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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/23/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 5-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 has been amended to recite “an aromatic vinyl compound-based constituent unit present in 40 mass % or less on the total mass of the rubbery polymer, and an ethylene-based constituent unit present in 10 mass % or less based on the total mass of the rubbery polymer.” However, Applicant’s specification discloses “the percentage of a long chain in an ethylene-based constituent unit (an ethylene-based constituent unit and an aromatic vinyl compound-based constituent unit in a case where an aromatic vinyl compound-based constituent unit described below is contained) is 10 mass% or less based on the total mass of the rubbery polymer” ([0013]), “in a case where the rubbery polymer contains an aromatic vinyl compound-based constituent unit (in particular, is a random copolymer), the respective percentages of the long chains of an ethylene-based constituent unit and an aromatic vinyl compound-based constituent unit are preferably 10 mass% or less based on the total mass of the rubbery polymer” ([0016]), and “[t]he content of the aromatic moiety is preferably 40 mass% or less, more preferably 30 mass% or less based on the total amount of the rubbery polymer” ([0021]). In other words, the specification discloses that the long chains of the ethylene-based constituent unit (i.e., portion of long chain segments not the total amount of ethylene repeat units) the ethylene-based constituent unit (i.e., ethylene repeat units) is preferably 10 mass% or less, and the aromatic moiety (i.e., concerning only the aromatic portion and not the vinyl backbone carbons or any non-aromatic atoms) not the aromatic vinyl compound-based constituent unit (i.e., a repeat unit that includes the polymer backbone atoms and the aromatic ring) is preferably 40 mass% or less. Moreover, the specification also discloses that the percentage of the long chains of an aromatic vinyl compound-based constituent unit is preferably 10 mass% or less ([0016]), which is different than the claimed range of 40 mass% or less and again refers only to the long chains of the aromatic vinyl (see discussion above for the long chains of ethylene). Accordingly, the specification does not disclose a limitation on the entire ethylene-based constituent unit, but rather only on the long chain portions of the ethylene-based constituent units and/or aromatic vinyl constituent units. Similarly, the specification does not disclose a limitation on the entire aromatic vinyl compound constituent unit, but rather only for the aromatic moiety, which constitutes only a portion of the entire constituent unit. Furthermore, in both of the disclosures for the ethylene-based constituent unit and the aromatic vinyl compound-based constituent unit, the specification uses the term “preferably,” which indicates a preferred range rather than a mandatory limitation. Thus, the amended claim limitations are not supported by the original disclosure. Claims 5-12 are dependent upon claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Balnis (US 20150344679) (of record), Mazaki (JP 2004224952, see machine translation) (of record), and optionally any of Sandstrom (US 20090043039) and/or Jasiunas et al. (US 20160152805).
Regarding claim 1, Balnis discloses a method for producing a tire, comprising a base tire comprising a sidewall section that may contain 20 parts by mass or more of a rubbery polymer per 100 parts by mass of a rubber component (Abstract, [0011]-[0012], [0040]). Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of rubbery polymer in the sidewall section.
Additionally, Balnis further discloses that the ratio in parts per hundred of polymer blends in the rubbery polymer may be adjusted according to the desired final viscoelastic properties desired for the polymerized rubber compound ([0012]). In other words, the amount of rubbery polymer and its quantity in the sidewall are considered to be result effective variables that may be optimized as desired for the desired final product properties. It is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for the amount of rubber polymer in the sidewall composition. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the amount of rubber polymer in the sidewall in order to achieve the desired final viscoelastic properties desired for the polymerized rubber compound.
Balnis further discloses the rubbery polymer having average molecular weight (Mw) of about 100,000 to about 1,000,000 ([0013]), which overlaps with the claimed range of 10 x 104 (i.e., 100,000) or more and 200 x 104 (i.e., 2,000,000) or less. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the molecular weight of the rubbery polymer.
Balnis further discloses the rubbery polymer containing a conjugated diene compound-based constituent unit, an aromatic vinyl compound-based constituent unit, and an ethylene-based constituent unit per 100 parts by mass of a rubber component ([0011]-[0012]).
Balnis further discloses the rubbery polymer may comprise a conjugated diene compound-based constituent unit containing styrene butadiene, polybutadiene, poly(isoprene-styrene), poly(isoprene-butadiene), and/or poly(isoprene-styrene-butadiene) ([0011]-[0012], claim 21). The examiner notes that in the rubber art, each of these elastomers is necessarily derived from 1,3 butadiene. Thereby, Balnis discloses a conjugated diene compound comprising 1,3, butadiene.
Optionally, Sandstrom discloses a rubber composition of a tire sidewall that may be comprised of at least one diene-based elastomer selected from, for example, polymers and copolymers of at least one of isoprene and 1,3-butadiene and copolymers of styrene and/or alpha methylstyrene with at least one of isoprene and 1,3-butadiene and may include an EPDM rubber (ethylene/propylene/conjugated diene rubber terpolymer) ([0053]). Additionally or alternatively, Jasiunas discloses a rubber composition comprising a functionalized styrene-butadiene rubber that can be comprised of repeat units which are derived from (1) 1,3-butadiene, (2) styrene, and (3) at least one functionalized monomer ([0068]). Accordingly, it is generally known in the rubber art that the elastomers disclosed by Balnis are derived from 1,3 butadiene, as evidenced by Sandstrom and Jasiunas.
Balnis further discloses rubber compositions comprising styrene and ethylene containing polymers such as styrene butadiene, poly(isoprene-styrene), polybutadiene, polyisoprene, EPDM, etc. in adjustable phr ratios to achieve desired viscoelastic and aesthetic properties ([0011]-[0012]). In other words, Balnis discloses that the amounts of styrene and ethylene containing polymers are result effective variables that will affect viscoelastic and aesthetic properties. Moreover, although Balnis does not expressly recite the mass % of the aromatic vinyl compound-based constituent unit or the ethylene-based constituent unit, it further teaches selecting polymer ratios to optimize properties such as gloss, color, and ozone resistance (Tables 1-4). While Balnis does not explicitly disclose the value for the mass % of the aromatic vinyl compound-based constituent unit or the ethylene-based constituent unit, it is considered within the ability of one of ordinary skill in the art at the time of the invention to rely on routine experimentation to arrive at suitable optimum operating parameters for said mass %. Absent unexpected results, case law holds that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). In the present invention one of ordinary skill in the art would have been motivated to optimize the mass % of the aromatic vinyl compound-based constituent unit and the ethylene-based constituent unit in order to achieve the desired viscoelastic and aesthetic properties.
However, Balnis does not expressly recite the rubbery polymer is hydrogenated butadiene rubber or hydrogenated styrene-butadiene rubber with a percentage of hydrogenation is 35 to 95 mol%.
Mazaki also teaches a base tire comprising a sidewall section containing a rubbery polymer having a rubber component of a hydrogenated styrene-conjugated diene copolymer (i.e., conjugated diene compound-based constituent unit) and an ethylene-propylene-diene copolymer (i.e., an ethylene-based constituent unit) ([0011]-[0012], [0014]-[0016], [0018]), wherein the rubbery polymer contains hydrogenated styrene-conjugated diene copolymer such as a hydrogenated styrene-butadiene copolymer and/or a hydrogenated styrene-isoprene copolymer (i.e., an aromatic vinyl compound-based constituent unit) ([0010]). By adding the hydrogenated styrene-conjugated diene copolymer into the rubber it was found that the weather resistance and the crack growth resistance could be improved ([0008]). Mazaki further teaches that 60% or more of the double bonds of the conjugated diene portion are hydrogenated ([0009], [0014], [0019]). In other words, a percentage of hydrogenation of the rubbery polymer is 60 mol % or more, which overlaps with the claimed range of 35 to 95 mol%. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the percentage of hydrogenation of the rubbery polymer. If the percentage of hydrogenation is less than 60%, the effect of improving weather resistance and crack growth resistance is small ([0019]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Balnis in order to provide the rubber polymer with a hydrogenated styrene-conjugated diene copolymer so as to improve the weather resistance and the crack growth resistance, as taught by Mazaki.
The limitation “for producing a retreaded tire” is a recitation of intended use that does not require any additional steps that differentiate them from the steps disclosed by Balnis. The recitation does not result in structural difference between the claimed invention and the prior art because Balnis discloses a tire comprising a sidewall of the claimed composition, which is capable of being used to produce a retreaded tire.
Regarding claim 5, Balnis further discloses the sidewall section contains silica and/or carbon black ([0015]). Balnis further discloses the rubbery polymer may contain natural rubber, polyisoprene, halobutyl, etc. ([0011]), which have functional groups. Because Balnis discloses the rubbery polymer having the claimed composition, including polyisoprene having a functional group, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that the rubbery polymer has a functional group that interacts with the silica and/or carbon black that is also present. Case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01.
Regarding claim 6, Balnis further discloses the sidewall section contains about 1 to about 100 phr of silica ([0015]), which overlaps with the claimed range of 30 parts by mass or more. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of silica in the sidewall section.
Regarding claim 7, Balnis further discloses the sidewall section contains about 5 to about 80 phr of natural rubber ([0011]-[0012]), which overlaps with the claimed range of 20 parts by mass or more. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amount of natural rubber in the sidewall section.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Balnis (US 20150344679) (of record), Mazaki (JP 2004224952, see machine translation) (of record), and optionally any of Sandstrom (US 20090043039) and/or Jasiunas et al. (US 20160152805) as applied to claim 1 above, and optionally further in view of Kim et al. (KR 20160116753, see machine translation) (of record).
Regarding claims 8-9, as discussed above in claim 1, Balnis discloses the sidewall section may contain 30 parts by mass or more of the rubbery polymer ([0012]), about 5 to about 80 phr of natural rubber ([0012]), which overlaps with the claimed range of 30 parts by mass or more, and about 60 to about 5 phr of polybutadiene or styrene butadiene (i.e., non-hydrogenated butadiene rubber) per 100 parts by mass of the rubber component, which overlaps with the claimed ranges of 20 parts by mass or more and 30 parts by mass or more. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the amounts of rubbery polymer, natural rubber, and non-hydrogenated butadiene rubber in the sidewall section.
Optionally, Kim teaches a tire comprising rubber reinforcing composition for a sidewall section containing 50 parts by mass of natural rubber per 100 parts by mass of the rubber component ([0067]), which falls within both claimed ranges of 20 parts by mass or more and 30 parts by mass or more. Natural rubber is used as it has excellent elongation and processability ([0035]). Moreover, Kim teaches a tire comprising a sidewall section containing 90 to 99 parts by mass of non-hydrogenated butadiene rubber per 100 parts by mass of the rubber component ([0028]), which overlaps with both claimed ranges of 20 parts by mass or more and 30 parts by mass or more. If there is less than 90 parts by mass of the polybutadiene, then the tire sidewall reinforcing effect may be significant, and if there is more than 99 parts by mass, then the processability may be reduced ([0028]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Balnis in order to provide the amount of non-hydrogenated butadiene rubber and natural rubber in the aforementioned ranges for the advantages as taught by Kim.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Balnis (US 20150344679) (of record), Mazaki (JP 2004224952, see machine translation) (of record), and optionally any of Sandstrom (US 20090043039) and/or Jasiunas et al. (US 20160152805) as applied to claim 1 above, and further in view of Tsuruta et al. (US 5876527) (of record).
Regarding claims 10-11, Balnis further discloses example pneumatic tires that may be made using the invention, wherein the disclosures are incorporated by reference ([0040]). In particular, Tsuruta discloses a truck or bus having an aspect ratio of 70 (i.e., tire size of 11/70R22.5) (Col. 1 lines 7-10; Col. 6 lines 43-45), which falls within the claimed range of 45 or more. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the aspect ratio of the tire.
Claim(s) 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Balnis (US 20150344679) (of record), Mazaki (JP 2004224952, see machine translation) (of record), and optionally any of Sandstrom (US 20090043039) and/or Jasiunas et al. (US 20160152805) as applied to claim 1 above, and further in view of Tamura (US 5931211) (of record).
Regarding claims 10 and 12, Balnis further discloses example pneumatic tires that may be made using the invention, wherein the disclosures are incorporated by reference ([0040]). In particular, Tamura discloses a passenger car tire having an aspect ratio of 65 (i.e., tire size of 205/65R15) (Col. 7 lines 56-62; 66-67), which falls within the claimed range of 45 or more. Case law holds that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Applicant's original disclosure fails to provide a conclusive showing of unexpected results for the aspect ratio of the tire.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 5-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 08/27/2025 have been fully considered but they are not persuasive.
On pages 5 and 7 of the Remarks, Applicant argues that Mazaki teaches away from using an ethylene-based constituent unit in the recited amounts of amended claim 1.
Mazaki was not relied upon to teach the ethylene-based constituent unit in the rubbery polymer. Instead Balnis already discloses said ethylene-based constituent unit. The examiner merely noted that Mazaki, similar to Balnis, discloses a base tire comprising a sidewall section containing a rubbery polymer having a rubber component of a hydrogenated styrene-conjugated diene copolymer (i.e., conjugated diene compound-based constituent unit) and an ethylene-propylene-diene copolymer (i.e., an ethylene-based constituent unit), wherein the rubbery polymer contains hydrogenated styrene-conjugated diene copolymer such as a hydrogenated styrene-butadiene copolymer and/or a hydrogenated styrene-isoprene copolymer (i.e., an aromatic vinyl compound-based constituent unit). Mazaki further discloses that by adding the hydrogenated styrene-conjugated diene copolymer into the rubber it was found that the weather resistance and the crack growth resistance could be improved, in addition to other advantages for certain ranges as discussed in the detailed rejection above. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Balnis with a similar sidewall rubber composition that adds hydrogenated styrene-conjugated diene copolymer into the rubber for the various advantages disclosed by Mazaki. The examiner notes that the amount of ethylene-based constituent unit functions separately from and has different advantages than the hydrogenation percentage. Thereby, the amount of ethylene-based constituent unit being different from the claimed range will not affect the hydrogenation percentage and the various advantages it imparts on the rubber. If Applicant believes differently, Applicant may provide further declaration, affidavit, and/or evidence.
On page 6 of the Remarks, Applicant argues unexpected results and points to Tables 2 and 3 of the originally filed specification. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. The burden is on Applicant to establish that the results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." See MPEP 716.02(b). Applicant has the burden of explaining any data they proffer as evidence of non-obviousness. See MPEP 716.02(b)(ll). Moreover, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. " In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 715.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(Il). All of the example rubber polymers (specimens A-H) in Table 1 are based on vinyl bonds of 40 mol % in Bd (presumably butadiene but never disclosed or defined) or less (which is different from aromatic vinyl compound based constituent unit being present in 40 mass % or less), and it is unclear if the Comparative Examples in Tables 2-3 have values that go outside of this range. Moreover, Table 1 discloses the amount of styrene (presumably the ethylene-based constituent in the claims) to be 0 , 8, or 12. There is only one value (i.e., 12) outside of the claimed range of 10 mass % or less to evaluate, and this value is for an inventive example not a comparative example, which is not enough to determine criticality. Moreover, all of Examples 1-12 and Comparative Examples 1-6 in Tables 2-3 merely use the same Specimens of Table 1 in an amount of 30 phr, 20 phr, or 50 phr as compared to the same amount of other compounding components in each variation, thereby only varying which specimens and the amount that is added. There is thereby not enough data to determine criticality inside and outside the amended ranges.
On page 6 of the Remarks, Applicant argues that Balnis does not sufficiently disclose any amount of the recited component such that the skilled person would expect the alleged unexpected results, and further refers to paragraph [0012] of Balnis citing different phr amounts of various components.
The examiner refers to the detailed rejection above addressing how Balnis is considered to satisfy the newly amended claim limitations and ranges.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE (née AYALP) whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749