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 .
Specification
The use of the terms LX, Quintone, Hi-Sil, Ultrasil, Zeosil, NXT, Ciptane, Coupsil, Agilon, and other trade names or marks used in commerce have been noted in this application. These terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1 and 5-19 are objected to because of the following informalities:
Claim 1: A comma is missing between “and 0 to 10 phr of a silica coupling agent” and “0 to 30 phr of a liquid plasticizer”.
Claims 5-19: “The tire of any one of claim 1” is a typographical error and should read “The tire of claim 1”.
Claims 11 and 12: “in an amount of from” is a typographical error and should read “in an amount of”.
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 3, 7, 8, 9, 10, 13, 15, 16, and 20 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.
The term “at least a portion of” in claim 3 is a relative term which renders the claim indefinite. The term “at least a portion of” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “about” in claims 7 and 8 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 9 and 10 recite the term “N2 surface area” as claim limitations. The term “N2 surface area” is not defined by the claim or the specification, rendering the scope of the claim indefinite. For examination purposes, the term “N2 surface area” has been interpreted to mean “nitrogen absorption specific surface area”, as denoted in the specification.
Claim 13 recites “1-10 phr of a liquid plasticizer”. The use of the term “a” renders the claim unclear as to whether this is an additional component or if this is a recitation of the liquid plasticizer component introduced in claim 1, rendering the scope of the claim indefinite. For examination purposes, this has been interpreted as a narrowing of the range recited in claim 1.
Claim 14 recites “0-5 phr liquid plasticizer”. It is unclear whether this is an additional component or if this is a recitation of the liquid plasticizer component introduced in claim 1, rendering the scope of the claim indefinite. For examination purposes, this has been interpreted as a narrowing of the range recited in claim 1.
Claim 15 recites the limitation "the filler component". There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites “300% modulus” as a claim limitation. The term “300% modulus” is not defined by the claim or the specification, rendering the scope of the claim indefinite.
Claim 20 recites the limitation "the filler component". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
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.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cicerchi et al (US 20220144974 A1).
Regarding claims 1, 2, 4, 11, 12, 13, 14, and 15, Cicerchi discloses a modified high-cis polybutadiene polymer tire rubber composition [0001], comprising:
10-100 phr of a high-cis modified polybutadiene polymer [0006], having a cis bond content of at least 92%, [0008]
0-90 phr of at least one additional polymer selected from the group consisting of unmodified polybutadiene, styrene-butadiene, natural rubber, polyisoprene, [0006]
10-200 phr of reinforcing silica filler, [0006]
0-50 phr of reinforcing carbon black filler, [0006]
A plasticizing component, comprising:
0-50 phr of a plasticizing oil (liquid plasticizer), [0010] and
0-60 phr of at least one hydrocarbon resin [0010]. One of the at least one hydrocarbon resins may be a plasticizing resin, such as a DCPD homopolymer or copolymer, used individually or in combination [0160],
A cure package [0006], and
Optionally, a silica coupling agent [0154] present at 0.1 to 15 phr [0156].
A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). While the instant application does not particularly recite modified polybutadiene rubber in the claim, the instant specification states that the styrene-butadiene rubber may be functionalized or unfunctionalized [0029]. A rubber composition comprising at least 50 phr of the at least one additional rubber selected from the group comprising natural rubber and polyisoprene, in combination with at least 20 phr of the modified polybutadiene rubber disclosed by Cicerchi, renders claims 1, 2, 4, 11, 12, 13, 14, and 15 obvious.
Regarding claim 3, Cicerchi discloses all limitations of claim 1 as set forth in the above rejection and particularly discloses that the natural rubber may be a guayule natural rubber [0016].
Claims 5 and 6 relate to the DCPD resin either having a majority or a minority by weight of DCPD monomers. Cicerchi teaches copolymers and homopolymers containing DCPD [0160], and these DCPD monomers will either be in the majority or the minority in these copolymers and homopolymers. As there are only two options possible, barring any other evidence to the contrary, a majority amount of DCPD monomers and a minority amount of DCPD monomers are both valid options for the DCPD resins and are both rendered obvious by Cicerchi.
In the alternative, it is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Thus, it would have been prima facie obvious, using no more than ordinary creativity, to vary the amounts of DCPD monomers and non-DCPD monomers, such as the cyclopentadienes, terpenes, and C5s disclosed by Cicerchi as suitable [0160] anywhere within the range of 10 to 90% by weight so long as the desired tire properties are achieved, which thus renders the claimed majority and minority DCPD compositions prima facie obvious. See Ex Parte Jean-Paul Mardon, Jean Senevat, & Daniel Charquet, 101728,237, 2012 WL 1141738, at *2 (2012); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable...is ordinarily within the skill of the art.”); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”).
