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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/6/2026, has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 30 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 30 broadens the scope of the content of the functionalized diene elastomer E2 is less than or equal to 40 phr, whereas claim 17 recites a narrower “content of the functionalized diene elastomer E2 is within a range extending from 30 phr to 45 phr”. For the purpose of further examination, it is taken to mean in claim 17 that “content of the functionalized diene elastomer E2 is within a range extending from 30 phr to 45 phr”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 17-18, 20, 23-24, 26-32 are rejected under 35 U.S.C. 103 as being unpatentable over Nukaga (US20190010312, herein Nukaga), in the view of Yu (US20200377624, herein Yu).
Regarding Claims 17-18, 20, 24, Nukaga teaches rubber composition comprising: Natural rubber 4, 55 Parts by mass; and Modified polybutadiene rubber 1, 45 Parts by mass [Example 20; P12; Table 2] reads on non-functionalized first diene elastomer E1, and functionalized second diene elastomer E2, both lie in the claimed E1 and E2 ranges.
Nukaga teaches the diene polymer (A) having a modified terminal exhibits strong interaction with fillers, thereby improving dispersibility of the fillers in the polymer phase including the diene polymer (A). [0068] which is “vulcanized rubber” [0105] reads on the crosslinking system. Nukaga further explicitly teaches the monomers for use in synthesis of the low Tg diene polymer (A), include 1,3-butadiene, and include styrene [0075], wherein, the diene polymer (A) has a terminal modified by a silane compound [0030], which collectively indicate the functionalized second diene elastomer E2 is styrene/ butadiene-based copolymer owing to the selection of the monomers.
Nukaga does not explicitly teach the specified Tg ranges of the non-functionalized first diene elastomer, and functionalized second diene elastomer, however, Yu teaches rubber composition [0087], comprising: “specific modified BR; BR” [P9; Table 1], wherein “modified butadiene polymer (modified BR)” [0007], with “A glass transition temperature (Tg) of the specific modified BR is not particularly limited, but is preferably −100° C. to −60° C” [0064] for E2; and “A glass transition temperature (Tg) of the rubber component is not particularly limited, but is preferably −60° C. or higher,” [0094] applied to the non-functionalized rubber E1, both overlap the claimed ranges.
Nukaga and Yu are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the modified butadiene polymer and rubber composition toward tire application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Nukaga and substitute the teaching of Yu and provide the “specific modified BR; BR” [P9; Table 1], wherein “modified butadiene polymer (modified BR)” [0007], with “A glass transition temperature (Tg) of the specific modified BR is not particularly limited, but is preferably −100° C. to −60° C” [0064] for E2; and “A glass transition temperature (Tg) of the rubber component is not particularly limited, but is preferably −60° C. or higher,” [0094] applied to the non-functionalized rubber E1 into the composition, because doing so would further achieve the materials selection suitability owing to the specific modified BR was compounded exhibited excellent dispersibility, workability, toughness, low heat build-up, and wear resistance [0175].
Nukaga teaches it is acceptable to optionally select compounding agents or additives generally for use in the rubber industries like carbon black [0131] which indicates the concentration of carbon black is 0% upon non-selection, hence, lies in the claimed range.
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).
Regarding Claims 23, Nukaga does not explicitly teach the wherein the functionalized diene elastomer E2 comprises at least one chemical function capable of interacting with the reinforcing filler, the chemical function comprising at least one heteroatom selected from the group consisting of nitrogen, sulfur, oxygen, phosphorus, tin and silicon. However, Yu teaches “interaction between the reinforcing filler and the nitrogen atoms and silicon atoms in the specific functional group of the specific modified BR” [0024].
Nukaga and Yu are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the modified butadiene polymer and rubber composition toward tire application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Nukaga and add the teaching of Yu and provide the “interaction between the reinforcing filler and the nitrogen atoms and silicon atoms in the specific functional group of the specific modified BR” [0024] into the composition, because doing so would further lead to the desired property as the modified BR was compounded exhibited excellent dispersibility, workability, toughness, low heat build-up, and wear resistance [0175].
Regarding Claims 26-27, Nukaga and Yu teach the rubber composition set forth above in claim 17. Nukaga further explicitly teaches diene polymer (C) include styrene-butadiene copolymer rubber (SBR) with glass transition temperature (Tg) higher than diene polymer (A) [0104], wherein, the diene polymer (A), as set forth above in claim 1, is the functionalized diene polymer with lower Tg, therefore, the diene polymer (C) which is unmodified diene polymer with higher Tg, reads on the non-functionalized diene elastomer E1.
Regarding Claims 28-29, Nukaga teaches fillers such as silica [0053] reads on the reinforcing filler, and the range of 30 parts by mass [Examples 1-3; P11; Table 2] lies in the claimed range.
Regarding Claim 30, Nukaga is silent on wherein a content of the functionalized diene elastomer E2 is less than or equal to 40 phr. However, Yu teaches “Specific Modified BR 2, 3, 4; 5%” [Example 1-3; Table 1; P9] lies in the claimed range.
