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 .
This Office Action is in response to Applicant’s response to a Nonfinal rejection filed May 26, 2026.
In response to applicant' s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application' s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
The previous 112(b) rejection over claims 1-19 are withdrawn due to Applicant’s amendments.
Claims 1-20 are currently pending.
Claim Objections
Claims 1 and 18 are objected to because of the following informalities:
Claim 1, line 5, recites “an carbon black”. The claim should instead read “a carbon black”
Claim 18, line 5-6, recites “an carbon black”. The claim should instead read “a carbon black”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recite the term “intermediate” carbon black which is indefinite. The instant specification [0045] states: “It has been found, however, that a carbon black which does not fall into one of the standard ASTM categories is particularly useful in forming a rubber composition suited to use in tire plies. This carbon black is referred to herein as an ‘intermediate’ carbon black since it falls between two conventional ASTM grades with respect to the degree of structure.” The definition does not specify what is meant by “categories” and further, there are many ASTM standards. Which category or categories does the carbon black have to fall between and in which ASTM standard? The definition does not properly set forth the metes and bounds of what is considered to be “intermediate”. The term “intermediate” is indefinite.
Claim Analysis
Summary of Claim 1:
A rubber coat composition for a tire cord, the rubber coat composition comprising:
100 phr of elastomer, the elastomer comprising 60-100 phr of a conjugated diene elastomer;
at least 20 phr of an2/g to 70 m2/g;
at least 5 phr silica;
at least 0.1 phr of a tear strength agent;
a sulfur-based curing agent; and
an accelerator for the curing agent.
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.
Claims 1-8, 10-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Aoyagi et al. (EP 3845591 as listed on IDS dated October 22, 2024) in view of Wampler et al. (US 10072154 as listed on IDS dated March 29, 2023).
Regarding claims 1-4, Aoyagi et al. disclose Example 62 comprises 100 phr rubber comprising natural rubber, styrene butadiene rubber, and butadiene rubber, which are all conjugated dienes, 30 phr of carbon black, 30 phr silica, 1 part of tear strength agent 3-methyl-5-pyrazolone, 2 parts of sulfur, and a vulcanization accelerator (See Table 10), thereby lying within the claimed amounts of the components as recited in the instant claims.
Aoyagi et al. do not teach the carbon black having the statistical thickness surface area (STSA), Oil Absorption Number (OAN), and Oil Absorption Number of a Compressed sample (COAN) as recited in the instant claims 1-4 respectively.
Wampler et al. teach a carbon black in SR409 sample #1 having an STSA of 55.9 m2/g, OAN of 142.6 cc/100g, and a COAN of 97.9 (see Table 1), thereby lying within the claimed ranges of instant claims 1, 2, 3, and 4. Wampler et al. offer the motivation that the carbon black in rubber compositions exhibits low rolling resistance and thereby offers better fuel efficiency for tires [col 2, line 20-26]. Aoyagi et al. is also concerned with reducing rolling resistance and achieving lower fuel consumption for tires [0301]. Therefore, it would have been obvious to one of ordinary skill in the art to add the carbon black of Wampler et al. with the composition of Aoyagi et al. with reasonable expectation that the rolling resistance would be reduced.
Aoyagi et al. in view of Wampler et al. do not disclose that the rubber composition is used as a rubber coating or for a tire cord as recited in the instant claim. However, it is noted that case law holds that "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation." See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Regarding claim 5, Aoyagi et al. disclose the amount of silica present in Example 62 is 30 phr silica, thereby lying within the claimed range.
Regarding claim 6, Aoyagi et al. teach in Example 62 the amount of carbon black present is 30 phr and the amount of silica present is 30 phr, equivalent to a 1:1 ratio of carbon black to silica and thereby lying within the claimed range.
Regarding claim 7, Aoyagi et al. do not teach the CTAB surface area of the silica used in Example 62.
However, Aoyagi et al. teach exemplary silica products include HD200MP, which has a specific surface area (CTAB) of 185-225 m2/g as evidenced by the datasheet included in this Office Action [0112], thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to add the silica having an overlapping CTAB surface since Aoyagi et al. teach both may be used.
Regarding claim 8, Aoyagi et al. disclose in Example 62 the amount of silica coupling agent is 2.4 phr, thereby lying within the claimed range.
