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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in China on 2022-06-16. It is noted, however, that applicant has not filed a certified copy of the 202210682912.6 application as required by 37 CFR 1.55.
Response to Amendment
The Amendment filed March 23, 2026 has been entered. Claims 1-2, 4-10 remain pending in the application. Claim 3 was canceled. Claims 1, 4, and 8 were amended and support for amendments are found in the claims and Specification as originally filed. Claims 9-10 were previously withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Applicant’s amendments to the claims have overcome 112(b) rejections previously set forth in the Non-Final Office Action mailed December 23, 2025.
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.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over “Huang et al. (CN 108727648 A; English translation incorporated herein; hereafter as “Huang”) in view of Weydert et al. (US 2004/0024093 A1; hereafter as “Weydert”) and Jia et al. (CN 106589460 A; English translation incorporated herein; hereafter as “Jia”).
Regarding Claims 1-2, 4-6 and 8, Huang teaches a natural rubber-styrene-butadiene rubber composition with reduced wear on the rubber surface during fatigue impact [Abstract; ¶ 0086], corresponding to a wear-resistant natural rubber of Claim 1, comprising:
86-94 parts by weight of natural rubber and 6-14 parts by weight of styrene-butadiene rubber [Claim 1; ¶ 0012], which is equivalent to 92-108 parts by weight, which overlaps with 100 parts by weight of a modified natural rubber blend of Claim 1, and corresponds with natural rubber and a synthetic rubber in a weight ratio of (9-1):(1-2) of Claim 2, and thereby reading on the styrene-butadiene rubber of Claim 2;
35-42 parts by weight of a carbon black such as N220 [Claim 2; ¶ 0044], corresponding to 35-65 parts by weight of a first wear-resistant filler of Claim 1, and wherein the first wear-resistant filler is carbon black of Claim 1, and thereby reading on carbon black N220 of Claim 5;
8-15 parts silica [¶ 0012, 0058], corresponding to 5-20 parts by weight of a second wear-resistant filler of Claim 1, and thereby reading on the silicon dioxide of Claim 6;
5-7 parts by weight zinc oxide [Claim 2], corresponding to 2-7 parts by weight of zinc oxide of Claim 1;
1-1.5 parts by weight stearic acid [Claim 1; ¶ 0035], corresponding to 1-4 parts by weight of stearic acid of Claim 1;
1 part by weight of 1,2-dihydro-2,2,4-trimethylquinoline [Claims 3, 5], corresponding to 1-4 parts by weight of poly(1,2-dihydro-2,2,4-trimethylquinoline) of Claim 1;
1-2 parts by weight of N-isopropyl-N'-phenyl-p-phenylenediamine [Claims 3, 5], corresponding to 1-4 parts by weight of N-isopropyl-N'-phenyl-p-phenylenediamine of Claim 1;
1.2-2.5 parts by weight vulcanizing accelerator, such as N-cyclohexyl-
2-benzothiazole sulfenamide [Claim 1; ¶ 0013], corresponding to 1-4 parts by weight of a vulcanization accelerator of Claim 1, to the sulfenamide vulcanization accelerator of Claim 1, and thereby reading on the N-cyclohexyl-2-benzothiazole sulfenamide of Claims 4 and 8;
1.8-2.5 parts by weight vulcanizing agent, such as sulfur [Claims 1, 3], which overlaps with 1-2 parts by weight of sulphur of Claim 1; and
3-7 parts naphthenic rubber oil [¶ 0047-0048], corresponding to 1-7 parts by weight of a rubber processing oil of Claim 1.
However, Huang does not teach greater than 0 and equal to or less than 3 parts by weight of graphene oxide of Claim 1; 0.1-3 parts by weight of a compatibilizer of Claim 1; and the graphene oxide processing steps of Claim 1.
Regarding the compatibilizer of Claims 1 and 7, Weydert teaches reinforced rubber compositions for rubber tire treads [Abstract], comprising an 0.4-8 phr of an adduct of maleic anhydride and polybutadiene [Claim 6], thereby overlapping with 0.1-3 parts by weight (which is equivalent to 0.1-3 phr) of a compatibilizer of Claim 1, and thereby reading on the maleic anhydride grafted polybutadiene of Claim 7.