Regarding claims 7, 8, 9, and 10, Cicerchi discloses all limitations of claim 1 as set forth in the above rejection and particularly defines that the term "reinforcing filler" as applied to the disclosed carbon black and silica fillers applies to materials with a nitrogen absorption specific surface area of about 20 m2/g or greater [0150]. Regarding claims 7 and 8, Cicerchi further discloses use of the BET method for measuring the surface area of the reinforcing silica filler and discloses embodiments with BET surface areas of 100 to 400 m2/g [0152]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claims 16, 17, 18, and 19, Cicerchi discloses all limitations of claim 1 as set forth in the above rejection but does not particularly disclose the 300% modulus at 100 °C, elongation at break at 100 °C, stress at break at 100°C, or wet performance at 0 °C of their rubber composition. However, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 20, Cicerchi discloses all limitations of claim 2 as set forth in the above rejection and particularly discloses 0-50 phr of the reinforcing carbon black filler [0006]. A DCPD-based resin composition having at least 60% by weight of DCPD monomers is prima facie obvious, as set forth in the above rejection with respect to claims 5 and 6.
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 1-8 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23, 25-30, and 33 of copending Application No. 17/755,636 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application specifically recites a terpene phenol resin having a hydroxyl value of 50 or less, while the instant application simply recites a hydrocarbon resin which may be a terpene-aromatic resin [0071 of the instant specification]. Additionally, while the copending application claims a natural rubber but does not particularly claim a guayule natural rubber, the specification of the copending application states that the term “natural rubber” encompasses naturally occurring rubbers such as guayule natural rubber [0017]. The copending specification also discloses inclusion of a silica coupling agent [0075].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 7, 8, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18, 19, 20, 23, 24, 26, 29, 34, and 37 of copending Application No. 17/755,635 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims and specification do not particularly disclose a DCPD-based resin, nor do they teach away its inclusion.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 5, 7, 8, 11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20, 21, 24, 25, 26, 29, 30, 33, and 35 of copending Application No. 17/755,633 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because although the copending application only claims a DCPD-based resin which has a minority by weight of DCPD monomers, the copending specification also discloses DCPD-based resins comprising a majority by weight of DCPD as a monomer [0063]. The copending application also specifically recites a terpene phenol resin having a hydroxyl value of 50 or less, while the instant application simply recites a hydrocarbon resin which may be a terpene-aromatic resin [0071 of the instant specification]. The copending application also particularly claims a lack of titanium oxide filler, which the instant application neither discloses nor teaches away. The specification of the copending application also discloses the inclusion of silica coupling agents [0074]. Additionally, while the copending application claims a natural rubber but does not particularly claim a guayule natural rubber, the specification of the copending application states that the term “natural rubber” encompasses naturally occurring rubbers such as guayule natural rubber [0016].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Unger et al (WO 2019213186 A1, attached) discloses a tire tread rubber composition comprising: (a) 100 parts of an elastomer component comprising (i) 10-50 parts of natural rubber, polyisoprene, or a combination thereof, and (ii) 10-60 parts of polybutadiene rubber having a cis bond content of at least 95% and a Tg of less than -101 °C, wherein the total amount of (i) and (ii) is at least 50 phr; (b) at least one reinforcing silica filler in an amount of 61- 150 phr; (c) at least one hydrocarbon resin in an amount of 21-50 phr, wherein the resin has a Tg of about 30 to about 50 °C; (d) no more than 30 phr of oil; and (e) a cure package.
Unger et al (WO 2019213226 A1, attached) discloses a tire tread rubber composition comprising: (a) 100 parts of an elastomer component comprising (i) 30-60 parts of styrene-butadiene rubber, and (ii) 30-60 parts of polybutadiene rubber having a cis bond content of at least 95% and a Tg of less than -101 °C; (b) at least one reinforcing silica filler in an amount of 81-120 phr; (c) no more than 15 phr of carbon black filler; (d) 11-35 phr of at least one hydrocarbon resin having a Tg of about 30 to about 50 °C; (e) 0-40 phr of oil; and (f) a cure package.
Jacoby et al (US 20210024739 A1) discloses a vulcanizable rubber composition for tire treads comprising: 100 parts by weight of elastomer, from 80 phr to 100 phr of at least one solution-polymerized styrene butadiene rubber having a Tg ranging from -50 to -85° C, optionally from 0 phr to 20 phr of at least one polybutadiene rubber having a Tg ranging from -85 to -115° C, from 100 phr to 150 phr of silica, optionally from 0 phr to 10 phr of carbon black, from 15 phr to 40 phr of at least one resin, preferably at least one hydrocarbon resin, and from 5 phr to 25 phr of at least one oil (liquid plasticizer), wherein the sum of the amount of resin and the amount of oil is within a range of 35 phr to 50 phr.
Pille-Wolf et al (US 20180105681 A1) discloses a tire tread rubber composition comprising 100 parts of a rubber component comprising styrene-butadiene rubber, polybutadiene rubber, natural rubber, and/or polyisoprene rubber, from 5 to 80 phr of a resin component that can include one or more resins, from 100 to 180 phr of silica with a BET surface area from 40 to 600 m2/g, from 5 to 50 phr of carbon black, from 2 to 25 phr of processing oil (liquid plasticizer), and a cure package. The composition may also contain a DCPD homopolymer or copolymer resin.
Colvin et al (KR 20190117011 A, translation attached) discloses a tire tread composition, comprising: 100 phr of guayule natural rubber, 20 phr of hydrogenated DCPD resin, 6 phr of carbon black, 70 phr of silica, and a curative.
Hiroko et al (JP 2011513559 A, translation attached) discloses a winter tire tread comprising a diene elastomer consisting of 60 phr of polybutadiene having a cis-bond content of 97% and 40 phr of natural rubber, which may be guayule natural rubber.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
