DETAILED ACTION
These rejections are maintained from the previous office action.
Prior Art Rejections
Claims 1 to 10, 12 to 14 and 16 to 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Francik et al., 2016/0264768.
Francik et al. teach a rubber composition that contains each of the claimed com-
ponents. See components (A), (B) and (C) found in paragraphs 18 to 22 which meet the three required components in claim 1. As for the amounts please see the amounts found in Table 1, paragraph 63. This meets the claimed amounts. In this manner claim 1 is anticipated.
For claim 2 see the BET surface area in paragraph 43 which includes amounts as claimed such that the skilled artisan would have anticipated a value within the claimed amount. Also note that the pretreated silica used in the Table 1, Agilon 400™ has a BET value of 75 (this is readily obtainable through an internet search).
For claim 3 again see Agilon 400™ found in Table 1 which is treated with a sulfur containing silane. Also see paragraphs 20 and 21.
For claim 4, see paragraph 20 as well as the coupling agent 8 in Table 1.
For claim 5 again see the amounts found in Table 1.
For claim 6 note that carbon black is not required in the composition of Francik et al. On the other hand, note the amount of carbon black as found in Table 1 which falls within the claimed range.
For claims 7 - 9, see the specific silane used in Table 2, sample F, the last line in Table 1 and the specific teaching in paragraph 22. This anticipates both the amount of structure of these claims.
For claim 12 note that a plasticizer is not required in the composition of Francik et al.
For claim 13, note that the SPR in Table 1 meets all of these requirements.
For claim 14, note that sample F, which has the sulfur containing compound found in instant claim 1, contains .8 phr sulfur which falls within the claimed range.
For claim 16 see the functional groups found in paragraphs 30 and 32 which meet these requirements. See also paragraph 37. These are specifically disclosed as useful functional groups such that the skilled artisan would have anticipated such a claim limitation.
For claim 17, it is apparent from the teachings in paragraphs 25 and on that the conjugated diene based elastomer can be exclusively SBR such that one having ordinary skill in the art would have immediately envisaged such a formulation.
For claims 18 to 20 see paragraph 1. Also see paragraph 67 which tests the rubber samples for making tire tread.
Regarding the newly added limitation in claim 1, the Examiner recognizes that Table 1 includes an oil in amounts larger than that now claimed. Note paragraphs 48 and 49, though, which clearly teaches that oil are an optional component - not required in the prior art composition. As such the skilled artisan would have anticipated a comp-osition having amounts within the claimed range, yet without any processing oil. As such this limitation does not lend any patentable distinction to the claims.
Additionally, regarding the hydrocarbon resin, this is an optional component such that this limitation also is met by Francik et al.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Francik et al. in view of Naka et al. 2013/0324638.
Francik et al. teach the addition of tackifying resins in paragraph 49 in amounts
within the claimed range. This fails to specifically teach a hydrocarbon resin as claimed.
Naka et al. teach a comparable rubber composition for tire tread that contains a tackifying agent. As can be seen from paragraphs 64 and 65, resins such as terpene resin and petroleum are useful, and even preferred tackifying agents.
As such one having ordinary skill in the art would have been motivated to select a known and useful tackifying agent for use in the composition of Francik et al. with the expectation of obtaining useful and predictable properties. In this manner claims 10 and 11 are rendered obvious.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Francik et al. in view of 7,981,966, Kobayashi et al.
Francik et al. do not specifically teach the Mw of the SBR polymers therein but do
refer to 7,982,966 as teaching useful amino siloxy functionalized elastomers (paragraph 37).
Kobayashi et al. teach many rubbers that fall within this claimed Mw range. Note for instance that all of the prepared rubbers in Table 3 fall within this range.
From this the skilled artisan would have been motivated to select an SBR from those found in Kobayashi et al. for use in the composition of Francik et al. and thus would have found an SBR having a Mw within the claimed range to have been an obvious selection.
Response to Arguments
Applicants’ arguments have been considered but are not deemed persuasive of novelty and/or unobviousness.
First and foremost, the Examiner notes that applicants have not traversed the
rationale behind the rejection – that Francik et al. anticipate and/or render obvious the claims. Applicants have not argued a difference between the components or amounts in Francik et al. and that claimed. The rejection above addresses the newly added requirement of less than 10 phr oil, which is an anticipated feature in Francik et al.
Applicants refer the examples but the Examiner is unclear on how it distinguishes the claims from the prior art. The examples to not correspond to the closest prior art. Additionally, arguments of improved properties or unexpected results are not applicable in overcoming an anticipation rejection.
Arguments directed to the importance of pre-silanized silica and BDBzTH are not useful in establishing unobvious or novelty over Francik et al. since this is fully disclosed in the prior art.
Finally applicants argue that Francik teaches away from the use of BDBzTH in combination with pre-silanized silica and SSBR but the Examiner disagrees. Paragraph 71 and 72 teach the benefits of such a combination. In fact paragraph 72 actually states that “… a satisfactory rubber composition can be prepared comprised of the diene based elastomer, pretreated precipitated silica and cure package composed of sulfur, with an inclusion of the 1,6 bis (N,N’-dibenzylthiocarbamoyldithio)-hexane” (BDBzTH). In fact, the entire specification of Francik et al. refers to the benefits of this combination. See paragraphs 17 to 22. Applicants are also reminded that the prior art is not limited by or to the results in the working examples.
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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
Mgm
11/20/25
/MARGARET G MOORE/Primary Examiner, Art Unit 1765