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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1 – 2, 8, 10, 12 and 14 are rejected under 35 U.S.C. 102(a) as being anticipated by JP 2014189697 A to Naoki et al. hereinafter “Naoki”. A machine translation of Naoki is included with this action.
Naoki is directed to rubber compositions for tire tread (page 1, para 1).
Claim Interpretation
Claim 1 was interpreted as comprising 1 – 150 parts of mixed resin and 100 parts of a diene rubber. This is equivalent to 0.99 to 60 wt. % of mixed resin to 99 – 40 wt. % of diene.
Regarding claims 1 – 3, 7, 11 and 14, Naoki teaches a composition comparative example 6 at table 2 comprising: Elastomer 2 (partially hydrogenated styrene-butadiene-styrene resin, pg. 8, para 4) 20 parts / 10 wt.%, Terpene resin (aromatic modified pg. 8, para 1), 20 parts / 10 wt. %, S-SBR-1 80 parts / 40 wt. %, silica filler 80 parts / 40 wt. %. Elastomer 2 is a hydrogenated styrene resin. The terpene resin is an aromatic modified terpene resin. S-SBR-1 is a solution polymerized styrene butadiene rubber and is equivalent to applicant’s diene rubber.
The silica level is 80 parts to 80 parts diene resin (S-SBR-1) therefore this is equivalent to 100 parts silica to 100 parts resin which is within the claimed range. Claims 3, 7 and 11.
From page 3, para 6 the partially hydrogenated styrene-diene-styrene copolymer has a hydrogenation of approximately 5 to 60%.
Regarding claim 14, Naoki teaches that the rubber compositions were used for the tread part of a pneumatic tire (pg. 9, para 3).
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.
Claim(s) 5 and 8 – 10, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2014189697 A to Naoki et al. hereinafter “Naoki”. A machine translation of Naoki is included with this action.
For the limitations of independent claim 1 refer to paragraphs 6 – 8 supra.
Regarding claims 5, 9 and 13, comparative example 6 is silent as to the claimed silica levels. However, Naoki teaches that the total of the reinforcing fillers is 90 to 170 parts by weight. Therefore, it would have been obvious to one of ordinary skill to adjust the silica level to fall between theses limits as it is directly taught by Naoki.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). MPEP 2131.03
As to claims 6, 8, 10 and 12, comparative example 6 is silent as to the claimed Tg levels for diene rubber. However, Naoki teaches that the Tg of the S-SBR is -30 to -5C (pg. 4, para 7). Therefore, it would have been obvious to one of ordinary skill to substitute a grade of S-SBR with a lower Tg to satisfy the properties required as this is directly taught by Naoki.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER A. SALAMON whose telephone number is 571-270-3018. The examiner can normally be reached M-F: 9AM - 6PM.
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PAS 3/6/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759