DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/12/2026 has been entered.
Claims 1, 6, 10, 15, 20-21, 23-26 are pending.
Claim Rejections - 35 USC § 103
Claims 1, 6, 10, 15, 20, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2013/0172443).
Regarding claim 1: Lin is directed to a rubber composition comprising:
A diene rubber, silica, a bissilane based sulfide silane coupling agent and an alkoxysilane of bis(3-triethoxysilylpropyl) tetrasulfide, 3,3'-bis(triethoxy silylpropyl) disulfide, 3,3-bis(trimethoxysilylpropyl) disulfide (p. 12 - p. 13 Lin).
wherein
Silica is present in an amount of 30-80 parts per 100 parts of the diene rubber (p. 17 Lin),
A content of the sulfur containing bissilane coupling agent is 0.1-20 mass% with respect to the content of the silica ([0036]) and
A content of the alkylalkoxysilane is 0.1-25 mass % relative to the content of the silica.
The weight ratio of the mercaptosilane (bissilanes) to the alkyl alkoxysilane is a maximum of 0.14:1
While the amount is not mentioned in terms of mol%, the amounts of The weight ratio of the mercaptosilane (bissilanes) to the alkyl alkoxysilane is a maximum of 0.14:1, and therefore the molar relative amounts are within the claimed alkylalkoxysilane is 10-300 mol% with respect to the sulfide silane coupling agent.
Lim doesn't specifically recite a spin spin relaxation time of an unvulcanized sample made of the diene rubber and a spin spin relaxation time of a sample obtained by vulcanizing the rubber composition measured by a solid echo method by using a pulse NMR apparatus at 25 ˚C.
However, the rubber composition produced in Lim is substantially identical to the rubber composition produced in the instant invention.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
In the present case, Lim comprises a styrene butadiene rubber, silica, a sulfur containing silane coupling agent, and alkoxysilane in the working Examples. This is substantially identical to the working Examples 1-1 through 2-8 of the present invention.
Hence, Lin suggests a rubber composition having NMR properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 6: The alkoxysilane is a compound represented by formula (1). For instance, Octyl triethoxysilane is utilized in Table 1 and is equivalent to formula 1 wherein R1 is an alkyl of 8 carbon atoms.
Regarding claims 10, 15: A pneumatic tire is disclosed.
Regarding claim 20: Table 1 discloses 100 parts by mass of a tin modified SBR.
Regarding claims 23: Lin is directed to a pneumatic tire processed using the rubber composition.
Allowable Subject Matter
Claims 21, 24-26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Specifically, Lin specifically requires the weight ratio of mercaptosilane to alkylalkoxysilane to 0.14:1, and is therefore outside the claimed content of alkylalkoxysilane of 10-50 mol% with respect to the bissilane based sulfide coupling agent.
Response to Arguments
Applicant's arguments filed (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant’s arguments, see Remarks, filed 3/12/2026, with respect to the rejection(s) of claim(s) 1,6,10,15,20-21,23-26 under 35 USC 103(a) 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 in view of Lin et al. (US 2013/0172443).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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