Weydert offers the motivation that the adduct of maleic anhydride and polybutadiene improves the interaction of the filler with the rubber matrix [¶ 0083].
Regarding the amount of graphene oxide and steps to prepare graphene oxide of Claim 1, Jia teaches a rubber additive for modifying graphene oxide [Abstract], comprising graphene oxide [¶ 0022-0024], corresponding to the graphene oxide of Claim 1, and the steps to prepare graphene oxide, comprising:
Dissolving rubber additives, such as N-cyclohexyl-2-benzothiazole sulfenamide, in an organic solvent, such as ethanol to for a rubber additive solution [¶ 0011-0022], corresponding to a dissolving a sulfenamide vulcanization accelerator with ethanol to obtain a sulfenamide vulcanization accelerator solution;
mixing the graphene oxide with water to obtain an aqueous dispersion of graphene oxide [¶ 0011-0022], corresponding to mixing graphene oxide with water to obtain a graphene oxide suspension;
mixing the rubber additive solution with the graphene oxide aqueous dispersion and stirring the mixture at 50-100˚C for 2-7 hours [¶ 0011-0022], corresponding to adding the sulfenamide vulcanization accelerator solution into the graphene oxide suspension followed by reaction at 60-80˚C under stirring and overlaps with 1-3 hours to obtain a reaction mixture;
washing and vacuuming dry the reaction product to obtain rubber additive modified graphene [¶ 0011-0022], corresponding to subjecting the reaction mixture to vacuum filtration, washing, centrifugation and drying to obtain the modified graphene oxide;
Wherein the concentration of the rubber additive solution in step (2) is 1-10 mg/mL [¶ 0011-0022], which is equivalent to 1:(0.1-0.5), corresponding to wherein a weight ratio of the sulfenamide vulcanization accelerator to the ethanol is 1:(0.2-0.5); and
Wherein the concentration of graphene oxide aqueous dispersion in step (1) is 0.5-1.5 mg/mL [¶ 0011-0022], which is equivalent to 2:(1-1.3), which overlaps a weight ratio of the graphene oxide to the water is 2:(0.5-1).
Jia is silent to the ethanol containing water, and thus, for the purposes of examination will be interpreted to be anhydrous ethanol, corresponding to the claimed anhydrous ethanol.
Furthermore, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by:
Huang for the amount of natural rubber and styrene-butadiene rubber (92-108 parts by weight) overlaps the instantly claimed range of modified natural rubber blend (100 parts by weight);
Huang for the amount of sulfur (1.8-2.5 parts by weight) overlaps the instantly claimed range of sulfur (1-2 parts by weight); and
Weydert for the amount of the adduct of maleic anhydride and polybutadiene (0.4-8 phr) overlaps the instantly claimed range of compatibilizer (0.1-3 phr);
Jia for the weight ratio of the graphene oxide 2:(1-1.3) instantly claimed range of graphene oxide to deionized water (2:(0.5-1)); and
Jia for the stirring duration (3-7 hours) overlaps the instantly claimed range of stirring duration (1-3 hours)
and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Furthermore, Jia teaches a modified graphene oxide with uniform dispersion in organic solvents [¶ 0007]. The amount and ratio of the graphene oxide can be optimized to reach the weight ratio with respect to water to achieve desired dispersion properties via routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of graphene oxide for the intended dispersion properties via a routine optimization, thereby obtaining the present invention.
Additionally, Claim 1 will be interpreted to be a product-by-process and “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Huang, Weydert, and Jia are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing rubber compositions for tires comprising natural rubber, zinc oxide, stearic acid, carbon black, vulcanizing accelerators, and antioxidants.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the compatibilizer of Weydert, and graphene oxide preparation of Jia with the rubber composition of Huang, thereby arriving at the claimed invention.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (WO 2020/247672 A1; hereafter as “Zhang”) in view of “Huang et al. (CN 108727648 A; English translation incorporated herein; hereafter as “Huang”), Weydert et al. (US 2004/0024093 A1; hereafter as “Weydert”) and Jia et al. (CN 106589460 A; English translation incorporated herein; hereafter as “Jia”).
