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 action is in response to applicant’s amendments and arguments filed 12/30/2025. Claims 1, 16-17, and 22-24 are currently pending for examination on the merits.
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, 16-17, and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Nakatani (EP 3950381) (of record) in view of Hamamura (WO 2022/080037 with citations made from English equivalent US 2023/0373247) (of record).
Regarding claim 1, Nakatani discloses a tire having a tread portion (title; abstract), the tread portion comprising: a cap rubber layer (6) formed from a rubber composition comprising 50 parts by mass or more and 100 parts by mass or less of styrene-butadiene rubber (SBR) with respect to 100 parts by mass of a rubber component ([0018]; [0058]; see also Fig. 4), overlapping the claimed range of 40 parts by mass or more and 60 parts by mass or less. Nakatani further discloses that the styrene-butadiene rubber has a styrene content of 10% by mass or more and 60% by mass or less in 100 parts by mass of the rubber component ([0055]), overlapping the claimed range of 10% by mass or less. Nakatani further discloses that the rubber composition of the cap layer (6) contains 20 parts by mass or more and 130 parts by mass or less of silica with respect to 100 parts by mass of the rubber component ([0077]), overlapping the claimed range of 120 parts by mass or more and 180 parts by mass or less. Regarding the tread thickness, Nakatani discloses that the tread portion is made up of two layers – a cap rubber layer (6) and a base rubber layer (7) forming an inner layer ([0018]; see Fig. 4), wherein the cap rubber layer (6) has a thickness (t1) between 1.0 mm and 7.0 mm ([0020]), and the base rubber layer (7) has a thickness (t2) 1.0 mm and 10.0 mm ([0021]). Thus, Nakatani necessarily discloses that a total thickness of the tread (t1+t2) is between 2.0 mm (1.0+1.0) and 17.0 mm (7.0+10.0), overlapping the claimed range of 7.0 mm or less. Nakatani further discloses that an acetone extractable content (AE1) of the cap rubber layer (6) is 1 to 40% by mass ([0043]), overlapping the claimed range of 20% by mass or more. Furthermore, Nakatani discloses that a complex elastic modulus (30oC E*) of the cap rubber layer (6) measured under the conditions of a temperature of 30oC, a frequency of 10 Hz, an initial strain of 10%, a dynamic strain rate of 1%, and deformation mode: tensile is 7 MPa or more and 25 MPa or less ([0039]), encompassing the claimed range of 10.2 MPa or more and 14.8 MPa or less. Nakatani further discloses that a loss tangent (30oCtan δ C) of the rubber composition forming the cap rubber layer (6) measured under the conditions of 30oC, frequency of 10 Hz, initial strain of 5%, dynamic strain rate of 1%, and deformation mode: tensile, is 0.18 or more and 0.40 or less ([0040]), encompassing the claimed range of 0.20 or more. Nakatani further discloses that a loss tangent (30oCtan δ B) of the rubber composition forming the base rubber layer (7) measured under the same conditions is 0.10 or more and 0.40 or less ([0040]). Thus, Nakatani necessarily discloses that a ratio (30oCtan δ B/30oCtan δ C) between the loss tangent of the base rubber layer (7) to the loss tangent of the cap rubber layer (6) is between 0.25 (0.10/0.40) to 2.22 (0.40/0.18), overlapping the claimed range of 0.15 to 0.35. Nakatani further discloses that the cap rubber layer (6) comprises any resin component selected from a group including a petroleum resin (including C5, C9, and C5C9 resins), a terpene-based resin, a rosin-based resin, and a phenol-based resin ([0089]-[0092]).
Regarding the claimed ratio between the loss tangent of the cap rubber layer (6) and the thickness of the entire tread portion, based on the above disclosed values, it is clear that Nakatani discloses a ratio (30oCtan δ C/thickness of entire tread portion) between 0.011 (0.18/17.0) and 0.2 (0.40/2.0), overlapping the claimed range of greater than 0.039. Furthermore, given the above thickness ranges, it is clear that Nakatani discloses that the thickness (t1) of the cap rubber layer (6) can be between 9.1% ((1.0/(1.0+10.0))*100) and 87.5% ((7.0/(7.0+1.0))*100) with respect to the total thickness (t1+t2) of the tread, overlapping the claimed range of 10% or more and less than 100%. Nakatani further discloses that the complex modulus (30oC E*) of the cap rubber layer (6) can be larger than a complex modulus (30oC E*) of the base rubber layer (7) (see Examples 4 and 14-19 in Tables 3 and 5; [0039]). Finally, based on the above thickness values and the above styrene content values, it is clear that Nakatani discloses that a product of the styrene content contained in the cap rubber layer (6) and the total thickness (t1+t2) of the tread portion is between 20 (10*2.0) and 1,020 (60*17), overlapping the claimed range of less than or equal to 75. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality for the claimed ranges, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for Nakatani to have satisfied all of the claimed ranges based on the overlapping and encompassing ranges disclosed by Nakatani.
Nakatani fails to explicitly disclose, however, a particle size of the silica contained in the cap rubber layer (6).
Hamamura teaches a similar tire having a tread portion (title; abstract), wherein a cap rubber layer (6) forming the tread portion is formed form a rubber composition ([0038]; see Fig. 1), wherein the rubber composition comprises silica which a particle size between 1 nm and 20 nm ([0094]-[0095]), encompassing the claimed range of 10 nm or more and 15 nm or less. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Hamamura further teaches that configuring the silica with this particle size helps to improve the reinforcing property, fracture properties, and abrasion resistance of the rubber ([0094]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the silica in the rubber composition of the cap rubber layer disclosed by Nakatani to have a particle size within the claimed range, as suggested by Hamamura, because they would have had a reasonable expectation that doing so would help to improve the reinforcing property, fracture properties, and abrasion resistance of the rubber.
Nakatani also fails to explicitly disclose the claimed land ratio of the tread portion.
However, Hamamura further teaches that the groove ratio in the tread portion is between 15% and 35% ([0052]; [0023]), making the land ratio in the tread portion be between 65% (100-35) and 85% (100-15), suggesting the claimed range of 55% or more and 90% or less. Hamamura further teaches that configuring the tread portion in this way helps to improve riding comfort at low temperatures while exhibiting high steering stability during high-speed traveling ([0055]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the tread portion disclosed by Nakatani to have a land ratio within the claimed range, as taught by Hamamura, because they would have had a reasonable expectation that doing so would improve the riding comfort at low temperatures while exhibiting high steering stability during high-speed traveling.
Finally, Nakatani fails to explicitly disclose the claimed aspect ratio of the tire. However, Nakatani does disclose that the tire can be a passenger car tire, a tire for a large passenger car, or a tire for a large SUV ([0124]), which often have aspect ratios within the claimed range. For instance, Hamamura further teaches a tire for use as a passenger car tire, a tire for a truck/bus, and a tire for a large SUV (Hamamura: [0146]), wherein example sizes for these types of tires are 225/55R17 and 185/55R16 (Hamamura: see Tables 4 and 5), each of which have an aspect ratio of 55%, suggesting the claimed range of 30% or more and 60% or less. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the tire of Nakatani with an aspect ratio within the claimed range, as taught by Hamamura, because they would have had a reasonable expectation that doing so would be an appropriate way of creating a tire for use in a passenger car, truck/bus, and/or large SUV in accordance with the Nakatani invention. Thus, modified Nakatani satisfies all of the limitations in claim 1.
Regarding claim 16, Nakatani in view of Hamamura satisfies all of the limitations in claim 16 present in claim 1. Claim 16 contains a broader styrene content range and a broader tread portion thickness range compared with claim 1. However, examiner notes that Nakatani’s disclosed styrene content range of 10% by mass or more and 60% by mass or less in 100 parts by mass of the rubber component ([0055]) still overlaps the broader range of 25% by mass or less, and Nakatani’s thickness range of 2.0 mm to 17.0 mm ([0020]-[0021]) still overlaps the claimed thickness range of 8.5 mm or less. Thus, modified Nakatani still satisfies all of the limitations in claim 16.
Regarding claim 17, Nakatani in view of Hamamura satisfies all of the limitations in claim 17 present in claim 1. Claim 17 contains a broader styrene content range and a broader tread portion thickness range compared with claim 1. However, examiner notes that Nakatani’s disclosed styrene content range of 10% by mass or more and 60% by mass or less in 100 parts by mass of the rubber component ([0055]) still overlaps the broader range of 20% by mass or less, and Nakatani’s thickness range of 2.0 mm to 17.0 mm ([0020]-[0021]) still overlaps the claimed thickness range of 8.5 mm or less. Thus, modified Nakatani still satisfies all of the limitations in claim 17.
Regarding claims 22, 23, and 24, modified Nakatani discloses all of the limitations as set forth above for claims 1, 16, and 17, respectively. As set forth above, modified Nakatani discloses that a ratio (30oCtan δ B/30oCtan δ C) between the loss tangent of the base rubber layer (7) to the loss tangent of the cap rubber layer (6) is between 0.25 (0.10/0.40) to 2.22 (0.40/0.18), overlapping the claimed range of 0.18 to 0.30. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Nakatani to have satisfied the claimed range based on the overlapping range disclosed by modified Nakatani.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
Regarding applicant’s arguments related to the newly claimed loss tangent ratio (30oCtan δ B/30oCtan δ C), examiner respectfully disagrees. Applicant specifically argues that because Nakatani discloses a preferred ratio of the loss tangent of the cap rubber layer (6) to the loss tangent of the base rubber layer (7) that is outside of the claimed range of 0.15 to 0.35, Nakatani fails to make obvious the claimed range. However, examiner emphasizes that Nakatani’s disclosed range of 1.0 to 2.5 (which leads to a corresponding ratio 30oCtan δ B/30oCtan δ C of 0.4 to 1.0) is clearly specified as a preferential range only ([0039]), and Nakatani nowhere describes any downsides to values outside of this range. Indeed, Nakatani discloses that the upper limit to this preferred ratio is “not particularly limited” ([0039]). It has been held that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP §2123(II)), and “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (see MPEP 2123(I)). Thus, it is clear that Nakatani’s preferred range does not teach away from the claimed range. Furthermore, given the range of values for the loss tangent of the cap rubber layer (6) and the base rubber layer (7) disclosed by Nakatani, it is clear that the broader disclosure of Nakatani includes ratios (30oCtan δ B/30oCtan δ C) between 0.25 (0.10/0.40) to 2.22 (0.40/0.18) (see above rejection for claim 1), which overlap the claimed range of 0.15 to 0.35 and are sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Examiner also notes that the Nakatani reference often uses values outside of stated preferred ranges. For instance, Nakatani discloses that the complex elastic modulus (30oC E*) of the cap rubber layer (6) is 0.85 to less than 1.00 times the complex elastic modulus (30oC E*) of the base rubber layer (7) ([0039]). However, in most of the inventive examples disclosed by Nakatani, the complex elastic modulus (30oC E*) of the cap rubber layer (6) is greater than that of the base rubber layer (7) (see Examples 1-10 and 12-22 in Tables 3 and 5). Thus, one of ordinary skill in the art would have considered values outside of Nakatani’s preferred ranges as still within the scope of the invention. Applicant further argues that there is no motivation to explore values outside of Nakatani’s preferred range because Nakatani gives no indication that the claimed relationship is important or result-effective. However, this is clearly untrue, as Nakatani specifically mentions that ratios between the loss tangent of the cap rubber layer (6) to the base rubber layer (7) greater than 1.0 (or corresponding ratios 30oCtan δ B/30oCtan δ C less than 1.0) lead to good wet grip performance ([0040]). Thus, one of ordinary skill in the art would have had clear motivation to reach the claimed ratio by optimizing the broad range disclosed by Nakatani.
Applicant further argues that Tables 2-5 of the instant specification show unexpected results for the claimed ratio range of 0.15 to 0.35. However, these Tables cannot show unexpected results for the claimed range because they do not include any examples below the claimed range or at either one of the endpoints. Furthermore, Comparative Examples 3 and 5 of Table 5 have ratios (30oCtan δ B/30oCtan δ C) within the claimed range while also having inferior steering stability performance with respect to the Inventive Examples. Thus, contrary to applicant’s assertions, Tables 2-5 seem to prove that no criticality exists for the claimed ratio range. Thus, applicant’s arguments against the Nakatani reference are not persuasive.
Applicant further argues that Nakatani in view of Hamamura fails to make obvious the claimed silica particle size range because Hamamura discloses a silica content outside of the claimed range. Examiner respectfully disagrees. Aside from the fact that Hamamura’s disclosed silica content is merely a preferential range that one of ordinary skill in the art would not have been obligated to use (Hamamura: [0095]), examiner notes that silica content is not necessarily related to the silica particle size. For instance, Hamamura teaches benefits for the silica particle size range of 1 nm to 20 nm that are unrelated to the benefits regarding the content of the silica (Hamamura: [0094]-[0095]). Furthermore, applicant’s arguments fail to take into account the level of ordinary skill in the art. Examiner emphasizes that “a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton," and “a person of ordinary skill in the art will be able fit the teachings of multiple patents together like pieces of a puzzle,” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420, 421, 82 USPQ2d 1385, 1397 (2007). Thus, one of ordinary skill in the art is well equipped to combine some elements of the Hamamura reference without incorporating all of the teachings of Hamamura, especially when the teachings are unrelated. Examiner also notes that Nakatani already discloses a content of silica in the cap rubber layer that makes obvious the claimed range (Nakatani: [0077]) but is silent as to the particle size of the silica. Thus, one of ordinary skill in the art would only need to look to Hamamura for the particle size. Thus, applicant’s arguments against the Hamamura reference are not persuasive.
As such, claims 1, 16-17, and 22-24 stand rejected.
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.
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/B.C.D./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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