing agent (C) being 80 mass% or less” [0015], wherein the range of silica is 20%x0.8=16% to 70%x0.8=56%, lies in the claimed range.
Naomi teaches “The silane coupling agent may be a combination of two or more of the above compounds.” [0106] and both of the above “3-aminopropyltriethoxysilane” [0099]; and “octadecyltriethoxysilane” [0094] are “silane coupling agent used is preferably 0.1 to 100 parts by weight; per 100 parts by weight of the vulcanizable rubber (A).” [0107], hence, overlaps the claimed range.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Naomi toward the content ratio of the nitrogen-containing alkoxysilane in the total content of the nitrogen-containing alkoxysilane and the alkylalkoxysilane is 10 mol % to 80 mol %, into the rubber composition development.
Doing so would lead to the product development of owing to the suitability of the silane coupling agents selection as they may be a combination of two or more of the above compounds [0106] as taught by Naomi, and the optimized compound mixing molar fractions come from the “3-aminopropyltriethoxysilane” [0099]; and “octadecyltriethoxysilane” [0094] are “silane coupling agent used is preferably 0.1 to 100 parts by weight; per 100 parts by weight of the vulcanizable rubber (A).” [0107].
In the case where the 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.
Naomi further teaches the “obtain a vulcanized product” [0210] which indicates the vulcanization process.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e., deformation, would necessarily arise from a composition with all the claimed ingredients and the amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding claims 10, 15, 22-24, Naomi teaches “tire; vibration-proof rubber” [0120] collectively read on the pneumatic tire.
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Naomi (JP2014037550, herein Naomi, a machine translation is being used for citation purpose) as set forth in claim 1 above, in the view of Norio (JP2019099708, herein Norio, a machine translation is being used for citation purpose).
Regarding claims 20-21, Naomi teaches styrene butadiene rubber (SBR) [0026], but Naomi is silent on the amine-modified styrene-butadiene rubber and the SBR ranges. However, Norio teaches polystyrene butadiene rubber in the range of when the total amount of the rubber components is 100 parts by mass; polystyrene butadiene rubber is 50 parts by mass or more [0014]; and “amine-modified S-SBR”; in the range of When the total amount of the rubber components is taken as 100 parts by mass, the modified S-SBR is 50 parts by mass or more [0015] both lie in the claimed ranges.
Naomi and Norio are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of styrene butadiene rubber (SBR) based functional composition development toward tire manufacturing. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Naomi to add the teachings of polystyrene butadiene rubber in the range of when the total amount of the rubber components is 100 parts by mass; polystyrene butadiene rubber is 50 parts by mass or more [0014]; and “amine-modified S-SBR”; in the range of When the total amount of the rubber components is taken as 100 parts by mass, the modified S-SBR is 50 parts by mass or more [0015] by Norio toward the composition development. Doing so would further achieve the desired property as of maintain and improve the low heat buildup properties of the resulting vulcanized rubber at a higher level [0015] as taught by Norio.
Response to Arguments
Applicant’s arguments, filed 8/29/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 as being unpatentable over Naomi (JP2014037550, herein Naomi, a machine translation is being used for citation purpose).
In this case, Naomi teaches all claimed ingredients and amounts, and the formation processing of the vulcanized rubber.
In response to the applicant’s argument that “unexpected results”, the argument is not persuasive.
In fact, when Examples 1-1 to 1-3, Comparative Examples 1-1 to 1-5 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 1 is open to a content of the silica is 30 parts by mass to 150 parts by mass with respect to 100 parts by mass of the diene rubber. However, Examples 1-1 to 1-3, Comparative Examples 1-1 to 1-5 only include the amount of silica was added in an amount of 30 parts by mass as single vale. Examples 1-1 to 1-3, Comparative Examples 1-1 to 1-5 are therefore insufficient to establish non-obviousness.
Similarly, owing to the single value of silica amount in each table from: the silica single amount of 50 parts by mass in table 2, Examples 2-1 to 2-2, Comparative Examples 2-1 to 2-3; and the silica single amount of 75 parts by mass in tables 3-5: Examples 3-1 to 3-2, Comparative Examples 3-1 to 3-3; Examples 4-1 to 4-2; Comparative Examples 4-1 to 4-2; Examples 5-1 to 5-3; Comparative Examples 5-1 to 5-3, are insufficient to establish non-obviousness.
Whether 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 716.02(d).
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 extension fee 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 Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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