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 .
Claim Rejections - 35 USC § 102
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 1-5, 7, and 9-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sandstrom (US 2010/0059160 A1).
Regarding claim 1, Sandstrom teaches carbon black reinforced rubber compositions (Abstract), and exemplifies a formulation containing 39 parts of natural cis 1,4 polyisoprene, 61 parts of cis 1,3-polybutadiene, 30 parts of carbon black, 2 parts of zinc oxide, and 1.8 parts of sulfur (p. 8, Table 9). All of the components are mixed together during the production process ([0019]), and thus the formulation meets the claimed limitation requiring that the carbon black is “dispersed” in the natural rubber. The carbon black and natural rubber together comprise 69 parts of the composition, which anticipates the claimed range of “at least 20 phr of a composite material comprising a reinforcing carbon black dispersed in natural rubber.” Furthermore, The natural rubber reads on the claimed “conjugated diene elastomer” because the claim as-modified requires that the conjugated diene material is one of a natural rubber or synthetic polyisoprene. The amount if natural cis 1,4 polyisoprene (39 parts, as described above) therefore anticipates the claimed range of “at least 3 phr of a conjugated diene elastomer.” Together, the natural cis 1,4 polyisoprene and the cis 1,3 polybutadiene comprise 100 parts of the formulation, which anticipates the claimed range of “at least 90 phr of vulcanizable elastomers.” Finally, the zinc oxide reads on the claimed “cure activator” and the sulfur reads on the claimed “sulfur-based cure agent” because the instant Specification states that these materials are suitable examples thereof (c.f. instant Specification at [0010] and [0083]).
Regarding the limitations wherein the rubber composition contains a composite material which is pre-formed and is prepared prior to compounding with other ingredients, these limitations are recognized as product-by-process limitations. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps (See MPEP 2113.I.). In the instant case, the structure implied by the pre-formation of the claimed composite material only requires the incorporation of a reinforcing carbon black which is dispersed into a natural rubber. As described above, the components within Sandstrom are specifically indicated as being mixed together during the production process, and thus the formulation meets the claimed limitation requiring that the carbon black is “dispersed” in the natural rubber. Furthermore, all of the claimed components are included as claimed. Therefore, the teachings of Sandstrom read on the claimed composition.
Regarding claims 2-4, the above-described formulation of Sandstrom further includes 20 parts of precipitated silica (p. 8, Table 9).
Regarding claim 5, as described above, the exemplified formulation of Sandstrom includes 30 parts of carbon black (p. 8, Table 9), which anticipates the claimed range of “at least 20 phr.”
Regarding claim 7, Sandstrom is silent with regard to the natural rubber and carbon black materials being solid. Nevertheless, the natural rubber and carbon black of Sandstrom are structurally identical to the claimed “composite material,” containing all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “solid” characteristic will therefore necessarily be present in the carbon black/natural rubber combination of Sandstrom, as applied above.
Regarding claim 9 as described above, the exemplified formulation of Sandstrom includes 39 parts of natural rubber (p. 8, Table 9), which reads on the claimed listing of “conjugated diene elastomer” components. The amount of 39 parts anticipates the claimed range of “at least 5 phr.”
Regarding claim 10, as described above, the exemplified formulation of Sandstrom includes zinc oxide (p. 8, Table 9), which reads on the claimed listing of “cure activator” compounds.
Regarding claim 11, Sandstrom teaches the optional incorporation of between 1 and 10 phr of a processing oil ([0064]), which anticipates the claimed range of “at least 0.1 phr.”
Regarding claim 12, the exemplified formulation of Sandstrom teaches the incorporation of 3 parts of an antiozonant and 1.3 parts of an antioxidant (p. 8, Table 9).
Regarding claim 13, Sandstrom further teaches the incorporation of a cure accelerator ([0041]-[0042]).
Regarding claim 14, Sandstrom further teaches the incorporation of a cure retardant ([0016], [0043]).
