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 .
Election/Restrictions
Applicant’s election without traverse of Group II (claims 13-26) in the reply filed on 3/12/2026 is acknowledged.
Group I (claims 1-12) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/12/2026.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 13-24 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oshimo (US 20180258263 A1) in view of Toshihiro (JP2018030973A), Fedorczyk et al (“A Novel Strategy for the Synthesis of Amphiphilic and Thermoresponsive Poly(N-isopropylacrylamide)-b-Polystyrene Block Copolymers via ATRP”, Polymers 2019, 11, 1484), and Sandstorm et al (EP 0538723 A1).
Regarding claims 13-15, Oshimo teaches a rubber composition for tires, comprising SBR, BR, silica, oil, silane coupling agent, wax, antioxidant, zinc oxide, stearic acid, sulfur, and vulcanization accelerator [Example 1 in Table 1]. This composition is substantially identical to the rubber composition used in the examples of the instant application, except lacking the claimed temperature-responsive resin PNIPAM-b-Sty (1), PNIPAM-b-Sty (2), PNNPAM-b-Sty (1), or PNNPAM-b-Sty (2) [Examples 1-8 in Table 2, spec.]. The SBR and BR resins read on the claimed butadiene-based elastomer, as evidenced by the applicant [0024 spec.].
In the same field of endeavor, Toshihiro teaches a rubber composition for tire application comprising a diene rubber (including polybutadiene rubber, styrene-butadiene copolymer rubber) and a compound represented by the general formula (1) which is a LCST compound [P1L46-48, P2L18-19, P3L30-32]. Toshihiro teaches that “a rubber composition containing a poly (N-alkyl acrylamide) having a lower critical solution temperature (LCST) in the vicinity of 32 ° C and a part of its derivative and a pneumatic tire using the rubber composition are excellent in low temperature icy and snowy road surface and wet road surface” [P3L58-60].
It would have been obvious to one of ordinary skill in the art at the time of filing to add a LCST compound to Oshimo’s SBR or BR rubber in order to improve its performance in low temperature icy and snowy road surface and wet road surface.
Fedorczyk teaches block a copolymer of PNIPAM and polystyrene (i.e. PNIPAM-b-PS) (Abstract). The block copolymer offers tunability via tailor-made length of hydrophobic blocks which can easily be extended, modified, or attached to a surface [p. 3, second full paragraph]. These materials are suggested for use in a wide range of applications including engineering [p. 2, second full paragraph].
It would have been obvious to one of ordinary skill in the art at the time of filing to use PNIPAM-b-PS as the LCST compound in Oshimo’s SBR or BR rubber, as it is expressly disclosed as being useful in this capacity, with the added benefit of tunability allowing for adjustment of hydrophobic block length or subsequent modification as needed. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The PNIPAM-b-PS reads on the claimed temperature-responsive resin used by the applicant in the examples [Table 2, spec.].
Thus, Oshimo in view of Toshihiro and Fedorczyk teaches the same elastomer composition product as the instant application.
The recited relationships for the elastomer composition are a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited relationships are expected to be present.
Oshimo does not teach that the composition is used as a temperature-responsive component having a maximum thickness of 1 mm or more. However, Oshimo teaches that the composition is used in various tire components, including an outer layer (cap tread) and inner layer (base tread) [0061].
Sandstorm teaches butadiene rubber tire with tread cap having an overall thickness in a range of about 6.5 to about 25 millimeters, with the outer cap layer having a thickness of about 4.5 to about 20 millimeters and the inner cap layer having a thickness of about 2 to about 20.5 millimeters [P3L31-L33].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form an outer cap layer according to Oshimo having a thickness of about 4.5 to about 20 mm, as Sandstorm demonstrates this range to be suitable for cap treads. This represents the use of a suitable range of thickness in cap tread which is compositionally similar to those of Sandstorm and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141. The thickness of about 4.5 to about 20 mm meets the claimed 1 mm or more.
Sandstorm teaches that the cap element of the tire 1 comprises inner cap layer 7 and outer cap layer 8, which are adjacent to each other [P5L10-12 and drawing].
Since the outer cap layer is made from the LCST containing rubber as stated above, its material is different from the inner cap layer.
The recited difference in hardness is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. According to the applicant, the adjacent component is a base tread [0156 spec.]; the formulation of a base tread rubber was that of Comparative Example 1 listed in Table 2 [0159 spec.] which is substantially identical to Oshimo’s SBR-BR rubber. Since the prior art teaches the same base tread material and cap material as the current invention, the recited difference in hardness is expected to be present.
Regarding claims 16-19, the recited elastic modulus relationships for the elastomer composition are a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited relationships are expected to be present.
Regarding claims 20-22, the prior art teaches PNIPAM-b-PS which is a block copolymer and reads on the claimed temperature-responsive resin as stated above. PNIPAM reads on the claimed “A” and shows LCST; PS is polystyrene and reads on the claimed “B”.
Regarding claim 23, Fedorczyk teaches PNIPAM-block-PS copolymers illustrated in Figure 1 [P8]. The block copolymer obtained in Stage IV shows a molar ratio of PNIPAM to PS of 1:1, falling within the claimed range of 20:80 to 98:2.
Regarding claim 24, Fedorczyk teaches PNIPAM-block-PS copolymer PNPS5 having Mn of (4900+19500=24400) and Mw/Mn=2.01 [P14, Table 3]. Therefore, the Mw of the block copolymer is 49,044, as calculated by the examiner, falling within the claimed range of 20,000 to 100,000.
Regarding claim 26, Oshimo teaches that the rubber composition may contain compounding agents conventionally used in the rubber industry, including oils [0055], which reads on the claimed liquid plasticizer, as evidenced by the applicant [0134 spec.].
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oshimo in view of Toshihiro, Fedorczyk, and Sandstorm as applied to claim 13 above, further in view of Yokoyama et al (US 20180093533 A1).
Regarding claim 25, Oshimo in view of Toshihiro, Fedorczyk, and Sandstorm teaches the tire in claim 13. Oshimo does not teach wherein the elastomer composition further comprises at least one of water-absorbent fibers, elastomers, or resins.
In the same field of endeavor, Yokoyama teaches a tire composition comprising SBR rubber and BR rubber [0022, 0026]. The tire composition further comprises a hydrophilic resin that can have an affinity for water, including polyvinyl alcohol-based resins, cellulosic resins, and acrylic resins [0064]. These resins read on the claimed water-absorbent resins, as evidenced by the applicant [0102 spec.].
It would have been obvious to one of ordinary skill in the art at the time of filing to add any of these hydrophilic resins in Oshimo’s composition, as they are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762