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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed January 16, 2026, with respect to the rejection(s) under 35 U.S.C. 112(b) have been fully considered and are persuasive. Applicant has amended claim 15 in accordance with the suggestion of the Office and canceled claim 20. Accordingly, the rejections are withdrawn.
Applicant’s amendments and arguments, filed January 16, 2026, with respect to the rejection(s) under 35 U.S.C. 103 in view of Obrecht have been fully considered but they are not persuasive. Applicant argues that because the instant claims require a second polybutadiene having a Mooney viscosity within 5 MU of the first, the absence of a second polybutadiene in Obrecht means there is nothing to compare against the first. However, Obrecht teaches that the composition may comprise “at least one 1,4-cis-polybutadiene (BR)” ([0018]) which may be synthesized with catalyst systems based on Nd (i.e., neodymium, a lanthanide series catalyst) or Ni ([0043]). Obrecht contemplates a limited number of catalyst systems for the at least one 1,4-cis-polybutadiene: Ti, Co, Ni, and Nd ([0043]-[0047]). Thus, a person having ordinary skill in the art would (1) be motivated to select a blend of a first and second polybutadiene (i.e., based on the disclosure of Obrecht that the composition may comprise “at least one 1,4-cis-polybutadiene”) and (2) recognize that both Nd- and Ni-catalyzed polybutadienes are recognized within the art as suitable polybutadienes known for the intended purpose of blending within vulcanizable rubber mixtures for tires. Thus, even though Obrecht does not explicitly spell out an exemplary embodiment having a first polybutadiene synthesized with a lanthanide series catalyst (e.g., Nd) and a second polybutadiene synthesized with a Ni-based catalyst, it is the position of the Office that Obrecht renders obvious the claimed combination because selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
With regard to Applicant’s argument that the absence of a second polybutadiene in Obrecht means there is nothing to compare against the first, when choosing subsequent 1,4-cis-polybutadiene blending components (as motivated by the disclosure of Obrecht “at least one 1,4-cis-polybutadiene”), a person having ordinary skill in the art would consider the range of Mooney viscosity contemplated by Obrecht (see para. [0048]), the range of which would naturally include values within ± 5 MU (e.g., wherein a first and second 1,4-cis-polybutadiene exhibit the same Mooney viscosity). Moreover, Obrecht teaches two exemplary 1,4-cis-polybutadienes within Table K (pg. 11 of Obrecht) prepared by different catalyst systems (Nd and Co) having Mooney viscosities of 43.4 and 43 ML 1 + 4 at 100 ˚C, which are within 5 MU of each other. Guided by these examples, a person having ordinary skill in the art would reasonably select a Mooney viscosities that are similar, such as 43 and 43.4 MU, which overlap with the claimed range, for a first and second 1,4-cis-polybutadiene prepared with two different Ti, Co, Ni, or Nd-based catalysts.
Applicant argues that neither polybutadiene in Obrecht is formed from a nickel-based catalyst as required by the instant claims. Obrecht teaches that the composition may comprise “at least one 1,4-cis-polybutadiene (BR)” ([0018]) which may be synthesized with catalyst systems based on Nd (i.e., neodymium, a lanthanide series catalyst) or Ni ([0043]). Obrecht contemplates a limited number of catalyst systems for the “at least one 1,4-cis-polybutadiene:” Ti, Co, Ni, and Nd ([0043]-[0047]). Even though Obrecht does not explicitly spell out an exemplary embodiment having a first polybutadiene synthesized with a lanthanide series catalyst (e.g., Nd) and a second polybutadiene synthesized with a Ni-based catalyst, it is the position of the Office that Obrecht teaches that polybutadienes synthesized with Ni-based catalysts are recognized within the art for the intended purpose of blending within vulcanizable rubber mixtures for tires and thus renders obvious the claimed selection of a polybutadiene synthesized with a Ni-based catalyst as selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Applicant’s arguments and amendments are considered fully responded to within the comments above and the rejections below.
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 1-6, 10, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Obrecht et al. (US20150031790, hereinafter referred to as “Obrecht”).
