DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 1, 4 and 9-10 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to replace the claimed “an expression (i)” with “an Expression (i)” to be consistent with “Expression (i)” recited later in the same claim.
As to Claim 4: The applicants are advised to replace the claimed “chromatograph” with the term “chromatography”.
As to Claim 9: The applicants are advised to replace the claimed phrase “obtained by employing” with the new phrase “obtained by crosslinking” consistent with paragraph [0084] of applicants’ published application, i.e., US PG PUB 2024/0042800.
As to Claim 10: The applicants are advised to replace the claimed phrase “are formed using the polymer composition” with the new phrase “are formed from the polymer composition”.
Appropriate corrections are 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.
3. Claims 1-10 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.
As to Claim 1: It recites, among other thing, “composition ratio (molar ratio)” (Emphasis added). It is not clear from the cited claim or the present specification whether or not “molar ratio” is required by the claim due to the use of the parenthesis.
It is further noted that since claims 2-10 are dependent on claim 1, they are rejected along with claim 1 because they incorporate all the limitations of claim 1, including those that are indefinite for the reasons provided above.
Accordingly, the scope of these claims is deemed indefinite.
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 nonobviousness.
4. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over ADACHI et al. (WO 2020/02039841; utilized US 2022/02513512 as its English Equivalent) in view of Minagoshi et al. (US 2003/0069345).
It is noted that ADACHI et al. (WO 2020/0203984) is used for date purposes, and all paragraph numbers cited below refer to its English equivalent, namely US 2022/0251351 since WO 2020/0203984 is in Japanese.
As to Claims 1-10: ADACHI et al. disclose a polymer composition comprising a rubber component containing a conjugated diene-based polymer (A), wherein the polymer satisfies formula (i) when a composition ratio (molar ratio) of structural units represented by formulae (1)-(4) are p, q, r, and s, respectively, a value α represented by formula (i) of 0.80 or more and 0.97 or less:
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(Paragraphs [0008]-[0011] and see also abstract). The value α of 0.80 or more and 0.97 or less taught by ADACHI et al. overlap with that presently claimed, i.e., 0.75 ≤ (p+(0.5 x r))/(p + q + (0.5 x r) + s) ≤ 0.95. ADACHI et al. also disclose that the polymer is used in an amount of 10% by mass or more (Paragraph [0009]), which overlaps with the amount of 50% by mass or more recited in present claim 2, has a glass transition temperature of -25°C or lower (Paragraph [0063]), which is encompassed by the glass transition temperature of -40°C or lower recited in claim 3, and a weight average molecular weight (Mw) of 1.0x105 to 2.0 x106 in terms of polystyrene measured by gel permeation chromatography (Paragraph [0062]). ADACHI et al. further disclose that their composition also contains at least one thermally expandable component selected from the group consisting of a foaming agent, thermally expandable microcapsules, and thermally expandable graphite (Paragraph [0067]) as required by present claim 6, a crosslinking agent (Paragraph [0077]) as required by claim 8, and various reinforcing fillers including carbon black and silica (Paragraph [0069]) as required by present claim 7. Moreover, ADACHI et al. disclose that their composition is used to prepare a cross-linked product such a tire in which one or both of a tread and a sidewall (Paragraphs [0084] and [0085]).
However, ADACHI et al. do not specifically mention the addition of a filler having a Mohs hardness of 5 or more in their composition useful for preparing tires as required by the claims of the present application. They also do not specify this filler as including alumina, silicon carbide, boron carbide and diamond as required by present claim 5.
Nevertheless, Minagoshi et al. disclose the use of fillers including those having a Moh’s hardness of at least 5, such as alumina, silicon carbide, boron carbide and diamond, in a composition useful for preparing a tire having a tread with improved performances on icy and snowy roads (Paragraphs [0009], [0011] and [0019]-[0021]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the fillers having the claimed Mohs hardness of 5 or more including alumina, silicon carbide, boron carbide and diamond taught by Minagoshi et al. in the composition of ADACHI et al., with a reasonable expectation of successfully forming a tire having a tread with improved performances on icy and snowy roads.
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.
5. Claims 1-3, 5, and 8-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 8 of U.S. Patent No. 12,479,982 (hereinafter referred to as “the patent”) in view of Minagoshi et al. (US 2003/0069345).
The claims of the patent and the present application are directed to a crosslinked product obtained from a polymer composition that comprises a conjugated diene-based polymer and a crosslinking agent. The claims of the patent and the present application also recite that its cross-linked product is used to prepare a tire comprising a tread and/or sidewall. The claims of the patent also recite that the conjugated diene-based polymer comprises a polymer that satisfies an expression when composition ratios (molar ratios) in the conjugated diene-based polymer of structural units represented by formulae (1)-(4) are p, q, r, and s, respectively, a value α represented by formula (i) of 0.80 or more and 0.97 or less:
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The value α of 0.80 or more and 0.97 or less recited in the patent overlap with that presently claimed, i.e., 0.75 ≤ (p+(0.5 x r))/(p + q + (0.5 x r) + s) ≤ 0.95. The claims of the patent further recite that the polymer is used in an amount of 10% by mass or more (which overlaps with the amount of 50% by mass or more recited in present claim 2) and has a glass transition temperature of -45°C or lower (which overlaps with the glass transition temperature of -40°C or lower recited in claim 3). See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
However, the claims of the patent do not specifically mention the addition of a filler having a Mohs hardness of 5 or more as required by the claims of the present application. They also do not specify this filler as including alumina, silicon carbide, boron carbide and diamond, as required by present claim 5.
Nevertheless, Minagoshi et al. disclose the use of fillers including those having a Moh’s hardness of at least 5, such as alumina, silicon carbide, boron carbide and diamond in a composition useful for preparing a tire having a tread with improved performances on icy and snowy roads (Paragraphs [0009], [0011] and [0019]-[0021]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the fillers having the claimed Mohs hardness of 5 or more including alumina, silicon carbide, boron carbide and diamond taught by Minagoshi et al. in the composition of the patent, with a reasonable expectation of successfully forming a tire having a tread with improved performances on icy and snowy roads.
Correspondence
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 06/06/2023.
2 Cited in the IDS submitted by applicants on 06/06/2023.