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
Regarding claim 1, the phrase “highly unsaturated” is interpreted to mean that the diene elastomer has at least 50 mol % of monomer units in the copolymer are ethylene units (page 4 of the specification) which provide the unsaturation. The phrase “predominantly” means more than 50% of the elastomer matrix is composed of the highly saturated diene elastomer (page 3 of the specification).
Claim Objections
Claim 20 is objected to because of the following informalities: please insert “the” prior to the phrase “highly saturated diene elastomer”. Appropriate correction is required.
Claim 21 is objected to because of the following informalities: , please insert “the” prior to the phrase “aliphatic diacid dialkyl ester”. Appropriate correction is required.
Claim 27 is objected to because of the following informalities: please replace “a carbon black” with “the carbon black”. Appropriate correction is required.
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) 15-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thuilliez et al (US 2018/0371214) in view of Furukawa et al (US 4,737,535).
Regarding claim 15-18 and 20-26, Thuilliez teaches a rubber composition in which 100 phr of the elastomeric matrix ([0217]) is a highly saturated diene elastomer (Abstract), carbon black ([0223]) and a plasticizer which can be an ester plasticizer ([0226]) and a crosslinking system ([0226]). Thuilliez teaches that the highly unsaturated diene elastomer is a copolymer of ethylene and 1, 3 -diene ([0016]). The 1,3-diene is 1,3 butadiene as evidenced by its polymerization into butadiene units ([0043]) in the 1,4 (both cis and trans) and 1,2 configurations ([0043]). The molar fraction of the ethylene units in the copolymer is greater than or equal to 50 % (Abstract).
However, Thuilliez fails to teach that the plasticizer is an aliphatic diacid dialkyl ester plasticizer.
Furukawa teaches a rubber composition (Abstract) which incorporates diisooctyl sebacate as a plasticizer (col. 3, lines 65-67). It is incorporated into the rubber composition from about 3 to 20 phr (col. 3, lines 60-65).
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 diisooctyl sebacate of Furukawa be the plasticizer of Thuilliez. One would have been motivated to do so in order to receive the expected benefit of improving the tire performances at low temperatures (Furukawa, col. 3, lines 49-67).
Regarding claim 19, Thuilliez teaches that the concentration of the monomers is constant all along the chain of the copolymer ([0017]) which means that no blocks or gradients ([0068]) are present in the copolymer and, therefore, the copolymer can be considered a random copolymer.
Regarding claim 27, Thuilliez teaches that the composition contains a carbon black ([0223]), however fails to teach how much carbon black is incorporated into the composition.
Furukawa teaches a rubber composition (Abstract) which incorporates a carbon black in the amount from 40-80 phr (col. 4, lines 15-20).
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 carbon black of Thuilliez in the amount as taught by Furukawa. One would have been motivated to do so in order to receive the expected benefit of improving steering characteristics and abrasion resistance (Furukawa, col. 4, lines 5-10).
Regarding claim 28, Thuilliez teaches that the rubber according to claim 15 can be used in a tire. However, it silent to the to the characteristics of the tire.
Furukawa teaches a rubber composition (Abstract) which is used in a pneumatic tire (col. 4, lines 65-67 – indicated by an inner pressure) as the tread (col. 1, lines 60-65).
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 tire rubber of Thuilliez in the application of a pneumatic tire tread as taught by Furukawa. One would have been motivated to do so in order to receive the expected benefit of having a tire tread with a rubber composition which are much less sensitive to oxidizing and therefore, confers better stability and lifetime use (Thuilliez, [0005]).
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 15-19 and 21-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-19 and 23-29 of copending Application No. 18/268,821 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite a rubber composition based on a highly saturated diene elastomer, an aliphatic diacid dialkyl ester plasticizer, carbon black, a crosslinking system. While the copending independent claim does not explicitly state that “the ethylene units represent at least 50 mol% of the monomer units of the copolymer” it is noted that within the specification of ‘821, the high saturation comes from the ethylene units being between 50 and 95 mol % of the elastomer (page 6 of ‘821). Nonetheless, it is noted that copending claim 17 of ‘821 clearly delineates the amount of the ethylene units and definitively reads on the recited claim 15.
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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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764