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 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 1-16 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.
In claim 1, it is unclear whether “A sealant composition forming a sealant layer of a pneumatic tire provided with the sealant layer on a tire inner surface” means that the claim is drawn to the sealant composition alone, with an intended use of being used as a sealant layer on a tire inner surface, or whether the claim requires a tire having a sealant layer, in which case claim 17, which is explicitly drawn to a tire, would fail to further limit claim 1.
For the purposes of examination, the sealant composition itself is considered to meet the claim. If applicant intends for claim 1 requires a tire, the examiner recommends that claim 1 and its dependent claims be amended to start “A tire” (or “A pneumatic tire”), where the tire comprises a sealant layer on the inner surface and the sealant layer is made of a sealant composition having the recited composition. In that case, applicant should also amend claim 17 to further limit claim 1.
In claims 14-15 it is not clear under which conditions the adhesive force is measured, what conditions the sealant composition is held at for the “within 30 days” time period, and what test method is used for the adhesive force.
In claim 17 it is not clear what is meant by a tire “using” the sealant composition of claim 1. The examiner recommends that the claim be amended to recite that the tire comprises the sealant composition.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-3, 8, 10-11, 13-15, and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seo (U.S. PG Pub. No. 2020/0180367).
In paragraph 2 Seo discloses a tire having a sealant layer applied to an inner surface of the tire. In paragraphs 31-33, 35, and 42 Seo discloses that the composition can comprise a rubber component, as recited in claim 1, including various rubber components recited in claim 2, an adhesive which can be various hydrocarbon resins such as petroleum resin, meeting the limitations of the tackifier of claims 1 and 3, and a liquid polymer which can be liquid polyisoprene or liquid polybutadiene, meeting the limitations of the plasticizer of claims 1 and 8. In paragraph 42 Seo discloses that the adhesive is present in an amount of 3 to 5 parts by weight per 100 parts by weight of the rubber component and in paragraph 35 Seo discloses that the liquid polymer is present in an amount of 150 to 500 parts by weight per 100 parts by weight of the rubber component, both ranges falling within the ranges recited in claim 1, and the sum of the concentration ranges falling within the range recited in claim 13. Claims 1-3, 8, and 13 are therefore anticipated by Seo.
In paragraphs 38-39 Seo discloses that the composition can further comprise 5 to 10 parts by weight of a vulcanizing agent per 100 parts by weight of rubber, and that the vulcanizing agent can be sulfur, meeting the limitations of claim 10. In paragraph 40 Seo discloses that the composition can comprise a vulcanization accelerator including the types recited in claim 11. As the sealant composition of Seo meets the compositional limitations of the claims, it will possess the properties recited in claims 14-15.
The tire of Seo containing the sealant layer meets the limitations of claim 17, and the as the components must be blended in order to prepare the sealant layer, claim 18 is met as well.
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 1-4, 7-8, and 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over Giannini (U.S. PG Pub. No. 2019/0092103).
In paragraphs 119-129 Giannini discloses a sealant composition for a tire comprising 5 to 50 phr (parts per 100 parts of rubber) of a tackifier and 25 to 65 phr of plasticizer, overlapping the range recited in claim 1 for the tackifier and falling within the range recited in claim 1 for the plasticizer. In paragraph 87 Giannini discloses that the composition can comprise the types of rubber recited in claim 2. In paragraph 95 Giannini discloses that the tackifier can be a hydrocarbon resin, as recited in claim 3. In paragraph 96 Giannini discloses that the hydrocarbon resin can be a C5 or a C5/C9 petroleum resin, as recited in claim 4. In paragraph 95 Giannini discloses that the tackifier has a number-average molecular weight of 200 to 50000, typically 500 to 10000, encompassing or overlapping the range recited in claim 7. In paragraphs 103-104 Giannini discloses that the plasticizer can be an oil or a liquid rubber, as recited in claim 8. In paragraphs 88-89 and 126 Giannini discloses that the composition can comprise 0.1 to 6 phr of a crosslinking agent which can be sulfur, meeting the limitations of claim 10. In paragraph 89 Giannini discloses that the crosslinking agent can also be a thiazole or a sulfenamide, meeting the limitations of the vulcanization accelerator of claim 11.
The total amount of tackifier and plasticizer in the composition of Giannini is 35 to 115 phr, overlapping the ranges recited in claims 12-13. The amount of tackifier of Giannini encompasses the range recited in claim 16, and the concentration ranges for both the tackifier and plasticizer overlap the ranges required for the amount of plasticizer to be greater than the amount of tackifier, noting that a tackifier concentration below 25 phr or a plasticizer concentration above 50 phr must meet the claim limitation.
