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 .
Response to Amendment
No new grounds of rejection are set forth below. Thus, the following action is made final.
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 Rejections - 35 USC § 103
Claim(s) 1, 3-4 and 6-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ozel et al (US 2004/0261926) in view of Peddini et al (WO 2019/075201).
The rejection is adequately set forth in paragraph 6 of the Office Action mailed on April 30, 2026 and is incorporated here by reference.
Claim(s) 2is/are rejected under 35 U.S.C. 103 as being unpatentable over Ozel et al (US 2004/0261926) in view of Peddini et al (WO 2019/075201) and Schmitz et al (US 2011/0146859).
The rejection is adequately set forth in paragraph 7 of the Office Action mailed on April 30, 2026 and is incorporated here by reference.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ozel et al (US 2004/0261926) in view of Peddini et al (WO 2019/075201) and Basu et al (US 2013/0150498).
The rejection is adequately set forth in paragraph 8 of the Office Action mailed on April 30, 2026 and is incorporated here by reference.
Response to Arguments
The 35 USC 112 first paragraph rejection set forth in paragraph 4 of the office action dated April 30, 2026 is withdrawn in light of applicant’s amendment filed on July 30, 2026.
Applicants’ arguments filed July 30, 2026 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: Ozel’s disclosure does not teach a dispersion in which the oil comprises about 40 wt% of the dispersion.
Examiner’s response: The independent claim uses as an initial component a carbon nanotube dispersion with 40% oil and 60% carbon nanotubes. However, the claim is not drawn to this initial component, rather, it is incorporated into a rubber composition and then further into the tire. As such, this initial dispersion can lose its initial characteristics. Is the final product as presently claimed (which is open to other ingredients) structurally different if the initial dispersion is at most 50% nanotubes with the resulting final amount of the nanotubes within the claimed range. There is no data to show the critical nature of the initial dispersion concentration and as such it can be considered to be, in essence, a product-by-process limitation. There is no limitation on the amount of oil that is present in the composition. The examiner has used a prior art reference which does disperse the nanotubes within oil as there may be a structural difference in the final tire article if the nanotubes were not pre-dispersed, however, the examiner argues that once the nanotubes are added in a dispersion, there would be no structural difference.
Applicant’s argument: Basu teaches that free processing oil and carbon-nanotube-in-oil are distinct materials whose respective oil contents affect rubber properties in different ways and therefore the Examiner’s modification to the rubber composition of the prior art is hindsight reconstruction rather than a teaching.
Examiner’s response: The examiner has considered specification of Basu and it does not offer a comparison between free-processing oil and carbon-nanotube-in-oil properties. There is no mention of carbon nanotube dispersions within Basu. Absent data which shows the difference between the two, applicant’s argument that the initial dispersion of 40% oil and 60% carbon nanotubes presents a critical, structural difference compared to that of the prior art, applicant’s arguments are not persuasive.
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 DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
