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 § 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, 18 – 21, 23 – 25 and 26 - 30are rejected under 35 U.S.C. 103 as being unpatentable over US 20180134079 A1 to Miyazaki, Tatsuya, hereinafter “Miyazaki”.
Miyazaki is directed to pneumatic tires and tires more motorcycles [0001].
Regarding claims 16, 18 – 21 and 23 – 25, Miyazaki teaches Example 1-13 at Table 1-1 comprising NR (natural rubber), short cellulose fibers (cellulose pulp), carbon black (reinforcing filler) and sulfur as a crosslinking system. NR is an isoprene-based rubber [0052]. From Example 1-13 the cellulose fiber length is 1.5 mm. This length is within the claimed range of 1.1 to 4.9 mm (claim 16) and 1.1 to 3.9 mm (claim 19). The short cellulose fibers have a particularly preferable average fiber diameter of 4 – 40 um [0055]. The amount of the short cellulose fibers per 100 parts by mass of the rubber component is 0.1 to 20 parts by mass [0057]. The combined amount to the reinforcing fillers (carbon black and silica) is 60 parts or more and 200 parts or less [0063].
Therefore, it would be obvious to one of ordinary skill to 60 – 200 parts as this is directly taught by Miyazaki.
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 claims 26 – 30, Miyazaki’s rubber compositions are directed to pneumatic tires and tires more motorcycles [0001]. Miyazaki is silent as to the end uses listed in claims 26 – 30. However, Additionally, 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 the compositions of Miyazaki are capable of performing the intended use.
Claim(s) 16 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 5852079 to Lorenth, Wolfgang, hereinafter “Lorenth”.
Lorenth is directed to rubber compositions for a tire tread, especially a snow tire (1: 1 – 8).
Regarding claims 16 – 17, Lorenth teaches a composition at Comparative Example 2 (4: 25 – 33) comprising NR, SBR, N234 (carbon black), cellulose fibers and sulfur (crosslinking system). NR is an isoprene-based rubber. See paragraph 6 supra. The cellulose fibers have a length of 0.5 to 30 um (2: 50 – 55). The NR is used at 70 phr (Comparative Example 2).
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.").
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.
Conclusion
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PAS 1/10/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759