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 .
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.
3. Claim 1 has been amended, claim 16 has been cancelled, and claims 1-15, 17-20 are pending as amended on 10/27/25.
4. The new ground of rejection set forth below for claims are necessitated by Applicant's amendment filed on 10/27/254. In particular, claim 1 has been amended to include feature “the first polybutadiene rubber being functionalized.” Now, the scope of independent claim 1 and the claims depends from claim 1 are changed. For this reason, the present action is properly made final.
5. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
6. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
This application has PRO 63/324,314 03/28/2022.
Response to Amendment
8. Applicant's amendment filed on 10/27/25, has been fully considered and entered.
Response to Arguments
9. Applicant's arguments with respect to rejection of claim 14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph filed on 10/27/25, have been fully considered but are moot in view of amendment. Previous rejection to claim 14 has been withdrawn.
10. Applicant's arguments with respect to rejection of claims 1-4, 6-7, 9-11, 14-20 under 35 U.S.C. 103 as being unpatentable over Isitman (US 9441098) as evidenced from Henning (US 2005/0131112), claims 5, 8 under 35 U.S.C. 103 as being unpatentable over Isitman in view of Halasa (US 5677402), and claims 12-13 under 35 U.S.C. 103 as being unpatentable over Isitman in view of Chouvel (US 2020/0392311) filed on 10/27/25, have been fully considered but are moot in view of amendment. Applicants arguments have been respectfully considered but are not persuasive. Applicants arguments regarding claim 1, specifically “The composition features a blend of functionalized low cis-butadiene rubber (BR), natural rubber, and high vinyl BR (claim 1)” is incorrect. As such, the instant claim 1 does not require functionalized low cis-butadiene rubber (BR) or high vinyl BR. In fact, claim 1 is broader than applicants remark of “The composition features a blend of functionalized low cis-butadiene rubber (BR), natural rubber, and high vinyl BR (claim 1). ”
Applicants further argued “The Examiner cited to column 2, lines 30-33 (disclosing low vinyl), column 2, lines 41-44 (disclosing a coupling agent for use with silica filler), and table 1 (disclosing a high vinyl BR). The invention uses functionalized low cis-butadiene rubber, which Isitman does not teach. The low vinyl polybutadiene rubber used in Isitman is high in cis 1,4-content, not low. There is no example
or teaching of low cis butadiene rubber (i.e., a polybutadiene rubber with low cis 1,4-content).” It has been noted that claim 1 is broader than applicants remark of the requirement of cis- content, as such claim 1 is open to anything, like cis, and/or trans-content of the butadiene. The Office action correctly cites the claim 1 rejection. Previous rejections have been maintained.
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.
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.
Claims 1-4, 6-7, 9-11, 15, 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Isitman (US 9441098) as evidenced from Henning (US 2005/ 0131112).
Regarding claims 1-4, 6, 9, 17-20, Isitman discloses a winter tire comprising a rubber composition, wherein the rubber composition is comprised in radially outermost layer of the tread of the tire (column 2, lines 19-21, column 6, lines 8-14, column 9, lines 27-30), wherein the rubber composition comprising about 75 to about 25 phr of low vinyl polybutadiene rubber having a Tg in a range of from about −108° C to about −90° C and vinyl content in a range of from about 0 to about 15, wherein the diene is functionalized for coupling to silica (column 2, lines 30-33, column 2, lines 41-44, table 1), encompassing instant claim 1 range of 35 phr to 60 phr of a first polybutadiene rubber having overlapping glass transition temperature within a range of −80° C. to −105° C, and claim 2 range of vinyl content less than 25 wt%; about 25 to about 75 phr of a high vinyl polybutadiene rubber having a Tg in a range of from about −40° C to about −10° C and vinyl content in a range of from about 70 to about 85 percent (column 2, lines 26-29), overlapping instant claim 1 range of 5 phr to 30 phr of a second polybutadiene rubber having encompassing glass transition temperature within a range of −20° C to −40° C, and claim 3 range of vinyl content at least 50 wt%; up to 25 phr polyisoprene such as synthetic polyisoprene and natural rubber (column 2, lines 59-64), overlapping instant claim 1 range of 10 to 60 phr of polyisoprene selected from one or more of synthetic polyisoprene and natural rubber; about 80 to 200 phr filler such as silica (column 2, lines 36-39), fall into instant claim 1 range of 30 to 200 phr; and from 10 to 100 phr oil plastisizer such as MES or TDAE (column 4, lines 60-, column 5, lines -2), fall into instant claim 1 range of 40 to 120 phr. As evidenced from Henning (para [0021]), MES oil has Tg in the range of from about −57° C to about −63° C, fall into instant claim 1 range of from −40° C to −110° C. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 7, Isitman discloses 100 to 160 phr of silica (column 2, lines 36-38), overlapping claimed range of 80 to 150 phr. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claims 10-11, Isitman discloses from 10 to 100 phr oil plastisizer such as MES or TDAE (column 4, lines 60-, column 5, lines -2), encompassing instant claim 11 range of 55 to 95 phr. As evidenced from Henning (para [0021]), MES oil has Tg in the range of from about −57° C to about −63° C, fall into instant claim 10 range of below −40° C or instant claim 11 range of from −40° C to −100° C. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 15, Isitman discloses silane such as 8.8 phf of bis(3-triethoxysilylpropyl) polysulfide (table 1; silica coupler), fall into instant claim 15 range of 8 to 15 phf.