As to Claim 1: Obrecht teaches a vulcanizable rubber mixture comprising a rubber matrix comprising at least one 1,4-cis-polybutadiene (BR) ([0018]) which may be synthesized with catalyst systems based on Nd (i.e., neodymium, a lanthanide series catalyst) or Ni ([0043]). Obrecht further teaches that the BR types may exhibit a Mooney viscosity in the range of 20 to 150 Mooney units ([0048]). Obrecht teaches that the composition may comprise at least one synthetic polyisoprene ([0018]). Obrecht further teaches that the cis content of the at least one 1,4-cis-polybutadiene (BR) may be at least 90 mol% ([0043]) and that the cis content of the at least one synthetic polyisoprene may be at least 70 mol% ([0050]), which overlaps with the claimed cis content with sufficient specificity to render obvious the claimed range.
Obrecht is interpreted as embracing a blend of a first polybutadiene synthesized with a neodymium lanthanide series catalyst and a second polybutadiene synthesized with a nickel catalyst as Obrecht discloses a polybutadiene containing multiple components from the same genus (i.e., at least one 1,4-cis-polybutadiene ([0018])) and explicitly contemplates BR synthesized with lanthanide series and nickel-based catalysts ([0043]). Furthermore, based on the values for a Mooney viscosity and amount for the at least one 1,4-cis-polybutadiene, the composition described by Obrecht overlaps with the claimed limitations of wherein the polybutadiene comprises a majority of first polybutadiene and a minority portion of second polybutadiene (e.g., wherein the component b) of composition of Obrecht para. [0018] may comprise a ratio of 0:100 Nd-catalyzed BR:Ni-catalyzed BR to 100:0 Nd-catalyzed BR:Ni-catalyzed BR) and wherein the Mooney viscosity of the second polybutadiene is within 5 MU of the Mooney viscosity of the first Mooney viscosity (e.g., wherein an Nd-based BR and a Ni-based BR exhibit the same Mooney viscosity). It is also noted that Obrecht teaches two exemplary 1,4-cis-polybutadienes within Table K (pg. 11 of Obrecht) prepared by different catalyst systems (Nd and Co) having Mooney viscosities of 43.4 and 43 ML 1 + 4 at 100 ˚C, which are within 5 MU of each other. In the case 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, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Obrecht suggests, that the overlapping portion is a useable range for relative amounts of a first and second polybutadiene and Mooney viscosities thereof for forming vulcanizable rubber mixtures intended for tires ([0001]).
Obrecht teaches that the composition may be used to form a tire (see Title, [0001]), but does not explicitly teach that the composition is for a “heavy load tire.” However, “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to the claim construction” (see MPEP 2111.02). Statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets limitations of the claim. It is the position of the Examiner that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use (i.e., “for a heavy load tire”) recited in the present claim does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which reads on or renders obvious the present claims is capable of performing the recited purpose or intended use.
As to Claim 2: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht teaches that the vulcanizable rubber mixture comprises a rubber matrix comprising at least one 1,4-cis-polybutadiene (BR) ([0018]) which may be synthesized with catalyst systems based on Nd (i.e., neodymium, a lanthanide series catalyst) or Ni ([0043]). Obrecht is interpreted as embracing a blend of a first polybutadiene synthesized with a neodymium lanthanide series catalyst and a second polybutadiene synthesized with a nickel catalyst as Obrecht discloses a polybutadiene containing multiple components from the same genus (i.e., at least one 1,4-cis-polybutadiene ([0018])) and explicitly contemplates BR synthesized with lanthanide series and nickel-based catalysts ([0043]).
As to Claim 3: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht teaches that the composition may optionally comprise natural rubber, but teaches that said natural rubber may be excluded give the presence of a synthetic polyisoprene ([0018]) (i.e., natural rubber (NR) and/or at least one synthetic polyisoprene (IR)).
As to Claim 4: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht further teaches that the composition may comprise silica ([0088]). Obrecht does not teach that the composition requires more than one accelerator (i.e., a secondary accelerator) ([0123]).