Regarding claim 10, Aoyagi et al. disclose 3-methyl-5-pyrazolone is present in Example 62, thereby reading on the instant claim.
Regarding claim 11, 12, and 13, Aoyagi et al. disclose 3 phr of zinc oxide, 2 phr of stearic acid, and 2 phr of a cure accelerator in Example 62, thereby reading on the instant claims.
Regarding claim 14, 15, and 17, Aoyagi et al. do not teach Example 62 is used to form a cord-reinforced rubber component for a tire.
However, Aoyagi et al. do teach the rubber composition is used to form a tire and can be used to form a carcass, which is a cord layer forming the frame work of the tire [0287-0301]. Therefore, it would have been obvious to one of ordinary skill in the art to form a cord-reinforced rubber component as taught by Aoyagi et al.
Claims 9, 16, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Aoyagi et al. (EP 3845591 as listed on IDS dated October 22, 2024) in view of Wampler et al. (US 10072154 as listed on IDS dated March 29, 2023) in further view of Sandstrom et al. (US 20060169382 as listed on IDS dated ).
The composition disclosed in claim 1 is incorporated herein by reference.
Regarding claim 9, Aoyagi et al. do not teach the rubber composition comprises a cobalt salt.
Sandstrom et al. teach a rubber composition comprising a cobalt salt in an amount from 0 to about 5 phr (claim 1, [0037]). Sandstrom et al. offer the motivation that the cobalt salt enhances physical properties in the rubber composition [0005]. Aoyagi et al. is also interested in improving the physical properties of the rubber composition [0003]. Therefore, it would have been obvious to one of ordinary skill in the art to add the cobalt salt of Sandstrom et al. with the composition of Aoyagi et al. with reasonable expectation that the physical properties would improve.
Regarding claim 16, Aoyagi et al. is silent on if the cord comprises at least one of metal wires and a fabric material.
Sandstrom et al. teach the carcass ply of the tire comprises brass coated steel cords or polyester cords [0028-0029], thereby reading on in the instant claim. Aoyagi et al. is also concerned with a carcass ply [0292-0301]. Therefore, it would have been obvious to one of ordinary skill in the art that the carcass made from Aoyagi et al. also comprises a cord as taught by Sandstrom et al. since it is well known in the industry to incorporate a metal wire in a carcass ply.
Regarding claim 18 and 19, Aoyagi et al. disclose a method of forming a rubber composition in Example 62 wherein 100 phr rubber comprising natural rubber, styrene butadiene rubber, and butadiene rubber, which are all conjugated dienes, 30 phr of carbon black, 30 phr silica, 1 part of 3-methyl-5-pyrazolone tear strength agent, 2 parts of sulfur, and a vulcanization accelerator are mixed together to form a rubber composition (See Table 10), thereby reading on the first step of instant claim 18.
Aoyagi et al. do not teach the carbon black having the statistical thickness surface area (STSA) as recited in the instant claim 18.
Wampler et al. teach a carbon black in SR409 sample #1 having an STSA of 55.9 m2/g, (see Table 1), thereby lying within the claimed ranges of instant claims 1, 2, 3, and 4. Wampler et al. offer the motivation that the carbon black exhibits low rolling resistance and thereby offers better fuel efficiency [col 2, line 20-26]. Aoyagi et al. is also concerned with reducing rolling resistance and achieving lower fuel consumption [0301]. Therefore, it would have been obvious to one of ordinary skill in the art to add the carbon black of Wampler et al. with the composition of Aoyagi et al. with reasonable expectation that the rolling resistance would be reduced.
Aoyagi is silent on coating at least one cord with the rubber composition.
Sandstrom et al. teach rubber compositions are mixed with polyester and nylon cords and cured at 150°C (see Table 2, [0028-0029], thereby reading on step 2 and 3 in the instant claim. Sandstrom et al. offer the motivation that the cord reinforced rubber composition improves durability [0003]. Aoyagi et al. is also concerned with a durability [0003]. Therefore, it would have been obvious to one of ordinary skill in the art to coat at least one cord as taught by Sandstrom et al. with the rubber composition of Aoyagi et al. with reasonable expectation that the durability would improve.
