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 1-6 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over PAVON SIERRA et al. (U.S. Publication No. 2013/0289197, hereinafter PAVON SIERRA) in view of WO 2018/0130703 as evidenced by Material Safety Data Sheet (Polybutadiene Rubber).
To further advance the prosecution of this invention, KRANNIG et al. (U.S. Patent Application Publication 2019/0315895, hereafter KRANNIG), which is an English equivalent of WO 2018/0130703 will be used in the rejection.
Regarding claims 1, 2, 5, 6, and 8, PAVON SIERRA teaches a rubber blend for pneumatic vehicle tires [0002] comprising a at least one rubber blend A of a solid styrene-butadiene rubber and a liquid butadiene rubber (e.g. liquid polybutadiene (Table 1) [0053]) with an average molecular weight Mn of 500 to 9000 g/mol (Abstract; [0014-0015 and 0026]). The amount of liquid polybutadiene is from 5 to 50 phr [0026], in the working Example the amount is 17.5 phr (I1 (Invention 1) [0053]). The liquid butadiene rubber is used as a plasticizer in the rubber mixture [0027].
The rubber mixture also comprises from 30 to 300 phr of at least one silica (Abstract; [0011 and 0016]), more specifically precipitated silica [0033] and at least one carbon black in the amount from 0.1 to 20 phr [0035].
The rubber mixture further comprises natural polyisoprene and/or synthetic-butadiene rubber and/or solution polymerized styrene-butadiene rubber [0024].
However, PAVON SIERRA does not teach the claimed liquid polybutadiene comprising the 1,3-butadiene-derived monomer units (A), (B), and (C).
In the same field of endeavor of polybutadienes used as plasticizers [0048 and 0049] for preparing rubber, synthetic rubber, tyres, and etc. [0048], KRANNIG teaches compositions comprising polybutadienes that are liquid at 20oC and a standard pressure [0010 and 0011] (reads on liquid polybutadienes). The polybutadiene contains the monomer units derived from 1,3-butadiene
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which is characterized in that the proportion of units of the formula (A) in the entirety of the monomer units derived from 1,3-butadiene present in the polybutadiene is 25 to 75 mole percent, the proportion of units of the formula (B) in the entirety of the monomer units derived from 1,3-butadiene present in the polybutadiene is 0 to 10 mole percent (more specifically, 1 to 8 mole percent), and the proportion of units of the formula (C) in the entirety of the monomer units derived from 1,3-butadiene present in the polybutadiene is 25 to 75 mol percent, with the proviso that the entirety of all monomer units (A), (B), and (C) add up to 100 mole percent [0017]. Note: when the monomer units of formula (B) and formula (C) are added together the total amount is 26 to 83 mole percent which is within the claimed range of 30 to 45 mol%. The calculation is as follows:
1 mole percent of formula (B) + 25 mole percent of formula (C) = 26 mole percent (minimum) and
8 mole percent of formula (B) + 75 mole percent of formula (C) = 83 mole percent (maximum).
The polybutadiene has a number-average molar mass (Mn) of 1000 to 3000 g/mol, specifically 1100 to 1800 g/mol [0017] and polydispersity (Mw/Mn) of 2.1 to 3.0 [0025]. The Mw is from 2,100 g/mol to 3,000 g/mol which is within the claimed range.
Calculated as follows: 2.1 x 1000 =2,100 g/mol and 3.0 x 1000 =3,000 g/mol.
Given PAVON SIERRA teaches the liquid butadiene rubber is used as a plasticizer in the rubber mixture [0027] and a different liquid butadiene rubber can be used [0028-0029] in the amount of 0.1 to 50 phr [0030], it would have been obvious to a person of ordinary skill in the art to have provided the liquid polybutadiene of KRANNIG with the rubber blend of PAVON SIERRA for the benefit of functioning as a plasticizer for the production of rubber compositions (e.g., tires) as taught by KRANNIG. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
With regard to the amounts of monomers, KRANNIG teaches the monomer units derived from 1,3-butadiene of formula (A) is in the amount of 25 to 75 mole percent and the combined monomer units derived from 1,3-butadiene of formula (B) and formula (C) of 26 mole percent to 83 mole percent (as calculated), it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
However, PAVON SIERRA and KRANNIG do not teach the liquid polybutadiene having a pressure of 98.0665 kPa.
