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 .
Claim Interpretation
Claim 27: “based on at least” will be interpreted as the transitional term “comprising”, which is syn-onymous with “including,” “containing,” or “charac-terized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., >Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) [see MPEP 2111.03].
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.
Claim 27 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 27 recites the broad recitation 0.1% to 9% by mass of crumb rubber, and the claim also recites the content of crumb rubber is within a range of 0.5% to 7% by mass which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thuilliez et al. (US 2015/0353716) in view of Hayashi (WO 2019/239568).
Regarding claim 27: Thuilliez et al. (US ‘716) discloses rubber compositions [abstract] for tire treads [0098], wherein Example M2 [M2; 0081-0085; Table 2, M2] contains 80 parts highly saturated diene elastomer A (EBR; ethylene/butadiene rubber (1,3-butadiene [0036-0037); 68 mol% ethylene units [0084]), 20 parts unsaturated diene 2 (natural rubber [0083]) {corresponding to 80 phr EBR}, 47.5 parts carbon black, 0.6 parts CBS (N-cyclohexyl-2-benzothiazolesulfenamide) and 1.5 parts sulfur [M2; 0081-0085; Table 2, M2]. Thuilliez et al. (US ‘716) discloses additives [0063].
Thuilliez et al. (US ‘716) does not disclose 0.1 to 9 mass% of crumb rubber. However, Hayashi (WO ‘568) discloses tire treads having rubber compositions comprising crumb rubber particles [abstract], wherein Example C-5 [C-5; 0118; 0123; Table 3, C-5] contains 8.4 mass% of crumb rubber particles having a D10 of 276 µm and a D50 of 550 µm {D10/D50 of 0.50} [C-5; 0118; 0123; Table 3, C-5]. Thuilliez et al. (US ‘716) and Hayashi (WO ‘568) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of rubber compositions for tire treads. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 8.4 mass% of crumb rubber particles having a D10 of 276 µm and a D50 of 550 µm {D10/D50 of 0.50}, as taught by Hayashi (WO ‘568) in the invention of Thuilliez et al. (US ‘716), and would have been motivated to do so since Hayashi (WO ‘568) suggests 8.4 mass% of crumb rubber particles having a D10 of 276 µm and a D50 of 550 µm {D10/D50 of 0.50} affords tires having improved snow grip and ice grip [0007; 0118; 0123-0124; Table 3, C-5; Table 4, T-5].
Allowable Subject Matter
Claims 14-20 and 23-26 are allowable.
The following is a statement of reasons for the indication of allowable subject matter: The combination of Thuilliez et al. (US 2015/0353716) and Hayashi (WO 2019/239568) does not disclose 0.1 to 9% by mass of crumb rubber having a D50 of 100 µm to 300 µm and D10/D50 of ≥ 0.50 with sufficient specificity. Such a reconstruction of the claims would be based on improper hindsight reasoning.
The combination of Thuilliez et al. (US 2015/0353716) in view of Thomasson et al. (WO 2018/115719) (Thomasson et al. (US 11,046,838) as English equivalent) does not disclose 0.1 to 9% by mass of crumb rubber having a D50 of 100 µm to 300 µm and D10/D50 of ≥ 0.50 with sufficient specificity. Such a reconstruction of the claims would be based on improper hindsight reasoning.
Response to Arguments
Applicant’s arguments with respect to claim(s) 14-26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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