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 Objections
Claims 1 and 11 are objected to because of the following informalities:
In claim 1, please insert the word “a” before “combination thereof”.
In claim 11, please write out the names for 6PPD, 7PPD and TMQ.
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 4, 5-10 and 16 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.
Claim 4 recites the limitation "the reinforcing filler carbon black of 20-400m2/g surface area". There is insufficient antecedent basis for this limitation in the claim.
Claims 5 and 16 recite the limitation "the reinforcing filler silicas of 20-400m2/g surface area". There is insufficient antecedent basis for this limitation in the claim.
It is noted that since claims 6-10 ultimately or directly depend from claim 5, they are rejected along with claim 5 because they incorporate all of the limitations of claim 5, including those that are indefinite.
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 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/259,349 (reference application) in view of Araujo Da Silva (US 2010/0063189) and Pakela (US 2017/0104197). Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. ‘366 claims the product claimed by the instant method claims. While App. No. ‘366 does not specifically claim mixing a non-productive mix and a productive mix, this method is very well known in the art for preparing rubber compositions, as taught by Araujo Da Silva (p. 7, [0104]-[0119]), and Pakela teaches that by using such a method, particularly by adding the curatives last, scorch, also known in the art as premature vulcanization, is prevented (p. 1, [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have prepared the claimed rubber composition of App. No. 349 using a two-stage mixing (“non-productive” mix followed by a “productive” mix) process by adding the vulcanization package last, as this method is known in the art, as taught by Araujo Da Silva, and prevents premature vulcanization, as taught by Pakela.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-10 and 14-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang (US 2015/0232639), as evidenced by J&N Sourcing (Carbon Black N326, J&N Sourcing, 2026, 4 pages).
Yang exemplifies a composition comprising the following:
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Formulation W4 includes NR, a diene elastomer; a carbon black reinforcing filler, and 4-HDPA (4-hydroxydiphenylamine), without the hexamethylenetetramine methylene donor.
N326 is known to have a surface area of about 70-85 m2/g, as evidenced by J&N Sourcing (p. 2).
W4 anticipates instant claims 1-2, 4 and 6-10.
Alternatively, F1 is prepared by mixing all of the materials in the Table except for the sulfur, accelerators and the hexamethylenetetramine in a Bradbury mixer, processed until well incorporated, transferred to a mill and cooled, followed by addition of the addition of the vulcanization package and the hexamethylenetetramine to form a productive mix which was milled until the components were well mixed, followed by curing in a mold under heat (col. 5).
While F1 includes a methylene donor in the productive mix, it is not present in the non-productive mix, as claimed.
F1 anticipates instant claims 1-2, 4, 6-10, 14-15 and 17-21.
As to claims 5 and 16, Yang discloses that silica having a surface area of 30-400 m2/g can be used as the filler, in addition or in place of carbon black.
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.
Claims 1-2 and 4-21 are rejected under 35 U.S.C. 103 as being unpatentable over AU 4066093 in view of Hill (US 2,657,983) and Araujo Da Silva (US 2010/0063189), and further in view of Louis (US 6,326,424), as evidenced by epsilon (N375 Product Data Sheet, epsilon carbon, 2026, 1 page).
AU ‘093 exemplifies preparing a rubber composition for truck tire treads comprising the following (p. 28, Table 12, Example 6):
100 parts of a mixture of natural rubber and butadiene rubber, which meet applicants’ diene elastomer;
55 phr carbon black N-375;
2 parts stearic acid;
4 parts zinc oxide;
8 parts aromatic oil (plasticizing oil);
2 parts 6PPD;
1.2 parts CBS (sulfenamide accelerator);
1.2 parts sulphur (vulcanization agent);
0.5 parts coagent BCI-MX (anti-reversion agent); and
1 part MTG (methyl-thioglycolate).
AU ‘093 teaches that the compositions can include other additives such as antioxidants and antiozonants; however, does not teach the inclusion of a hydroxydiphenylamine, as claimed.
Hill teaches synergistic stabilizing compositions, teaching that hydroxyarylamino antioxidants, such as N-phenyl-p-aminophenol (also known as 4-hydroxydiphenylamine), in combination with esters of thioglycolic acid, such as methyl thioglycolate, provide a synergistic protection of rubbers against oxygen. See col. 3, l. 23 to col. 4, l. 25 and col. 6, l. 45 to col. 7, l. 40.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a combination of N-phenyl-p-aminophenol with the methyl thioglycolate of AU ‘093, as Hill teaches that the combination provides a synergistic protection for the rubber against oxygen degradation.
AU ‘093 does not teach the claimed method of mixing together a non-productive mix, as in claim 1, and then mixing with a vulcanizing agent into a productive mix , as in claim 14.
Araujo Da Silva teaches a tire composition for tires incorporating antioxidants, teaching that the rubber compositions are manufactured in suitable mixers, using two successive preparation stages well known to a person skilled in the art: a first stage of thermomechanical working or kneading (non-productive stage) at high temperature, followed by a second stage of mechanical working (productive stage), during which finishing stage the crosslinking or vulcanization system is incorporated (p. 7, [0104]). Araujo Da Silva teaches that the reinforcing filler and the antioxidant system are incorporated by kneading into the diene elastomer during the first non-productive stage, and after cooling the mixture, the vulcanization system is then incorporated at lower temperature (p. 7, [0105]-[0107]). Then, the final composition is calendared or molded, where vulcanization is carried out under pressure and at a high temperature (p. 7, [0108]-[0117]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used the method of Araujo Da Silva to prepare the tire rubber composition of AU ‘093, as AU ‘093 does not limit the method of manufacture of the tire tread composition and Araujo Da Silva teaches that applicants’ claimed method is well known in the art of rubber forming, particularly for rubber compositions used in the art of tires.
AU ‘093 in view of Hill and Araujo Da Silva is prima facie obvious over instant claims 1-2, 14-17 and 19-21.
As to claims 4, carbon black N-375 has a surface area of about 93 m2/g, as evidenced by epsilon (p. 1).
As to claim 5 and 16, AU ‘093 teaches that silica can be used as the reinforcing filler, but does not teach or suggest the surface area of the silica; however, Louis teaches a tire tread composition comprising silica, teaching that suitable silica have a BET surface area of about 40-600 m2/g, more usually in a range of 50-300 m2/g (col. 7, ll. 50-57).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used silica as the reinforcing filler, as this modification is suggested by the teachings of AU ‘093, and Louis teaches that silica having a surface area of 50-300 m2/g is usually used in the art of tire tread rubber compositions.
As to claims 6 and 17, Hill teaches the hydroxylarylamine to include N-phenyl-p-aminophenol, which is also known as 4-hydroxydiphenylamine.
As to claim 7 and 18, Hill teaches that the thioglycolic ester is present in an amount of about 30-100 parts based on 100 parts by weight of the hydroxyl arylamine (col. 8, ll. 4-14), and the total synergistic mixture is present in an amount of about 0.1-2 phr. Therefore, adding about 1 phr hydroxylarylamine in the composition of AU ‘093 is prima facie obvious.
As to claims 8-10, AU ‘093 teaches that rubbers additives can be added in their usual amounts and include carbon black and silica as reinforcing agents (p. 14, l. 31 to p. 15, l. 2). Therefore, substituting the carbon black for silica in Example 6 of Table 12 of AU ‘093, described above, is prima facie obvious.
As to claims 11-13, AU ‘093 exemplifies the composition as comprising a sulfur vulcanization agent, 6PPD antioxidant, aromatic plasticizing oil, and a sulfenamide accelerator.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/ Primary Examiner, Art Unit 1766