Regarding Claims 1 and 7, Zhang teaches rubber compounds for tire treads with improved wear resistance [Claim 1; Examples 1-3; ¶ 0134], corresponding to the wear-resistant natural rubber, comprising:
100 parts by weight natural rubber [Table 3], corresponding to 100 parts by weight of a modified natural rubber blend of Claim 1;
Reduced graphene oxide [¶ 0048, 0078], corresponding to the modified graphene oxide of Claim 1;
20-80 phr of at least one filler [¶0008, 0018], corresponding to the 35-65 parts by weight of a first wear-resistant filler and 5-20 parts by weight of a second wear-resistant filler of Claim 1;
3 parts by weight zinc oxide [Table 3], corresponding to 2-7 parts by weight of zinc oxide of Claim 1;
2 parts by weight stearic oxide [Table 3], corresponding to 1-4 parts by weight of stearic acid of Claim 1;
4 parts by weight antioxidant [Table 3], corresponding to the 2-8 parts by weight antioxidants of Claim 1;
6PPD [Table 1A], corresponding to the phenyl-p-phenylenediamine of Claim 1;
1.4 parts by weight TBBS accelerator [Table 3], corresponding to 1-4 parts by weight of a vulcanization accelerator of Claim 1, and to the sulfenamide accelerator of Claim 1;
1.2 parts by weight sulfur [Table 3], corresponding to 1-2 parts by weight of sulphur of Claim 1; and
0-50 phr extender oil, such as rubber processing oil [¶ 0137-0138], corresponding to 1-7 parts by weight of a rubber processing oil of Claim 1;
Wherein 40 phr of the filler is carbon black [¶ 0018], corresponding to 35-65 parts by weight carbon black of Claim 1.
Regarding Claim 1, however, Zhang is silent to the amount of greater than 0 and equal to or less than 3 parts by weight of modified graphene oxide of Claim 1, 1-4 parts by weight of poly(1,2-dihydro-2,2,4-trimethylquinoline) of Claim 1, 1-4 parts by weight of N-isopropyl-N'-phenyl-p-phenylenediamine of Claim 1, 0.1-3 parts by weight of a compatibilizer of Claim 1, and the steps to prepare modified graphene oxide of Claim 1.
Regarding the amount of modified graphene oxide of Claim 1, Zhang teaches the rubber compounds for tire treads have enhanced filler dispersion and facilitate rubber-filler interactions for improving rubber compound performance [¶ 0065, 0072]. Zhang also teaches that fillers such as reduced graphene oxide are used for reinforcing elastomers [¶ 0078]. Therefore, the amount of the graphene can be optimized to reach the desired dispersion and mechanical properties via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of graphene oxide for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding the poly(1,2-dihydro-2,2,4-trimethylquinoline) and N-isopropyl-N'-phenyl-p-phenylenediamine of Claim 1, Huang teaches a natural rubber-styrene-butadiene rubber composition comprising natural rubber, 1.8-2.5 parts by weight vulcanizing agent, 3-6 parts by weight antioxidants, 35-42 parts by weight carbon black N220, 5-7 parts by weight zinc oxide, 1-1.5 parts by weight stearic acid, and with self-lubricating properties that reduces wear of the rubber surface [Claims 1-5, ¶ 0044, 0051, 0086]. Huang further teaches:
1 part by weight of 1,2-dihydro-2,2,4-trimethylquinoline [Claims 3, 5], corresponding to 1-4 parts by weight of poly(1,2-dihydro-2,2,4-trimethylquinoline) of Claim 1; and
1-2 parts by weight of N-isopropyl-N'-phenyl-p-phenylenediamine [Claims 3, 5], corresponding to 1-4 parts by weight of N-isopropyl-N'-phenyl-p-phenylenediamine of Claim 1.
Huang offers the motivation that the natural rubber-styrene-butadiene rubber composition has improved durability of torsion beam bushings by optimizing the damping rubber formulation and process [¶ 0010].
Regarding the compatibilizer of Claims 1 and 7, nevertheless, Weydert teaches reinforced rubber compositions for rubber tire treads [Abstract], comprising an 0.4-8 phr of an adduct of maleic anhydride and polybutadiene [Claim 6], thereby overlapping with 0.1-3 parts by weight (which is equivalent to 0.1-3 phr) of a compatibilizer of Claim 1, and thereby reading on the maleic anhydride grafted polybutadiene of Claim 7.
