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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 16, 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.
Claims 1-17 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. Finally, regarding the newly added requiring that the copolymer contain the aromatic vinyl monomer in amounts ranging from 3 to 17 wt% of the monomer units, Shintani teaches that the copolymer contains styrene in amounts of 10% or less ([0012] and [0032]), which overlaps the claimed range, establishing a prima facie case of obviousness.
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.
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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.”
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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 filed June 16, 2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art fails to teach the newly added limitation requiring that the claimed copolymer contains bet ween 3 and 17 wt% of the aromatic vinyl monomer unit; however, as described above, Shintani discloses styrene contents of 10 wt% or less (e.g., [0032]), which overlaps said range, establishing a prima facie case of obviousness.
Applicant states that the prior art fails to teach the claimed glass transition temperature range; however, as described above, Shintani meets all of the claimed compositional limitations of the claimed copolymer, and therefore the claimed glass transition temperature range will be inherently present therein.
Applicant finally argues that the prior art fails to contemplate the improved wear resistance and lower heat buildup alongside a maintained chip resistance, as appreciated by the Applicant. However, The motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV). Furthermore, the discovery of a new property of a previously disclosed composition does not confer patentability (see MPEP 2112.I.).
Conclusion
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.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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