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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 26, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, it appears that the specification does not have support for the phrase “about 40”, the examiner suggests deleting the word “about” from the phrase.
The remaining claims are rejected from being dependent from a previously rejected claim.
Claim Rejections - 35 USC § 103
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.
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).
Regarding claims 1, 3 and 15-16, Ozel teaches a pneumatic tire with a rubber composition comprising: 100 phr of at least one diene-based elastomer (Abstract) and a filler comprising 8 to 35 phr of silica. It is noted that the rubber composition of Ozel can comprise 1 to 30 phr of a processing oil ([0049]) such as an aromatic, naphthenic or paraffinic oil ([0049])
Peddini teaches carbon nanotubes (Title) which are incorporated into a rubber composition at levels such 2-3.5 phr (Examples, Tables). Peddini teaches that the nanotubes have an oxidation level of 1 to 9% by weight ([0010]). Peddini also teaches that these carbon nanotubes are predispersed in oil prior to mixing with the rubber composition ([0028], [0033], Example 5). This oil can be a naphthenic oil ([0033]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the carbon nanotube/oil dispersion of Peddini as an additive to the rubber composition of Ozel. One would have been motivated to do so in order to receive the expected benefit of having nanotubes which are easily dispersed and individualized (Peddini, [0004]) which show improvements in mechanical, electrical and thermal properties (Peddini, [0006]).
It is noted that Peddini teaches that the oil/nanotube dispersion is, at most, 50% nanotubes (and therefore 50 % oil), ([0033]) which does not read on the limitations that the dispersion contains about 40% oil. However, as Peddini does teach the predispersion of carbon nanotubes in oil and Ozel teaches that excess oil is allowed in the pneumatic tire composition, the prior art teaches the same composition because the final rubber composition would be the same as the presently recited invention, with the nanotubes properly distributed within the rubber composition with processing oil in the composition.
Regarding claim 4, Ozel teaches that the composition further comprises from 0.5 to 10 phr of a resin ([0049]).
Regarding claim 6, Ozel teaches that the at least one diene-based elastomer comprises natural rubber (Abstract).
Regarding claim 7, Ozel teaches that the at least one diene-based elastomer further comprises ESBR ([0025]).
Regarding claim 8, Ozel teaches that the natural rubber/ESBR ratio ranges from 100:0 to 70:30 ([0024]).
Regarding claim 9, Ozel teaches that the composition further comprises 25 to 50 phr of carbon black particulates (Abstract).
Regarding claim 10-14, modified Ozel teaches that the rubber composition 25 to 50 phr of carbon black (Ozel, Abstract), 8 to 35 phr of silica (Ozel, Abstract) and 2-3.5 phr of carbon nanotubes (Peddini, examples). These can be the only filler elements in the rubber composition. Given this, the total amounts of these can ranges from 31phr to 100 phr with silica particles at most 10 phr.
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 discussion regarding Ozel and Peddini in paragraph 6 above is incorporated here by reference.
Regarding claim 2, modified Ozel teaches that the carbon nanotubes are added in amounts such as 2-3.5 phr (Peddini, examples).
It fails to teach that the filler comprises 6 phr of carbon nanotubes.
Schmitz teaches a pneumatic tire which incorporates 1 to 10 phr of carbon nanotubes (Abstract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the carbon nanotubes of modified Ozel be incorporated in the amount as taught by Peddini. One would have been motivated to do so in order to receive the expected benefit of using an amount of nanotubes which encourage good static electricity and low volume resistivity (Schmitz, [0016]).
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 discussion regarding Ozel and Peddini in paragraph 6 above is incorporated here by reference.
Regarding claim 5, Ozel teaches that the composition further comprises 0.5 to 10 phr of a resin ([0049]) and that this resin is a tackifier resin, however it fails to teach the type of resin.
Basu teaches a tire which incorporates a tackifier resin such as a modified gum rosin resin ([0062]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the tackifier resin of Ozel be the modified gum rosin of Basu. It would have been nothing more than using a known compound in a typical manner to achieve predictable results. KSR V. Teleflex, 550 U.S. 82 USPQ2d 1385 (2007).
Response to Arguments
Applicant's arguments filed March 26, 2026 have been fully considered but they are not persuasive for the reasons set forth below.
All arguments pertaining to the Peters reference have been considered, but are now moot as the Peters reference is no longer used in the above rejection.
Applicant’s argument: The combination of Ozel and Peddini fails to teach a nanotube dispersion with other fillers such as silica.
Examiner’s response: The prior art reference does teach silica in the composition please to the rejections above, it is noted that the silica does not appear to be in the dispersion with the carbon nanotubes.
Conclusion
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.
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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
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