Nukaga and Yu are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the modified butadiene polymer and rubber composition toward tire application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Nukaga and add the teaching of Yu and provide the “Specific Modified BR 2, 3, 4; 5%” [Example 1-3; Table 1; P9] into the composition, because doing so would further achieve the desired property of exhibited excellent balance at an extremely high level among dispersibility, workability, toughness, low heat build-up, and wear resistance. [0179]
Regarding Claims 31 and 32, Nukaga teaches tread of the tire [0033]; “gas with which the is to be inflated include inert gas such as nitrogen, argon, helium or the like, as well as ambient air and air of which partial pressure has been adjusted.” [0135] which indicates the pneumatic tire.
Response to Arguments
Applicant's arguments filed 1/6/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that “Nukaga fails to teach the claimed relationships of the glass transition temperatures of the claimed non-functionalized diene elastomer El and functionalized second diene elastomer E2. In fact, Nukaga fails to teach any specific details about the glass transition temperatures of its polymers, aside from merely calling them "high" and "low" Tg polymers. Moreover, all of the examples of Nukaga teach the use of natural rubber with a Tg of -60° C as the non-functionalized polymer, thereby clearly failing to teach at least one non-functionalized diene elastomer El having a glass transition temperature TgEl above or equal to -50° C.”, is not persuasive.
In fact, Nukaga and Yu collectively teach the rubber composition set forth in the rejection above. Nukaga teaches the modified diene polymer and non-modified diene polymer with different Tg, i.e., the modified diene polymer has higher Tg than the non-modified diene polymer, lead to significantly improving both on-ice performance and wear resistance of a tire [0006] as taught by Nukaga. As analogues art, Yu further explicitly teaches the specific modified diene polymer and non-modified diene polymer specific Tg ranges further lead to the specific modified BR was compounded exhibited excellent dispersibility, workability, toughness, low heat build-up, and wear resistance [0175], as taught by Yu. Hence, neither Nukaga nor Yu teaches away the instant application, therefore, the combination of the art references would not render the compositions of Nukaga and Yu not operational.
In response to applicant's argument that “Nukaga also fails to teach rubber compositions comprising 10 phr or less of carbon black”, is not persuasive.
In fact, Nukaga not only teaches several concentrations of the carbon black referred by applicant, but also teaches it is acceptable to optionally select compounding agents or additives generally for use in the rubber industries like carbon black [0131] which indicates the concentration of carbon black is 0% upon non-selection, hence, lies in the claimed range. Therefore, Nukaga does not teach away the instant application.
In response to applicant's argument that “Yu requires a specific modified butadiene elastomer for the purposes of its invention and thereby fails to teach the functionalized styrene/butadiene copolymer E2 of the present claims. And, Yu also fails to teach a content of the functionalized diene elastomer E2 within a range extending from 30 phr to 45 phr. Specifically, paragraph [0115] of Yu specifies that, "from the perspective of optimizing the effect of [its] invention", the content of the specific modified BR is preferably from 1 part by mass to less than 10 parts by mass per 100 parts by mass of the rubber component. All 6 Examples of Yu include either 1, 5 or 10 phr of its modified BR. As such, Yu teaches a significantly lower content of its particular functionalized BR elastomer in its rubber compositions than the 30 phr to 45 phr of the functionalized diene elastomer E2 of the present invention”, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In this case, Nukaga and Yu collectively teach the rubber composition set forth in the rejection above. Nukaga teaches the modified diene polymer and non-modified diene polymer and the ranges with different Tg, i.e., the modified diene polymer has higher Tg than the non-modified diene polymer, lead to significantly improving both on-ice performance and wear resistance of a tire [0006] as taught by Nukaga. As analogues art, Yu further teaches the specific modified diene polymer and non-modified diene polymer with specific Tg ranges, which can be substituted into the modified diene polymer and non-modified diene polymer composition of Nukaga and further lead to the specific modified BR was compounded exhibited excellent dispersibility, workability, toughness, low heat build-up, and wear resistance [0175], as taught by Yu, further matches the significant improvement in the hysteresis properties, therefore a decrease in the rolling resistance [Instant App. US20230348701; 0221], wherein, the hysteresis, particularly in tires, refers to the energy dissipated as heat during cyclic loading, directly impacting a material's wear resistance and durability. Hence, Yu does not teach away the instant application.
In response to applicant's argument that “Notably, like Yu, Nukaga also does not teach a functionalized SBR in its examples”, is not persuasive.
In fact, Nukaga explicitly teaches the monomers for use in synthesis of the low Tg diene polymer (A), include 1,3-butadiene, and include styrene [0075], wherein, the diene polymer (A) has a terminal modified by a silane compound [0030], which collectively indicate the functionalized second diene elastomer E2 is styrene/ butadiene-based copolymer owing to the selection of the monomers.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this case, Nukaga and Yu collectively teach the rubber composition set forth in the rejection above, which lead to the desired properties as set forth in the rejection above. Hence, neither Nukaga nor Yu teaches away the instant application.
In response to the applicant’s argument that “surprising results”, the argument is not persuasive.
In fact, when Example CI1, Comparative Examples CC1 and CC2 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 28 is open to the content of the reinforcing filler is within a range extending from 20 to 100 phr. However, Example CI1, Comparative Examples CC1 and CC2 only include the amount of silica was added in an amount of 55.0 parts by weight as single vale. Example CI1, Comparative Examples CC1 and CC2 are therefore insufficient 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
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
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767