Weydert offers the motivation that the adduct of maleic anhydride and polybutadiene improves the interaction of the filler with the rubber matrix [¶ 0083].
Regarding the steps to prepare graphene oxide of Claim 1, Jia teaches a rubber additive for modifying graphene oxide [Abstract], the steps comprising:
Dissolving rubber additives, such as N-cyclohexyl-2-benzothiazole sulfenamide, in an organic solvent, such as ethanol to for a rubber additive solution [¶ 0011-0022], corresponding to a dissolving a sulfenamide vulcanization accelerator with ethanol to obtain a sulfenamide vulcanization accelerator solution;
mixing the graphene oxide with water to obtain an aqueous dispersion of graphene oxide [¶ 0011-0022], corresponding to mixing graphene oxide with water to obtain a graphene oxide suspension;
mixing the rubber additive solution with the graphene oxide aqueous dispersion and stirring the mixture at 50-100˚C for 2-7 hours [¶ 0011-0022], corresponding to adding the sulfenamide vulcanization accelerator solution into the graphene oxide suspension followed by reaction at 60-80˚C under stirring and overlaps with 1-3 hours to obtain a reaction mixture;
washing and vacuuming dry the reaction product to obtain rubber additive modified graphene [¶ 0011-0022], corresponding to subjecting the reaction mixture to vacuum filtration, washing, centrifugation and drying to obtain the modified graphene oxide;
Wherein the concentration of the rubber additive solution in step (2) is 1-10 mg/mL [¶ 0011-0022], which is equivalent to 1:(0.1-0.5), corresponding to wherein a weight ratio of the sulfenamide vulcanization accelerator to the ethanol is 1:(0.2-0.5); and
Wherein the concentration of graphene oxide aqueous dispersion in step (1) is 0.5-1.5 mg/mL [¶ 0011-0022], which is equivalent to 2:(1-1.3), which overlaps a weight ratio of the graphene oxide to the water is 2:(0.5-1);
Jia is silent to the ethanol containing water, and thus, for the purposes of examination will be interpreted to be anhydrous ethanol, corresponding to the claimed anhydrous ethanol.
Furthermore, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by:
Huang for the amount of natural rubber and styrene-butadiene rubber (92-108 parts by weight) overlaps the instantly claimed range of modified natural rubber blend (100 parts by weight);
Huang for the amount of sulfur (1.8-2.5 parts by weight) overlaps the instantly claimed range of sulfur (1-2 parts by weight); and
Weydert for the amount of the adduct of maleic anhydride and polybutadiene (0.4-8 phr) overlaps the instantly claimed range of compatibilizer (0.1-3 phr);
Jia for the weight ratio of the graphene oxide 2:(1-1.3) instantly claimed range of graphene oxide to deionized water (2:(0.5-1)); and
Jia for the stirring duration (3-7 hours) overlaps the instantly claimed range of stirring duration (1-3 hours)
and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Additionally, Claim 1 will be interpreted to be a product-by-process and “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Zhang, Huang, Weydert, and Jia are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing rubber compositions for tires comprising natural rubber, zinc oxide, stearic acid, carbon black, vulcanizing accelerators, and antioxidants.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the antioxidants of Huang, compatibilizer of Weydert, and graphene oxide preparation of Jia with the rubber composition of Zhang, thereby arriving at the claimed invention.
Regarding Claim 2, Zhang further teaches:
styrene-butadiene rubber [¶ 0023; Claims 35-36], thereby reading on the styrene butadiene rubber of Claim 2; and
at least 50 % natural rubber blended with styrene-butadiene rubber [¶ 0124], which is equivalent to a weight ratio of (1-2):(0-1) , corresponding to natural rubber and synthetic rubber in a weight ratio of (9-1):(1-2) of Claim 2.
Regarding Claims 4 and 8, Zhang does not explicitly teach the types of vulcanizing accelerator of Claims 4 and 8.
Nevertheless, Huang further teaches N-cyclohexyl-2-benzothiazolesulfenamide as an accelerator [Claim 1; ¶ 0051], thereby reading on wherein the sulfenamide vulcanization accelerator is N-cyclohexyl-2-benzothiazolesulfenamide of Claims 4 and 8.
