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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/02/2025 has been entered.
Response to Amendment
The amendments entered on 12/02/2025 have been accepted. Claims 12, 15-16, 20, 22 are amended. Claims 17-19 and 25-26 are canceled. Claims 1-13, 15-16, 20, 22-24 are pending, and claims 1-11 are withdrawn from consideration.
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 12-13, 15-16, 20, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nakahata (WO2020230606A1, citing to English Equivalent US2022/0306777A1) in view of Sridhar (NPL: “Temperature Responsive Poly(N-isopropylacrylamide-block-styrene”, of record), in view of Shinkai (US2013/0068358A1, of record), and in view of Radulescu (WO1998/058810, of record). It is noted that the reference Nakahata is currently available as prior art under both 102(a)(1) and 102(a)(2).
Regarding claim 12, Nakahata teaches a tire (title) comprising a temperature-responsive component comprising an elastomer composition comprising an elastomer component (The rubber composition as suggested by Nakahata may be utilized as part of a variety of components [0169], including as a cap tread [0169-0170]. The composition of the tire component is that of plasticizer which are applied to elastomers [abstract, 0100-0103], such that there would clearly be an elastomer component. Where the composition contains PNIPAM which is a well-known example for an LCST polymer which sees a change in hydrophilicity with temperature [0045-0051]. The instant specification similarly identifies PNIPAM as a thermosensitive material that exhibits large changes in surface energy in response to small changes in temperature [0052] and is a preferred material to use), comprising:
a styrene-based elastomer (the rubber composition may include rubbers such as SBR [0102]),
a temperature-responsive resin that changes its hydrophilicity with changes in temperature (as mentioned above, PNIPAM is art recognized to change its hydrophilicity with changes in temperature. Additionally, Nakahata states that PNIPAM has a change in contact angle with changing temperatures such that it has a LCST [0045-0051]).
Nakahata suggests that the use of PNIPAM components allows for the changing of properties for tire treads. Nakahata does not explicitly suggest the specific type of temperature-responsive resin that is a block copolymer that is utilized in the instant specification. However, the use of PNIPAM-b-Sty is known within the art as a temperature responsive component as a known alternative to what is disclosed in Nakahata to obtain similar benefits. Sridhar is tied to a temperature responsive Poly(N-isopropylacrylamide-block-styrene) block copolymer which experiences changes in hydrophilicity in temperature [title, abstract]. Sridhar, as with Nakahata, is similarly tied to property changes with changing temperatures of surfaces, wherein the specific polymer utilized and tested as disclosed by Sridhar would be considered highly relevant to the disclosure of Nakahata (and the instant application), such that inclusion of PNIPAM-b-Sty in the composition would be obvious to apply. As the amount of PNIPAM-b-Sty increases, the contact angle sees a greater difference in angle between a “high” and a “low” temperature [Fig. 6]. At a weight percent of 2%, the contact angle is 24deg and 27C, while the contact angle is 57deg at 40C [abstract].
One of ordinary skill in the art would have found it obvious to modify the composition of Nakahata to have the PNIPAM-b-Sty as suggested by Sridhar. One would have been motivated to enable the controllable switching of wetting characteristics of that which the component is applied to [Sridhar, Introduction], of similar motivation as Nakahata and the instant application.
