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.
Status of Claims
In response to the correspondence received 4/14/26:
Claims 16 and 19 - 31 are pending in the application.
Claim 16 has been amended.
Claim 31 is newly added.
Claims 16 and 19 - 31 are currently under examination.
Claims 1 – 15, 17 and 18 are cancelled.
The rejections under 35 U.S.C. 103 (a) to Miyazaki is withdrawn due to amendment.
The rejections under 35 U.S.C. 103 (a) to Lorenth are upheld.
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) 16, 19 – 21 and 23 - 30 are rejected under 35 U.S.C. 103 as being unpatentable over US 5852079 to Lorenth, Wolfgang, hereinafter “Lorenth” and as evidenced by the NPL titled Cotton Fiber Properties: Length, Diameter and Spinning Quality, Munshi, Shah M., page 3, April 18, 2026, hereinafter Munshi.
Lorenth is directed to rubber compositions for a tire tread, especially a snow tire (1: 1 – 8).
Regarding claims 16, 19, 21 and 23 - 25 Lorenth teaches a composition titled Composition according to the Invention in the table at (4: 28 – 54) comprising 70 parts NR, 30 parts SBR, 70 parts N234 (carbon black), 3 parts cellulose fibers and 1.7 parts sulfur (crosslinking system). NR is an isoprene-based rubber. The cellulose fibers have a length of 0.5 to 30 mm (2: 50 – 55).
Addressing the cellulose fiber length. 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.").
As to claim 20, the evidentiary reference to Munshi teaches that the diameter of cotton fibers is 11 – 22 microns (page 3).
As to claims 26 – 30, Lorenth’s rubber compositions are directed to a tire tread, especially a snow tire (1: 1 – 8). Lorenth is silent as to the end uses listed in claims 26 – 30. However, if the prior art composition is physically the same as that claimed it must have the same properties. "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). 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. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). MPEP 2112.01
In this case as the prior art compositions are physically the same as that claimed. Therefore, the compositions of Lorenth are capable of performing the same intended use.
Allowable Subject Matter
Claim 22 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.
Claim 31 is allowed.
Prior Art of Record
US 20180134079 A1 to Miyazki, Tatsuya hereinafter “Mizazki”. See the first action on the merits paragraphs 4 – 10.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 5/26/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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