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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/30/2026 has been entered.
Claim Objections
Claims 4 and 5 are objected to because of the following informalities: Claim 4 recites, “wherein the elastomeric polymer material (a) comprises, based on parts by weight per 100 parts by weight of rubber (phr), from 40 to 100 phr of natural rubber and from 5 to 60 phr of a synthetic rubber.”
Should be replaced with “wherein the elastomeric polymer material (a) comprises, based on parts by weight per 100 parts by weight of rubber (phr), from 40 to 100 phr of the natural rubber and from 5 to 60 phr of the synthetic rubber.” Appropriate correction is required.
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 1, 4, 5, 7-9, and 12-18 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. Independent Claim 1 recites, “(b) a carbon black material comprising (i) a carbon black obtained from carbon black feedstock comprising a renewable carbon black feedstock in an amount greater than 10 wt% based on the total amount of the carbon black feedstock, wherein the carbon black material (b) comprises 5 to 95 wt% of the carbon black (i) and 5 to 95 wt% of an additional carbon black (ii), based on the total weight of the carbon black material (b),” based on the arguments received 04/30/2026, the claim is unclear if the additional carbon black (ii) is also obtained from renewable carbon black comprises plant-based feedstock and/or animal-based oils as recited for (b-i).
For art purposes, the claims are being examined as follows:
(1) the additional carbon black (ii) can be any carbon black
and
(2) the additional carbon black (ii) is obtained from renewable carbon black comprises plant-based feedstock and/or animal-based oils as recited for (b-i)
until further clarification is made.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 7-9, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over STANYSCHOFSKY et al. (U.S. Publication No. 2011/0236816, hereinafter STANYSCHOFSKY) in view of JP 2017-149959A (hereinafter, KOJIMA) in further view of STYER (U.S. Publication No. 2018/0009971, hereinafter STYER).
Regarding claims 1, 7, 8, 12-15, 17, and 18, STANYSCHOFSKY teaches polymer mixtures that comprise at least one polymer and at least one carbon black [0066 and 0067]. Polymers include plastics or rubbers [0068] wherein the rubber includes natural rubber [0069-0070] and synthetic rubbers [0079-0091]. The carbon black can be produced using a carbon black feedstock [0055]. The renewable carbon black feedstock can be bio-gas, rapeseed oil, soya oil, palm oil, sunflower oil, oils derived from nuts or olive oil [0057]. (Note: the renewable carbon black feedstock reads on (b-i) of the present invention). The carbon black feedstock can comprise >0.001% by weight, particularly ≥ 25 wt% by weight, with a preference of ≥ 99% by weight of renewable carbon black feedstock [0060] (which reads on (b-i) carbon black obtained from a carbon black feedstock comprising a renewable carbon black feedstock in an amount greater than 10 wt% as claimed).
The rubber mixtures comprises at least one rubber and at least one carbon black [0071]. The rubber mixtures are used for the production of pneumatic and other tyres, tyre treads, cable sheathing, hoses, drive belts, conveyor belts, roll coverings, shoe soles, sealing rings, profiles, and damping elements [0099].
However, STANYSCHOFSKY does not teach (a) an elastomeric polymer material, wherein the synthetic rubber comprises a synthetic rubber obtained from a renewable source material.
In the same field of endeavor of a rubber composition for a tread for tires (Abstract; p. 15), KOJIMA teaches the composition comprises a synthetic rubber (p. 2) that is a biomass-derived rubber (Abstract; p. 1). The biomass-derived rubber is a polybutadiene rubber (biomass polybutadiene rubber) (p. 3). The biomass-derived rubber is a diene obtained by catalytic reaction from at least one biomass-derived component consisting of biomass-derived alkyl alcohols including ethanol, butanol, and butanediol; allyl alcohols; alkenes; and etc. (p. 5). The biomass-derived rubber is a polybutadiene rubber produced by at least one tissue culture including plants (p. 6) by fermentation (pp. 10-12). Plants including para rubber tree, Indian rubber tree, dandelion, fig, noge, smelt guayule, guayule, sabzilla, euccommia, and tissue cultures thereof (p. 13).
The content of biomass-derived rubber is 5% or more to less than 90% by mass of the 100% by mass of rubber component (p. 13). The rubber composition provides tires with low-temperature characteristics and performance on snow and ice equivalent to a conventional synthetic rubber while meeting the demands of a recycling society (pp. 1-3).
Given STANYSCHOFSKY teaches the rubber mixture comprising natural rubber [0069-0070] and synthetic rubbers [0079-0091] for the production of tyres and tread [0099], it would have been obvious to a person of ordinary skill in the art to have provided the biomass-derived rubber (i.e., synthetic rubber) of KOJIMA with the rubber mixture of STANYSCHOFSKY for the benefit of obtaining tires with characteristics and performance on snow and ice while also recycling unwanted biomass as taught by KOJIMA. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
However, STANYSCHOFSKY and KOJIMA do not teach wherein the carbon black material (b) comprises 5 to 95 wt% of an additional carbon black (ii), based on the total weight of the carbon black material (b).
In the same field of endeavor of rubber composition used to manufacture tires or various tire components (Abstract; [0065]), STYER teaches a rubber composition comprising elastomers, plant oil, and a recycled carbon black [0004 and 0006]. The composition comprises a mixture of carbon black which include conventional carbon black formed from incomplete combustion of hydrocarbon feedstock can be used as reinforcing filler and a carbon black can be sourced from a recycled material [0019 and 0023]. The recycled carbon black may be obtained by pyrolysis process or other methods known for obtaining recycled carbon black [0019]. The recycled carbon black the majority of the carbon black component of the compound in an amount of 75% of the filler component [0022], therefore the amount of conventional carbon black is 25 wt% of the filler component. Note: recycled carbon black reads on the renewable carbon black feedstock. The combination of carbon black and recycled carbon black is present in an amount of 1 to 45 phr [0021] (which is within the claimed range).
Note: STYER teaches an additional carbon black (ii).
Given STANYSCHOFSKY teaches the rubber composition comprises at least one carbon black including renewable carbon black and carbon black as reinforcing fillers [0063 and 0066], it would have been obvious to a person of ordinary skill in the art to have provided the convention carbon black as a reinforcing filler of STYER with the rubber composition of STANYSCHOFSKY for the benefit of its art recognized function as a reinforcing for rubber compositions (e.g., tire, tire components, and etc.). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Regarding claim 9, STANYSCHOFSKY teaches the carbon black can be plasma black, gas black, thermal black, lamp black, or furnace black [0037].
Regarding claim 16, STANYSCHOFSKY teaches the rubber mixtures comprises synthetic rubbers including polybutadiene, polyisoprene, solution styrene butadiene rubber, chloroprene, butadiene/acrylonitrile copolymer, ethylene/propylene/diene copolymers (EPDM), and mixtures of these rubbers [0079-0090].
Claims 1, 7-9, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over STANYSCHOFSKY et al. (U.S. Publication No. 2011/0236816, hereinafter STANYSCHOFSKY) in view of JP 2017-149959A (hereinafter, KOJIMA) in further view of WITTMANN et al. (U.S. Publication No. 2018/0340074, hereinafter WITTMANN).
Regarding claims 1, 7, 8, 12-15, 17, and 18, STANYSCHOFSKY teaches polymer mixtures that comprise at least one polymer and at least one carbon black [0066 and 0067]. Polymers include plastics or rubbers [0068] wherein the rubber includes natural rubber [0069-0070] and synthetic rubbers [0079-0091] (which reads on (a) an elastomeric polymer material as claimed). The carbon black can be produced using a carbon black feedstock [0055]. The renewable carbon black feedstock can be bio-gas, rapeseed oil, soya oil, palm oil, sunflower oil, oils derived from nuts or olive oil [0057]. The carbon black feedstock can comprise >0.001% by weight, particularly ≥ 25 wt% by weight, with a preference of ≥ 99% by weight of renewable carbon black feedstock [0060] (which reads on (b-i) carbon black obtained from a carbon black feedstock comprising a renewable carbon black feedstock in an amount greater than 10 wt% as claimed).
The rubber mixtures comprises at least one rubber and at least one carbon black [0071]. The rubber mixtures are used for the production of pneumatic and other tyres, tyre treads, cable sheathing, hoses, drive belts, conveyor belts, roll coverings, shoe soles, sealing rings, profiles, and damping elements [0099].
However, STANYSCHOFSKY does not teach (a) an elastomeric polymer material, wherein the synthetic rubber comprises a synthetic rubber obtained from a renewable source material.
In the same field of endeavor of a rubber composition for a tread for tires (Abstract; p. 15), KOJIMA teaches the composition comprises a synthetic rubber (p. 2) that is a biomass-derived rubber (Abstract; p. 1). The biomass-derived rubber is a polybutadiene rubber (biomass polybutadiene rubber) (p. 3). The biomass-derived rubber is a diene obtained by catalytic reaction from at least one biomass-derived component consisting of biomass-derived alkyl alcohols including ethanol, butanol, and butanediol; allyl alcohols; alkenes; and etc. (p. 5). The biomass-derived rubber is a polybutadiene rubber produced by at least one tissue culture including plants (p. 6) by fermentation (pp. 10-12). Plants including para rubber tree, Indian rubber tree, dandelion, fig, noge, smelt guayule, guayule, sabzilla, euccommia, and tissue cultures thereof (p. 13).
The content of biomass-derived rubber is 5% or more to less than 90% by mass of the 100% by mass of rubber component (p. 13). The rubber composition provides tires with low-temperature characteristics and performance on snow and ice equivalent to a conventional synthetic rubber while meeting the demands of a recycling society (pp. 1-3).
Given STANYSCHOFSKY teaches the rubber mixture comprising natural rubber [0069-0070] and synthetic rubbers [0079-0091] for the production of tyres and tread [0099], it would have been obvious to a person of ordinary skill in the art to have provided the biomass-derived rubber (i.e., synthetic rubber) of KOJIMA with the rubber mixture of STANYSCHOFSKY for the benefit of obtaining tires with characteristics and performance on snow and ice while also recycling unwanted biomass as taught by KOJIMA. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
However, STANYSCHOFSKY and KOJIMA do not teach wherein the carbon black material (b) comprises 5 to 95 wt% of an additional carbon black (ii), based on the total weight of the carbon black material (b).