Claims 5, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Isitman as evidenced from Henning as applied to claim 1 above, and further in view of Halasa (US 5677402).
Isitman includes the features of claim 1 above.
Regarding claim 5, Isitman discloses the rubber composition comprising about 75 to about 25 phr of low vinyl polybutadiene rubber (column 2, lines 30-33), encompassing instant claim range of 40 phr to 75 phr of a first polybutadiene rubber but does not disclose the rubber composition comprises from 10 to 20 phr of the second polybutadiene rubber, and from 30 to 50 phr of the polyisoprene.
However, Halasa discloses a rubber tire comprising at least two different polybutadiene, polyisoprene and filler such as silica, wherein at least one polybutadiene have high vinyl content and is present in an amount of at least 10 phr (column 3, lines 54-, column 4, lines -20, column 9, lines 24-43) encompassing claimed amount of 10 to 20 phr, and polyisoprene in an amount of 5 to 50 phr (column 9, lines 8-10), encompassing claimed amount of 30 to 50 phr, to improve the wet skid resistance and traction characteristics of tires without sacrificing tread wear or rolling resistance (column 3, lines 50-53).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Isitman with polybutadiene have high vinyl content and is present in an amount of at least 10 phr and polyisoprene in an amount of 5 to 50 phr, as taught by Halasa. The rationale to do so would have been motivation provided by of Halasa that to do so would improve the wet skid resistance and traction characteristics of tires without sacrificing tread wear or rolling resistance. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 8, Isitman discloses 100 to 160 phr of silica (column 2, lines 36-38), encompassing claimed range of 105 phr to 140 phr of silica, but does not disclose the silica has a BET surface area within a range of 90 m2/g to 140 m2/g.
Halasa discloses a rubber tire comprising at least two different polybutadiene, polyisoprene and filler such as silica, wherein silica has BET surface area within a range of 50 m2/g to 300 m2/g (column 3, lines 54-, column 4, lines -20, column 9, lines 24-43, column 13, lines 10-15) encompassing claimed BET surface area within a range of 90 m2/g to 140 m2/g, to improve tear resistance and heat buildup (column 11, lines 7-8).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Isitman with silica has BET surface area within a range of 50 m2/g to 300 m2/g, as taught by Halasa. The rationale to do so would have been motivation provided by of Halasa that to do so would improve tear resistance and heat buildup in the tire. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Isitman as evidenced from Henning as applied to claim 1 above, and further in view of Chouvel (US 2020/0392311).
Isitman includes the features of claim 1 above.
Regarding claims 12-13, Isitman discloses the rubber composition comprising
plasticizer, e.g. various oils such as MES, TDAE, and vegetable oils (column 4, lines 63-, column 5, lines -2). As evidenced from Henning (para [0021]), MES oil has Tg in the range of from about −57° C to about −63° C, fall into instant claim range of from −40° C to −85° C. Isitman does not disclose another oil such as triglyceride having a glass transition temperature within the range of −90° C and −100° C.
However, Chouvel discloses a rubber tire comprising polybutadiene, polyisoprene and filler such as silica and plasticizer, wherein the plasticizer is liquid glycerol unsaturated fatty acid triester (triglyceride) exhibiting a glass transition temperature of less than −70° C (para [0016]-[0018], [0044], [0101], [0134]), encompassing claimed range of −90° C and −100° C, to improve the resistance to attacks and the hysteresis (para [0191]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Isitman with the plasticizer such as liquid glycerol unsaturated fatty acid triester (triglyceride) exhibiting a glass transition temperature of less than −70° C, as taught by Chouvel. The rationale to do so would have been motivation provided by of Chouvel that to do so would improve the resistance to attacks and the hysteresis. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 14, Isitman discloses oil such as naphthenic oil (column 5, line 1; read on mineral oil)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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