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 Objections
Claim 17 is objected to because of the following informalities: for proper antecedent basis, please amend “ethylene units” to read “the ethylene”. Appropriate correction is required.
Claim 23 is objected to because of the following informalities: for proper antecedent basis, please amend “aliphatic diacid” to read “the aliphatic diacid”. 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 16-30 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.
Regarding claim 16, the phrase “one highly saturated diene elastomer” is indefinite because it is unclear how saturated the compound needs to be in order to be considered highly saturated. Does the saturation level come from the ethylene units? If so, the examiner suggests amending claim 16 with the limitations of claim 17.
Claims 17-30 are rejected for being dependent from a previously rejected claim.
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) 16-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thuilliez et al (US 2015/0353716) in view of Furukawa et al (US 4,737,535).
Regarding claims 16, 18, 20, and 22-29, Thuilliez teaches a rubber composition comprising:
5-60 phr ([0043]) of a polyisoprene ([0047])
a highly saturated diene elastomer (Abstract). Given the amount of the polyisoprene, the amount of the diene elastomer can be calculated to range from 40 to 95 phr. Thuilliez teaches that the elastomer is a copolymer of ethylene ([0036]) and 1,3 diene such as 1,3 butadiene ([0037])
A carbon black ([0050]) which is present in the amount from 10 to 200 phr ([0054])
A crosslinking system ([0063])
Thuilliez teaches that ester plasticizers can be incorporated into the composition ([0063]), however fails to teach that the plasticizer is an aliphatic diacid dialkyl ester plasticizer.
Furukawa teaches a rubber composition for use in a tire (Abstract) which incorporates 3 to 20 parts by weight of an aliphatic diacid dialkyl ester plasticizer such as diisooctyl sebacate (col. 3, lines 60-67).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the diisooctyl sebacate of Furukawa as the ester plasticizer of Thuilliez. One would have been motivated to do so in order to receive the expected benefit of improving tire performances at low temperatures (Furukawa, col. 3, lines 47-50).
Regarding claim 17, Thuilliez teaches that the ethylene units ([0015], fraction A) make up more than 50 mol % ([0021]).
Regarding claim 19, Thuilliez teaches that the copolymer is a random copolymer (Abstract).
Regarding claim 21, Thuilliez teaches that the polyisoprene is a natural rubber or a synthetic polyisoprene ([0047]).
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thuilliez et al (US 2015/0353716) in view of Furukawa et al (US 4,737,535) and Halasa et al (US 3,953,542) with evidence provided by Niclas et al (US 2,967,564).
The discussion regarding Thuilliez and Furukawa in paragraph 7 above is incorporated here by reference.
Regarding claim 30, please refer to the above rejection (claim 16) for the compositional elements of the claim.
Thuilliez teaches that the rubber composition is used in a tire composition (Abstract), most commonly a tread ([0100]), however, it fails to teach a use for it in the carcass application of a tire.
Halasa teaches a copolymer of ethylene with diene (Abstract) which is mixed with another rubbery material such as polyisoprene rubber (col. 4, lines 40-45) and says that rubbers such as these can be used in tire applications such a carcass as well as treads (col. 4, lines 30-35). As evidenced by Niclas, tire carcasses generally are parts of pneumatic tires (Abstract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the rubber composition of modified Thuilliez be used in the carcass of a pneumatic tire as taught by Halasa. One would have been motivated to do so by using a rubber with a balance of stiffness and hysteresis properties acceptable for use in tires (Thuilliez, [0007]).
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 16-19 and 23-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-19 and 21-27 of copending Application No. 18/268,826 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both recited a rubber composition comprising predominantly of a highly saturated diene elastomer made from ethylene and 1,3 diene, a carbon black, a crosslinking system and an aliphatic diacid dialkyl ester plasticizer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764