As to Claim 5: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht further teaches that the composition may comprise silica ([0088]). Obrecht does not teach that the composition requires more than one accelerator (i.e., a combination of accelerators) ([0123]).
As to Claim 6: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht further teaches that the composition may comprise silica ([0088]). Obrecht contemplates that cyclohexylsulphenamide (CBS) ([0134]) (construed to describe the same structure as the claimed N-cyclohexyl-2-benzothiazolesulphenamide) is a suitable vulcanization accelerator, however, Obrecht contemplates a significant amount of other suitable vulcanization accelerators and does not prefer or require selection of CBS.
As to Claim 10: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht does not teach that the composition comprises petroleum-derived rubber processing oil.
As to Claim 12: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht further teaches that the glass transition temperature as determined by differential scanning calorimetry (DSC) ([0164]) of Ni-BR (i.e., nickel-based catalyst BR) is -107 ˚C and Nd-BR is -109 ˚C ([0046]-[0047]), which are within the claimed range.
As to Claim 13: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht further teaches that the glass transition temperature as determined by differential scanning calorimetry (DSC) ([0164]) of Ni-BR (i.e., nickel-based catalyst BR) is -107 ˚C and Nd-BR is -109 ˚C ([0046]-[0047]), which differ by less than 5 ˚C.
As to Claim 14: Obrecht teaches that rubber composition of claim 1 (supra).
The required elastomer components of Obrecht are construed to include the components recited in para. [0018]:
15 to 79 parts by weight of at least one solution SBR
20 to 75 parts by weight of at least one 1,4-cispolybutadiene (BR)
1 to 37.5 parts by weight of at least one synthetic polyisoprene
Component b) above is interpreted as embracing a blend of a first polybutadiene synthesized with a neodymium lanthanide series catalyst and a second polybutadiene synthesized with a nickel catalyst as Obrecht discloses a polybutadiene containing multiple components from the same genus (i.e., at least one 1,4-cis-polybutadiene ([0018])) and explicitly contemplates BR synthesized with lanthanide series and nickel-based catalysts ([0043]). Furthermore, based on the amount for the at least one 1,4-cis-polybutadiene, the composition described by Obrecht overlaps with the claimed limitation of wherein the first polybutadiene (i.e., a BR derived synthesized with a lanthanide catalyst, such as Nd) is present in a majority content level relative to a total content level of all other elastomers in the rubber composition (e.g., wherein the component b) recited within the composition recited in para. [0018] of Obrecht may comprise a ratio of 0:100 Nd-catalyzed BR:Ni-catalyzed BR to 100:0 Nd-catalyzed BR:Ni-catalyzed BR). For example, the disclosure of Obrecht at para. [0018] is construed to embrace a rubber matrix consisting of:
Component
Amount (parts by weight)
a) solution SBR
15
b) 1,4-cis-polybutadiene (BR)
Nd-catalyzed BR: 60
Ni-catalyzed BR: 10
c) synthetic polyisoprene
10
In the case 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, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Obrecht suggests, that the overlapping portion is a useable range for relative amounts of a first and second polybutadiene when blended with other elastomers, including a synthetic polyisoprene, for forming vulcanizable rubber mixtures intended for tires ([0001]).
As to Claim 15: Obrecht teaches that rubber composition of claim 1 (supra).