Regarding the contact angle ratio, Nakahata and Sridhar each suggest that as the amount of the temperature responsive component increases, the contact angle sees a greater difference in angle between a “high” and “low” temperature [see Fig. 6 of Sridhar, 0045-0051 of Nakahata], such that the exact contact angle ratio may be controlled by varying the mass of the temperature responsive component PNIPAM-b-Sty. Nakahata and Sridhar also both show the contact angle values at high and low temperatures having a difference of at least 10deg (see Nakahata [Table 2] and Sridhar abstract]). As the balance between the hydrophobicity and hydrophilicity of the tire (as measured via the water contact angle) is a variable that can be modified, among others, by adjusting the amount of PNIPAM-b-Sty in the elastomer component, the precise interval would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the interval cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the interval in modified Nakahata to obtain a desired balance of hydrophilicity/hydrophobicity of the tire (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).” Given that Nakahata in view of Sridhar discloses a tire elastomer component with PNIPAM-b-Sty which is the same temperature sensitive component utilized in the instant specification to achieve the desired hydrophilicity (contact angle) properties, one of ordinary skill in the art would have optimized the mass of the temperature sensitive component PNIPAM-b-Sty through routine experimentation and thereby arrive at the claimed contact angle. And as such, one of ordinary skill would have landed upon a contact angle ratio that ranged/overlapped with the claimed values of less than 0.90 and more than 0.50. Additionally, it is noted that unexpected results nor criticality have been shown as to the claimed range. Additionally, as Nakahata suggests that the contact angle on a PNIPAM film is about 60deg below 32C and about 93deg when higher than 32C [0050] for a ratio of ~0.65, the claimed contact angle ratio would further have been obvious given the conventional behavior of PNIPAM at lower and higher temperatures. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Nakahata/Sridhar do not explicitly describe the contact angle lower temperature being taken at 5°C or lower. However, it is art recognized that the contact angle sees its substantive change occur around the LCST (lower critical solution temperature), such that at lower temperatures the angle would be relatively low and at higher temperatures the angle would be relatively high. PNIPAM sees the change in properties from hydrophilic to hydrophobic at about 32C [0049], such that at temperatures below 32C the angle is about 60deg compared to an angle of about 93deg above the LCST [0050]. Therefore, there exists a prima facie case of obviousness that a contact angle ratio between a low and high temperature with the low temperature below 5°C would have substantially similar values as when the low temperature is taken near 25°C (at suggested measurement points as in Nakahata and Sridhar), as in both cases the contact angle would be taken at temperatures well below the LCST where the substantial changes occur to the contact angle (where the change from hydrophobic/hydrophilic occurs).
Nakahata suggests that the composition comprises an amount of the temperature responsive component may preferably range from 10parts to 50parts by mass [0104-0105]. It would be obvious for one of ordinary skill in the art to similarly situate the temperature responsive component PNIPAM-b-Sty within a range of 20 to 60phr with a reasonable expectation of success (given the overlapping subject matter between Nakahata and Sridhar, the similarity in use of the component PNIPAM, etc., as explained above). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). And additionally, as the exact same temperature responsive resin PNIPAM-b-Sty is present in amounts overlapping 20phr, it would further be reasonably suggested that the contact angle would be as claimed, as demonstrated in Applicant’s specification Tables 2-3 where Examples 2-5, 8, and 10-11 each satisfy the claimed contact angle when PNIPAM-b-Sty is at an amount of 20phr.
Nakahata as modified by Sridhar suggests the temperature-responsive resin is a compound comprising “A” and “B” bound to each other (the “A” component is considered to be PNIPAM, which as detailed previously is known in the art to change its hydrophilicity with temperature, and the “B” component is considered to by Sty. These definitions of “A” and “B” are in line with the instant specifications preferred examples [see Examples 1-3]).
Nakahata suggests the use of the temperature responsive component as a tread cap rubber which contacts a ground [0168-0169]. Nakahata is silent as to the difference in hardness in the tread of the tire between a cap and base tread. Shinkai teaches a pneumatic tire [see Fig. 1] wherein the tread portion comprises a cap portion “12” and a base portion “11” [see Figs. 2-3]. The cap portion is a radially outermost layer and the base portion “11” is located radially inside of the cap portion. The rubber hardness of the cap portion is made to be higher than the hardness of the base portion, with a hardness difference of 1 to 20degrees [0050]. The hardness is taken at 25°C with durometer hardness test JISK6253 [0050], which are the same hardness testing conditions as the instant application [see 0148]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the rubber layers of Nakahata to have a cap/base structure where there is a hardness difference from 1 to 20 degrees as suggested by Shinkai, thus overlapping with the claimed range. One would have been motivated so as to suppress early wear of the rubber [0050]. And as there would be a hardness difference in the tread, there would clearly be two adjacent components which would have different compositions (so as to have the two different hardnesses).
Nakahata does not suggest a specific thickness for its tire component. As above though, it’s composition may be used in the tread. At essentially any thickness of the tread, it would be reasonable to expect that the thickness would be 1mm or more given that the tread thicknesses of tires are significantly greater than 1mm. A conventional tread thickness for a truck, as suggested by Radulescu, is a tread thickness greater than 20mm [bot pg. 5 – pg. 6]. One of ordinary skill in the art would have found it obvious to modify the tread of Nakahata to have a tread portion with a thickness greater than 20mm, as suggested for conventional truck tires by Radulescu. One would have been motivated to obtain the conventional benefits of sufficient traction and stability. In making such a modification, the thicknesses of the temperature responsive component of Nakahata would clearly have a thickness well over 1mm.
Regarding claim 13, modified Nakahata makes obvious a tire wherein the temperature-responsive component is an outer layer component of the tire (as in the rejection of claim 12 above, the component may be used as the tire tread rubber cap which is the outer portion of the tire).
Regarding claims 15-16, modified Nakahata makes obvious a tire wherein the composition contact angle ratio is from 0.5 to 0.85 and 0.5 to 0.80 (Nakahata and Sridhar each suggest that as the amount of the temperature responsive component increases, the contact angle sees a greater difference in angle between a “high” and “low” temperature [see Fig. 6 of Sridhar, 0045-0051 of Nakahata], such that the exact contact angle ratio may be controlled by varying the mass of the temperature responsive component PNIPAM-b-Sty. Nakahata and Sridhar also both show the contact angle values at high and low temperatures having a difference of at least 10deg (see Nakahata [Table 2] and Sridhar abstract]). As the balance between the hydrophobicity and hydrophilicity of the tire (as measured via the water contact angle) is a variable that can be modified, among others, by adjusting the amount of PNIPAM-b-Sty in the elastomer component, the precise interval would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the interval cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the interval in modified Nakahata to obtain a desired balance of hydrophilicity/hydrophobicity of the tire (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).” Given that Nakahata in view of Sridhar discloses a tire elastomer component with PNIPAM-b-Sty which is the same temperature sensitive component utilized in the instant specification to achieve the desired hydrophilicity (contact angle) properties, one of ordinary skill in the art would have optimized the mass of the temperature sensitive component PNIPAM-b-Sty through routine experimentation and thereby arrive at the claimed contact angle. And as such, one of ordinary skill would have landed upon a contact angle ratio that ranged/overlapped with the claimed values of less than 0.80 and more than 0.50. Additionally, it is noted that unexpected results nor criticality have been shown as to the claimed range. Additionally, as Nakahata suggests that the contact angle on a PNIPAM film is about 60deg below 32C and about 93deg when higher than 32C [0050] for a ratio of ~0.65, the claimed contact angle ratio would further have been obvious given the conventional behavior of PNIPAM at lower and higher temperatures. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 20, modified Nakahata makes obvious a tire wherein the “A” group shows a lower critical solution temperature in water (PNIPAM has a LCST in water [0049-0050]).
Regarding claim 22, modified Nakahata makes obvious a tire wherein a ratio of “A” to “B” is 50:50 to 98:2 (PNIPAM196-b-PS90 is a preferred form of the PNIPAM-block-styrene of Sridhar [Experimental Section]. PNIPAM is the majority component of this polymer, such that at these rates the amount of “A” component is calculated to be approximately 70% and the Sty component is calculated to be approximately 30% of the temperature-responsive resin. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 23, modified Nakahata makes obvious a tire wherein the temperature-responsive resin has a weight average molecular weight of 500-80000 (The molecular weight of the PNIPAM-b-PS is found to be 31.9 KDa [Sridhar, Results and Discussion]. This equates to 31,900 in terms of atomic molecular weight, which is firmly within the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Nakahata (WO2020230606A1, of record, citing to English Equivalent US2022/0306777A1) in view of Sridhar (NPL: “Temperature Responsive Poly(N-isopropylacrylamide-block-styrene”, of record), in view of Shinkai (US2013/0068358A1, of record), and in view of Radulescu (WO1998/058810, of record), as applied to claim 12 above, and further in view of Saito (JPH02167353A, of record).