Regarding claim 20, Aoyagi et al. teach in Example 61 a rubber composition comprising 100 phr of natural rubber, which is predominantly cis 1,4 polyisoprene in view of instant specification [0031], 45 phr of carbon black, 10 phr silica, 1 parts of compound 1, a 3-methyl-5-pyrazolone tear strength agent, 2 phr of an antioxidant, 2 phr of stearic acid, 4 phr zinc oxide, 1 phr of a sulfur curing agent, and 1.2 phr of a cure accelerator (see Table 9), thereby lying within the claimed ranges.
Aoyagi et al. do not teach the CTAB surface area of the silica used in Example 61.
However, Aoyagi et al. teach exemplary silica products include HD200MP, which has a specific surface area (CTAB) of 185-225 m2/g as evidenced by the datasheet included in this Office Action [0112], thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to add the silica having an overlapping CTAB surface since Aoyagi et al. teach both may be used.
Furthermore, Aoyagi et al. do not teach a silica coupling agent is present in Example 61.
However, Aoyagi et al. do teach a silica coupling agent is present in an amount of 0.1 to 20 parts by mass per 100 parts by mass of carbon black and/or inorganic filler [0126-0145]. Aoyagi et al. teach the amount of carbon black is preferably 20 to 100 parts by mass based on 100 parts of rubber in the composition [0159]. Therefore, the amount of silane coupling agent is calculated to be 0.02 to 20 parts by mass per 100 rubber and thereby overlapping with the claimed range.
Aoyagi et al. do not teach the rubber composition comprises a cobalt salt.
Sandstrom et al. teach a rubber composition comprising a cobalt salt in an amount from 0 to about 5 phr (claim 1, [0037]). Sandstrom et al. offer the motivation that the cobalt salt enhances physical properties in the rubber composition [0005]. Aoyagi et al. is also interested in improving the physical properties of the rubber composition [0003]. Therefore, it would have been obvious to one of ordinary skill in the art to add the cobalt salt of Sandstrom et al. with the composition of Aoyagi et al. with reasonable expectation that the physical properties would improve.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18532643 (reference application) in view of Wampler et al. (US 10072154). Although the claims at issue are not identical, they are not patentably distinct from each other because both are related to rubber compositions comprising silica, a tear strength agent, sulfur based curing agent, and an accelerator in overlapping amounts. ‘643 do not teach an intermediate carbon black.
Wampler et al. teach a carbon black in SR409 sample #1 having an STSA of 55.9 m2/g (see Table 1). Wampler et al. teach carbon black is widely used as pigments, fillers, and reinforcing agents in rubber compounds [col 1, line 19-26]. Therefore, it would have been obvious to one of ordinary skill in the art to add the carbon black of Wampler et al. to ‘643 since it is well known in the rubber industry to add carbon black.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 19225592 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications refer to an elastomer, a carbon black having the same STSA, a tear strength agent, silica,
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see page 1-2, filed May 26, 2026, with respect to the rejection(s) of claim(s) 1-8 and 10-13 under 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Aoyagi et al. (EP 3845591 as listed on IDS dated October 22, 2024) in view of Wampler et al. (US 10072154 as listed on IDS dated March 29, 2023).
In response to applicant's argument that “the combination of Wampler and Aoyagi does not provide motivation to use SR409 in a carcass (cord) application”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
As noted in the FAOM, Aoyagi et al. do teach the rubber composition is used to form a tire and can be used to form a carcass [0287-0301] as rejected above. Therefore, it would have been obvious to one of ordinary skill in the art to use the rubber composition of Aoyagi in view of Wampler in a carcass application.
Applicant states “They do not suggest… using it in place of substantially lower-surface-area blacks, nor do they provide any reasonable expectation of improved carcass performance.”
The examiner respectfully disagrees. Wampler et al. offer the motivation that the carbon black in rubber compositions exhibits low rolling resistance and thereby offers better fuel efficiency for tires [col 2, line 20-26]. Aoyagi et al. is also concerned with reducing rolling resistance and achieving lower fuel consumption for tires [0301]. Therefore, absent unexpected results, it would have been obvious to one of ordinary skill in the art to add the carbon black of Wampler et al. with the composition of Aoyagi et al. with reasonable expectation that the rolling resistance would be reduced.
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 ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
