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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of the applicant’s amendment filed on 8/11/2026.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 8/11/2026. In particular, claim 1 has been amended to incorporate the limitations of claim 5. Thus, the following action is properly made final.
The declaration filed under 37 C.F.R §1.132 filed on 8/11/2026 is received and considered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
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, 6-7, 12-13 and 15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-8, 14-15 and 17 (as filed on 6/25/2026) of copending Application No. 18373551 (PGPub 20240174842) in view of Yokoyama (US 20180297406 A1).
Regarding claim 1, the instant application recites that the butadiene rubber has a cis-1,4 content of 96 mass% or more and necessitates the presence of styrene-butadiene rubber (SBR) in the composition, the conflicting application does not specify the cis- content nor necessitate SBR.
Yokoyama discloses a rubber composition for tire treads comprising 60 parts by mass of modified butadiene rubber (as BR 1) having a cis- (cis-1,4) content of 97% by mass (paragraphs [0101-0104]) and contains SBR as a diene rubber component (Table 1, Example 1-4). Yokoyama further teaches that the addition of SBR in the composition yields improved physical properties (paragraph [0020]).
A person having ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to modify the rubber composition of the conflicting application by using the modified butadiene rubber and SBR of Yokoyama and the result would have been predictable.
For the reasons given above, the instant claims 1, 6-7, 12-13 and 15 are rendered obvious over the conflicting claims 1, 7-8, 14-15 and 17 in view of Yokoyama.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 6-7 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama (US 20180297406 A1) in view of Isitman (US 20190184744 A1).
Regarding claims 1, 6, 14, Yokoyama discloses a tire tread rubber composition (Abstract; Table 1, Example 1-4) comprising:
60 parts by mass of high cis butadiene rubber (BR1);
34 parts by mass of natural rubber;
6 parts by mass of styrene-butadiene rubber (SBR);
140 parts by mass silica; and
40 parts by mass of a pinene resin (solid plasticizer 1, paragraph [0121]).
Wherein the cis (cis- 1,4) content of the butadiene rubber is 97% by mass (paragraph [0104]). Yokoyama also teaches a tire comprising tread made from the rubber composition (abstract). However, Yokoyama does not teach that the pinene resin has a β-pinene content of 40 mass% or more.
Isitman teaches rubber compositions for tire tread comprising Sylvatraxx 4150™ β-pinene resin as a traction-promoting resin (paragraph [0046]), which the examiner notes is the resin exemplified by the applicant as "terpene-based resin 2" in instant specification Table 1 and is described in the instant specification as having a β-pinene content of 98 mass% or more.
The pinene resins of Yokoyama and Isitman and their functions are known in the art, so a person of ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to substitute the pinene resin of Yokoyama for the Sylvatraxx 4150™ β-pinene resin of Isitman and the result would have been predictable.
Regarding claims 7, 12 and 14-19, the rubber composition of Yokoyama in view of Isitman applies as described above, also as described above, Yokoyama teaches tires comprising tread formed from the rubber composition and the amount of terpene resin used in the composition is 40 parts by mass per 100 parts by mass of the diene rubber.
Regarding claim 13, the examiner notes that "all-season tire" is not distinctly defined in the specification but is described as being able to perform in wet and winter conditions and can be used year-round in instant specification paragraphs 0005 and 0049. Further, in the applicant's remarks filed on 8/11/2026, in the section entitled "Claim Rejections - 35 USC § 103", the applicant attributes the combination of wet and winter weather performance to the addition of styrene-butadiene rubber (SBR) in combination with the β-pinene resin.
Since the rubber composition of Yokoyama in view of Isitman teaches SBR and β-pinene in the claimed amounts, and Yokoyama teaches a tire having tread formed from the rubber composition, it is expected that this tire could be used year-round and therefore can be considered as an all-season tire.
Response to Arguments
The examiner responds to the applicant’s remarks and arguments that were filed on 8/11/2026 below.
Regarding the examiner’s double patent and 35 USC § 102 rejections set forth in the Non-final Rejection filed on 5/12/2026, the applicant did not set forth arguments but amended the claims so as to overcome the rejections. The amended claims were reexamined and the rejection was applied.
Regarding the examiner’s 35 USC § 103 rejection set forth in the Non-final Rejection filed on 5/12/2026, the applicant amended claim 1 to include SBR and argued that the prior art used in the original rejection does not teach a composition containing SBR. With regards to the applicant’s argument that Isitman teaches a composition that explicitly does not contain SBR, the examiner agrees.
Regarding the declaration filed under 37 C.F.R §1.132 filed on 8/11/2026 as supplied by the applicant, Yuma Konno, the signee of the declaration, sets forth the argument with data that the addition of SBR to the composition is needed for the wet grip performance of the claimed rubber composition as support for the amended claim 1 and further states that Isitman teaches a composition that does not contain SBR. The examiner has considered this declaration, agrees with the signee regarding Isitman, and has responded appropriately to the amended claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KOLTON JONES whose telephone number is (571)272-9802. The examiner can normally be reached Generally Monday-Friday 8:00 am - 5:00 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, Joseph Del Sole can be reached at (517)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KOLTON JONES/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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