Regarding claim 24, Nakahata does not explicitly suggest a composition comprising at least one of a water absorbent fiber, elastomer, or resin. Saito teaches a rubber composition for tires which incorporates a cellulose material, such as pulverized plant materials, sawdust (wood), and other possibilities [0001 of machine translation]. The instant specification acknowledges that such cellulose fibers are water absorbent fibers and are explicit examples used by Applicant [see Par 0092]. One of ordinary skill in the art would have found it obvious to modify Nakahata to have cellulose material as in Saito. One would have been motivated in order to improve performance on snow and ice by increasing friction on the tire surface.
Claims 12-13, 15-16, 20, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Verwey (WO2020002439A1, of record) in view of Sridhar (NPL: “Temperature Responsive Poly(N-isopropylacrylamide-block-styrene”, of record), in view of Shinkai (US2013/0068358A1, of record), and in view of Radulescu (WO1998/058810, of record).
Regarding claim 12, Verwey teaches a tire (title) comprising a temperature-responsive component comprising an elastomer composition comprising an elastomer component (The rubber composition as suggested by Verwey may be utilized as part of the tire tread [pgs. 1-2, bottom of pg. 6]. The composition of the tire component is that of an elastomer composition, where the composition contains PNIPAM which is a well-known example for an LCST polymer which sees a change in hydrophilicity with temperature [pgs. 4-5, pgs. 9-11]. The instant specification similarly identifies PNIPAM as a thermosensitive material that exhibits large changes in surface energy in response to small changes in temperature [0052] and is a preferred material to use), comprising:
a styrene-based elastomer (the rubber composition may include any available SBR or SSBRs [pgs. 3-4]),
a temperature-responsive resin that changes its hydrophilicity with changes in temperature (as mentioned above, PNIPAM is art recognized to change its hydrophilicity with changes in temperature. Additionally, Verwey states that PNIPAM has a change in contact angle with changing temperatures such that it has a LCST [pg. 2]).
Verwey suggests that the use of PNIPAM components allows for the changing of properties for at least tire treads. Verwey does not explicitly suggest the specific type of temperature-responsive resin which is a block copolymer that is utilized in the instant specification. However, the use of PNIPAM-b-Sty is known within the art as a temperature responsive component as a known alternative to what is disclosed in Verwey to obtain similar benefits. Sridhar is tied to a temperature responsive Poly(N-isopropylacrylamide-block-styrene) block copolymer which experiences changes in hydrophilicity in temperature [title, abstract]. Sridhar, as with Verwey, is similarly tied to property changes with changing temperatures of surfaces, wherein the specific polymer utilized and tested as disclosed by Sridhar would be considered highly relevant to the disclosure of Verwey (and the instant application), such that inclusion of PNIPAM-b-Sty in the composition would be obvious to apply. As the amount of PNIPAM-b-Sty increases, the contact angle sees a greater difference in angle between a “high” and a “low” temperature [Fig. 6]. At a weight percent of 2%, the contact angle is 24deg and 27C, while the contact angle is 57deg at 40C [abstract].
One of ordinary skill in the art would have found it obvious to modify the composition of Verwey to have the PNIPAM-b-Sty as suggested by Sridhar. One would have been motivated to enable the controllable switching of wetting characteristics of that which the component is applied to [Sridhar, Introduction], of similar motivation as Verwey and the instant application.
Regarding the contact angle ratio, Verwey and Sridhar each suggest that as the amount of the temperature responsive component increases, the contact angle sees a greater difference in angle between a “high” and “low” temperature [see Fig. 6 of Sridhar, pg. 1 and 3-4 of Verwey], such that the exact contact angle ratio may be controlled by varying the mass of the temperature responsive component PNIPAM-b-Sty. Verwey and Sridhar also both show the contact angle values at high and low temperatures having a difference of at least 10deg (see Sridhar abstract and Verwey Table 2). As the balance between the hydrophobicity and hydrophilicity of the tire (as measured via the water contact angle) is a variable that can be modified, among others, by adjusting the amount of PNIPAM-b-Sty in the elastomer component, the precise interval would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the interval cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the interval in modified Verwey to obtain a desired balance of hydrophilicity/hydrophobicity of the tire (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).” Given that Verwey in view of Sridhar discloses a tire elastomer component with PNIPAM-b-Sty which is the same temperature sensitive component utilized in the instant specification to achieve the desired hydrophilicity (contact angle) properties, one of ordinary skill in the art would have optimized the mass of the temperature sensitive component PNIPAM-b-Sty through routine experimentation and thereby arrive at the claimed contact angle. And as such, one of ordinary skill would have landed upon a contact angle ratio that ranged/overlapped with the claimed values of less than 0.90 and greater than 0.50. Additionally, it is noted that unexpected results nor criticality have been shown as to the claimed range.
