DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on September 29, 2025 has been fully considered. The amendment to instant claim 1 and addition of new claims 15-16 are acknowledged. Specifically, claim 1 has been amended to include a limitation of the rubber component containing a metal oxide. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1-6, 8-13, 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda (US 2017/0152374) in view of Zimmer et al (US 2005/0027054).
4. Takeda discloses a rubber compositions and tires made from the composition, the composition comprising:
A) 10-30%wt of a natural rubber ([0010], [0013]);
B) 70-90%wt of a diene blended rubber containing a solution-polymerized styrene-butadiene rubber (S-SBR) and an emulsion-polymerized styrene-butadiene rubber (E-SBR) ([0010]); wherein the solution-polymerized S-SBR is present in amount of 10%wt or greater or 20%wt or greater ([0040], as to instant claim 1);
C) 80-150 phr of silica ([0016]);
D) zinc oxide ([142]) and
E) optionally butadiene rubber ([0142]).
5. Given the overall content of the diene blended S-SBR and E-SBR is 70%wt and the content of S-SBR is 20%wt, therefore, the content of E-SBR will be 50%wt (as to instant claims 1, 4-6).
6. The exemplified composition comprises 15%wt of natural rubber, 20%wt of S-SBR having vinyl content of 63.3% (Table 2) and 65%wt of E-SBR having vinyl content of 13% ([0181], Working Example 2 in Table 3; as to instant claims 4-6); therefore, the overall vinyl content of the composition derived from butadiene is (0.2x63.3) + (0.65x 13) = 21% (as to instant claims 1-3).
7. Though Takeda discloses the composition comprising zinc oxide (component D), Takeda does not recite the amount of said zinc oxide used in the composition.
8. However, Zimmer et al discloses a rubber composition and tires ([0030]) made from said composition, wherein the composition comprises:
a) 100 pbw of at least one rubber containing olefinic unsaturation, including emulsion polymerized and solution polymerized styrene-butadiene rubbers ([0014], [0015]);
b) 1-250 phr of a filler comprising silica ([0019], Abstract) and
c) 0.05-5 phr, preferably 0.2-1 phr, or 0.4 phr of zinc oxide (Abstract; [0031], as to instant claim 15).
9. Since both Zimmer et al and Takeda are related to rubber compositions and tires based on the emulsion polymerized and solution polymerized styrene-butadiene rubbers, silica and zinc oxide, and thereby belong to the same field of endeavor, wherein Zimmer et al explicitly teaches the use of said zinc oxide in amount of as low as 0.05 phr, or 0.4 phr, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Zimmer et al and Takeda, and to use, or obvious to try to use zinc oxide as taught by Zimmer et al in the composition of Takeda in amount of as low as 0.05 phr or 0.4 phr, since zinc oxide in such amount is taught in the art as being added to the emulsion polymerized and solution polymerized styrene-butadiene rubber- based compositions for tires, as shown by Zimmer et al, and it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
10. All ranges in the composition of Takeda in view of Zimmer et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
11. Based on the teachings of Takeda in view of Zimmer et al, it would have been obvious to a one of ordinary skill in the art to choose and use the composition comprising a major amount of emulsion-polymerized SBR, a minor amount of solution-polymerized SBR, natural rubber, silica and zinc oxide, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
12. Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda (US 2017/0152374) in view of Zimmer et al (US 2005/0027054) and Miyazaki (US 2013/0137807).
13. The discussion with respect to Takeda (US 2017/0152374) in view of Zimmer et al (US 2005/0027054) set forth in paragraphs 3-11 above, is incorporated here by reference.
14. Though Takeda in view of Zimmer et al recite the composition further optionally comprising butadiene rubber (component E), Takeda in view of Zimmer et al do not explicitly recite the amount of said butadiene rubber.
15. However, Miyazaki discloses a rubber composition for making tires, and tires made from said composition, the composition comprising:
- as rubber component the combination of:
a) 30%wt of a natural rubber;
b) 30-70%wt of E-SBR ([0030], [0021], [0031]) and further
c) 15-60%wt of butadiene rubber ([0048]),
wherein said butadiene rubber is used in the composition to provide good processability and elongation at break EB ([0048]).
16. Since Takeda in view of Zimmer et al and Miyazaki are related to compositions for making tires comprising natural rubber, E-SBR and butadiene rubber, and thereby belong to the same field of endeavor, wherein Miyazaki specifically teaches the butadiene rubber being added in amount of 15-60%wt to improve processability and elongation at break, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Miyazaki and Takeda in view of Zimmer et al, and to include said butadiene rubber in the composition of Takeda in view of Zimmer et al in amount of 15-60%wt, so to further improve processability and elongation at break of the composition of Takeda in view of Zimmer et al, as taught by Miyazaki, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
17. Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda (US 2017/0152374) in view of Zimmer et al (US 2005/0027054) and Nishikawa (US 2020/0140664).
