DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/JP2021/047600 filed 12/22/2021.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. JP 2021-001427 and JP 2021-065420 filed 1/7/2021 and 4/7/2021 respectively, which papers have been placed of record in the file.
Claims 1-18 are pending.
Claim Objections
Claims 1-18 are objected to because of the following informalities:
Claim 1 recites “…(g/100g)…” and it appears the use of parenthesis are unnecessary.
Claims 2-15 are subsumed by this objection because of their dependence.
Claim 16 recites “…(g/100g)…” and it appears the use of parenthesis are unnecessary.
Claims 17-18 are subsumed by this objection because of their dependence.
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 1-15, 17 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.
Claims 1, 2, 4, 7, 16 recite “rubber like polymer”. The phrase "rubber-like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "like"), thereby rendering the scope of the claim(s) unascertainable. Terms such as "-like" are similar to terms such as "or the like" or "and the like" which have been held to be indefinite in a claim since they extend the otherwise definite scope of terms to an indefinite scope. See Ex parte Caldwell, 1906 CD 58 (Commr. Pats. 1905); Ex parte Remark, 15 USPQ2d 1498 (BPAI 1990). Also similar to the use of "-type" which has been held to be indefinite in a claim for these reasons. See Ex parte Copenhaver, 109 USPQ 118. See MPEP 2173.05(b) (sections E-F).
Claims 2, 3, 5-6, 8-15, 17-18 are subsumed by this rejection because of their dependence.
Claim 17 recites “SP value”, although an SP value is neither defined by the claims or the present specification. Hence, it would not be clear what value is intended.
Appropriate correction and/or clarification is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites the polymer (A) comprises 35% by mass or less of a vinyl aromatic monomer unit. However, claim 1 requires less than 10% by mass of a vinyl aromatic monomer block. Therefore, claim 2 does not further limit the subject matter of claim 1 from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Appropriate correction and/or clarification is required.
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.
Claims 1-3, 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kitao et al. (EP 3 912 831).
Regarding claim 1: Kitao is directed to a crosslinking rubber composition comprising:
A rubber like polymer “vinyl diene block copolymer B” having an iodine value of 3-150 g/100g ([0065]) comprising 3-10% by mass of butadiene that is subsequently hydrogenated (equivalent to an “ethylene structure” defined by the present invention) and 10% by mass or less vinyl structure (including vinyl aromatic) ([0057]). The copolymer B and is modified with a coupling agent and has a degree of coupling measured by column adsorption GPC of at least 40% ([0072]) (equivalent to a modification ratio).
A crosslinking agent is disclosed.
The coupling agent used in the “vinyl diene block copolymer B” include the same coupling agents in the copolymer A, and include nitrogen atoms, i.e. amino, amide, imino, imidazole, urea, ammonium, imide, hydazo, azo, diazo, nitrile. Preferably amino and amide groups ([0045]).
While a specific crosslinking rubber composition simultaneously comprising the aforementioned amounts and also include a nitrogen atom is not specifically mentioned, it would have been obvious to have selected such a composition since Kitao discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a crosslinking rubber composition simultaneously comprising the aforementioned amounts and also include a nitrogen atom.
Regarding claim 2: The polymer (A) comprises 40% by mass or less of a vinyl groups is 40% by mass or less ([0057]).
Regarding claim 3: The rubber like polymer has a vinyl and butylene unit is preferably styrene and butadiene is 80% by mass or more ([0056]).
Regarding claim 5: The amount of the rubber like polymer “vinyl diene block copolymer B” is in an amount of 25 parts by mass or more per 100 parts of the “vinyl diene olefin copolymer A”, and therefore at least 12.5 parts by mass or more of the rubber component.
Regarding claim 6: Carbon black having a N2SA of 80 m2/g or more is disclosed ([0111]) or silica having a N2SA of 80-220 m2/g ([0116]) are disclosed.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nakafutami et al. (JP 7238187).
A machine translation of JP 7238187 is provided with this office action.
Regarding claim 1: Nakafutami is directed to a crosslinking rubber composition comprising:
A rubber like polymer (A) comprising 97-75 wt% butadiene, and styrene (a vinyl aromatic monomer block) content of 3-25 wt%. Example S-18 to 19 discloses a styrene butadiene rubber like polymer comprising a nitrogen atom of tetraglycidyl-1,3-bisaminocyclohexane in an amount of 0.5 equivalent per mol of active polymer (equivalent to a modification ratio of 40% by mass or more measured by GPC) and
A crosslinking [vulcanizing] agent.
An Iodine value of 10 to 250 g/100g is not mentioned.
However, Example S-19 disclosed contains 4 wt% of vinyl bonds and 47% of 1,4 bonds as non-hydrogenated units (table 4), and thus is calculated to contain 0.944 mol (= 100 g x (4+47)/100/54 (molecular weight of butadiene) unsaturated bonds. An iodine value, the "iodine value” of 10-250 (g/100 g)" in claim 1 is converted to 0.0394-0.984 mol of iodine / unsaturated bonds is added per 100 g of polymer. Given that Example S-19 contains 0.944 mol unsaturated bonds, the Iodine value would be expected to be within the claimed range.
In the event that Nakafutami does not anticipate claim 1, it would have been obvious to have selected a crosslinking rubber within the scope of the claims. Specifically, when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. In the present case, case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Nakafutami suggests a crosslinking rubber composition comprising a rubber like polymer having an iodine value and modification ratio within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claims 2-3: Example S-19 disclosed contains 4 wt% of vinyl bonds and 47% of 1,4 bonds as non-hydrogenated units (table 4).
Regarding claims 4-7: Example 1 discloses a composition containing 60 parts polymer, 40 parts natural rubber, 65 parts carbon black having a nitrogen adsorption specific surface area of 100 m2/g, and sulfur crosslinking agent.
Claim Rejections - 35 USC § 103
Claims 8-18 are rejected under 35 U.S.C. 103 as being unpatentable over claim 9 as applied to claim Nakafutami above, and further in view of Tani et al. (US 2020/0086687).
Regarding claim 8: Example 1 discloses a composition containing 60 parts polymer, 40 parts natural rubber, 65 parts carbon black having a nitrogen adsorption specific surface area of 100 m2/g, and sulfur crosslinking agent.
Nakafutami doesn’t mention the a molded articles for a tire sidewall.
Tani is directed to a rubber composition for use in tires comprising a styrene butadiene copolymer that is hydrogenated and can comprise a coupling agent. The composition is used for making a tire sidewall or tread. One skilled in the art would have been motivated to have used the rubber composition of Nakafutami for a molded article for the tire sidewall since Tani teaches tires are made from the rubber composition include the tire tread, sidewall, or both ([0009] Tani). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have molded an article for a sidewall utilizing the rubber composition of Nakafutami.
Regarding claim 9: Nakafutami discloses the rubber like polymer has a glass transition temperature of -95 to -40 C and a weight average molecular weight of 50,000-500,000.
Nakafutami doesn’t mention a sheet.
Tani teaches the tires are produced by first forming a sheet, which is subsequently made into a sidewall, which is the customary method. One skilled in the art would have been motivated to have formed a sheet utilizing the composition of Nakafutami to produce a tire tread or sidewall. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have produced a sheet utilizing the composition of Kitao.
Regarding claims 10-12: Example 1 discloses a composition containing 60 parts polymer, 40 parts natural rubber, 65 parts carbon black having a nitrogen adsorption specific surface area of 100 m2/g, and sulfur crosslinking agent.
Regarding claim 13: The combination of Nakafutami and Tami doesn't specifically recite a SP value. However, the sheet produced in Nakafutami and Tami is substantially identical to the sheet produced in the instant invention, as discussed previously.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Nakafutami and Tami suggests a glass transition temperature and SP value within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 14: Tani discloses the sheet is a sheet for use as a sidewall as is customary ([0069] Tami).
Regarding claim 15: Nakafutami is directed to a method for producing a tire comprising:
A step of kneading the crosslinking rubber of claim 1, a natural rubber.
Example 1 discloses a composition containing 60 parts polymer, 40 parts natural rubber, 65 parts carbon black having a nitrogen adsorption specific surface area of 100 m2/g, and sulfur crosslinking agent.
Nakafutami doesn’t mention the a step of molding the composition in the shape of a sheet.
Tani teaches the tires are produced by first forming a sheet, which is subsequently crosslinked, which is the customary method. One skilled in the art would have been motivated to have formed a sheet utilizing the composition of Nakafutami to produce a tire tread or sidewall. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have produced a sheet utilizing the composition of Kitao.
Regarding claim 16: Nakafutami is directed to a crosslinking rubber composition comprising:
A rubber like polymer (A) comprising 97-75 wt% butadiene, and styrene (a vinyl aromatic monomer block) content of 3-25 wt%. Example S-18 to 19 discloses a styrene butadiene rubber like polymer comprising a nitrogen atom of tetraglycidyl-1,3-bisaminocyclohexane in an amount of 0.5 equivalent per mol of active polymer (equivalent to a modification ratio of 40% by mass or more measured by GPC) and
A crosslinking [vulcanizing] agent.
An Iodine value of 10 to 250 g/100g is not mentioned.
However, Example S-19 disclosed contains 4 wt% of vinyl bonds and 47% of 1,4 bonds as non-hydrogenated units (table 4), and thus is calculated to contain 0.944 mol (= 100 g x (4+47)/100/54 (molecular weight of butadiene) unsaturated bonds. An iodine value, the "iodine value” of 10-250 (g/100 g)" in claim 1 is converted to mean that 0.0394-0.984 mol of iodine / unsaturated bonds is added per 100 g of polymer. Given that Example S-19 contains 0.944 mol unsaturated bonds, the Iodine value would be expected to be within the claimed range.
In the event that Nakafutami does not anticipate claim 1, it would have been obvious to have selected a crosslinking rubber within the scope of the claims. Specifically, when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. In the present case, case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Nakafutami suggests a crosslinking rubber composition comprising a rubber like polymer having an iodine value and modification ratio within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Example 1 discloses a composition containing 60 parts polymer, 40 parts natural rubber, 65 parts carbon black having a nitrogen adsorption specific surface area of 100 m2/g, and sulfur crosslinking agent.
Up to 30 wt% of butadiene rubber may be used.
Nakafutami doesn’t mention the a molded articles for a tire sidewall.
Tani is directed to a rubber composition for use in tires comprising a styrene butadiene copolymer that is hydrogenated and can comprise a coupling agent. The composition is used for making a tire sidewall or tread. One skilled in the art would have been motivated to have used the rubber composition of Nakafutami for a molded article for the tire sidewall since Tani teaches tires are made from the rubber composition include the tire tread, sidewall, or both ([0009] Tani). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have molded an article for a sidewall utilizing the rubber composition of Nakafutami.
Regarding claim 17: The combination of Nakafutami and Tami doesn't specifically recite a SP value. However, the sidewall produced in Nakafutami and Tami is substantially identical to the sheet produced in the instant invention, as discussed previously.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Nakafutami and Tami suggests a glass transition temperature and SP value within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 18: Example 1 discloses a composition containing 60 parts polymer, 40 parts natural rubber, 65 parts carbon black having a nitrogen adsorption specific surface area of 100 m2/g, and sulfur crosslinking agent.
A butadiene rubber can be blended up to 30% by weight.
A sidewall is taught by Tani discussed previously.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764