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 .
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.
Claim 20 is 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.
Regarding claim 20, the use of the phrase “especially,” renders the claim indefinite. This phrase is recognized as exemplary claim language. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim (see MPEP 2173.05(d)). For the sake of examination, the limitations designated by the exemplary phrasing will be considered as optional, but not required, characteristics of the claimed materials.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 18, the claim requires that the polymer of “feature ‘c)’” is a diene-based polymer. However, claim 16, on which claim 18 depends, has been amended to require that the polymer of said feature is “a polybutadiene.” Polybutadiene is a diene-based polymer; therefore, claim 16 already requires the limitation of claim 18.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 16-20, 23-26, and 29-33 are rejected under 35 U.S.C. 103 as being unpatentable over Broemmel (US 2019/0061425 A1) in view of Halasa (US 5,047,483) and Anderson (WO 2018/191187).
Regarding claim 16, Broemmel teaches a pneumatic tire comprising a tread (Abstract) formed from a composition including inter alia a diene elastomer, silica, and a low molecular weight polybutadiene functionalized with an alkoxysilane functional group (Abstract).
Broemmel teaches, within the inventive formulation, the incorporation of an SBR having between 25 and 45 % by weight of styrene, 20 to 60% by weight of vinyl 1,2 content, and a Tg from -30°C to -5°C (p. 7, claim 2), which is a diene rubber. Broemmel does not directly state the molecular weight range for said SBR material, but incorporates by reference the teachings of Halasa, stating that said SBR may be formed from polymerization methods known therein ([0037]).
Halasa teaches that the molecular weight of the products produced by the inventive polymerization therein is governed by the amount of catalyst in the reaction (col. 6, lines 23-24), and teaches products having molecular weights of 350,000 g/mol (col. 5, Table 2). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to select reaction conditions within the polymerization process of Broemmel which produce an SBR rubber having a molecular weight of 350,000 g/mol, as Halasa (and therefore Broemmel) recognizes these as suitable conditions for the production of SBR polymers for use in tire formulations. In doing so, the SBR material within Broemmel would possess a molecular weight of 350,000 g/mol, which falls within the claimed range of “more than 150,000 g/mol,” establishing a prima facie case of obviousness.
Broemmel further teaches that the functionalized polybutadiene within the formulation has a weight-average molecular weight ranging from 1,000 to 25,000 g/mol (implying a number average molecular weight of 25,000 g/mol or lower, which overlaps the claimed range of “less than 150 000 g/mol,” establishing a prima facie case of obviousness) and a Tg ranging between -50 and -20°C (p. 7, claim 5), which overlaps the claimed range of “< -15°C,” establishing a prima facie case of obviousness. Furthermore, Broemmel teaches the specific use of a functionalized liquid polybutadiene with an alkoxysilane functional group (Abstract), Ricon 603, which is utilized in the instant Specification to exemplify the claimed component “c)” (c.f. Broemmel Table 3, Liquid Polymer10 and c.f. instant Specification [0060] and Table 4.1). The functionalized polybutadiene of Broemmel therefore reads on the claimed polymer or oligomer “c).”
Broemmel further teaches the incorporation of fillers including silica and carbon black (e.g., [0062] and [0068]).
Broemmel differs from claim 16 because it is silent with regard to the incorporation of the claimed polymer or oligomer “d).”
