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 § 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.
Claims 1-10 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Shintani (JP 2008038119 A, hereinafter referring to the attached ESPACENET Translation in addition to the original document) in view of Sato (US 2016/0009846 A1). Yonemoto (JP 2007177139 A, hereinafter referring to the attached ESPACENET translation) is cited as an evidentiary reference.
Regarding claim 1, Shintani teaches a heavy-duty pneumatic tire ([0001]), comprising silica ([0013]) and a modified butadiene synthetic rubber which is preferably a copolymer of 1,3 butadiene and styrene ([0032]), which has at least one functional group preferably selected from specific substituted or cyclic amino groups ([0032]) which reads on the claimed “aromatic viny-conjugated diene copolymer” because it is a polymer which contains styrene (an aromatic vinyl monomer) and 1,3 butadiene (a conjugated diene monomer). Furthermore, the amino groups of the inventive polymer read on the claimed limitation of “having a functional group interactive with silica” because the instant Specification states that nitrogen atom-containing functional groups ([0023]) are suitable functional groups interactive with silica.
Shintani is silent with regard to the glass transition temperature of the modified rubber. Nevertheless, Shintani teaches a modified rubber which meets all of the claimed compositional limitations, containing all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed glass transition temperature characteristic will therefore necessarily be present in Shintani as applied above.
Shintani differs from claim 1 because it is silent with regard to the polymer’s molecular architecture being a block-type copolymer containing the claimed compositional amounts within each block.
In the same field of endeavor, Sato teaches a rubber composition (Abstract) suitable for tires ([0001]) containing a diene rubber component which is a conjugated diene rubber component having a conjugated diene copolymer block and an isoprene block, wherein the isoprene is present in amounts ranging from 70 to 100 mass% (Abstract), which overlaps the claimed range of “80 to 100% by weight,” establishing a prima facie case of obviousness. The block compositions wherein isoprene comprises 100 mass % within the isoprene block therefore will also contain 0 wt% of aromatic vinyl units, which falls within the claimed range of “0 to 20% by weight,” establishing a prima facie case of obviousness. Sato further teaches that the conjugated diene copolymer block contains a conjugated diene monomer and an aromatic vinyl monomer ([0024]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the polymer of Shintani having the molecular architecture of Sato, as Sato teaches it as suitable for use in tire formulations. In so doing, the formulation of Shintani as modified by Sato meets all of the limitations of the claimed “aromatic vinyl-conjugated diene copolymer.”
The modified butadiene synthetic rubber contains both butadiene and styrene ([0010]), and therefore meets the claimed limitation “wherein the aromatic vinyl-conjugated diene copolymer comprises an aromatic vinyl-conjugated diene copolymer chain.”
Regarding claim 2, Shintani is silent with regard to the glass transition temperature of the modified rubber. Nevertheless, Shintani teaches a modified rubber which meets all of the claimed compositional limitations, containing all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed glass transition temperature characteristic will therefore necessarily be present in Shintani as applied above.
Regarding claim 3, Shintani exemplifies the usage of Nipsil AQ silica ([0064]), which has a nitrogen surface area within the range of 180-270 m2/g (c.f. Yonemoto [0035]), which falls within the claimed range of “30 to 500 m2/g,” establishing a prima facie case of obviousness.
Regarding claim 4, Shintani teaches that the composition contains between 10 and 50 parts by mass of silica and 100 parts of the rubber composition (A), which contains the aforementioned aromatic vinyl-conjugated diene copolymer ([0014]),which falls within and the claimed range of “10 to 200 parts,” establishing a prima facie case of obviousness
Regarding claim 5, Shintani teaches that the composition may also contain carbon black ([0051]).
Regarding claim 6, Shintani exemplifies the usage of SAF grade carbon black ([0064]), which has an NSA of 126 m2/g (c.f. Yonemoto [0034]), which falls within the claimed range of “30 m2/g or more,” establishing a prima facie case of obviousness.
Regarding claim 7, Shintani teaches example formulations including inter alia 10, 17, 25, 42, and 46 parts of carbon black with respect to 100 parts of the rubber within the composition (including the aforementioned aromatic vinyl-conjugated diene copolymer, c.f. Table 3 from the original document version of Shintani, below), all of which fall within the claimed range of “10 to 200 parts,” establishing prima facie cases of obviousness.
PNG
media_image1.png
561
1004
media_image1.png
Greyscale
Machine translation of Table 3 from original version of Shintani (JP 2008038119 A)
Regarding claim 8, Shintani teaches that the rubber contains between 20 and 70 wt% of the aromatic vinyl-styrene copolymer ([0010]), which falls within the claimed range of “10 to 80 % by weight,” establishing a prima facie case of obviousness.
Regarding claim 9, Shintani teaches that the rubber contains between 30 and 80 wt% of natural rubber ([0010]), which overlaps the claimed range of “10 to 80 % by weight,” establishing a prima facie case of obviousness.
Regarding claim 10, Shintani teaches that the rubber contains between 20 and 70 wt% of the aromatic vinyl-conjugated diene copolymer and/or a polybutadiene rubber ([0010]). Shintani does not expressly disclose the amounts of polybutadiene which may be present in the composition if included in addition to or alongside the aromatic vinyl-conjugated diene copolymer. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. Infuse, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parted Swanky, Appeal 2017-004875 at 8-9.
In this case, Shintani discloses the aromatic vinyl-conjugated diene copolymer and the polybutadiene rubber as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine the two equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. In doing so, the formulation would include between 10 and 35 wt% of polybutadiene rubber, which falls within the claimed range of “10 to 80%,” establishing a prima facie case of obviousness.
Regarding claims 11 and 16-17, Shintani teaches examples of the polymer modifying agent including alkoxysilanes ([0043]), which read on the claimed “organosiloxane.”
PNG
media_image2.png
334
449
media_image2.png
Greyscale
Polymer modifying agents of Shintani (JP 2008038119 A).
Shintani further teaches particular polymer modifying agents including, inter alia, 3-diethylaminopropyltriethoxysilane ([0044]), which the instant Specification states is a suitable material falling under the purview of claimed “General Formula (9)” ([0098]).
Regarding claims 12 and 13, Shintani teaches the incorporation of vulcanization agents ([0051]), and teaches the use of the inventive composition as a heavy duty pneumatic tire ([0052]), which reads on the claimed “cross-linked rubber” and “heavy-load tire.”
Regarding claim 14, Shintani teaches a styrene content of 10% by mass or less ([0033]), which overlaps the claimed range of “1% to 17% by weight,” establishing a prima facie case of obviousness.
Regarding claim 15, Shintani teaches that the vinyl bond content of the polymer is 25% or less ([0033]), which overlaps the claimed range of “5 to 35% by weight,” establishing a prima facie case of obviousness.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed December 3, 2025, with respect to the rejection(s) of claim(s) 1-9 and 12-13 under 35 USC 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 Shintani and further in view of Sato.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. 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, Robert Jones can be reached at 571-270-7733. 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.
/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762