Regarding claim 15, as described above, the exemplified formulation of Sandstrom includes a combined 100 parts of natural cis 1,4 polyisoprene and cis 1,3-polybutadiene (p. 8, Table 9). This amount anticipates the claimed range of “at least 98 phr of the vulcanizable elastomers.”
Regarding claim 16, Sandstrom teaches the formation of tires from the inventive composition ([0045]), which reads on the claimed “article.”
Regarding claim 17, Sandstrom teaches the formation of a tire tread (p. 9, claim 17).
Regarding claim 18, Sandstrom teaches the mixing of components excluding sulfur at a temperature ranging from about 140°C to about 190°C, followed by mixing with sulfur ([0020]-[0021]). The temperature range of about 140°C to about 190°C anticipates the claimed range of “at least 115°C.” Furthermore, as described above, the exemplified formulation of Sandstrom includes a combined 100 phr of vulcanizable elastomers, which anticipates the claimed range of “at least 90 phr of a total of 100 phr of vulcanizable elastomers.”
Regarding claim 19, as described above, Sandstrom teaches the exemplary formulation as including silica (p. 8, Table 9).
Regarding claim 20, Sanstrom teaches the cured formulations ([0072]), and teaches the formation of shaped articles such as tire treads, as described above (p. 9, claim 17).
Claim Rejections - 35 USC § 103
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.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sandstrom (US 2010/0059160 A1).
Regarding claim 6, Sandstrom teaches all of the limitations of claim 1 as described above. The exemplary formulation of Sandstrom applied above differs from claim 6 because it includes only 39 phr of natural rubber in conjunction with cis 1,4 polybutadiene rubber (p. 8, Table 9). However, Sandstrom also teaches that the conjugated diene elastomers within the formulation, of which cis 1,4-polybutadiene is a member, may alternatively and preferably be comprised of natural rubber ([0049]). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate natural rubber in place of the cis 1,4-polybutadiene elastomer within the example formulation taught by Sandstrom, as Sandstrom identifies the two as alternatives. In doing so, the example formulation of Sandstrom would comprise 100 phr of natural rubber, which falls within the claimed range of “at least 50 phr of the natural rubber,” establishing a prima facie case of obviousness.
Response to Arguments
Applicant's arguments filed October 9, 2025 have been fully considered but they are not persuasive.
Applicant argues that the claimed “composite elastomer” masterbatch component of the amended claim is distinct from that of Sandstrom because it incorporates a “latex coagulation” process which is purportedly distinct from the “dry-mixing” process contemplated by Sandstrom. However, the claims do not require that the masterbatch is formed from the aforementioned “latex coagulation process.” Instead, the claim simply mentions a pre-formed composite. Furthermore, as described above, these limitations are tantamount to product-by-process limitations, and the claimed product is therefore not limited to the steps of the process but by the implied structure produced thereby. As described above, the structure implied by the generic requirement of a pre-formed composite simply includes the incorporation of the claimed components and the dispersion of carbon black therein. As described above, Sandstrom meets these limitations.
The instant Specification mentions that the claimed “composite material” may be formed from a latex coagulation method (c.f. [0038]), however this phrasing does not require such. Therefore, the claimed “composite material” is not given a controlling definition with respect to its formation, and any composite formed from the same components reads on the scope of the currently claimed “composite material.”
Assuming arguendo that the Applicant were to modify the claims to require that the claimed “preformed composite material” were formed by a latex coagulation method (via, for example, the support in the instant Specification found in paragraph [0038]), the claimed composition would likely be unpatentable over Sandstrom in view of the document referred to by the Applicant (Wang, US 9,156,955 B2, see Applicant’s Remarks p. 5), which qualifies as prior art. Applicant admits that Wang teaches the coagulation method contemplated by the instant Application. Wang further teaches that the inventive elastomer composite may be used in the formation of a tire (col. 15, lines 24-25), which aligns with the inventive goal of Sandstrom (Abstract). Wang further teaches that elastomer composites with high loadings of fillers can be formed from a wet masterbatch process (col. 5, lines 19-23), and teaches that the inventive aim is to improve the handling of compositions being prepared for said use (col. 2, lines 1-4).
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762