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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 13, 2026 has been entered.
Claim Objections
Claim 16 is objected to because of the following informalities:
The word “elastomer” in line 2 is misspelled.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 1-2, 4-13, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lopez (US 2012/0309865 A1).
Regarding claim 1, Lopez teaches a tire containing a tread formed from a rubber composition (Abstract), comprising:
At least one diene elastomer (Abstract), which includes a blend of a high Tg diene elastomer and a low Tg diene elastomer ([0041]).
The high Tg elastomer ([0041]) is included in the formulation in amounts ranging between 30 and 90 phr ([0042]) which overlaps the claimed range of “50 phr to 100 phr,” establishing a prima facie case of obviousness. Furthermore, the diene elastomers can be classified as essentially saturated and having less than 15% of diene content ([0025]). Lopez further clarifies that the inventive formulations include both of said classifications of essentially saturated and essentially unsaturated diene elastomers ([0025]), and therefore the essentially saturated elastomers may be included in the aforementioned diene elastomers within the inventive formulation. Furthermore, the requirement that the claimed polymer is “hydrogenated” is recognized as a product-by-process limitation. Product-by-process limitations only narrow the scope of the claims insomuch as they impose limitations on the implied structure of the claimed composition (see MPEP 2113.I.). In this case, the structure implied by hydrogenation includes the formation of a polymer with a particular amount of unsaturation (i.e., carbon-carbon double bonds). As described above, the high Tg elastomer of Lopez meets this criteria. The high Tg elastomer therefore reads on the claimed “partially hydrogenated elastomer.” Furthermore, as described above, the high Tg elastomer is diene-based ([0041]), and thus reads on the claimed limitation of “wherein the partially hydrogenated elastomer is a diene based elastomer.”
Lopez is silent with regard to explicitly stating the amounts of the low Tg elastomer included in the formulation. However, Lopez implicitly teaches that the low Tg elastomer is included in amounts of 0-60 phr (c.f. 30-90phr of the high Tg elastomer, blended with the low Tg elastomer and a minimum of about 10 phr of a hydrogenated styrene-based thermoplastic elastomer [0046], all three of which together comprise the basis of the term “phr” within the context of Lopez [0020]) which encompasses the claimed range of “0 phr to 50 phr,” establishing a prima facie case of obviousness. It therefore would have been obvious to one of ordinary skill in the art at the time of filing to incorporate between about 0 and about 60 phr of the low Tg elastomer. The low Tg elastomer therefore reads on the claimed “at least one diene based elastomer.”
A reinforcing filler (Abstract), such as silica (Abstract), and which may be an organosilane-functionalized silica ([0067]), which reads on the claimed “predominantly silanized or pre-silanized silica.” The reinforcing filler is included in amounts ranging from 30-150 phr ([0066]), which overlaps the claimed range of “40 phr to 200 phr,” establishing a prima facie case of obviousness.
Lopez teaches that the diene elastomers may be EPDM elastomers ([0025]), which contain propylene and ethylene, and may also be formed from styrene, isoprene, and/or butadiene ([0030] and [0032]).
Regarding claim 2, Lopez teaches that the diene elastomers, which includes the high Tg elastomer, have glass transition temperatures ranging from 0°C to -70°C ([0034]), which encompasses the claimed range of “-20°C to -65°C,” establishing a prima facie case of obviousness.
Regarding claim 4, Lopez teaches the incorporation of 5-50 phr of a liquid plasticizer ([0064]), which overlaps the claimed range of “0 phr to 10 phr,” establishing a prima facie case of obviousness.
Regarding claim 5, Lopez teaches that the reinforcing silica filler has a BET surface area ranging from 45-400 m2/g ([0064]), which overlaps the claimed range of “smaller than 120 g/m2,” establishing a prima facie case of obviousness.
Regarding claim 6, Lopez teaches the preferable use of silane polysulfides in the functionalization of the reinforcing silica filler ([0067]).
