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 . Per amendment dated 5/28/26, claims 1-3, 5-9 are currently pending in the application, with claims 1-3 and 9 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Mihara (JP 2007-031581A, machine translation, of record).
At the outset, it is noted that the translations from two different sites are relied upon to capture the missing and/or accurate terms).
Mihara teaches a rubber composition comprising a diene rubber, silica, an aminosilane coupling agent, and a sulfur-containing silane coupling agent (Overview, ref. claims, [0005]-[0010].
Disclosed examples of aminosilane coupling agents include N-phenyl-3-aminopropyltrimethoxysilane, which reads on claimed (A) (formula (1)). That is, in formula 1, R1= C1 alkyl, n=3, Z=divalent group=C3 alkylene, and R3= R4=H, and in formula (2) of claim 6, R1= C1 alkyl, n=3, m=3, and R3= R4=H [0011]-[0012].
Disclosed genus of sulfur-containing silane coupling agents include sulfide-based silane coupling agents, such as bis(3-triethoxysilypropyl)tetrasulfide (reads on (B), and 3-mercaptopropyltriethoxysilane (reads on (B), including mercapto and alkoxysilyl groups) [0016].
Disclosed diene rubber contains a styrene-butadiene copolymer (SBR) as an essential component [0010], and may include a diene rubber other than SBR, such as natural rubber and BR. Additionally, it is preferable that 30% by wt. or more of the rubber component is SBR, i.e., the remainder of 70% by wt.% or less within the diene rubber component may be, natural rubber [0013] (overlaps with the ranges recited in claims 5 and 7).
Disclosed compositions in Examples 5-8 (Table 2) comprise a silane coupling agent (Si69®, Degussa), aminosilane-3 (corresponding to N-phenyl-3-aminopropyltrimethoxysilane, reads on (A) and formula (1)) (KBM573 manufactured by Shin-Etsu Chemical Co., Ltd.), diene rubber (SBR:BR at 70:30 mass ratio), and silica (reads on (D)). It is noted that Si69® corresponds to bis(3-triethoxysilypropyl)tetrasulfide (reads on (B)).
Mihara is silent on a rubber composition comprising a diene rubber (C) containing natural rubber in claimed amount in one single embodiment as claimed.
At the outset, it is noted that 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). See MPEP § 2144.05.
Given the teaching in Mihara’s Examples on rubber compositions comprising components (A), (B) and (D) as claimed, and a diene rubber (SBR:BR at 70:30 mass ratio), and the teaching on BR and natural rubber as equally suitable diene rubbers for using with the SBR, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of he claimed invention, to prepare a compositions as in Examples 5-8 by substituting the BR with natural rubber, based on their art recognized equivalence. Additionally, given the teaching in general disclosure 30% by wt. or more of SBR in the rubber component as a preferred amount, in addition to substituting BR with natural rubber, it would have been within the level of ordinary skill in the art to formulate compositions wherein the amount of natural rubber is 70% by wt. of less of the rubber component, including in an amount of overlapping scope, absent evidence to the contrary.
It is prima facie obvious to substitute equivalents known for the same purpose, so long as the equivalency is recognized in the prior art. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hannon et al. (US 6,753,374 B1, of record).
Hannon teaches a rubber composition comprising (a) a rubber component, (b) a silica filler (reads on (D)), and other ingredients, such as coupling agents (Ab., col. 2, lines 15-20, ref. claims 1, 4).
Preferred highly unsaturated rubber component may be selected from the group consisting of natural rubber, cis-polyisoprene, polybutadiene, poly(styrene-butadiene), styrene-isoprene copolymers, isoprene-butadiene copolymers, styrene-isoprene-butadiene tripolymers, polychloroprene, chloro-isobutene-isoprene, nitrile-chloroprene, styrene-chloroprene, and poly (acrylonitrile-butadiene), i.e. natural rubber may be the sole rubber component in the compositions (col. 2, lines 41-67, ref. claims 1-4).
Disclosed genus of coupling agents includes, for e.g., the following species which may be used alone or as a mixture (col. 4-5, bridging paragraph):
N-phenyl-g-aminopropyltrimethoxysilane (reads on (A), formula (1)), i.e., in formula 1, R1= C1 alkyl, n=3, Z= divalent group=C3 alkylene, and R3= R4=H, and in claimed formula (2) of claim 6, R1= C1 alkyl, n=3, m=3, and R3= R4=H;
g-mercaptopropyl trimethoxysilane (includes alkoxysilyl and mercapto groups, reads on (B)); and
[3-(triethoxysilyl)propyl]tetrasulfide (includes alkoxysilyl and polysulfide groups, reads on (B)).
