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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 20, 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 16-19 and 22-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gornard (FR 3063732, of record) and further in view of Araujo Da Silva (US 9,394,380, of record). It is initially noted that US 2021/0130578 will be relied upon in the rejection below as it constitutes an English equivalent of FR ‘732.
Gornard is directed to a tire composition including a random copolymer comprising ethylene units and conjugated diene units, an additional elastomer (“other elastomer”) occupying a minority weight of the overall elastomeric matrix, a peroxide (claimed radical polymerization initiator), a polyfunctional acrylate (claimed co-crosslinking agent), and a reinforcing filler, such as silica (Paragraphs 10-12, 46, and 82). In such an instance, though, the composition of Gornard is not based on a 1,3 dipolar compound having a specific formula.
Araujo Da Silva is similarly directed to a tire composition and teaches the use of a 1,3 dipolar compound in order to reduce hysteresis (Column 1, Lines 9-17, Column 2, Lines 23+, and Columns 7 and 8). One of ordinary skill in the art would have found it obvious to include said 1,3 dipolar compound in the tire composition of Gornard for the benefits detailed above, there being a reasonable expectation of success when modifying the tire composition of Gornard with Araujo De Silva (benefits would be expected to be present since diene component is present in the compositions of Gornard and Araujo De Silva).
Also, regarding claim 16 (and claim 21), the tire composition of Gornard can be formed solely of an inorganic filler, such as silica (Paragraph 82- corresponds with a filler formed with 100% by weight of silica). It is emphasized that the language “a carbon black, a reinforcing filler, or a mixture thereof” encompasses 3 rubber compositions- one including solely carbon black, one including solely silica (and thus less than 10 phr of carbon black), and one including a mixture of carbon black and silica. Additionally, a reinforcing filler loading can vary between 5 phr and 65 phr (Paragraph 80) and such fully encompasses the broad range of the claimed invention.
Lastly, regarding claim 16, Araujo De Silva teaches a preferred loading between 0.01 mol percent and 5 mol percent (Column 9, Lines 30+) and such fully encompasses the claimed range.
With respect to claims 17-19, see Columns 7 and 8 of Araujo Da Silva.
With respect to claims 22 and 23, the tire composition of Gornard includes coupling agents, such as polyorganosiloxanes (Paragraph 93).
As to claims 24 and 25, the tire composition of Gornard includes the claimed peroxides (Paragraph 75).
Regarding claim 26, Gornard teaches a ratio if at least 8% (Paragraph 78).
With respect to claims 27 and 28, Gornard teaches the claimed co-crosslinking agent (Paragraphs 16-21).
As to claim 29, Gornard teaches a loading between 5 and 40 phr (Paragraph 71).
Regarding claims 30 and 31, the general disclosure of a tire tread composition by Gornard would be recognized as encompassing pneumatic or non-pneumatic tire constructions.
Response to Arguments
Applicant's arguments filed January 20, 2026 have been fully considered but they are not persuasive.
Applicant argues that Gornard fails to teach the specific parameters of the reinforcing filler of the present claims, such that the filler comprises 15 to 50 phr of silica and the silica is more than 90% of the total filler. The Examiner respectfully disagrees.
Gornard includes the following teachings:
Preferably, the reinforcing filler comprises a carbon black, a reinforcing inorganic filler, or a mixture thereof (Paragraph 82),
Preferably, the reinforcing inorganic filler is a silica (Paragraph 82), and
The composition of the tire according to the invention comprises 5 to less than 65 phr of reinforcing filler (Paragraph 80).
The totality of these teachings suggests rubber composition formed solely with silica at a loading in accordance to the claimed invention.
Applicant also contends that Gornard teaches a strong preference for carbon black rather than silica as the predominant filler. It is emphasized, though, that a reference is not limited to a most preferred embodiment. As detailed above, a preferred embodiment of Gornard includes silica to the exclusion of carbon black. Thus, contrary to Applicant’s assertion, Gornard does in fact motivate one having ordinary skill in the art to use silica instead of carbon black (the preferred compositions comprise carbon black (to the exclusion of silica), silica (to the exclusion of carbon black), and a mixture of carbon black and silica). Thus, one of the preferred compositions does in fact include silica to the exclusion of carbon black.
Applicant argues that Araujo Da Silva fails to teach the claimed rubber composition wherein a content of 1,3-dipolar compound is between 0.1 and 3 molar equivalents per 100 moles of monomer units constituting the copolymer. The Examiner respectfully disagrees. Araujo Da Silva includes a modifying agent (claimed 1,3-dipolar compound) at a preferred amount from 0.01 mol percent to 5 mol percent and such fully encompasses the claimed range.
Applicant contends that Araujo Da Silva does not provide any examples at all of rubber compositions comprising its 1,3-dipolar compounds. This argument is not entirely understood. Araujo Da Silva is specifically directed to tire compositions designed to provide low hysteresis properties. More particularly, Araujo Da Silva teaches the introduction of 1,3-dipolar compounds in a polymer in order to provide improved interaction with a filler (via non-covalent bonds) and ultimately low hysteresis properties. As to the “polymer”, Araujo Da Silva discloses the general class of diene elastomers and such includes copolymers of dienes and alpha olefins (e.g. ethylene) (Column 2, Lines 55-67). Araujo Da Silva further states that such copolymers can have a very low amount of diene units (less than 15 %). Thus, Araujo Da Silva is in fact directed to tire compositions comprising a modified copolymer (as a result of including a 1,3-dipolar compound) of an alpha olefin and a diene component in which a large amount of alpha olefin is present.
Applicant also argues that nothing in the combination of cited references provides any indication that the presently claimed rubber composition would provide the benefits of the present invention. First, it is not required for a reference to specifically identify a purported benefit disclosed by Applicant. Second, as detailed above, Araujo Da Silva specifically provides motivation to modify the olefin-diene copolymer of Gornard with a 1,3-dipolar compound, that being the reduction of hysteresis as a result of bonds between the filler (e.g. silica) and the modified polymer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 January 27, 2026