Regarding claim 7, Lopez teaches the functionalization of the reinforcing silica filler with bis(3-triethoxysilylpropyl) polysulfides ([0077]) including bis(3-triethoxysilylpropyl) tetrasulfide and bis(3-triethoxysilylpropyl) disulfide ([0077]), both of which read on the claimed “bis(3-triethoxysilylpropyl) polysulfide containing an average of from 2 to 5 connecting sulfur atoms in its polysulfide bridge” because bis(3-triethoxysilylpropyl) tetrasulfide and bis(3-triethoxysilylpropyl) disulfide have 4 and 2 connecting sulfur atoms in their polysulfide bridges, respectively.
Regarding claim 8, Lopez teaches that the reinforcing filler is included in amounts ranging from 30-150 phr ([0066]), which encompasses the claimed range of “45 phr to 150 phr,” establishing a prima facie case of obviousness.
Regarding claim 9, Lopez teaches that the incorporation of carbon black is optional (c.f. Abstract, wherein the filler is indicated as silica and/or carbon black). In compositions where carbon black is not selected, the formulation will contain 0 phr carbon black, which falls within the claimed range of “less than 5 phr of carbon black,” establishing a prima facie case of obviousness.
Regarding claim 10, as described above, Lopez teaches the incorporation of essentially saturated diene polymers ([0025] and [0031]), which have low or very low levels of units of diene origin, always less than 15% ([0025]), which overlaps the claimed range of “at most 11%,” establishing a prima facie case of obviousness.
Regarding claim 11, Lopez teaches the incorporation of essentially saturated diene polymers ([0025] and [0031]), which have low or very low levels of units of diene origin, always less than 15% ([0025]), which overlaps the claimed range of “at least 4%,” establishing a prima facie case of obviousness.
Regarding claim 13, Lopez teaches that styrene/butadiene copolymers are suitable as the diene elastomers ([0034]).
Regarding claim 16, as described above, Lopez teaches that the high Tg elastomer, which reads on the claimed “partially saturated elastomer,” is included in the formulation in amounts ranging between 30 and 90 phr ([0042]) which overlaps the claimed range of “75 phr to 100 phr,” establishing a prima facie case of obviousness. Furthermore, as described above, Lopez implicitly teaches that the low Tg elastomer, which reads on the claimed “diene-based elastomer” is included in the formulation in amounts ranging between about 0-60 phr (c.f. 30-90phr of the high Tg elastomer, blended with the low Tg elastomer and a minimum of about 10 phr of a hydrogenated styrene-based thermoplastic elastomer [0046], all three of which together comprise the basis of the term “phr” within the context of Lopez [0020]), which encompasses the claimed range of “0 phr to 25 phr,” establishing a prima facie case of obviousness. Furthermore, Lopez teaches that the low Tg elastomer is preferably a polybutadiene rubber ([0041]). The low Tg polymer therefore additionally reads on the claimed “polybutadiene rubber.”
Regarding claim 17, Lopez teaches that the diene elastomers may be solution-prepared SBR (SSBR, [0036]). Lopez further teaches that the SSBR may have a styrene content ranging from 20 to 45 % by weight ([0039]). The SSBR may therefore have a butadiene content ranging from 55 to 80 % by weight, and therefore the amounts of styrene and butadiene respectively overlap/fall within the claimed ranges of “5% to 40%” and “50% to 95%,” establishing prima facie cases of obviousness. The SSBR of Lopez therefore at least meets the limitations of “iv)” within claim 17, and therefore reads on the claimed “solution-polymerized styrene-butadiene rubber.”
Regarding claim 18, Lopez teaches the incorporation of thiuram and dithiocarbamate accelerators which may be primary accelerators ([0115]), and teaches that the primary accelerators in the formulation are preferably included in amounts ranging from 0.5 to 5.0 phr ([0114]), which overlaps the claimed range of “0.1 phr to 3 phr,” establishing a prima facie case of obviousness.