The Examiner notes that the claimed “about a 1:1 ratio” is construed in accordance with the instance specification para. [00026], which recites that the ratios of the butadienes may vary in an amount of ± 5 phr). Obrecht is interpreted as embracing a blend of a first polybutadiene synthesized with a neodymium lanthanide series catalyst and a second polybutadiene synthesized with a nickel catalyst as Obrecht discloses a polybutadiene containing multiple components from the same genus (i.e., at least one 1,4-cis-polybutadiene ([0018])) and explicitly contemplates BR synthesized with lanthanide series and nickel-based catalysts ([0043]). Furthermore, based on the amount for the at least one 1,4-cis-polybutadiene and at least one synthetic polyisoprene, the composition described by Obrecht overlaps with the claimed limitations of wherein the second polybutadiene (i.e., a BR derived synthesized with a Ni-based catalyst as established above) and the synthetic polyisoprene are present in about a ratio of 1:1 considering the at least one 1,4-cis-polybutadiene of Obrecht may comprise a ratio of 0:100 Nd-catalyzed BR:Ni-catalyzed BR to 100:0 Nd-catalyzed BR:Ni-catalyzed BR). For example, the disclosure of Obrecht at para. [0018] is construed to embrace a rubber matrix with amounts of components which overlap with the claimed range, such as that consisting of:
Component
Amount (parts by weight)
b) 1,4-cis-polybutadiene (BR)
Nd-catalyzed BR: 60
Ni-catalyzed BR: 10
c) synthetic polyisoprene
10
In the case 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, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Obrecht suggests, that the overlapping portion is a useable range for relative amounts of a first and second polybutadiene when blended with other elastomers, including a synthetic polyisoprene, for forming vulcanizable rubber mixtures intended for tires ([0001]).
As to Claim 16: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht further teaches that the rubber composition may be used to form tire treads ([0151]).
As to Claim 17: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht teaches that the vulcanizable rubber mixture comprising a rubber matrix comprising 20 to 75 parts by weight of at least one 1,4-cis-polybutadiene (BR) ([0018]) which may be synthesized with catalyst systems based on Nd (i.e., neodymium, a lanthanide series catalyst) or Ni ([0043]), thus reading on the claimed “combined first and second polybutadienes.” Obrecht further teaches that the composition may comprise at least one synthetic polyisoprene ([0018]) in an amount of 1 to 37.5 parts by weight ([0018]). This range overlaps with the claimed range. In the case 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, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Obrecht suggests, that the overlapping portion is a useable range for relative amounts of at least one 1,4-cis-polybutadiene and synthetic polyisoprene to form a rubber matrix blend with properties amenable for forming tires.
As to Claim 18: Obrecht teaches that rubber composition of claim 1 (supra).
Obrecht is interpreted as embracing a blend of a first polybutadiene synthesized with a neodymium lanthanide series catalyst and a second polybutadiene synthesized with a nickel catalyst as Obrecht discloses a polybutadiene containing multiple components from the same genus (i.e., at least one 1,4-cis-polybutadiene ([0018])) and explicitly contemplates BR synthesized with lanthanide series and nickel-based catalysts ([0043]). Thus, based on the disclosure of Obrecht, a person having ordinary skill in the art would consider that the at least one 1,4-cis-polybutadiene may comprise relative ratios ranging from 0:100 Nd-catalyzed BR:Ni-catalyzed BR to 100:0 Nd-catalyzed BR:Ni-catalyzed BR. For example, the disclosure of Obrecht at para. [0018] is construed to embrace a rubber matrix consisting of:
Component
Amount (parts by weight)
a) solution SBR
15
b) 1,4-cis-polybutadiene (BR)
Nd-catalyzed BR: 60
Ni-catalyzed BR: 10
c) synthetic polyisoprene
10
Thus, the ranges disclosed by Obrecht overlap with the claimed range. In the case 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, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Obrecht suggests, that the overlapping portion is a useable range for relative amounts of at least one 1,4-cis-polybutadiene to form a rubber matrix blend with properties amenable for forming tires.
Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over Obrecht et al. (US20150031790, hereinafter referred to as “Obrecht”) in view of Meza et al. (US20140255654, hereinafter referred to as “Meza”).
As to Claim 7: Obrecht teaches that rubber composition of claim 1 (see above).
The required elastomer components of Obrecht are construed to include the components recited in para. [0018]:
15 to 79 parts by weight of at least one solution SBR
20 to 75 parts by weight of at least one 1,4-cispolybutadiene (BR)
1 to 37.5 parts by weight of at least one synthetic polyisoprene
As the Examiner has contended that the component b) at least one 1,4-cispolybutadiene meets the limitation of the claimed first and second polybutadiene, Obrecht does not teach wherein the composition excludes elastomers apart from a first polybutadiene, second polybutadiene, and an isoprene.
