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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-15) in the reply filed on 03/27/2026 is acknowledged. The traversal is on the ground(s) that . This is not found persuasive because the special technical feature common to both sets of claims was WO 2020/196272 wherein no citation to anything in this reference was made as disclosing anything in the claims. Upon further consideration, the Groups lack unity of invention because even though the inventions of these groups require the technical feature of a rubber composition comprising a carbon black, at least one polymer that comprises ethylenic unsaturation, and a functionalized EPDM wherein a portion of said functionalized EPDM resulting from diene monomer residue comprises an alkyl side chain that comprises a thiol group, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of KR 10-2004-0064754 (hereinafter, KIM) in view of Publication entitled: Functionalization of EPDM with mercapto groups and its use in NBR/EPDM blends (hereinafter, OLIVEIRA) as discussed below.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-3, 5, 6, 9, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2004-0064754 (hereinafter, KIM) in view of Publication entitled: Functionalization of EPDM with mercapto groups and its use in NBR/EPDM blends (hereinafter, OLIVEIRA).
Regarding claims 1-3, KIM teaches a rubber composition for a tire sidewall comprises a base rubber consisting of natural rubber, butadiene rubber, styrene-butadiene rubber or a blend thereof and EPDM (ethylene-propylene-diene-monomer) rubber (Abstract). Note: natural rubber, butadiene rubber, and styrene-butadiene rubber reads on component b) of the present invention.
The rubber composition further comprises mercapto-modified EPDM (Abstract).
The sidewall rubber composition may include carbon black (p. 4).
However, KIM does not explicitly teach c) a functionalized EPDM, wherein a portion of said functionalized EPDM resulting from diene monomer residue comprises an alkyl side that comprises a thiol group.
In the same field of endeavor of rubbers, OLIVEIRA teaches the functionalization of ethylene-propylene-diene (EPDM) polymer with thiol groups for the improvement of mechanical and ageing properties in rubbers (e.g., NBR) (pp. 526-527). The functionalization of EPDM with mercapto group is performed by involving a free radical addition reaction of thioacetic acid to the double bond of the EPDM elastomer followed by hydrolysis (p. 531).
It would have been obvious to a person of ordinary skill in the art to have substituted the mercapto-modified EPDM of KIM for the functionalized EPDM of OLIVEIRA with the rubber composition of KIM for the benefit of obtaining improved mechanical and ageing properties in rubbers as taught by OLIVEIRA. 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 claims 5, 6, and 9, KIM teaches the rubber composition comprises EPDM (ethylene-propylene-diene-monomer) rubber (Abstract).
Regarding claims 12-15, KIM teaches the rubber composition comprises EPDM in the amount of 30% to 40% by weight of the total composition of the raw material rubber (p. 4).
Claims 4 and 7-8 are are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2004-0064754 (hereinafter, KIM) in view of Publication entitled: Functionalization of EPDM with mercapto groups and its use in NBR/EPDM blends (hereinafter, OLIVEIRA) in further view of EP 1775319 (hereinafter, ZHAO).
Regarding claims 4, 7, and 8, the combined disclosures of KIM and OLIVEIRA substantially teach the present invention, see paragraphs 5-8 above. More specifically, KIM teaches the rubber composition for a tire sidewall comprises a base rubber consisting of natural rubber (Abstract).
However, the combined disclosures do not teach wherein said at least one polymer that comprises ethylenic unsaturation further comprises polyisoprene.
In the same field of endeavor of endeavor of a rubber composition, ZHAO teaches the preparation of rubber compositions comprising EPDM and conjugated diene based elastomer, particularly including cis 1,4-polyisoprene rubber, to a pneumatic rubber tire (i.e., sidewall) (Abstract; [0001]) which promotes enhancement of the overall carbon black reinforcement of the rubber composition [0015].
Given natural rubber is very similar to polyisoprene, it would have been obvious to a person of ordinary skill in the art of have substituted the natural rubber of KIM for the polyisoprene of ZHAO for the benefit of promoting enhancement of the overall carbon black as taught by ZHAO. 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).
Allowable Subject Matter
Claims 10 and 11 are 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. KIM, the closest prior art of record, fails to teach the rubber composition comprising a molar ratio of component (c) relative to said non-functional EPDM is from 1:125 to 1:33 (claim 10) and 1:5 to 4:3 (claim 11).
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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