Regarding claim 19, Lopez teaches the cured (vulcanized) product of the inventive formulation ([0117]).
Regarding claim 20, Lopez teaches that the formulation may be used in the tread of a tire (Abstract, [0116]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lopez (US 2012/0309865 A1) in view of Kamei (JP 2005281706 A, hereinafter referring to the attached ESPACENET translation).
Regarding claim 3, Lopez teaches all of the limitations of claim 1 as described above. Lopez differs from claim 1 because it is silent with regard to the molecular weight of the diene elastomers.
In the same field of endeavor, Kamei teaches a thermoplastic composition comprising a diene copolymer, which may be a styrene-butadiene copolymer ([0010]) with a molecular weight (Mw) ranging from 200,000 to 450,000 (Abstract). Kamei further teaches that the incorporation of such polymers, with high molecular weights, is useful for improving the compression set of the composition ([0004]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate diene copolymers with molecular weights ranging from Mw = 200,000 to 450,000 g/mol into the formulation of Lopez for the purpose of improving the compression set of the composition. The range of 200,000 to 450,000 g/mol falls within the claimed range of “200,000 g/mol to 500,000 g/mol,” establishing a prima facie case of obviousness.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lopez (US 2012/0309865 A1) in view of Villani (US 2005/0056967 A1). Evonik (Vestenamer – Rubber Additive with Unique Properties) is cited as an evidentiary reference.
Regarding claims 14 and 15, Lopez teaches all of the limitations of claim 1 as described above. Lopez differs from claims 14 and 15 because it is silent with regard to the incorporation of a polyoctenamer in the claimed amounts or with the claimed characteristics.
In the same field of endeavor, Villani teaches a process for producing and storing a semi-finished elastomeric composition useful for forming tires/treads (Abstract), wherein the formulation comprises a polyalkenamer (Abstract). Villani further specifies the use of a polyoctenamer ([0036]) in amounts ranging from 3 to 40 phr ([0046]), and states a particularly preferred usage of Vestenamer 8012 ([0045]). Villani further teaches that the incorporation of the polyoctenamer is useful because it facilitates control over the adhesiveness and green strength of the composition, and because it reduces manufacturing times for both semi-finished and finished products ([0014]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate a polyoctenamer, and more specifically Vestenamer 8012, into the formulation of Lopez as taught by Villani for the purpose of improving the controllability of adhesiveness and green strength of the composition, and for reducing manufacturing times thereof. Vestenamer 8012 is a polyoctenamer with a glass transition temperature of -65°C, a molecular weight of 90,000 g/mol, a melting point of 54°C when measured by DSC in second heating, and an 80% content of trans double bonds (c.f. Evonik p. 5). Vestenamer 8012 therefore meets all of the claimed characteristics of the claimed polyoctenamer. Furthermore, Vestenamer 8012 is the same polyoctenamer as used in the instant Specification (c.f. instant Specification at p. 23, Table 3).
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed February 12, 2026, with respect to non-statutory double patenting have been fully considered and are persuasive. The non-statutory double patenting rejection of claims 1-2, 4-13, and 16-20 has been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant’s remarks are tantamount to asserting that the teachings of Lopez fail to read on the amended claims due to asserted differences between “saturated” and “hydrogenated” materials. However, as described above, this difference is directed towards a product-by-process limitation, as “partial hydrogenation” within the amended claim merely indicates the process by which the claimed polymer has achieved a particular (relatively low) degree of unsaturation. This is consistent with the instant disclosure, which indicates that the elastomers may contain residues which have been hydrogenated ([0015]). As described above, product-by-process limitations only narrow the scope of the claims insomuch as they impose limitations on the implied structure of the claimed composition (see MPEP 2113.I.). Since Lopez teaches saturated copolymers whose proportions of double bond content meet the criteria of the claims, the teachings of Lopez have met the structure implied by the product-by-process limitations and therefore read on the amended claims despite not directly indicating that the polymers are hydrogenated.
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762