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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16- 24, 26-27, 29-30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites the limitation "a reinforcing filler" in line 3 and 5. There is insufficient antecedent basis for this limitation in the claim. As such, it cannot be clearly ascertained if the claim refers to two different types of reinforcing filler or only one type (ie. the same).
Claim 16 recites the limitation " the reinforcing filler in the rubber compound is within a range extending from 40 to 90 phr" in line 17. There is insufficient antecedent basis for this limitation in the claim. As such, it cannot be clearly ascertained if the claim refers to two different types of polyols and/or polyacid or only one type (ie. the same). As such, it is not understood where the 40-90 phr is located since the claim mentions the filler being present in C1 and C2. Therefore, it is not clear if the limitation applies to the content in C1, C2, or the total;
Claim 16 recites the limitation "the reinforcing filler in the rubber compound predominantly comprises silica" in line 19. There is insufficient antecedent basis for this limitation in the claim. As such, it is not clear if the limitation applies to the content in C1, C2, or the total;
Claim 16 recites the limitation " the reinforcing filler in the rubber compound is predominantly in composition C2" in line 21. There is insufficient antecedent basis for this limitation in the claim. As such, it is not clear if the limitation led to the specific difference between the amounts of reinforcing filler in C1 and C2, for example 50.1% to 49.9%.
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 16-24, 26-27, 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et. al., (JP2019199538, herein Sato, a machine translation is being used for citation purpose).
Regarding claims 16-22, Sato teaches example 5 [Table 1, FOR] including: “The
specific conjugated diene rubber 1; glass transition temperature (Tg) of -63°C” [0157] lies in the claimed wherein the glass transition temperature Tg2 of the composition C2;
“SBR (A1); glass transition temperature: −27°C” [0165] lies in the claimed wherein the glass transition temperature Tg1 of composition C1.
Tg1-Tg2 = (-27)° C-(-63) ° C=36° C, which lie in the claimed Tg1-Tg2 ranges.
Sato teaches the ratio between SBR (A1)/ specific conjugated diene rubber 1=70/30, indicates wherein the elastomer E1 is predominant in the rubber compound.
Sato further teaches “silica” [0140] reads on reinforcing filler; in the amount of 40 parts by mass or more, to 100 parts by mass or less, per 100 parts by mass of the above-mentioned conjugated diene rubber” [0140], overlaps the claimed range.
Sato explicitly teaches example 5 [Table 1, FOR] including: 9100GR (silica) 90 parts; specific conjugated diene rubber (Tg -63°C); 30 parts; SBR (A1); glass transition temperature: −27°C; 70 parts, wherein, the other fillers in example 5 are N339 (carbon black) 5 parts. [Table 1, FOR], hence, the silica/carbon black=90/5 ratio indicates that the reinforcing filler in the rubber compound predominantly comprises silica.
Sato does not explicitly teach the reinforcing filler in the rubber compound is predominantly in composition C2. However, it should be noted that such limitations are product-by-process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113]. In the present case, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the C1 and C2 formations via add silica predominately into the C2 through routine experimentation forming the two heterogenous rubber compounds, one of these two compounds having the reinforcing filler in the rubber compound is predominantly in composition, which is performed before the mixing process as of the components are kneaded [0150], as Sato identify this mixing ratio of in the amount of silica, 30 parts to 200 parts by mass, per 100 parts by mass of the above-mentioned conjugated diene rubber [0140], can achieve the better effects of the present invention [0140] such as exhibited excellent rolling performance, wear resistance, and chipping resistance [0178].
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.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Sato teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process as of components are kneaded [0150]. 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. the loss factor profile, would necessarily arise from a composition with all the claimed ingredients. "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 23-24, Sato teaches “SBR (A1) is F3420 (styrene-butadiene rubber” [0165].
Regarding claims 26-27, Sato teaches “The specific conjugated diene rubber 1” [0157] with the structure of “wherein the specific conjugated diene rubber has a structure in which a polymer block (A) containing 80 to 100% by mass of isoprene monomer units and 0 to 20% by mass of aromatic vinyl monomer units and a polymer block (B) containing 50 to 100% by mass of 1,3-butadiene monomer units and 0 to 50% by mass of aromatic vinyl monomer units are formed in a continuous manner.” [0009] collectively reads on the claimed elastomer E2 with the building blocks.
Regarding claim 29-30, Sato teaches “using the rubber composition for a tire tread” [0010].
Response to Arguments
Applicant’s arguments, filed 11/04/2025, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 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 in view of Sato et. al., (JP2019199538, herein Sato, a machine translation is being used for citation purpose) as set forth above.
In this case, Sato explicitly teaches the specific conjugated diene rubber 1; glass transition temperature (Tg) of -63°C” [0157] lies in the claimed wherein the glass transition temperature Tg2 of the composition C2; “SBR (A1); glass transition temperature: −27°C” [0165] lies in the claimed wherein the glass transition temperature Tg1 of composition C1. Sato further explicitly teaches example 5 [Table 1, FOR] including: 9100GR (silica) 90 parts; specific conjugated diene rubber (Tg -63°C); 30 parts; SBR (A1); glass transition temperature: −27°C; 70 parts, wherein, the other fillers in example 5 are N339 (carbon black) 5 parts [Table 1, FOR], hence, indicate that the reinforcing filler in the rubber compound predominantly comprises silica. Furthermore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the C1 and C2 formations via add silica predominately into the C2 through routine experimentation upon further mixing process as of the components are kneaded [0150], as Sato identify this mixing ratio of in the amount of “30 parts by mass or more; 200 parts by mass or less, per 100 parts by mass of the above-mentioned conjugated diene rubber” [0140] can achieve the better effects of the present invention [0140] such as exhibited excellent rolling performance, wear resistance, and chipping resistance [0178].
Additionally, regard to the “unexpected results”, the argument is not commensurate in scope with the claims, hence, insufficient to establish non-obviousness. In fact, the claim 16 is open to the wherein the content of the reinforcing filler in the rubber compound is within a range extending from 40 to 90 phr. However, Example MI1 and MT1-MT5 only includes two individual values of the fillers’ concentrations, namely silica 55.0; carbon black 3.8. Therefore, these examples fall outside the scope of the claimed invention and cannot be relied upon 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.
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, Mark Eashoo can be reached on (571)272-1197. 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.
/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights