DETAILED ACTION
This office action follows a reply filed on May 19, 2026. Claim 13 has been amended. Claims 13, 15, 17 and 19-21 are currently pending and under examination.
The rejections, as set forth in the previous office action, are deemed proper and are therefore maintained.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
Claims 13, 15, 17 and 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 7-9, 11, 13 and 15 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 5 and 7-9). Applicants also claim a tire comprising the rubber composition used in the sidewall of the tire and is visible from the outside (claims 7, 11, 13 and 15).
These claims read on instant claims 13, 15, 17 and 19-21.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
Claims 13, 15, 17 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over 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; 1.0 phr quinoline-based anti-aging agent, which meets applicants’ quinoline-based antioxidant; and 1.0 phr phenylenediamine antioxidant 3, Vulcanox 4030 (N,N’-bis(1,4-dimethylpentyl)-p-phenylenediamine (77PD), which meets applicants’ phenylenediamine of formula (1).
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 13, 15, 17 and 19.
As to claims 20-21, although JP ‘408 teaches using the composition for an inner layer, JP ‘408 does not appear to limit the use to only an inner layer. See partial human translation of paragraph 88 of JP ‘408, below:
The rubber composition according to the present embodiment can be used without particular limitation as an inner layer member of a tire; however, it is preferably used as a rubber composition for case topping, breaker topping, a strip adjacent to a breaker, a strip between a breaker and a ply, band topping, base tread, sidewall packing, or an inner sidewall, and is more preferably used as a rubber composition for breaker topping.
JP ‘408 exemplifies the following:
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The cap tread is known in the art as the outermost layer of a tire that makes direct contact with the road, and is therefore, inherently visible from the outside.
Response to Amendment
The declaration under 37 CFR 1.132 filed May 19, 2026 is insufficient to overcome the above rejection based upon JP 2020-045408 as set forth in the last Office action because: the showing is not commensurate in scope, nor is it unexpected.
When looking to showings of results in order to overcome a rejection, the following must be considered:
Results must be Unexpected:
Unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977.
Obviousness does not require absolute predictability. In re Miegel USPQ 716.
Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548.
In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re March 175 USPQ; In re Battle, 24 USPQ 2d 1040.
Claims Must be Commensurate with Showings:
Evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89: Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288.
Result Must Compare to Closest Prior Art:
Where a definite comparative standard may be used, the comparison must relate to the prior art embodiment relied upon and not other prior art - Blanchard v. Ooms, 68 USPQ 314 - and must be with a disclosure identical (not similar) with that of said embodiment: In re Tatincloux, 108 USPQ 125.
Applicants showing is not commensurate in scope with the claimed invention, as applicants have only compared examples with a blend of two butadiene rubbers and a natural rubber, where the claimed invention allows for any diene-based rubber. Applicants have also only shown the effect of 2-4 phr of the phenylenediamine in combination with 2-5 phr quinoline, where the claimed invention allows for any amount of each component.
Applicants showing is expected, as evidenced by JP 2013-095836, who shows that a carbon black filled rubber composition has lower discoloration (rating of 3) than a silica filled rubber composition (rating of 4). See Table 1, Comparative Example 1 (only silica) versus Comparative Example 2 (only carbon black), as shown below:
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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.
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.
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/Brieann R Johnston/ Primary Examiner, Art Unit 1766
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