Huang offers the motivation that the vulcanized natural rubber-styrene-butadiene rubber composition has increased heat capacity, which slows down rapid heat generation due to fatigue, and thus improving the composition durability [¶ 0084].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the N-cyclohexyl-2-benzothiazolesulfenamide of Huang with the rubber composition of Zhang, thereby arriving at the claimed invention.
Regarding Claims 5-6, Zhang further teaches:
filler such as carbon nanotubes [¶ 0048], thereby reading on the carbon nanotubes of Claim 6.
It is noted that carbon black N110 refers to an ASTM standard designation and as such the carbon black N110 of Zhang [¶ 0083], reads on the carbon black N110 of Claims 5.
Response to Arguments
Applicant's arguments and affidavit filed March 23, 2026 have been fully considered but they are not persuasive.
The affidavit filed March 23, 2026 is acknowledged and has been considered. Examiner acknowledges the disclosure of Liu et al. (CN 113462040) was made by the inventor or a joint inventor, or was obtained directly or indirectly from the inventor or a joint inventor.
The MPEP 2153.01 states: AIA 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions limit the use of an inventor's or at least one joint inventor’s own work as prior art, when the inventor's or at least one joint inventor’s own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor not more than one year before the effective filing date of the claimed invention. AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.
The Liu reference (CN 113462040) was published 10-1-2021. The effective filing date of the instant application is 12-1-2022 which is more than one year after the publication date of the Liu reference. As such, the 102(b)(1)(A) exception is not invoked. It is noted that a claim to foreign priority was made to Chinese patent application 202220682912.6 dated 6-16-2022 but certified copies have not been provided and the 35 USC 119 conditions have not been met.
Regarding Applicant’s arguments, Applicant argues (1) the cited prior art, either alone or in combination, fails to render the claimed invention obvious because Jia merely discloses a process for modifying graphene oxide with a rubber additive, but does not suggest incorporating the modified graphene oxide into a rubber composition including the specific combination of components. However, as disclosed above, Claim 1 will be interpreted to be a product-by-process and “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113. Thus, applicant’s argument is not persuasive.
Applicant argues (2) the claimed invention demonstrates improved properties such as better wear resistance and mechanical properties over the prior art. However, attention is directed to the disclosures above wherein the combinations of Huang in view of Weydert and Jia, and Zhang in view of Huang, Weydert and Jia each teach the claimed components and amounts of each component. The compositions of Huang in view of Weydert and Jia, and Zhang in view of Huang, Weydert and Jia would therefore be expected to result in the same improved properties. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed rubber composition material properties, as the reference teaches each of the claimed ingredients (natural rubber, zinc oxide, stearic acid, carbon black, sulfur, vulcanizing accelerators, compatibilizer, rubber processing oil, second filler, and antioxidants) in the same amounts, for the same utility (making modified rubber compositions) and for the same purpose (to produce wear-resistant tires). Thus, applicant’s argument is not persuasive.
Applicant argues (3) unexpected results, wherein the claimed invention has an abrasion loss of only 65 mm3. However, it is noted that the feature upon which applicant relies (i.e., an abrasion loss of only 65 mm3) is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Furthermore, the unexpected results have been considered but are not found to be convincing. The data presented in Table 1 of the instant Specification demonstrate 3 mechanical properties of a single exemplary example and 4 comparative examples in comparison to Chinese government standard (GB/T 9770-2013). Firstly, it is unclear what the Chinese government standard is and what it indicates about the claimed invention. Secondly, of the 3 mechanical properties, 2 properties have comparative examples that fall within Chinese government standard, e.g., Comparative Example 1 also falls within the Chinese government standard for tensile strength, Comparative Examples 1, 3, and 4 also fall within the Chinese government standard for elongation at break. Thirdly, a single exemplary example, i.e., Example 7, is not sufficient to demonstrate unexpected results for all the claimed components and amount ranges for each component. The data is not commensurate in scope with the claim language and is therefore not found to be persuasive. Further, the data should be presented in comparison to the closest prior art of reference (i.e. Huang and Zhang). As such, it is suggested that data be presented to at least show tensile strength, elongation at break, and abrasion for multiple examples within the claimed ranges vs. multiple comparative examples outside of the claimed ranges confer unexpected results. Thus, applicant’s argument is 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 LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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