In the same field of endeavor, Anderson teaches rubber compositions including tires, which contain silane-functionalized resins (Abstract). Anderson further teaches that the incorporation of the inventive silane-functionalized resins improves the balance of mechanical properties including rolling resistance, tire wear, and wet braking performance in said tires (Abstract). Anderson teaches that the inventive silane-functionalized resins have number average molecular weights in the range of about 629 g/mol to about 932 g/mol and glass transition temperatures in the range of about -13°C to 36 °C (p. 66, Table 3). In each case, these ranges overlap the claimed ranges of molecular weight and Tg, respectively, establishing prima facie cases of obviousness. Anderson further teaches that the inventive materials contain silane functionality (Abstract). The inventive silane-functionalized resins of Anderson read on the claimed “filler-interactive functional group” for the foregoing reasons, and because the instant Specification particularly contemplates the use of the functionalized resin materials of Anderson (c.f. paragraph [0041], which is stated in paragraph [0040] to be a resin produced according to Anderson Example 1.2; c.f. paragraph [0051], which is stated in paragraph [0050] to be a resin produced according to Anderson Example 1.9; c.f. paragraph [0062] which is stated in paragraph [0061] to be a resin produced according to Anderson Example 1.5).
As described above, Anderson teaches that, when incorporated into a tire formulation, the inventive silane-functionalized resins improve the balance of mechanical properties including rolling resistance, tire wear, and wet braking performance in said tires (Abstract). Also as described above, Broemmel is directed towards tire formulations (Abstract). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the silane-functional resins of Anderson into the formulation of Broemmel for the purpose of improving the balance of mechanical properties including rolling resistance, tire wear, and wet braking performance of the inventive tires.
In light of the foregoing, the formulation of Broemmel as modified by Anderson meets all of the compositional limitations of the claimed “crosslinkable rubber mixture.”
Broemmel is silent with regard to the claimed covalent/noncovalent interactions between the polymers’ functional groups and the filler; nevertheless, as described above, Boremmel as modified contains fillers and the claimed polymers with the claimed filler-interactive functional groups. It is therefore the Office’s position that said components will interact according to the claimed bonding, despite said interactions not being excplicitly stated in the prior art.
Broemmel teaches that the functionalized liquid polymer may have a glass transition temperature ranging from -50 to -20°C (p. 7, claim 5), and Anderson teaches that the inventive functionalized resin may have a glass transition temperature ranging from about -13°C to 36 °C (p. 66, Table 3). The difference in glass transition temperature may therefore range from about 7 to about 86 °C, which overlaps the claimed range of “at least 5°C,” establishing a prima facie case of obviousness.
Broemmel teaches the incorporation of 3 to 30 phr of the functionalized liquid polymer ([0047), and Anderson teaches the incorporation of 5 to 400 phr of the inventive functionalized resin ([0182]). These components read on the claimed components “c)” and “d),” respectively, as described above. The ratio of these components may therefore range from about 133.3:1 to 6:1, which overlaps the claimed range of “1:10 to 10:1,” establishing a prima facie case of obviousness.
Regarding claim 17, as described above, Broemmel teaches the incorporation of silica and carbon black (e.g., [0062] and [0068]).
Regarding claim 18, as described above, Broemmel teaches the incorporation of a low molecular weight polybutadiene functionalized with an alkoxysilane functional group (Abstract), which reads on the claimed “polymer or oligomer of feature c)” because a polybutadiene is a diene-based polymer.
Regarding claim 19, as described above, Broemmel teaches the incorporation of a low molecular weight polybutadiene functionalized with an alkoxysilane functional group (Abstract), which has a Tg ranging between -50 and -20°C (p. 7, claim 5), which overlaps the claimed range of “< -20°C,” establishing a prima facie case of obviousness.
Regarding claim 20, as described above, Broemmel teaches the incorporation of a low molecular weight polybutadiene functionalized with an alkoxysilane functional group (Abstract), which has a weight-average molecular weight ranging at least from 1,000 to 25,000 g/mol (implying a number average molecular weight of 25,000 g/mol or lower, which overlaps the claimed range of “500 g/mol to 50,000 g/mol,” establishing a prima facie case of obviousness.