In the same field of endeavor of rubber mixtures that contain at least one rubber and at least one particulate carbon black material [0119 and 0122], WITTMANN teaches a particulate carbon black material that can be produced from renewable raw materials, in particular from biomass (Abstract). Renewable raw materials can be derived from plants or animals, more specifically vegetable oils or animal fats [0029]. The preferred biomass is wastes from the industrial use of plants, i.e., lignin [0030 and 0031]. The particulate carbon black material is in the amount of 10 wt% to 150 wt% based on the weight of the used rubber [0123]. The amount of filler (particulate carbon black) is in the amount of 40 phr (Table 7). When the particulate carbon material from renewable raw materials is used as a filler in rubber mixtures, the rubber technological characteristics [0002, 0017, 0020, and 0047] quantities shows similar BET/STSA surface area. In addition, provide an efficient method with respect to the use of energy and adjuvants, by means of which the material can be produced [0047].
Note: WITTMANN is used to teach if the carbon black material (b) wherein the additional carbon black (ii) is obtained from a renewable carbon black feedstock comprises plant and/or animal oils as recited for (b-i).
Given STANYSCHOFSKY teaches the rubber mixtures comprises at least one carbon black [0071] for manufacturing rubber articles, i.e., pneumatic tires, tire treads, tires, and etc. [0144], it would have been obvious to a person of ordinary skill in the art to have provided an additional carbon black which is the particulate carbon material from renewable raw materials of WITTMAN with the rubber mixtures of STANYSCHOFSKY for the benefit of obtaining desired rubber technological characteristics (e.g., BET/STSA surface area) and provide an efficient method of using energy and adjuvants by means of which the material can be produced as taught by WITTMAN. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 9, STANYSCHOFSKY teaches the carbon black can be plasma black, gas black, thermal black, lamp black, or furnace black [0037].
Regarding claim 16, STANYSCHOFSKY teaches the rubber mixtures comprises synthetic rubbers including polybutadiene, polyisoprene, solution styrene butadiene rubber, chloroprene, butadiene/acrylonitrile copolymer, ethylene/propylene/diene copolymers (EPDM), and mixtures of these rubbers [0079-0090].
No Art Rejection
There is no art rejection for Claims 4 and 5, however, the claims are objected and rejected under 112 second paragraph as discussed above.
Response to Arguments
In view of the amendments received 04/30/2026, a new grounds of rejection has been made as discussed above. The applicant arguments with respect to claims 1,4,5, 7-9, and 12-18 have been considered, however, the examiner disagrees.
Firstly, the applicant argues that the recycled carbon black of STYER reads on the renewable carbon black feedstock of Applicant’s present claims. However, STYER discloses that the recycled carbon black is a carbon black reclaimed from manufactured articles, such as waste tires, typically by a pyrolysis process, see paragraph [0019] of STYER which does not suggest a renewable feedstock according to the Applicant’s present claims. The applicant’s present claims, which comprises plant-based feedstocks and/or animal-based oils. The recycled carbon black disclosed of STYER are not made or otherwise derived from plant-based feedstocks and/or animal-based oils. The recycled carbon blacks disclosed by STYER are, to the contrary, made from industrial rubber goods.
The examiner has considered the applicant’s arguments, however, the examiner disagrees. As discussed above, STANYSCHOFSKY teaches polymer mixtures that comprise at least one polymer and at least one carbon black [0066 and 0067]. The carbon black can be produced using a carbon black feedstock [0055]. The renewable carbon black feedstock can be bio-gas, rapeseed oil, soya oil, palm oil, sunflower oil, oils derived from nuts or olive oil [0057]. The renewable carbon black feedstock of STANYSCHOFSKY reads on (b-i) of the present invention. The examiner relies on STYER to teach an additional carbon black (ii) to be added into the rubber mixtures of STANYSCHOFSKY. Furthermore, as discussed above, the claim 1 is indefinite because it is unclear if the additional carbon black (ii) is any carbon black or a renewable carbon black material feedstock comprises plant-based feedstock and/or animal-based oils. For art purposes, the claim limitations are being examined in both ways until further clarification.
Secondly, the applicant argues STANYSCHOFSKY and STYER alone or in any combination fail to disclose or suggest the composition of Applicant’s present claims, in which the elastomeric polymer material (a) comprises a mixture of natural rubber and synthetic rubber, wherein the synthetic rubber comprises synthetic rubber obtained from a renewable source material as recited in Claim 1 and the synthetic rubber comprises polybutadiene obtained from alcohol obtained through fermentation of plant biomass as recited in Claim 18.
In view of the amendments, the examiner acknowledges STANYSCHOFSKY and STYER do not teach the synthetic rubber comprises synthetic rubber obtained from a renewable source material as recited in Claim 1 and the synthetic rubber comprises polybutadiene obtained from alcohol obtained through fermentation of plant biomass as recited in Claim 18. However, as discussed above KOJIMA is relied upon to the claim limitations of the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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