DETAILED ACTION
Applicant’s response of March 2, 2026 has been fully considered. Claim 9 is amended and claims 9-22 are pending.
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.
Claims 9-22 are rejected under 35 U.S.C. 103 as being unpatentable over Galizio (US 2020/0062923) in view of Castellani et al. (WO 2017/109672).
Regarding claims 9-11, 13-15, 17-20, and 22, Galizio teaches a rubber composition comprising 100 phr of at least one of natural rubber, synthetic polyisoprene rubber, polybutadiene rubber, and styrene-butadiene rubber (a cross-linkable unsaturated chain polymeric base) (¶34), 5 to 200 phr of at least one reinforcing filler (¶55) wherein the reinforcing filler can be only silica (¶57, 58), 5 to 70 phr of a processing oil/extender oil (¶85), and a cure package comprising at least one of a vulcanizing agent, a vulcanizing accelerator, a vulcanizing activator, a vulcanizing inhibitor, and an anti-scorching agent (¶78). The ratio in phr between the silica and the processing oil can be from 0.07 to 40 when the widest possible ranges are considered (calculated by Examiner; 5:70 = 0.07 and 200:5 = 40). However, if the most preferred ranges for silica, 35 to 80 phr (¶55), and for the oil, 5 to 25 phr (claims 9 and 10), are used, the ratio range is 1.4 to 16 (calculated by Examiner; 35:25 = 1.4 and 80:5 = 16). Very specifically, Example 1 in Table 2A uses 60 phr of silica to 10 phr of oil (shea butter) which provides a ratio of 6. Even considering the amount of the carbon black at 15 phr being substituted with silica (because Galizio clearly teaches that silica can be used as the only reinforcing filler), the ratio is 7.5 ([60+15]/10 = 7.5]. Therefore, the ratio in phr between the reinforcing filler/silica and the processing oil being greater than or equal to 3 is anticipated by Galizio and the range of greater than or equal to 10 is obvious based on the overlap of ranges. Additionally, the rubber composition is used for treads and sidewalls of pneumatic tires (¶89).
Galizio does not teach that the rubber composition comprises from 2 to 30 phr of kraft lignin. However, Castellani et al. teaches a rubber composition used for structural elements of a tire (Page 5, lines 9-12) comprising 100 parts by weight of a diene-based rubber component containing rubbers such as polybutadiene rubber and natural rubber (Page 9, line 29 to Page 10, line 6), a reinforcing filler component comprising silica (Page 11, lines 3-26), and from 2.5 to 25 phr of kraft lignin (Page 5, lines 16-21; Table 1). Galizio and Castellani et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of rubber compositions used in tires. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 2.5 to 25 phr of kraft lignin, as taught by Castellani et al., to the composition, as taught by Galizio, and would have been motivated to do so in order to use smaller amounts of carbon black, as well as smaller amounts of antioxidants, while also improving the mechanical characteristics and resistance to the processes of degradation by thermal oxidation (Page 4, lines 10-15).
Regarding claims 12, 16, and 21, the lignin being added to the rubber composition during a first mixing step with the reinforcing filler is a product-by-process limitation. Even 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). In this case, there is no evidence on the record that the timing of when and with what other components the lignin is added to the composition produces a product which is substantially different from that taught by the prior art.
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered but they are not persuasive.
Applicant argues that the limitation of “the reinforcing filler consists of silica” is not met by the rejection of record. Applicant argues that Galizio consistently teaches multi-filler systems, including embodiments combining silica with carbon black or with other reinforcing fillers in general. This argument is unpersuasive.
First, Galizio does specifically teach that the reinforcing filler can be only silica (¶57, 58). While other embodiments are considered, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123. In this case, Galizio reasonably suggests to one having ordinary skill in the art that silica may be used alone as the sole reinforcing filler in the composition.
Second, while applicant seeks to limit the reinforcing filler to silica, the overall claim for the rubber compound uses open claim language. The MPEP states that when the phrase “consists of” appears in a clause of the body of a claim, rather than immediately following the preamble, it limits only the element set forth in that clause; other elements are not excluded from the claim as a whole (emphasis added). Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 USPQ 45 (Fed. Cir. 1986). The MPEP also uses In re Crish, 393 F.3d 1253, 73 USPQ2d 1364 (Fed. Cir. 2004) to exemplify this concept. In Crish, the claim was directed to “a purified oligonucleotide comprising at least a portion of the nucleotide sequence of SEQ ID NO:1 wherein said portion consists of the nucleotide sequence from … to 2473 of SEQ ID NO:1, and wherein said portion of the nucleotide sequence of SEQ ID NO:1 has promoter activity.” The court affirmed the Board’s interpretation that the transition phrase “consists” did not limit the claims to only the recited numbered nucleotide sequences of SEQ ID NO:1 and that “the transition language comprising’ allowed the claims to cover the entire involucrin gene plus other portions of the plasmid, as long as the gene contained the specific portions of SEQ ID NO:1 recited by the claim[s]” (emphasis added). Id. at 1256, 73 USPQ2d at 1366. MPEP 2111.03. In this case, the claim is to a rubber compound comprising various components. The rubber compound may contain other components, including other reinforcing fillers, as long as the claimed silica is present. Therefore, the phrase “consists of” does not further limit the "comprising" claim because the specific reinforcing filler recited is contained in the prior art composition.
Applicant further argues that the Office extracts silica ranges from multi-filler embodiments to satisfy the claimed ratio, while ignoring that those same embodiments require carbon black or other fillers. This is incorrect and unpersuasive. Galizio does not require the use of multiple fillers. Even though Example 1 does use silica and carbon black, that is not indicative of both filler being required components of the composition. It is completely within the teaching of Galizio to form a composition using only silica as the filler and therefore the amounts extracted from Galizio’s teaching are not inherently ignoring the “requirement” of other fillers. This argument is wholly unpersuasive.
Applicant argues that to the extent that a prima facie case of obviousness can be established through the mere existence of overlapping numerical ranges, this rejection is rebutted in view of the showing of unexpected results by the instant invention involving the claimed ratio of filler to oil. This argument is unpersuasive. In response to applicant’s argument that the instant invention has achieved unexpected results, the Office points out that enhancing and improving upon existing properties is not necessarily equated to the generation of unexpected results. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP §716.02. Moreover, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
In this case, the claimed range of greater than or equal to 3 of the ratio in phr between the reinforcing filler and the processing oil is anticipated by the teaching of Galizio. Even if one does not accept the ratio taught by Example 1 as evidence of this, the range taught by Galizio of 1.4 to 16 teaches the claimed range with sufficient specificity for an anticipation rejection. Therefore, this aspect cannot be rebutted by unexpected results. The basis for the obviousness of the rejection of claim 9 is the addition of 2 to 30 phr of lignin and applicant has not shown examples which are commensurate in scope with this aspect of the invention.
However, the claims also claim a ratio in phr of the reinforcing filler to the processing oil of greater than or equal to 10. This claimed range is obvious as its rejection is solely based on an overlapping range taught by the prior art. Unfortunately, the criticality of this range is not shown by the examples in the instant specification. In order to show criticality, 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). MPEP 716.02(d) II. In other words, to show the criticality of this claimed range, examples using 2 to 30 phr of lignin should be compared with filler to oil ratios of just below 10 and just above 10 to show that the value of 10 is critical to the invention. At this time, the results provided are not persuasive.
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, 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, Mark Eashoo can be reached at 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.
/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
Prosecution Insights