Verwey/Sridhar do not explicitly describe the contact angle lower temperature being taken at 5°C or lower. However, it is art recognized that the contact angle sees its substantive change occur around the LCST (lower critical solution temperature), such that at lower temperatures the angle would be relatively low and at higher temperatures the angle would be relatively high. See Verwey pg. 2, wherein the behavior of a contact angle of PNIPAM exhibits hydrophobic properties above the LCST (high angle) and hydrophilic properties below the LCST (lower angles). Additionally, PNIPSM-b-Sty (as suggested by Sridhar) has a LCST of ~32C [see pg. 20 and 22 of originally filed specification]. Therefore, there exists a prima facie case of obviousness that a contact angle ratio between a low and high temperature with the low temperature below 5°C would have substantially similar values as when the low temperature is taken near 25°C (at suggested measurement points as in Verwey and Sridhar), as in both cases the contact angle would be taken at temperatures well below the LCST where the substantial changes occur to the contact angle (where the change from hydrophobic/hydrophilic occurs).
Verwey suggests that the composition comprises an amount of the temperature responsive component from 5 to 75phr, or more preferably 25phr to 75phr [pgs. 4-5]. It would be obvious for one of ordinary skill in the art to similarly situate the temperature responsive component PNIPAM-b-Sty within a range of 20 to 60phr with a reasonable expectation of success (given the overlapping subject matter between Verwey and Sridhar, the similarity in use of the component PNIPAM, etc., as explained above). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). And additionally, as the exact same temperature responsive resin PNIPAM-b-Sty is present in amounts overlapping 20phr, it would further be reasonably suggested that the contact angle would be as claimed, as demonstrated in Applicant’s specification Tables 2-3 where Examples 2-5, 8, and 10-11 each satisfy the claimed contact angle when PNIPAM-b-Sty is at an amount of 20phr.
Modified Verwey makes obvious a tire wherein the temperature-responsive resin is a compound comprising “A” and “B” bound to each other (the “A” component is considered to be PNIPAM, which as detailed previously is known in the art to change its hydrophilicity with temperature, and the “B” component is considered to by Sty. These definitions of “A” and “B” are in line with the instant specifications preferred examples [see Examples 1-3]).
Verwey suggests the use of the temperature responsive component as a tread cap rubber which contacts a ground [pgs. 1-2, 6]. Verwey is silent as to the difference in hardness in the tread of the tire. Shinkai teaches a pneumatic tire [see Fig. 1] wherein the tread portion comprises a cap portion “12” and a base portion “11” [see Figs. 2-3]. The cap portion is a radially outermost layer and the base portion “11” is located radially inside of the cap portion. The rubber hardness of the cap portion is made to be higher than the hardness of the base portion, with a hardness difference of 1 to 20degrees [0050]. The hardness is taken at 25°C with durometer hardness test JISK6253 [0050], which are the same hardness testing conditions as the instant application [see 0148]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the rubber layers of Verwey to have a cap/base structure where there is a hardness difference from 1 to 20 degrees as suggested by Shinkai, thus overlapping with the claimed range. One would have been motivated so as to suppress early wear of the rubber [0050]. And as there would be a hardness difference in the tread, there would clearly be two adjacent components which would have different compositions (so as to have the two different hardnesses).