18. The discussion with respect to Takeda (US 2017/0152374) in view of Zimmer et al (US 2005/0027054) set forth in paragraphs 3-11 above, is incorporated here by reference.
19. Though Takeda in view of Zimmer et al recite the composition further optionally comprising butadiene rubber (component E), Takeda in view of Zimmer et al do not explicitly recite the amount of said butadiene rubber.
20. However, Nishikawa discloses a rubber composition for making tires, and tires made from said composition, the composition comprising:
- as rubber component the combination of:
a) 30 pbw or more, or 50 pbw of E-SBR ([0012]) and further
b) 70 pbw or less, or 50 pbw of other diene rubbers including natural rubber and butadiene rubber ([0013]),
specifically exemplified compositions comprise 50 pbw of E-SBR, 40 pbw of butadiene rubber and 10 pbw of natural rubber, wherein such compositions have excellent wet grip performance and abrasion resistance (Table 2).
21. Since Takeda in view of Zimmer et al and Nishikawa are related to compositions for making tires comprising natural rubber, E-SBR and butadiene rubber, and thereby belong to the same field of endeavor, wherein Nishikawa specifically teaches the butadiene rubber being added, along with natural rubber, in amount of 40 pbw to provide the composition with excellent wet grip performance and abrasion resistance, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Nishikawa and Takeda in view of Zimmer et al, and to include, or obvious to try to include said butadiene rubber in the composition of Takeda in view of Zimmer et al in amount of 40 pbw, so to further improve wet grip performance and abrasion resistance of the composition of Takeda in view of Zimmer et al, as taught by Nishikawa, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
22. Claims 1-4, 7-11, 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa (US 2020/0140664) in view of Zimmer et al (US 2005/0027054).
23. Nishikawa discloses a rubber composition for making tires, and tires made from said composition, the composition comprising:
a) 30 pbw or more, or 50 pbw of E-SBR having vinyl content in a butadiene moiety of 10-30%mol ([0012], as to instant claims 1-3) and further
b) 70 pbw or less, or 50 pbw or less of other diene rubbers including natural rubber and butadiene rubber ([0013]),
c) 10-120 pbw of silica ([0022]) and
d) zinc oxide ([0020]).
24. The specifically exemplified compositions comprise 50 pbw of E-SBR, 40 pbw of butadiene rubber and 10 pbw of natural rubber (as to instant claims 4, 7), wherein such compositions have excellent wet grip performance and abrasion resistance (Table 2).
25. Though Nishikawa discloses the composition comprising zinc oxide (component d), Nishikawa does not recite the amount of said zinc oxide used in the composition.
26. However, Zimmer et al discloses a rubber composition and tires ([0030]) made from said composition, wherein the composition comprising:’
a) 100 pbw of at least one rubber containing olefinic unsaturation, including emulsion polymerized styrene-butadiene rubbers ([0014], [0015]);
b) 1-250 phr of a filler comprising silica ([0019], Abstract) and
c) 0.05-5 phr, preferably 0.2-1 phr, or 0.4 phr of zinc oxide (Abstract; [0031], as to instant claim 15).
27. Since both Zimmer et al and Nishikawa are related to rubber compositions and tires based on the emulsion polymerized styrene-butadiene rubbers, silica and zinc oxide, and thereby belong to the same field of endeavor, wherein Zimmer et al explicitly teaches the use of zinc oxide in amount of as low as 0.05 phr, or 0.4 phr, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Zimmer et al and Nishikawa, and to use, or obvious to try to use zinc oxide as taught by Zimmer et al in the composition of Nishikawa in amount of as low as 0.05 phr or 0.4 phr, since zinc oxide in such amount is taught in the art as being added to the emulsion polymerized and solution polymerized styrene-butadiene rubber- based compositions for tires, as shown by Zimmer et al, and it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
28. All ranges in the composition of Nishikawa in view of Zimmer et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
29. Based on the teachings of Nishikawa in view of Zimmer et al, it would have been obvious to a one of ordinary skill in the art to choose and use the composition comprising a major amount of emulsion-polymerized SBR, a minor amount of a combination of natural rubber and butadiene rubber, and further silica and being free from zinc oxide or any other metal oxides, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Response to Arguments
30. Applicant's arguments filed September 29, 2025 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie 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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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