Regarding claim 23, Broemmel teaches the specific use of a functionalized liquid polybutadiene, Ricon 603, which is a polybutadiene end functionalized with triethoxysilyl groups (p. 7, Table 3, Liquid Polymer10). The triethoxysilyl groups within this material read on the claimed “formula (IV)” because they are identical to “formula (IV)” when R1-3 are all ethoxy groups, which are alkoxy groups having two carbon atoms. Furthermore, since the triethoxysilyl groups are functional groups attached to polybutadiene and because the instant Specification contemplates that Ricon 603 is a suitable component of feature “c),” this component also presumably meets the claimed limitation regarding the protecting group be attached directly or via a bridging group, to the polymer chain of the polymer or oligomer.
Regarding claim 24, Anderson teaches polymers containing functional groups, as described above, wherein the functional groups of the resin are substantially identical in scope with the claimed “silyl protecting group of the formula V” (see p. 84, claim 1 of Anderson, which reaches resin attached to end-groups with substantially identical structures to those claimed).
Regarding claim 25, Anderson teaches that the functionalized resin is obtained by polymerizing or co-polymerizing one or more monomer selected from a list substantially identical to the claimed list
Regarding claim 26, as described above, Anderson teaches that the functionalized resins may have number average molecular weights (Mn) ranging from about 629 g/mol to about 932 g/mol (p. 66, Table 3), which overlaps the claimed range of “200 g/mol to 150,000 g/mol,” establishing a prima facie case of obviousness.
Regarding claim 29, Broemmel teaches the incorporation of a silane coupling agent (c.f. p. 7, Table 3, Silane8, which is a TESPD-type silane coupling agent).
Regarding claim 30, Broemmel teaches the formation of a pneumatic tire from the inventive composition (p. 7, claim 1).
Regarding claims 31-32, as described above, Broemmel teaches the incorporation of 3 to 30 phr of the functionalized liquid polymer ([0047), and Anderson teaches the incorporation of 5 to 400 phr of the inventive functionalized resin ([0182]). These components read on the claimed components “c)” and “d),” respectively, as described above. The ratio of these components may therefore range from about 133.3:1 to 6:1, which overlaps the claimed ranges of “1:5 to 5:1” and “1:3 and 3:1,” establishing prima facie cases of obviousness.
Regarding claim 33, as described in the rejection of claims 16, 23, 24, and 25, above, Broemmel as modified teaches all of the limitations of features “a)” through “d),” the limitation regarding the resin of feature “d)” being based on the claimed listing of resin types, and the claimed bonding between filler surface and first and second polymers. Further regarding the claimed difference in glass transition temperature, as described above, Broemmel teaches that the functionalized liquid polymer may have a glass transition temperature ranging from -50 to -20°C (p. 7, claim 5), and Anderson teaches that the inventive functionalized resin may have a glass transition temperature ranging from about -13°C to 36 °C (p. 66, Table 3). The difference in glass transition temperature may therefore range from about 7 to about 86 °C, which overlaps the claimed range of “at least 10°C,” establishing a prima facie case of obviousness.
Further regarding the limitation of polymer amounts and the ratio between the two polymers, as described above, Broemmel teaches the incorporation of 3 to 30 phr of the functionalized liquid polymer ([0047), and Anderson teaches the incorporation of 5 to 400 phr of the inventive functionalized resin ([0182]). These components read on the claimed components “c)” and “d),” respectively, as described above. These compositional amounts encompass the respectively claimed ranges of “5 phr to 30 phr” and “5 phr to 20 phr,” establishing prima facie cases of obviousness. Furthermore, the ratio of these components may therefore range from about 133.3:1 to 6:1, which overlaps the claimed range of “1:10 to 10:1,” establishing a prima facie case of obviousness.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed February 2, 2026, with respect to the rejections of claims 19 and 23-26 under 35 U.S.C. 112(b) have been fully considered and are persuasive. Said rejections have been withdrawn. However, the 35 U.S.C. 112(b) rejection of claim 20 is maintained because the word “especially” has not been removed.
Applicant's arguments, with respect to 35 U.S.C. 103, have been fully considered but they are not persuasive.
