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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8, in the reply filed on 04/29/2026 is acknowledged.
Claims 9 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term "ratio of a content" in claim 3 and 7 is indefinite. A “ratio of content” for the compounds can be considered in terms of either a ratio of the metals pertaining to their mass or as a molar ratio of metals. Calculations using mass or molar ratios would lead to different and indeterminate scopes of the claim.
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.
Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Sheepwash (US 2022/0235203).
In the abstract and ¶’s 65 and 70, Sheepwash teaches rubber compositions for pneumatic tires
comprising zinc oxide, as described as a metal activator.
In ¶ 34, 44 and 48, Sheepwash teaches the rubber compositions to comprise aluminum, in the form of an aluminum halide and as a silica filler.
In ¶ 34, 48 and 64, Sheepwash teaches the rubber compositions to comprise iron, as an iron halide, as an inorganic filler, and as a metal activator.
Consistent with the broadest reasonable interpretation of claims 1 and 5, for the phrase "zinc oxide contains aluminum and iron" as a combination of components comprising primarily zinc oxide, next, some amount and some form of aluminum, and some amount and some form of iron, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met.
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 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sheepwash (U.S. 2022/0235203) in view of Araujo Da Silva (US 2021/0291590).
Sheepwash, above, teaches embodiments of rubber compositions for pneumatic tires in which fillers comprise between 0-200 parts by weight per hundred rubber (¶ 73), further teaching embodiments in which the filler comprises mostly carbon black in a 20:1 parts by weight ratio with other fillers such as inorganic fillers (¶ 76).
However, Sheepwash does not teach that inorganic fillers such as aluminum and iron in low amounts are beneficial to tire durability. However, Araujo Da Silva teaches a tire composition using zinc oxide (¶ 58, as a vulcanization activator; Table 1, T1), and aluminum (¶ 69 and 72, as an inorganic filler), and further teaches that fillers in decreasing amounts are advantageous for improving tire durability (See ¶’s 7, 64 and 89).
Therefore, a person having ordinary skill in the art as of the effective filing date of the instant application, recognizing inorganic fillers such as aluminum and iron as result-effective variables for tire durability, would apply the teaching from Araujo Da Silva to the composition in Sheepwash and would, in the course of routine experimentation, arrive at the claimed amounts and ratios of aluminum and iron found in the present invention, with a reasonable expectation of success.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-8 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4 of copending Application No.18/234,507 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Application No.18/234,507 claims the rubber composition comprising the zinc oxide containing aluminum and iron, in the same amounts claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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