Verwey does not suggest a specific thickness for its tire component. As above though, it’s composition may be used in the tread. At essentially any thickness of the tread, it would be reasonable to expect that the thickness would be 1mm or more given that the tread thicknesses of tires are significantly greater than 1mm. A conventional tread thickness for a truck, as suggested by Radulescu, is a tread thickness greater than 20mm [bot pg. 5 – pg. 6]. One of ordinary skill in the art would have found it obvious to modify the tread of Verwey to have a tread portion with a thickness greater than 20mm, as suggested for conventional truck tires by Radulescu. One would have been motivated to obtain the conventional benefits of sufficient traction and stability. In making such a modification, the thicknesses of the temperature responsive component of Verwey would clearly have a thickness well over 1mm.
Regarding claim 13, modified Verwey makes obvious a tire wherein the temperature-responsive component is an outer layer component of the tire (as in the rejection of claim 12 above, the component may be used as the tire tread rubber which is the outer portion of the tire).
Regarding claims 15-16, modified Verwey makes obvious a tire wherein the composition contact angle ratio is from 0.5 to 0.85 and 0.5 to 0.80 (Verwey and Sridhar each suggest that as the amount of the temperature responsive component increases, the contact angle sees a greater difference in angle between a “high” and “low” temperature [see Fig. 6 of Sridhar, pg. 1 and 3-4 of Verwey], such that the exact contact angle ratio may be controlled by varying the mass of the temperature responsive component PNIPAM-b-Sty. Verwey and Sridhar also both show the contact angle values at high and low temperatures having a difference of at least 10deg (see Sridhar abstract and Verwey Table 2). As the balance between the hydrophobicity and hydrophilicity of the tire (as measured via the water contact angle) is a variable that can be modified, among others, by adjusting the amount of PNIPAM-b-Sty in the elastomer component, the precise interval would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the interval cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the interval in modified Verwey to obtain a desired balance of hydrophilicity/hydrophobicity of the tire (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).” Given that Verwey in view of Sridhar discloses a tire elastomer component with PNIPAM-b-Sty which is the same temperature sensitive component utilized in the instant specification to achieve the desired hydrophilicity (contact angle) properties, one of ordinary skill in the art would have optimized the mass of the temperature sensitive component PNIPAM-b-Sty through routine experimentation and thereby arrive at the claimed contact angle. And as such, one of ordinary skill would have landed upon a contact angle ratio that ranged/overlapped with the claimed values of less than 0.80 and greater than 0.50. Additionally, it is noted that unexpected results nor criticality have been shown as to the claimed range).
Regarding claim 20, modified Verwey makes obvious a tire wherein the “A” group shows a lower critical solution temperature in water (PNIPAM has a LCST in water [Verwey, see pgs. 4-5]).
Regarding claim 22, modified Verwey makes obvious a tire wherein a ratio of “A” to “B” is 50:50 to 98:2 (PNIPAM196-b-PS90 is a preferred form of the PNIPAM-block-styrene of Sridhar [Experimental Section]. PNIPAM is the majority component of this polymer, such that at these rates the amount of “A” component is calculated to be approximately 70% and the Sty component is calculated to be approximately 30% of the temperature-responsive resin. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 23, modified Verwey makes obvious a tire wherein the temperature-responsive resin has a weight average molecular weight of 500-80000 (The molecular weight of the PNIPAM-b-PS is found to be 31.9 KDa [Sridhar, Results and Discussion]. This equates to 31,900 in terms of atomic molecular weight, which is firmly within the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Verwey (WO2020002439A1, of record) in view of Sridhar (NPL: “Temperature Responsive Poly(N-isopropylacrylamide-block-styrene”, of record), in view of Shinkai (US2013/0068358A1, of record), and in view of Radulescu (WO1998/058810, of record), as applied to claim 12 above, and further in view of Saito (JPH02167353A, of record).
Regarding claim 24, Verwey does not explicitly suggest a composition comprising at least one of a water absorbent fiber, elastomer, or resin. Saito teaches a rubber composition for tires which incorporates a cellulose material, such as pulverized plant materials, sawdust (wood), and other possibilities [0001 of machine translation]. The instant specification acknowledges that such cellulose fibers are water absorbent fibers and are explicit examples used by Applicant [see Par 0092]. One of ordinary skill in the art would have found it obvious to modify Verwey to have cellulose material as in Saito. One would have been motivated in order to improve performance on snow and ice by increasing friction on the tire surface.