Meza teaches a rubber composition for a tire comprising a blend of cis 1,4-polybutadiene and a cis 1,4-polyisoprene rubber which excludes additional elastomers ([0030] and Table 1). Meza further teaches that the polybutadiene elastomer is synthesized with a nickel catalyst ([0037]). Obrecht and Meza are considered analogous art because they are directed towards the same field of endeavor, namely, rubber compositions for tires. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention that utilizing a rubber composition consisting of a blend of a cis 1,4-polybutadiene and a cis 1,4-polyisoprene rubber (i.e., species corresponding to the components b) and c) of Obrecht) is known within the art as a suitable rubber blend for forming a tire with properties amenable to heavy duty use ([0007]). Based on the composition of Meza, a person having ordinary skill in the art would understand that exclusion of the required component a) of Obrecht would not render the composition inoperable for its intended purpose of forming a tire. Furthermore, a person having ordinary skill in the art may be motivated to exclude the component a) of Obrecht to, inter alia, simplify the rubber compounding/blending process by mixing fewer components or decrease the cost of the overall composition as preparing the compound a) of Obrecht would require a different synthetic procedure than components b) and c).
Claims 8, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Obrecht et al. (US20150031790, hereinafter referred to as “Obrecht”) in view of Sandstrom et al. (US20140135437, hereinafter referred to as “Sandstrom”).
As to Claims 8 and 9: Obrecht teaches that rubber composition of claim 1 (see above).
Obrecht teaches that the composition may comprise various additives including processing aids ([0142]), but does not explicitly teach wherein the composition comprises a vegetable triglyceride oil/soybean oil.
Sandstrom teaches a silica reinforced rubber composition for a tire tread comprising diene based polymers (Abstract) and a triglyceride-based vegetable oil which may be soybean oil ([0007]-[0009]), wherein said soybean oil functions as a processing aid ([0005]). Sandstrom further teaches that said triglyceride based vegetable oil which may be soybean oil is present in an amount of 5 to 40 phr ([0015]), which is within the claimed range. Obrecht and Sandstrom are considered analogous art because they are directed towards the same field of endeavor, namely, rubber compositions for tires. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a triglyceride-based vegetable oil which may be soybean oil as the processing aid disclosed by Obrecht with reasonable expectation of success and the motivation would have been that Sandstrom teaches that soybean oil is recognized within the art as a known processing aid suitable for addition to rubber compositions ([0007]-[0009]) and that including the same in an amount within the claimed range, e.g., 5 to 40 phr ([0015] of Sandstrom) provides balanced properties of traction and wear performance ([0005]).
As to Claim 11: Obrecht teaches that rubber composition of claim 1 (see above).
Obrecht teaches that the composition may comprise a tackifier (a resin according to the instant specification para. [00039]) but is silent towards an amount thereof.
Sandstrom teaches a silica reinforced rubber composition for a tire tread comprising diene based polymers (Abstract) and further comprising traction resins which may be a coumarone-indene resin, alkylated hydrocarbon resin, or dicyclophentadiene resin present in an amount of 2 to 20 phr ([0016]). Sandstrom further teaches exemplary compositions comprising 15 phr of a traction resin (Table 2, Example B), which is within the claimed range. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a resin within the composition of Obrecht and the motivation would have been that Sandstrom teaches that including a resin (e.g., a coumarone-indene resin) within rubber compositions for tires is known within the art to improve the wet and dry traction of tires comprising the same ([0004] of Sandstrom).
Claims 19 is rejected under 35 U.S.C. 103 as being unpatentable over Obrecht et al. (US20150031790, hereinafter referred to as “Obrecht”) in view of Sandstrom et al. (US20140135437, hereinafter referred to as “Sandstrom”).
