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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/8/2026, has been entered.
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.
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 16, 19-24, 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, 19-22, Sato teaches rubber composition comprising a conjugated diene rubber containing 20% by mass or more of a specific conjugated diene rubber and 20% by mass or more of a styrene-butadiene rubber [0009], wherein, the specific conjugated diene rubber with Tg -100 to -50°C [0126], reads on the Tg2 of the composition C2, and styrene-butadiene rubber (A) with Tg -40 to -15°C [0136] reads on the Tg1 of the composition C1. Furthermore, when specific conjugated diene rubber with Tg2=-50°C; styrene-butadiene rubber with Tg1=-15°C, then the Tg1-Tg2=35°C, lies in the claimed range of (Tg1-Tg2). At the time of filing or before the effective filing date of the claimed invention, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to combine the selected two specifically selected Tg(s) of the specific conjugated diene rubber and styrene-butadiene rubber, and apply the elastomers with the specific Tg(s) into the rubber compound formation. Doing so would further lead to the excellent effect including: rolling performance, abrasion resistance, and chipping resistance when made into a tire [0007] as taught by Sato.
Sato further teaches the content of the styrene-butadiene rubber (A) in the conjugated diene rubber is 20%-80% [0137], overlaps the claimed range of the elastomer E2, and the ratio of the content of the specific conjugated diene rubber to the content of the styrene-butadiene rubber (A) in the conjugated diene rubber (specific conjugated diene rubber/styrene-butadiene rubber (A)) is preferably 0.2 to 2 [0137], therefore, the range of the styrene-butadiene rubber is 4% to 100%, overlaps the claimed range of the elastomer E1, moreover, the E1 and E2 ranges as taught by Sato can lead to the elastomer E1 predominant in the rubber compound. At the time of filing or before the effective filing date of the claimed invention, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to select a ratio of specific conjugated diene rubber/styrene-butadiene rubber with the content of the styrene-butadiene rubber (A) in the conjugated diene rubber is 20%-80% [0137] and the ratio of the content of the specific conjugated diene rubber to the content of the styrene-butadiene rubber (A) in the conjugated diene rubber (specific conjugated diene rubber/styrene-butadiene rubber (A)) is preferably 0.2 to 2 [0137], and apply the elastomers with the specific range into the rubber compound formation. Doing so would further lead to the excellent effect including: rolling performance, abrasion resistance, and chipping resistance when made into a tire [0007] as taught by Sato.
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 more than 60% of the total content of the reinforcing filler in the rubber compound is 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 with specific concentration into the C2 through routine experimentation forming the two heterogenous rubber compounds, one of these two compounds having the reinforcing filler more than 60% of the total reinforcing filler, in the rubber compound, 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]. Sato further identifies the specific conjugated diene rubber has a structure derived from a nitrogen atom-containing silane such as aminosilane, which is thought to promote silanization between the silane coupling agent and silica, further suppressing aggregation of silica. As a result, it is believed that the effect of silica (improvement of rolling performance) is fully exhibited [0014].
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 kneading [0150]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, the instant application discloses kneading [Instant App. US20230227634; 0039]. 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], reads on elastomer E1.
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 4/28/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 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, the applicant’s arguments are directed toward the amendment of the claims, which has been addressed by the rejection set forth above.
In particular, Sato teaches the specific conjugated diene rubber with Tg -100 to -50°C [0126], reads on the Tg2 of the composition C2, and styrene-butadiene rubber (A) with Tg -40 to -15°C [0136] reads on the Tg1 of the composition C1. Furthermore, when specific conjugated diene rubber with Tg2=-50°C; styrene-butadiene rubber with Tg1=-15°C, the Tg1-Tg2=35°C, lies in the claimed range of (Tg1-Tg2), hence, meet the amended limitation of claim 16.
In addition, the Tg(s) of the specific conjugated diene rubber and styrene-butadiene rubber as taught by Sato still apply to the features of a) relationship between Tg’s of compositions C1 and C2; b) the selection of elastomers, as Sato’s teaching can explicitly meet the claimed elastomers in claims 16, 19-24, 26-27 as set forth in the rejection above. Hence, the teaching of Sato does not teach away the instant application specification.
With regard to the “Sato fails to teach anything at all about the distribution of reinforcing fillers in different rubber compositions in a rubber compound where the rubber compositions have different glass transition temperatures”, the argument is not persuasive.
In fact, Sato not only teaches the examples listed in table 1 [FOR; P35] as applicant pointed out, but also explicitly teaches styrene-butadiene rubber [0009], wherein, the specific conjugated diene rubber with Tg -100 to -50°C [0126], reads on the Tg2 of the composition C2, and styrene-butadiene rubber (A) with Tg -40 to -15°C [0136] reads on the Tg1 of the composition C1. Moreover, Sato teaches the content of the styrene-butadiene rubber (A) in the conjugated diene rubber is 20%-80% [0137], overlaps the claimed range of the elastomer E2, and the ratio of the content of the specific conjugated diene rubber to the content of the styrene-butadiene rubber (A) in the conjugated diene rubber (specific conjugated diene rubber/styrene-butadiene rubber (A)) is preferably 0.2 to 2 [0137], therefore, the range of the styrene-butadiene rubber is 4% to 100%, overlaps the claimed range of the elastomer E1, moreover, the E1 and E2 ranges as taught by Sato can lead to the elastomer E1 predominant in the rubber compound.
Sato does not explicitly teach more than 60% of the total content of the reinforcing filler in the rubber compound is in composition C2, as applicant pointed out. However, it should be noted that such limitations are product-by-process limitations, as set forth in the rejection above.
Additionally, the individual compositions will cease to exist as such upon blending to form the overall composition. In effect, the claim as a whole is drawn to a rubber compound formed by combining these individual compositions as taught by Sato in the rejection above. In fact, the composition can be obtained by both a) first blending E1 and a first filler to form C1; then blending E2 and a filler to form C2; and finally blending C1 and C2 to form a rubber composition, and b) the same composition could be obtained by simultaneously blending all individual components, or by blending in a different order. Sato explicitly teaches the overall filler content in the composition in the rejection above which meet the claim 16. Therefore, the teaching of Sato will lead to the claimed product via the order of mixing. The selection of mixing order is prima facie obvious. See MPEP 2144.04C.
Hence, the teaching of Sato above collectively meet the claimed the rubber compound and its components/ranges as claimed, therefore, Sato does not teach away the instant application.
Regard to the “unexpected results”, the argument is not commensurate in scope with the claims, hence, insufficient to establish non-obviousness.
In this case, first, the claim 16 is open to the elastomer E1 and elastomer E2, which indicate broad range of elastomer selection. However, Example MI1 and MT1-MT5 only includes specific elastomers and specific Tg(s), namely the styrene/butadiene copolymer based elastomer [Instant App. US20230227634; P13; Table 1 and P15; Table 9], with 3 specific Tg, namely, Elastomer (1A) Tg -28° C; Elastomer (1B) Tg -24° C; Elastomer (1C) Tg -65° C; Elastomer (1D) Tg -65° C. Therefore, these examples employ a limited range of materials that are not reasonably commensurate with the breadth of the claimed elastomers 1 and 2, and cannot be relied upon to establish non-obviousness.
Second, 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, Examples MI1 and MT1-MT5 only includes two individual values of the fillers’ concentrations, namely silica 55.0; carbon black 3.8 [Instant App. US20230227634; P13; Table 1 and P15; Table 9]. Therefore, these examples employ a limited range of reinforcing filler that are not reasonably commensurate with the breadth of the claimed reinforcing filler, 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).
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
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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