In paragraph 17 and throughout the reference, Giannini discloses a tire comprising the sealant composition, as recited in claim 17. The composition must be formed by blending the components, as recited in claim 18, and in paragraphs 36-41 Giannini discloses that the sealing composition is applied on the inner surface of the tire.
The difference between Giannini and the currently presented claims is that some of the ranges of Giannini overlap the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 1-4, 7-8, 10-13, and 16-18 are therefore rendered obvious by Giannini. Additionally, since Giannini meets the compositional limitations of the claimed sealant composition, it will possess the properties recited in claims 14-15 regarding adhesive force.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Giannini in light of the evidence provided by Lin (U.S. PG Pub. No. 2022/0009283).
The discussion of Giannini in paragraph 9 above is incorporated here by reference. Giannini discloses a composition meeting the limitations of claim 3 and discloses in paragraph 96 that the tackifier can be Escorez 1102. Lin, in paragraph 55, provides evidence that the glass transition temperature of Escorez 1102 is 52° C, within the ranges recited in claims 5-6. Claims 5-6 are therefore rendered obvious by Giannini in light of the evidence provided by Lin.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Giannini in view of Voge (U.S. Pat. No. 8,614,276).
The discussion of Giannini in paragraph 9 above is incorporated here by reference. Giannini discloses a sealant composition meeting the limitations of claim 1, and in paragraphs 102-104 discloses that the plasticizer can be a liquid polymer, including the liquid rubbers recited in claim 9, but does not disclose the weight-average molecular weight.
Voge, in column 1 lines 15-18 and column 2 lines 41-63 discloses an inflatable article, especially a tire, comprising a puncture-resistant layer which comprises a liquid plasticizer. In column 7 lines 1-19 Voge discloses that the liquid plasticizer can be a liquid elastomer which can be liquid polyisoprene (IR), polystyrene-butadiene (SBR), or polybutadiene (BR), all as recited in claim 9. Voge discloses in the cited section that the liquid elastomer has a number-average molecular weight of 300 to 90,000, more generally 400 to 50,000, which will lead to a weight-average molecular weight at least overlapping the range recited in claim 9, noting that the weight-average molecular weight will be greater than the number-average molecular weight and the polymer of Voge would have to have an unrealistically high polydispersity for the weight-average molecular weight not to overlap the range recited in claim 9, which has an upper bound of 100,000.
It would have been obvious to one of ordinary skill in the art to use one of the liquid elastomers of Voge as the liquid polymer plasticizer of Giannini, since Voge teaches that they are suitable liquid plasticizers for sealant compositions used in tires.
Claims 12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Seo.
The discussion of Seo in paragraph 6 above is incorporated here by reference. Seo discloses a sealant composition meeting the limitations of claim 1, where the concentration of plasticizer of larger than the amount of tackifier, as recited in claim 16, but does not disclose a tackifier concentration within the range recited in claim 16, or a total plasticizer and tackifier content within the range recited in claim 12.
In paragraph 42 Seo discloses that the adhesive corresponding to the tackifier component of the claims is present in an amount of 0 to 10 parts by weight, preferably 3 to 5 parts by weight, per 100 parts by weight of the rubber component, overlapping the range recited in claim 16. In paragraph 35 Seo discloses that the liquid polymer corresponding to the plasticizer component of the claims can present in an amount of 50 to 1000 parts by weight, leading to a total amount of tackifier and adhesive of 50 to 1010 parts by weight at its broadest, overlapping the range recited in claim 12. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." Claims 12 and 16 are therefore rendered obvious by Seo.
Claims 1, 3, 8, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Egan (U.S. Pat. No. 4,359,078).
In column 1 lines 39-47, Egan discloses a pneumatic tire having a sealant composite strip on its inner surface, wherein the sealant comprises a rubber, a tackifier, and a plasticizer. In column 2 lines 27-41 Egan discloses that the tackifier is present in about 2 to about 50 parts by weight, overlapping the range recited in claim 1, and the plasticizer present in about 25 to about 150 parts by weight per 100 parts by weight of the rubber, within the range recited in claim 1.
In column 3 lines 23-28 Egan discloses that the tackifiers can be natural resins and polyterpenes, synthetic polyterpenes, and thermoplastic hydrocarbon resins, all of which are hydrocarbon resins as recited in claim 3. In column 2 lines 30-34, Egan discloses that the plasticizer can be an oil, as recited in claim 8. The total amount of tackifier and plasticizer in the composition of Egan is about 27 to about 200 parts by weight, overlapping the ranges recited in claims 12-13. The amount of tackifier of Egan encompasses the range recited in claim 16, and the concentration ranges for both the tackifier and plasticizer overlap the ranges required for the amount of plasticizer to be greater than the amount of tackifier, noting that a tackifier concentration below 25 phr or a plasticizer concentration above 50 phr must meet the claim limitation.