Response to Arguments
Applicant argues that rejections over both Verwey and Nakahata fail to suggest contact angle ratios with the lower temperature of 5°C or less. Applicant argues that Sridhar’s results at tested temperatures higher than 5°C would not have any bearing on contact angles at 5°C. Applicant additionally argues that the narrowed contact angle range overcomes the prior art.
The Examiner respectfully disagrees. While the cited references may not explicitly mention taking the contact angle at a lowered temperature (such as 5°C), it is noted that it is understood in the art that the contact angle sees its substantive changes occurring at the LCST (lower critical solution temperature). At temperatures lower than the LCST, the angle would be at a relatively low value and at temperatures higher than the LCST the angle would be at a relatively high value. See Nakahata [0049], wherein it explains that PNIPAM sees the change in properties from hydrophilic to hydrophobic at about 32C which is the LCST, wherein at temperature below 32C the angle is about 60deg compared to an angle of about 93deg above the LCST [0050]. And additionally see Verwey pg. 2, wherein the behavior of a contact angle of PNIPAM exhibits hydrophobic properties above the LCST (high angle) and hydrophilic properties below the LCST (lower angles). Therefore, there exists a prima facie case of obviousness that that a contact angle ratio between a low and high temperature with the low temperature below 5°C would have substantially similar values as when the low temperature is taken near 25°C, as in both cases the contact angle would be taken at temperatures well below the LCST where the substantial changes occur to the contact angle (where the change from hydrophobic/hydrophilic occurs).
Additionally, it is noted, in the case of either Verwey or Nakahata, that the rejections of record rely upon the routine/obvious optimization of the contact angle ratios, based upon the desired balance of hydrophobicity/hydrophilicity of the tire, where the prior art acknowledges that this is a result-effective variable. This optimization would not be limited to a specific temperature value that the angle is taken at (such as 5°C vs 25°C), such that this range would clearly still be suggested by the prior art combinations herein. And regarding the narrowed range of the contact angle ratio (lower limit of 0.5), Applicant does not specifically address the rejections nor rationale as laid out by the Examiner for why it would have been obvious to optimize the contact angle ratios of Verwey/Nakahata. The Examiner finds the rationale as laid out in the rejections above as still applicable, as no convincing contrary evidence has been presented.
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. If the examiner determines there is factual support for rejecting the claimed invention under 35 U.S.C. 103, the examiner must then consider any evidence supporting the patentability of the claimed invention, such as any evidence in the specification or any other evidence submitted by the applicant. The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. MPEP 2142.
In this case, the examiner has met the initial burden of clearly articulating why the claimed contact ratios at 5°C or less would have been obvious over the prior art references. If the applicant is able to furnish evidence which shows that these references could not be combined in the manner suggested or would produce a different result, the examiner will consider such evidence.
And as noted exclusively with Nakahata, it is further suggested typical contact angle values of PNIPAM at temperatures below and above 32C, such that because a lower bound of temperatures is not detailed in Nakahata [0050], this would be considered to include low temperatures including at 5°C. And further in Nakahata, Nakahata suggests that for PNIPAM a contact angle ratio may have values of approximately 0.65, which further suggests the claimed contact angle ratio.
Applicant argues that the inclusion of claim 19 limitations into the independent claim 12 overcomes all of the prior art references.
The Examiner respectfully disagrees. First, it is noted that no specific arguments are provided by Applicant as to this or any possible faults provided as to the rejections of claim 19. This added limitation is clearly suggested by the prior art. The “A” component is considered to be PNIPAM (which is the temperature responsive part as acknowledged in Verwey, Sridhar, and Nakahata) and the “B” component is considered to by Sty. These definitions of “A” and “B” are in line with the instant specifications preferred examples [see Examples 1-3]). In addition, PNIPAM-b-Sty is the exact same resin that is utilized in the majority of testing examples by the Applicant (see Tables 2 and3), such that this resin would clearly satisfy these added limitations to the independent claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS F SCHNEIDER whose telephone number is (571)272-4857. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
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, Katelyn Smith can be reached at 571-270-5545. 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.
/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749