Disclosed composition in Examples 1-4 in TABLE (II) comprise a rubber component (styrene-butadiene rubber and polybutadiene), a silane coupling agent (bis-(3-[triethoxysilyl]propyl)tetrasulfane, i.e., contains polysulfide and reads on (B)), silica and carbon black (read on (D) filler)
Hannon is silent on a composition comprising organosilicon compounds (A) and (B), a diene rubber (C) containing natural rubber in claimed amount, and a filler (D), in one single embodiment as in the claimed invention.
As stated in paragraph 8 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Given the teaching in Hannon on natural rubber, polybutadiene and poly(styrene-butadiene) as being equally suitable preferred rubber component, and the teaching on a coupling agent, e.g., N-phenyl-g-aminopropyltrimethoxysilane, g-mercaptopropyl trimethoxysilane and [3-(triethoxysilyl)propyl]tetrasulfide, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a rubber composition comprising a natural rubber, silica, and a coupling agent, i.e., natural rubber may be the sole rubber component.
Additionally, it would have been obvious to one of ordinary skill in the art to include a combination of coupling agents, e.g., N-phenyl-g-aminopropyltrimethoxysilane with either g-mercaptopropyl trimethoxysilane or [3-(triethoxysilyl)propyl]tetrasulfide, as they are considered to be equivalents known for the same purpose. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06.
Response to Arguments
In view of the amendment dated 5/28/26, all rejections of record are withdrawn, and new grounds of rejections are presented above, relying on the art of record. Applicant’s arguments have been duly considered.
Regarding Mihara, Applicant states that as amended, claim 5 now requires that the diene rubber of component (C) contains natural rubber in an amount of at least 50% by weight of the rubber composition, and that Mihara fails to disclose or suggest this limitation, either expressly or inherently, arranged in the manner now recited in claim 5.
In response, as discussed in the rejection above, Mihara’s diene rubber contains a styrene-butadiene copolymer (SBR) as an essential component [0010], and may include a diene rubber other than SBR, such as natural rubber. Additionally, it is preferable that 30% by wt. or more of the rubber component is SBR [0013], i.e., natural rubber may be contained as the remainder, at 70% by wt.% or less within the diene rubber component (overlaps with the ranges recited in claims 5 and 7). Thus, the teaching on the lower limit of SBR at 30 wt.% in the rubber component, combined with the teaching that natural rubber is suitable to make up the rubber component to 100 wt.%, obviates the wherein clause recited in amended claim 5.
Regarding the Hannon reference, referring to the teaching “Moreover, mixtures of two or more highly unsaturated rubbers with elastomers having lesser unsaturation such as EPDM, EPR, butyl or halogenated butyl rubbers are also within the contemplation of the invention”, Applicant presents that synthetic rubbers, such as EPDM, are suitable for Hannon’s rubber composition, that although there is a description that natural rubber is acceptable, there are no Examples using natural rubber in Hannon. Applicant further argues that it is also difficult for a person skilled in the art to foresee a tire containing 50 wt.% or more of natural rubber to achieve fuel efficiency, wear resistance etc.
In response, as discussed in the rejection above, Hannon teaches a rubber composition wherein the rubber component is highly unsaturated, and may be a natural rubber, a synthetic rubber or mixtures thereof, with natural rubber being a preferred rubber, and may be the sole rubber component in the composition (col. 2, lines 36-67, ref. claims 1-3). In the portion cited to by applicant, to clarify, Hannon contemplates using mixtures fn the disclosed highly unsaturated rubbers with less unsaturated rubber, such as EPDM, EPR, butyl rubber etc. Thus, Hannon does not teach EPDM alone to be suitable for the rubber composition.
Regarding the argument that the compositions of Hannon’s Examples do not include natural rubber, a teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. See MPEP 2123.
The argument that it is also difficult for a person skilled in the art to foresee a tire containing 50 wt.% or more of natural rubber to achieve fuel efficiency, wear resistance etc. is not deemed persuasive. Applicant’s attention is referred to the following teaching in Hannon (col. 5).
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Thus, noting that the elected invention is drawn to a rubber composition, Hannon teaches a variety of applications for the disclosed rubber compositions, in addition to uses for a tire. Even so, applicant’s conclusion on the negative impact of high natural rubber content in tire applications are not backed by evidentiary data.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270- 7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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