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 .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-3, 11-12, 14, 16, 18 are pending.
Claim Rejections - 35 USC § 112
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
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Nakafutami et al. (JP 7238187).
A machine translation of JP 7238187 was provided with the previous 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.
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.
Example 1 discloses a composition containing 60 parts polymer, 40 parts natural rubber. The composition can additionally comprise up to 30% by weight polybutadiene rubber.
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.
The Tg of the polymer is -95 to -40 ˚C, and therefore a Tg value of -50 ˚C results in a SP value of 15.9<SP value<16.9 per the claimed formula.
Further, 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 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). The composition can additionally comprise up to 30% by weight polybutadiene rubber.
Claims 11-12, 14, 16, 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 claims 11-12: 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 14: Tani discloses the sheet is a sheet for use as a sidewall as is customary ([0069] Tami).
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 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.
Response to Arguments
Applicant's arguments filed 4/23/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 4-6 Remarks) regarding the rejection under 35 USC 112(b) and the term SP value, Applicants can be their own lexicographers. As noted in In re Swinehart, a claim may not be rejected solely because of the type of language used to define the subject matter. The SP value has been defined by the Tg of the rubber polymer (A). The definition and valuation method are in [0083] [0086] [0088] and [0092] of the specification and [0120 and [0121].
This rejection has been withdrawn. However, claim 1 does not recite a specific SP value.
Applicant argues (p. 6 Remarks) as defined in [0014], the vinyl aromatic monomer block is a block in which 8 or more vinyl aromatic monomer units are chained. Thus, claim 1 specifies the proportion of the continuous block component, whereas claim 2 specifies the total content of the vinyl aromatic monomer units in the entire polymer.
This argument is not found persuasive since claim 1 recites the rubber polymer (A) comprises …less than 10% by mass of a vinyl aromatic monomer block. This is taken to mean the polymer A comprises less than 10% by mass of a vinyl aromatic block, which is made with vinyl aromatic monomer units “chained” or bonded together. Claim 2 also recites the rubber polymer, only with an amount of 35% by mass or less of a vinyl aromatic monomer unit.
Applicant argues (p. 6-7 Remarks) claim 1 has been amended to incorporate limitations of claims 9, 10, 13. The SP value is a specific critical property of the claimed sheet, ensuring the compatibility of the 3 component system. The combination of Nakafutami and Tani does not teach such feature. The disclosure provides examples that do no exhibit satisfactory storage stability when failing to achieve the SP value, such as Examples 58, 61, 62, and 68.
This argument is not found persuasive since the Tg value of the polymer (A) and the resulting SP value are within the scope of the working examples.
Applicant argues (p. 8-9 Remarks) assuming arguendo one combined Nakafutami and Tani, there is no reasonable expectation of success to produce a polymer exhibiting unexpected results. The glass transition temperature and SP value exhibits excellent compatibility of the 3 component system, resulting in high mechanical strength, high fuel economy ozone resistance, and good compatibility among various rubbers. See [0005] [0008] [0080] [0082]-[0083] Examples 41-57, 63-67, and 69 provided in Tables 8-13. These unexpected properties are not disclosed in the art.
The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). In the present case, the unexpected properties are directed to the vulcanized sheets comprising carbon black, antioxidant, etc. Further, the rubber like polymer (A) has specific structure wherein the butylene styrene block is modified and has a specific modification ratio. In contrast, the present claims do not recite a modification group or a ratio. Therefore, the claims are not considered commensurate in scope with the showing of unexpected results.
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.
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
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