The pneumatic tire of Egan which contains the sealant strip meets the limitations of claim 17. The composition must be formed by blending the components, as recited in claim 18, and as noted above Egan discloses that the sealant is applied on the inner surface of the tire.
The difference between Giannini and the currently presented claims is that some of the ranges of Giannini overlap the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 1, 3, 8, 12-13, and 16-18 are therefore rendered obvious by Egan. Additionally, since Egan meets the compositional limitations of the claimed sealant composition, it will possess the properties recited in claims 14-15 regarding adhesive force.
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 1-11 and 13-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/271,900. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the ‘900 application discloses a sealant composition comprising a tackifier and a plasticizer, where the tackifier is present in a concentration range overlapping the range recited in claim 1 of the current application and the plasticizer is present in an amount within the range recited in claim 1 of the current application. Claims 3-10 of the ‘900 application are analogous to claims 2-9 of the current application. Claims 1-2 of the ‘900 application recite the further inclusion of sulfur and a vulcanization inhibitor in the sealant composition, meeting the limitations of claims 10-11 of the current application. The total amount of tackifier and plasticizer in the sealant composition of claim 1 of the ‘900 application is 65 parts by mass or more per 100 parts by mass of the rubber component, within the range recited in claim 13 of the current application. As the sealant composition and layer of the ‘900 application meets the compositional limitations of the compositions of the current claims, it will possess the properties recited in claims 14-15 of the current application. The concentration ranges of plasticizer and tackifier in claim 1 of the ‘900 application encompass the tackifier range recited in claim 16 of the current application as well as the ranges necessary for the plasticizer to be present in a larger amount than the tackifier, as recited in claim 16 of the current application, noting that any tackifier content of less than 60 parts per 100 parts of the rubber will lead to a plasticizer content larger than the tackifier content. Claim 11 of the ’900 application is analogous to claim 17 of the current application. As the sealant layer and composition of claim 1 of the ‘900 application must be prepared by blending the components, claim 18 of the current application is met as well.
The difference between the claims of the ‘900 application and the current application is that some of the ranges recited in claims of the ‘900 application overlap or encompass the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 1-11 and 13-18 of the current application are therefore rendered obvious by the claims of the ‘900 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 5, 7-8, 10, and 12-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-12 of copending Application No. 18/571,930. Although the claims at issue are not identical, they are not patentably distinct from each other.
The claims filed 9/24/25 in the ‘930 application have been used in setting forth this rejection. Claim 1, 7, and 9 of the ‘930 application disclose a sealant composition comprising a rubber component, tackifier, and a plasticizer, where the tackifier and plasticizer are present in amounts within the range recited in claim 1 of the current application, and the rubber component is selected from the types recited in claim 2 of the current application. Claims 4-6 and 8 of the ‘930 application are analogous to claims 3, 5, and 7-8 of the current application. Claims 10-11 of the ‘930 application recite a composition further comprising sulfur in the amount recited in claim 10 of the current application. The total amount of tackifier and plasticizer in the sealant composition of claims 1, 7, and 9 of the ‘930 application is about 20 to about 150 parts by mass or more per 100 parts by mass of the rubber component, overlapping the ranges recited in claim 12-13 of the current application, noting that there is no lower bound to the concentration of tackifier recited in claim 7 of the ‘930 application. As the sealant composition and layer of the ‘930 application meets the compositional limitations of the compositions of the current claims, it will possess the properties recited in claims 14-15 of the current application. The concentration ranges of plasticizer and tackifier in claim 1 of the ‘930 application encompass the tackifier range recited in claim 16 of the current application as well as the ranges necessary for the plasticizer to be present in a larger amount than the tackifier, as recited in claim 16 of the current application, noting that any tackifier content of less than 20 parts per 100 parts of the rubber will lead to a plasticizer content larger than the tackifier content. Claim 12 of the ‘930 application is analogous to claim 17 of the current application. As the sealant layer and composition of claim 1 of the ‘930 application must be prepared by blending the components, claim 18 of the current application is met as well.
The difference between the claims of the ‘930 application and the current application is that some the ranges recited in the claims of the ‘930 application overlap or encompass some of the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 1-3, 5, 7-8, 10, and 12-18 of the current application are therefore anticipated or rendered obvious by the claims of the ‘930 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zhou (JP 2020-507491 A), cited as an X reference in the International Search Report, is cumulative to the references cited in the above rejections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771