As evidenced by Material Safety Data Sheet (Polybutadiene Rubber), polybutadiene rubber has a standard pressure of 101.3 kPa at a temperature at 20oC which is close enough to 98.0665 kPa as claimed. It would have been obvious to a person of ordinary skill in the art to reasonably expect the liquid polybutadiene to possess the properties as the claimed liquid polybutadiene.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner, 778F.2d 775,227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.051.
With regard to the claim limitations, “the liquid polybutadienes only consists of C- and H-atoms,” given the liquid polybutadienes are NOT functionalized/modified, the position is taken that the liquid polybutadienes would only consists of C- and H-atoms as claimed.
Regarding claims 3 and 4, PAVON SIERRA teaches the rubber mixture comprises a coupling agent in the form of silane or organosilicon compound in the amount from 0.1 to 20 phr [0034]. In the working Example (Table 1), the silane is TESPD Si261 (Evonik) [0053] (which is a well-known organosilane).
Regarding claims 9-13, PAVON SIERRA teaches the rubber mixtures is produced by the process in the rubber industry, by first producing, in one or more mixing stages, a base mixture with all of the constituents other than the vulcanization system [0042]. The rubber mixture for producing pneumatic tires, in particular for producing the tread of a tire and or body mixture of a tire, and for producing hoses, drive belts, and other belts [0043-0044]. The experimental results in Table 2 produces ContiWinterContact TS830 tire profile [0049] which would read on a snow(winter) tire as claimed.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over PAVON SIERRA et al. (U.S. Publication No. 2013/0289197, hereinafter PAVON SIERRA) in view of WO 2018/0130703 as evidenced by Material Safety Data Sheet (Polybutadiene Rubber) in view of BUSCH et al. (U.S. Publication No. 2016/0108211, hereinafter BUSCH).
To further advance the prosecution of this invention, KRANNIG et al. (U.S. Patent Application Publication 2019/0315895, hereafter KRANNIG), which is an English equivalent of WO 2018/0130703 will be used in the rejection.
Regarding claim 7, the combined disclosures of PAVON SIERRA and KRANNIG substantially teaches the present invention, see paragraphs 5-14 above. More specifically, PAVON SIERRA teaches a rubber blend for pneumatic vehicle tires [0002] wherein the rubber mixture further comprises natural polyisoprene and/or synthetic-butadiene rubber and/or solution-polymerized styrene-butadiene rubber [0024].
However, the combined disclosures do not teach wherein said rubber is a mixture of Nd-BR and S-SBR.
In the same field of endeavor of a rubber mixture and a pneumatic tire (Abstract; [0085]), BUSCH teaches the rubber mixture comprises natural/synthetic polyisoprenes, polybutadiene, and styrene-butadiene rubber (S-SBR) [0010-0012 and 0029]. The polybutadiene rubber (BR) is a Nd-BR (neodymium-catalyzed butadiene rubber). The Nd-BR has good vulcanization properties in the rubber mixtures [028].
Given PAVON SIERRA and KRANNIG comprises the rubber mixtures including liquid polybutadiene (BR), natural polyisoprene and or styrene-butadiene rubber and or solution-polymerized-styrene-butadiene rubber [0025] for producing a pneumatic tire, it would have been obvious to a person of ordinary skill in the art to have provided the rubber is a mixture of Nd-BR and S-SBR as taught by BUSCH with the rubber mixtures of PAVON SIERRA and KRANNIG for the benefit of providing good vulcanization properties in the rubber mixtures.
Response to Arguments
Applicant's arguments filed 03/10/2026 have been fully considered but they are not persuasive. 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.