As to Claim 19: Obrecht teaches a vulcanizable rubber mixture comprising a rubber matrix comprising 20 to 75 parts by weight of at least one 1,4-cis-polybutadiene (BR) ([0018]) which may be synthesized with catalyst systems based on Nd (i.e., neodymium, a lanthanide series catalyst) or Ni ([0043]), wherein said 1,4-cis-polybutadiene has a cis content of at least 90 mol% ([0043]), and wherein the glass transition temperature as determined by differential scanning calorimetry (DSC) ([0164]) of Ni-BR (i.e., nickel-based catalyst BR) is -107 ˚C and Co-BR is -107 ˚C ([0046]-[0047]), thus reading on the claimed “two low Tg polybutadienes having a high cis content” (as construed from the instant specification, “high cis content” is defined as greater than 80%, see para. [0005], and “low Tg” is defined as below -80 ˚C, see para. [00022]). Based on the disclosure of “at least one 1,4-cis-polybutadiene” which may be synthesized with catalyst systems based on Nd (i.e., neodymium, a lanthanide series catalyst) or Co (not a lanthanide series catalyst) ([0043]), a person having ordinary skill in the art would consider that the at least one 1,4-cis-polybutadiene may comprise a blend of two different types of 1,4-cis-polybutadiene with relative ratios ranging from 0:100 Nd-catalyzed BR:Co-catalyzed BR to 100:0 Nd-catalyzed BR:Co-catalyzed BR, thus overlapping with the claimed “the majority polybutadiene being synthesized with a lanthanide series catalyst and the minor polybutadiene not being synthesized with a lanthanide series catalyst.” Obrecht teaches two exemplary 1,4-cis-polybutadienes within Table K (pg. 11 of Obrecht) prepared by different catalyst systems (Nd and Co) having Mooney viscosities of 43.4 and 43 ML 1 + 4 at 100 ˚C, which are within 5 MU of each other. While Obrecht does not contemplate an exemplary embodiment comprising both of these polybutadienes, it is the position of the Office that Obrecht embraces blending multiple polybutadienes based on the disclosure that the composition may comprise “at least one 1,4-cis-polybutadiene.” Obrecht further teaches that the composition may comprise at least one synthetic polyisoprene ([0018]) in an amount of 1 to 37.5 parts by weight ([0018]), wherein said synthetic polyisoprene may have a cis content of at least 70 mol% ([0050]), which meets the claimed “high cis content” with sufficient specificity to read on the claimed “synthetic polyisoprene having a high cis content.” Thus, the ranges disclosed by Obrecht for amounts of a synthetic polyisoprene and two low Tg polybutadienes overlap with the claimed range. In the case 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, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Obrecht suggests, that the overlapping portion is a useable range for relative amounts of at least one 1,4-cis-polybutadiene and synthetic polyisoprene to form a rubber matrix blend with properties amenable for forming tires.
Obrecht teaches that the composition may comprise various additives including processing aids ([0142]), but does not explicitly teach wherein the composition comprises a vegetable triglyceride oil.
Sandstrom teaches a silica reinforced rubber composition for a tire tread comprising diene based polymers (Abstract) and a triglyceride-based vegetable oil which may be soybean oil ([0007]-[0009]), wherein said soybean oil functions as a processing aid ([0005]). Sandstrom further teaches that said triglyceride based vegetable oil which may be soybean oil is present in an amount of 5 to 40 phr ([0015]), which is within the claimed range. Obrecht and Sandstrom are considered analogous art because they are directed towards the same field of endeavor, namely, rubber compositions for tires. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a triglyceride-based vegetable oil which may be soybean oil as the processing aid disclosed by Obrecht with reasonable expectation of success and the motivation would have been that Sandstrom teaches that soybean oil is recognized within the art as a known processing aid suitable for addition to rubber compositions ([0007]-[0009]) and that including the same in an amount within the claimed range, e.g., 5 to 40 phr ([0015] of Sandstrom) provides balanced properties of traction and wear performance ([0005]).
Obrecht teaches that the composition may be used to form a tire (see Title, [0001]), but does not explicitly teach that the composition is for a “heavy load tire.” However, “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to the claim construction” (see MPEP 2111.02). Statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets limitations of the claim. It is the position of the Examiner that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use (i.e., “for a heavy load tire”) recited in the present claim does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which reads on or renders obvious the present claims is capable of performing the recited purpose or intended use.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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, Mark Eashoo can be reached on (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights