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 .
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 7, 9, 13 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/227,634 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
App. No. ‘634 claims a rubber composition comprising a diene-based rubber, a filler comprising 70 wt% or less of silica, a phenylenediamine of formula (1), also claimed as 77PD, 8PPD or 7PPD, a quinonline-based antioxidant, and N-cyclohexyl-2-benzothiazolylsulfenamide, where the rubber is free of IPPD and 6PPD (claims 1, 5 and 9). Applicants also claim a tire comprising the rubber composition used in the sidewall of the tire (claims 3, 7 and 11).
These claims read on instant claims 1, 3, 7, 9, 13 and 15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5, 7, 9, 11, 13, 15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2020-045408; however, for convenience, the machine translation provided in the IDS filed February 15, 2024 will be cited below.
JP ‘408 exemplifies a rubber composition for a tire inner layer comprising the following (Table 2, Example 4):
100 parts natural rubber, which meets applicants’ diene-based rubber;
55 parts carbon black and 5 parts silica, which meets applicants’ filler;
phr quinoline-based anti-aging agent, which meets applicants’ quinoline-based antioxidant; and
phr phenylenediamine antioxidant 3, Vulcanox 4030 (N,N’-bis(1,4-dimethylpentyl)-p-phenylenediamine (77PD), which meets applicants’ phenylenediamine of formula (1).
JP ‘408 anticipates instant claims 1, 7 and 13.
As to claims 3, 5, 9, 11, 15 and 17, JP ‘408 discloses the rubber composition for a tire inner layer as a case topping, a sidewall packing or an inner layer sidewall rubber, disclosing that the tire is manufactured by extruding the rubber composition in an unvulcanized state to the shape of each inner layer member (case topping, breaker topping, base tread, sidewall packing, inner side wall, etc.) of the tire, where the unvulcanized tire can be formed by molding and bonded together with other tire members. This disclosure suggests a laminate in the tire sidewall.
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.
Claims 2, 4, 6, 8, 10, 12, 14, 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020-045408, as applied above to claims 1, 3, 5, 7, 9, 11, 13, 15 and 17.
JP ‘408 anticipates instant claims 1, 3, 5, 7, 9, 11, 13, 15 and 17, as described above and applied herein as such, as JP ‘408 discloses a rubber composition for a tire rubber inner layer used in the sidewall of a tire, the composition comprising natural rubber, carbon black and silica as filler, a quinoline-based antioxidant, and 77PD.
While JP ‘408 only exemplifies a combination of carbon black and silica, JP ‘408 discloses that that the carbon black can be present in an amount of 100% of the total filler content, suggesting that silica is not required in the rubber composition. Excluding silica from Example 4 is prima facie obvious over instant claims 2, 4, 6, 8, 10, 12, 14, 16 and 18.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/ Primary Examiner, Art Unit 1766