Firstly, the applicant argues that PAVON SIERRA does not teach or suggest wherein the proportion of A in the entirety of the 1,3-butadiene-derived monomer units present in the liquid polybutadiene is from 55 to 70 mol% as claimed. KRANNIG and BUSCH fail to cure these deficiencies.
The examiner has considered the applicant’s argument, however, the examiner disagrees. As discussed in paragraphs 5-14 above, PAVON SIERRA does not teach the claimed liquid polybutadiene comprising the 1,3-butadiene-derived monomer units (A), (B), and (C).
In the same field of endeavor of polybutadienes used as plasticizers [0048 and 0049] for preparing rubber, synthetic rubber, tyres, and etc. [0048], KRANNIG teaches compositions comprising polybutadienes that are liquid at 20oC and a standard pressure [0010 and 0011] (reads on liquid polybutadienes). The polybutadiene contains the monomer units derived from 1,3-butadiene
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which is characterized in that the proportion of units of the formula (A) in the entirety of the monomer units derived from 1,3-butadiene present in the polybutadiene is 25 to 75 mole percent, the proportion of units of the formula (B) in the entirety of the monomer units derived from 1,3-butadiene present in the polybutadiene is 0 to 10 mole percent (more specifically, 1 to 8 mole percent), and the proportion of units of the formula (C) in the entirety of the monomer units derived from 1,3-butadiene present in the polybutadiene is 25 to 75 mol percent, with the proviso that the entirety of all monomer units (A), (B), and (C) add up to 100 mole percent [0017]. Note: when the monomer units of formula (B) and formula (C) are added together the total amount is 26 to 83 mole percent which is within the claimed range of 30 to 45 mol%.
Given PAVON SIERRA teaches the liquid butadiene rubber is used as a plasticizer in the rubber mixture [0027] and a different liquid butadiene rubber can be used [0028-0029] in the amount of 0.1 to 50 phr [0030], it would have been obvious to a person of ordinary skill in the art to have provided the liquid polybutadiene of KRANNIG with the rubber blend of PAVON SIERRA for the benefit of functioning as a plasticizer for the production of rubber compositions (e.g., tires) as taught by KRANNIG. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Secondly, the applicant argues one skilled in the art would not have reasonably expected success in combining PAVON SIERRA and KRANNIG to arrive at “the proportion of A in the entirety of the 1,3-butadiene-derived monomer units present in the liquid polybutadiene is from 55 to 70 mol%” and “from 10 to 150 parts by wt of precipitated silica, 1 to 100 parts by wt of carbon black, and 1 to 50 parts by wt of the liquid polybutadiene” as claimed. In comparison to reference mixtures as described in Table 2 of the specification, the results are unexpected. “Surprisingly, the rubber mixture IV used in the invention achieves an enhanced reinforcing effect to all other mixtures, as it not only has the highest tensile strength but also the highest elongation at break.”
The examiner has considered the applicant’s arguments and Examples, however, the examiner disagrees. 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 components and the amount of the components (i.e., S-SBR, Nd-BR, U7000GR, Si 266, TDAE, LBR 16%, LBR 21%, LBR 60%, carbon black, ZnO, ST1, DPG, TBzTD, CBS, and sulfur) in the Table 2 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. Also, the examples in the specification are of no probative value in determining patentability of claims since they do not involve a comparison of applicant’s invention with the closest applied prior art. See In re De Blawe, 222 USPQ 191 (Fed. Cir. 1984) and In re Fenn, 208 USPQ 470 )CCPA 1981). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02(b) III and 716.02(e).
Furthermore, the claims recite specific amounts of precipitated silica (10 to 150 parts), carbon black (1 to 100 parts), and liquid polybutadiene (1 to 50 parts), however, the Examples recite 80 parts of U7000 GR (precipitated silica), 5 parts of CB (carbon black), and 25 parts of liquid polybutadiene (LBR 16%, 21%, and 60%). In order to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
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.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
Prosecution Insights