Applicant argues that neither of the individual references teach the claimed ratio of components “c)” and “d),” and alleges that the rationale above (and applied previously) extrapolates an alleged overlap. Applicant asserts that because neither reference discloses the claimed ratio, the Office has constructed an post-hoc ratio range, tantamount to allegations of improper hindsight.
Firstly, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Secondly, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Finally, while neither reference explicitly states the claimed ratio, the combination of references includes both components in the ranges described above (which include the ranges contemplated in the instant application, c.f. new claim 33). The composition of the combined references will include both materials, and the mathematical calculation provided within the rationale merely reveals the ratio therein, which overlaps the claimed range, establishing a prima facie case of obviousness.
The Applicant references a federal circuit case in support of the position, however, said case concerns a scenario where calculations are derived through disparate teachings. To the contrary, in this case the calculation is provided based on a combination of materials which prima facie would have been obvious in view of the prior art. The calculation is therefore not based on disparate teachings, but a combined composition which will necessarily possess the claimed ratio.
Applicant next argues that Broemmel teaches away from the claimed combination merely because it includes a portion of tire which does not contain one of the claimed resins; however, in the same section as referenced by the Applicant, Broemmel specifically teaches a portion of the tire which does contain said resin (c.f. Broemmel at [0050]-[0053]). The presence of a composition within the prior art which falls outside of the claimed composition does not rebut the existence of a composition in the prior art which falls inside the claimed composition. The claimed composition is therefore not taught away from within the prior art.
Applicant next argues that the prior art fails to recognize the variables within the composition as result-effective. However, the rationale supplied above does not rely on the use of a result effective variable. Assuming arguendo that result-effective variables are germane to the combination of references, Anderson teaches that the incorporation of the inventive silane-functionalized resins improves the balance of mechanical properties including rolling resistance, tire wear, and wet braking performance in said tires (Abstract), which is substantially identical to the advantage contemplated by the applicant (c.f. Applicant’s Remarks p. 10, which states “the balance of wet grip, rolling resistance, and abrasion in a silica tread formulation can be tuned…”). Furthermore, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Applicant next contends that the ratio range of c:d in the prior art is so broad as to “defeat any suggestion that optimization within that span involves only a finite number of predictable choices.” Firstly, any range which has not specifically stated a particular degree of precision in measurement will theoretically include an “infinite” number of predictable choices – even the range of, for example, “1:10 to 10:1” (as claimed by the applicant) includes an “infinite” number of choices given that the degree of precision is ambiguous. Furthermore, said contention is tantamount to allegations of insufficient specificity; however, the question of insufficient specificity relates to anticipation (See MPEP 2131.03.II.). By contrast, the current rejection is based on an obvious rationale. The claimed range would therefore have been obvious because it falls within the prior art range, despite the breadth of said prior art range.
Applicant’s final remarks relate to allegations of unexpected results. Whether 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 716.02(d). However, the Experimental results (Tables 2.1, 3.1, 4.1, 4.1, and 4.1 (there are two tables labeled 4.1, one at [0054] and one at [0060]) (i) include only styrene-butadiene resins, despite the claims being open to virtually any diene rubber, (ii) contain only zinc oxide filler, despite being open to virtually any filler, (iii) contain only silica as the additional filler, despite additionally being open to carbon black, and (iv) utilize POLYVEST EP ST-E 60 as the sole embodiment of the functionalized liquid butadiene rubber, despite being open to a range of materials having virtually any molecular weight less than 150,000 g/mol, virtually any silyl protecting group, and virtually any glass transition temperature below 15°C. The applicant therefore asserts that an alleged showing of unexpected results for a narrow portion of the claimed composition would sufficiently rebut a prima facie determination of obviousness.
The Applicant need not provide data for every possible composition as claimed, but the experimental results are not reasonably commensurate in scope with the claimed composition so as to sufficiently rebut a prima facie determination of obviousness.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. 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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights