DETAILED ACTION
Applicant’s response filed on 05/26/2026 has been fully considered. Claims 1-15 and 21 are canceled. Claims 16-20 and 22-30 are pending. Claim 16 is amended.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
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 20 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 20 recites the limitation “wherein the cyclic monomer is selected from the group consisting of cyclopentene, cyclopentadiene, dicyclopentadiene, cyclohexene, 1,3-cyclohexadiene, 1,4-cyclohexadiene, methylcyclopentadiene, di(methylcyclopentadiene) and mixtures thereof”, which fails to include all the limitations of the claim upon which it depends because claim 16, from which claim 20 depends, recites the limitation “the hydrocarbon resin is based on a cyclic monomer selected from the group consisting of a distillation cut from a petroleum refinery stream, C4, C5 and C6 cyclic olefins and mixtures thereof, wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 15 wt. %” in lines 3-7, which requires the cyclic monomer to comprise methylcyclopentadiene, and the limitation recited in claim 20 allows for the cyclic monomer to not comprise methylcyclopentadiene. 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.
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 16, 17, 19, 20, and 22-30 are rejected under 35 U.S.C. 103 as being unpatentable over Isitman et al. (US 2020/0283602 A1, cited in IDS).
Regarding claims 16 and 20, Isitman teaches a pneumatic tire having a tread comprising a vulcanizable rubber composition comprising [0005] a solution polymerized styrene-butadiene rubber [0006], a polybutadiene [0007], and a resin that is C5/C9 resin [0009], wherein the resin is a C5/C0 hydrocarbon resin [0037], which reads on a tire comprising a rubber composition based on at least an elastomer and a hydrocarbon resin as claimed. Isitman teaches that the C5/C9 resin comprises from about 1.0 to about 15% cyclics [0043] by weight [0040, 0052, 0053, 0054], that the cyclics may or may not be substituted [0043], and that preferred substituted cyclics include cyclopentadienes substituted with preferably one methyl group [0043], which reads on wherein the hydrocarbon resin is based on a cyclic monomer optionally selected from C6 cyclic olefins, wherein the hydrocarbon resin optionally comprises methylcyclopentadiene in an amount between 1.0 wt. % and 15 wt. %, wherein the cyclic monomer is optionally selected from methylcylcopentadiene. Isitman teaches that the C5/C9 resin has an aromatic hydrogen content less than 25 mole percent or between 3 and 15 mole percent [0055], that the resin has a glass transition temperature greater than 30° C [0037], that preferred C5/C9 resins have a glass transition temperature (Tg) of from about -30 C to about 100 C [0050], and that the C5/C9 resin may have a number average molecular weight (Mn) of from 450 to 700 g/mol [0048], which reads on wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) H Ar < 25 mol% or 3 mol%≤H Ar ≤ 15 mol%, (2) Tg ≥ or ≤ 95 - 2.2 * (H Ar), (3) Tg ≥ or ≤ -53 + (0.265 * Mn), and (4) 450 g/mol ≤ Mn ≤ 700 g/mol. The (2) is based on the calculations 95 - 2.2 * 12 = 68.6 and 95 - 2.2 * 15 = 62. The (3) is based on the calculations -53 + (0.265 * 450) = 66.25.
Isitman does not teach a specific embodiment wherein the hydrocarbon resin is based on a cyclic monomer selected from the group consisting of a distillation cut from a petroleum refinery stream, C4, C5, and C6 cyclic olefins and mixtures thereof, wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 15 wt. %, and does not teach a specific embodiment wherein the cyclic monomer is selected from the claimed group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Isitman’s C5/C9 resin to comprise from about 1.0 to about 15% cyclics by weight that are cyclopentadienes substituted with one methyl group. The proposed modification would read on wherein the hydrocarbon resin is based on a cyclic monomer selected from C6 cyclic olefins, wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 1.0 wt. % and 15 wt. % as claimed, wherein the cyclic monomer is selected from methylcyclopentadiene as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a suitable amount and species of C5/C9 resin for Isitman’s vulcanizable rubber composition and/or because it would have been obvious to try with a reasonable expectation of success because Isitman teaches that the C5/C9 resin comprises from about 1.0 to about 15% cyclics [0043] by weight [0040, 0052, 0053, 0054], that the cyclics may or may not be substituted [0043], and that preferred substituted cyclics include cyclopentadienes substituted with preferably one methyl group [0043]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Isitman does not teach a specific embodiment wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) 12 mol%≤H Ar ≤ 19 mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), (3) Tg ≥ -53 + (0.265 * Mn), and (4) 300 g/mol ≤ Mn ≤ 450 g/mol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Isitman’s aromatic hydrogen content of Isitman’s C5/C9 resin to be between 12 and 15 mole percent, to select Isitman’s number average molecular weight (Mn) of Isitman’s C5/C9 resin to be 450 g/mol, and to select Isitman’s glass transition temperature (Tg) of Isitman’s C5/C9 resin to be from 68.6°C to about 100°C. The proposed modification would read on wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) 12 mol%≤H Ar ≤ 15 mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), (3) Tg ≥ -53 + (0.265 * Mn), and (4) 450 g/mol ≤ Mn ≤ 450 g/mol as claimed. The (2) is based on the calculations 95 - 2.2 * 12 = 68.6 and 95 - 2.2 * 15 = 62. The (3) is based on the calculations -53 + (0.265 * 450) = 66.25. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing an aromatic hydrogen content, a number average molecular weight (Mn), and a glass transition temperature (Tg) that is suitable for Isitman’s C5/C9 resin and/or because it would have been obvious to try with a reasonable expectation of success because Isitman teaches that the C5/C9 resin has an aromatic hydrogen content less than 25 mole percent or between 3 and 15 mole percent [0055], that the resin has a glass transition temperature greater than 30° C [0037], that preferred C5/C9 resins have a glass transition temperature (Tg) of from about -30 C to about 100 C [0050], and that the C5/C9 resin may have a number average molecular weight (Mn) of from 450 to 700 g/mol [0048]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 17, Isitman teaches that the resin has a glass transition temperature greater than 30° C [0037], and that preferred C5/C9 resins have a glass transition temperature (Tg) of from about -30 C to about 100 C [0050], which reads on wherein the transition temperature Tg ranges from 30 °C or greater or from -30 °C to 100 °C.
Isitman does not teach with sufficient specificity that the transition temperature Tg ranges from 70 °C to 95 °C. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Isitman’s glass transition temperature (Tg) of Isitman’s C5/C9 resin to be from 70°C to 95°C. The proposed modification would read on wherein the transition temperature Tg ranges from 70 °C to 95 °C as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a glass transition temperature (Tg) that is suitable for Isitman’s C5/C9 resin and/or because it would have been obvious to try with a reasonable expectation of success because Isitman teaches that the resin has a glass transition temperature greater than 30° C [0037], and that preferred C5/C9 resins have a glass transition temperature (Tg) of from about -30 C to about 100 C [0050]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 19, Isitman teaches that the C5/C9 resin comprises from about 1.0 to about 15% cyclics [0043] by weight [0040, 0052, 0053, 0054], that the cyclics may or may not be substituted [0043], and that preferred substituted cyclics include cyclopentadienes substituted with preferably one methyl group [0043], which reads on wherein the hydrocarbon resin comprises the cyclic monomer in an amount between 1.0 wt. % and 15 wt. %.
Isitman does not teach with sufficient specificity that the hydrocarbon resin comprises the cyclic monomer in an amount between 10 wt. % and 90 wt. %. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Isitman’s C5/C9 resin to comprise from 10 to about 15% cyclics by weight that are cyclopentadienes substituted with one methyl group. The proposed modification would read on wherein the hydrocarbon resin comprises the cyclic monomer in an amount between 10 wt. % and 15 wt. % as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a suitable amount and species of C5/C9 resin for Isitman’s vulcanizable rubber composition and/or because it would have been obvious to try with a reasonable expectation of success because Isitman teaches that the C5/C9 resin comprises from about 1.0 to about 15% cyclics [0043] by weight [0040, 0052, 0053, 0054], that the cyclics may or may not be substituted [0043], and that preferred substituted cyclics include cyclopentadienes substituted with preferably one methyl group [0043]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claims 22 and 23, Isitman teaches that the C5/C9 resin may include aromatic components [0038] that are styrene, indene, derivatives of styrene, or derivatives of indene [0044], which optionally reads on wherein the hydrocarbon resin is further based on an aromatic monomer as claimed, wherein the aromatic monomer is selected from olefin-aromatic compounds as claimed.
Isitman does not teach a specific embodiment wherein the hydrocarbon resin is further based on an aromatic monomer, wherein the aromatic monomer is selected from the claimed group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Isitman’s aromatic components that are styrene, indene, derivatives of styrene, or derivatives of indene to modify Isitman’s C5/C9 resin. The proposed modification would read on wherein the hydrocarbon resin is further based on an aromatic monomer as claimed, wherein the aromatic monomer is selected from olefin-aromatic compounds as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying mechanical properties of Isitman’s vulcanizable rubber composition, or because it would have been beneficial for providing a suitable species of C5/C9 resin for Isitman’s vulcanizable rubber composition, or because it would have been obvious to try with a reasonable expectation of success because Isitman teaches that the C5/C9 resin comprises from about 1.0 to about 15% cyclics [0043] by weight [0040, 0052, 0053, 0054], that the cyclics may or may not be substituted [0043], that preferred substituted cyclics include cyclopentadienes substituted with preferably one methyl group [0043], and that the C5/C9 resin may include aromatic components [0038] that are styrene, indene, derivatives of styrene, or derivatives of indene [0044], which means that the further presence of Isitman’s aromatic components that are styrene, indene, derivatives of styrene, or derivatives of indene as well as the presence of Isitman’s cyclics that are cyclopentadienes substituted with one methyl group would have modified the mechanical properties of Isitman’s vulcanizable rubber composition to some extent because aromatic components are more rigid than cyclics that are cyclopentadienes substituted with one methyl group, which are aliphatic, and aliphatic cyclics that are cyclopentadienes substituted with one methyl group are more flexible than aromatic components.
Regarding claim 24, Isitman teaches that the C5/C9 resin may include aromatic components [0038] that are styrene or indene [0044], which optionally reads on wherein the aromatic monomer is an aromatic distillation cut as claimed.
Isitman does not teach a specific embodiment wherein the aromatic monomer is an aromatic distillation cut. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Isitman’s aromatic components that are styrene or indene to modify Isitman’s C5/C9 resin. The proposed modification would read on wherein the aromatic monomer is an aromatic distillation cut as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying mechanical properties of Isitman’s vulcanizable rubber composition, or because it would have been beneficial for providing a suitable species of C5/C9 resin for Isitman’s vulcanizable rubber composition, or because it would have been obvious to try with a reasonable expectation of success because Isitman teaches that the C5/C9 resin comprises from about 1.0 to about 15% cyclics [0043] by weight [0040, 0052, 0053, 0054], that the cyclics may or may not be substituted [0043], that preferred substituted cyclics include cyclopentadienes substituted with preferably one methyl group [0043], and that the C5/C9 resin may include aromatic components [0038] that are styrene or indene [0044], which means that the further presence of Isitman’s aromatic components that are styrene or indene as well as the presence of Isitman’s cyclics that are cyclopentadienes substituted with one methyl group would have modified the mechanical properties of Isitman’s vulcanizable rubber composition to some extent because aromatic components are more rigid than cyclics that are cyclopentadienes substituted with one methyl group, which are aliphatic, and aliphatic cyclics that are cyclopentadienes substituted with one methyl group are more flexible than aromatic components.
Regarding claim 25, Isitman teaches that the C5/C9 resin may include aromatic components [0038] that are styrene, indene, or derivatives of indene [0044], which optionally reads on wherein the aromatic monomer comprises an olefin-aromatic compound selected from indene derivatives and vinylaromatic compounds as claimed.
Isitman does not teach a specific embodiment wherein the aromatic monomer comprises an olefin-aromatic compound selected from the claimed group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Isitman’s aromatic components that are styrene, indene, or derivatives of indene to modify Isitman’s C5/C9 resin. The proposed modification would read on wherein the aromatic monomer comprises an olefin-aromatic compound selected from indene derivatives and vinylaromatic compounds as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying mechanical properties of Isitman’s vulcanizable rubber composition, or because it would have been beneficial for providing a suitable species of C5/C9 resin for Isitman’s vulcanizable rubber composition, or because it would have been obvious to try with a reasonable expectation of success because Isitman teaches that the C5/C9 resin comprises from about 1.0 to about 15% cyclics [0043] by weight [0040, 0052, 0053, 0054], that the cyclics may or may not be substituted [0043], that preferred substituted cyclics include cyclopentadienes substituted with preferably one methyl group [0043], and that the C5/C9 resin may include aromatic components [0038] that are styrene, indene, or derivatives of indene [0044], which means that the further presence of Isitman’s aromatic components that are styrene, indene, or derivatives of indene as well as the presence of Isitman’s cyclics that are cyclopentadienes substituted with one methyl group would have modified the mechanical properties of Isitman’s vulcanizable rubber composition to some extent because aromatic components are more rigid than cyclics that are cyclopentadienes substituted with one methyl group, which are aliphatic, and aliphatic cyclics that are cyclopentadienes substituted with one methyl group are more flexible than aromatic components.
Regarding claim 26, Isitman teaches that the C5/C9 resin may include aromatic components [0038] that are indene or methylindenes [0044], which optionally reads on wherein the aromatic monomer comprises an indene derivative of Formula (I), wherein R1 and R2 represent, independently of one another, a hydrogen atom, or an alkyl group as claimed.
Isitman does not teach a specific embodiment wherein the aromatic monomer comprises an indene derivative of Formula (I) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Isitman’s aromatic components that are indene or methylindenes to modify Isitman’s C5/C9 resin. The proposed modification would read on wherein the aromatic monomer comprises an indene derivative of Formula (I), wherein R1 and R2 represent, independently of one another, a hydrogen atom, or an alkyl group as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying mechanical properties of Isitman’s vulcanizable rubber composition, or because it would have been beneficial for providing a suitable species of C5/C9 resin for Isitman’s vulcanizable rubber composition, or because it would have been obvious to try with a reasonable expectation of success because Isitman teaches that the C5/C9 resin comprises from about 1.0 to about 15% cyclics [0043] by weight [0040, 0052, 0053, 0054], that the cyclics may or may not be substituted [0043], that preferred substituted cyclics include cyclopentadienes substituted with preferably one methyl group [0043], and that the C5/C9 resin may include aromatic components [0038] that are indene or methylindenes [0044], which means that the further presence of Isitman’s aromatic components that are indene or methylindenes as well as the presence of Isitman’s cyclics that are cyclopentadienes substituted with one methyl group would have modified the mechanical properties of Isitman’s vulcanizable rubber composition to some extent because aromatic components are more rigid than cyclics that are cyclopentadienes substituted with one methyl group, which are aliphatic, and aliphatic cyclics that are cyclopentadienes substituted with one methyl group are more flexible than aromatic components.
Regarding claim 27, Isitman teaches that the C5/C9 resin has an aromatic hydrogen content less than 25 mole percent or between 3 and 15 mole percent [0055], that the resin has a glass transition temperature greater than 30° C [0037], that preferred C5/C9 resins have a glass transition temperature (Tg) of from about -30 C to about 100 C [0050], and that the C5/C9 resin may have a number average molecular weight (Mn) of from 450 to 700 g/mol [0048], which reads on wherein the hydrocarbon resin has at least one of the following additional features: a glass transition temperature (Tg) represented by Tg≥ or ≤ 100 - 2.2 * (H Ar), and a glass transition temperature (Tg) ≥ or ≤ -32 + (0.265 * Mn). This is based on the calculations 100 - 2.2 * 12 = 73.6, 100 - 2.2 * 15 = 67, and -32 + (0.265 * 450) = 87.25.
Isitman does not teach a specific embodiment wherein the hydrocarbon resin has at least one of the following additional features: a number average molecular weight (Mn) of between 350 and 420 g/mol, a glass transition temperature (Tg) represented by Tg≥ 100 - 2.2 * (H Ar), and a glass transition temperature (Tg) ≥ -32 + (0.265 * Mn). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Isitman’s aromatic hydrogen content of Isitman’s C5/C9 resin to be between 12 and 15 mole percent, to select Isitman’s number average molecular weight (Mn) of Isitman’s C5/C9 resin to be 450 g/mol, and to select Isitman’s glass transition temperature (Tg) of Isitman’s C5/C9 resin to be from 73.6°C to about 100°C or from 87.25°C to about 100°C. The proposed modification would read on wherein the hydrocarbon resin has at least one of the following additional features: a glass transition temperature (Tg) represented by Tg≥ 100 - 2.2 * (H Ar), and a glass transition temperature (Tg) ≥ -32 + (0.265 * Mn) as claimed. This is based on the calculations 100 - 2.2 * 12 = 73.6, 100 - 2.2 * 15 = 67, and -32 + (0.265 * 450) = 87.25. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing an aromatic hydrogen content, a number average molecular weight (Mn), and a glass transition temperature (Tg) that is suitable for Isitman’s C5/C9 resin and/or because it would have been obvious to try with a reasonable expectation of success because Isitman teaches that the C5/C9 resin has an aromatic hydrogen content less than 25 mole percent or between 3 and 15 mole percent [0055], that the resin has a glass transition temperature greater than 30° C [0037], that preferred C5/C9 resins have a glass transition temperature (Tg) of from about -30 C to about 100 C [0050], and that the C5/C9 resin may have a number average molecular weight (Mn) of from 450 to 700 g/mol [0048]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 28, Isitman teaches that the vulcanizable rubber composition comprises, based on 100 parts by weight of elastomer (phr) [0005], from 55 to 80 phr of the resin that is C5/C9 resin [0009], which reads on wherein a content of the hydrocarbon resin is within a range extending from 55 to 80 phr as claimed.
Regarding claim 29, Isitman teaches that the solution polymerized styrene-butadiene rubber has a glass transition temperature (Tg) ranging from -85° C to -50° C [0006], and that the polybutadiene has a Tg ranging from -80 to -110° C [0008], which reads on wherein the elastomer predominantly comprises an elastomer having a glass transition temperature Tg of less than -40°C as claimed.
Regarding claim 30, Isitman teaches that the vulcanizable rubber composition comprises [0005] a solution polymerized styrene-butadiene rubber [0006] and a polybutadiene having a cis 1,4 content greater than 95 percent [0007], which reads on wherein the elastomer predominantly comprises an elastomer selected from the group consisting of essentially unsaturated diene elastomers as claimed.
Claims 16-20 and 22-30 are rejected under 35 U.S.C. 103 as being unpatentable over Tripathy et al. (US 2018/0127527 A1, cited in IDS).
Regarding claims 16 and 20, Tripathy teaches a tire comprising an elastomeric composition comprising elastomer(s) and hydrocarbon polymer modifier(s) [0014], which reads on a tire comprising a rubber composition based on at least an elastomer and a hydrocarbon resin as claimed. Tripathy teaches that the hydrocarbon polymer modifiers [0018] include [0019] optionally relatively minor amounts of one or more other olefins and diolefins such as methylcyclopentadiene, wherein as used herein, “minor amounts” of the other olefins and diolefins refer to less than 8 wt % of the individual olefin or diolefin [0020], which optionally reads on wherein the hydrocarbon resin is based on a cyclic monomer selected from C6 cyclic olefins, wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0 wt. % and 8 wt. % as claimed, wherein the cyclic monomer is selected from methylcyclopentadiene as claimed. Tripathy teaches that the hydrocarbon polymer modifier comprises from 1 to 25 mole percent aromatic hydrogen [0025], at least 8 mole percent aromatic hydrogen, or at least 10 mole percent aromatic hydrogen [0026], has Mn from 400 to 2000 [0026], or a number average molecular weight (Mn) greater than about 200 g/mole, or an Mn between about 400 g/mole and 2000 g/mole [0027], and has a glass transition temperature (Tg) of from about -10° C to about 110° C [0030], which reads on wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) 1 mol% ≤ H Ar ≤ 25 mol% or 8 ≤ H Ar, (2) Tg ≥ or ≤ 95 - 2.2 * (H Ar), (3) Tg ≥ or ≤ -53 + (0.265 * Mn), and (4) 400 g/mol ≤ Mn ≤ 2000 g/mol or 200 g/mol ≤ Mn. The (2) is based on the calculations 95 - 2.2 * 12 = 68.6 and 95 - 2.2 * 19 = 53.2. The (3) is based on the calculations -53 + 0.265 * 400 = 53 and -53 + 0.265 * 450 = 66.25.
Tripathy does not teach a specific embodiment wherein the hydrocarbon resin is based on a cyclic monomer selected from the group consist of a distillation cut form a petroleum refinery stream, C4, C5, and C6 cyclic olefins and mixtures thereof, wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 15 wt. %, wherein the cyclic monomer is selected from the claimed group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s hydrocarbon polymer modifiers to include greater than 0.1 wt % and less than 8 wt % of methylcyclopentadiene. The proposed modification would read on wherein the hydrocarbon resin is based on a cyclic monomer selected from C6 cyclic olefins, wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 8 wt. % as claimed, wherein the cyclic monomer is selected from methylcyclopentadiene as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of monomers that are suitable for Tripathy’s hydrocarbon polymer modifiers and/or because it would have been obvious to try with a reasonable expectation of success because Tripathy teaches that the hydrocarbon polymer modifiers [0018] include [0019] optionally relatively minor amounts of one or more other olefins and diolefins such as methylcyclopentadiene, and that as used herein, “minor amounts” of the other olefins and diolefins refer to less than 8 wt % of the individual olefin or diolefin [0020]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Tripathy does not teach a specific embodiment wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) 12 mol%≤H Ar ≤ 19 mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), (3) Tg ≥ -53 + (0.265 * Mn), and (4) 300 g/mol ≤ Mn ≤ 450 g/mol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s mole percent aromatic hydrogen in Tripathy’s hydrocarbon polymer modifier to be from 12 to 19 mole percent, to select Tripathy’s number average molecular weight (Mn) of Tripathy’s hydrocarbon polymer modifier to be from 400 g/mole to 450 g/mole, and to select Tripathy’s glass transition temperature (Tg) of Tripathy’s hydrocarbon polymer modifier to be from 68.6° C to 110° C. The proposed modification would read on wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) 12 mol%≤H Ar ≤ 19 mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), (3) Tg ≥ -53 + (0.265 * Mn), and (4) 400 g/mol ≤ Mn ≤ 450 g/mol as claimed. The (2) is based on the calculations 95 - 2.2 * 12 = 68.6 and 95 - 2.2 * 19 = 53.2. The (3) is based on the calculations -53 + 0.265 * 400 = 53 and -53 + 0.265 * 450 = 66.25. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a mole percent aromatic hydrogen, Mn, and glass transition temperature (Tg) that are suitable for Tripathy’s hydrocarbon polymer modifier and/or because it would have been obvious to try with a reasonable expectation of success because Tripathy teaches that that the hydrocarbon polymer modifier comprises from 1 to 25 mole percent aromatic hydrogen [0025], at least 8 mole percent aromatic hydrogen, or at least 10 mole percent aromatic hydrogen [0026], has Mn from 400 to 2000 [0026], or a number average molecular weight (Mn) greater than about 200 g/mole, or an Mn between about 400 g/mole and 2000 g/mole [0027], and has a glass transition temperature (Tg) of from about -10° C to about 110° C [0030]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 17, Tripathy teaches that the hydrocarbon polymer modifier has a glass transition temperature (Tg) of from about -10° C to about 110° C [0030], which reads on wherein the transition temperature Tg ranges from -10 °C to 110 °C.
Tripathy does not teach with sufficient specificity that the transition temperature Tg ranges from 70 °C to 95 °C. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s glass transition temperature (Tg) of Tripathy’s hydrocarbon polymer modifier to be from 70° C to 95° C. The proposed modification would read on wherein the transition temperature Tg ranges from 70 °C to 95 °C as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a glass transition temperature (Tg) that is suitable for Tripathy’s hydrocarbon polymer modifier and/or because it would have been obvious to try with a reasonable expectation of success because Tripathy teaches that that the hydrocarbon polymer modifier has a glass transition temperature (Tg) of from about -10° C to about 110° C [0030]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 18, Tripathy teaches that the hydrocarbon polymer modifier has Mz less than 15,000, or less than 12,000 [0026], or a z-average molecular weight (Mz) less than about 15,000 g/mole, or ranges from 2000 to 15,000 g/mole [0028], which reads on wherein the hydrocarbon resin is further characterized by a Z-average molecular weight Mz of less than 15,000 g/mole.
Tripathy does not teach with sufficient specificity that the hydrocarbon resin is further characterized by a Z-average molecular weight Mz of less than 1000 g/mole. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s z-average molecular weight (Mz) of Tripathy’s hydrocarbon polymer modifier to be less than 1000 g/mole. The proposed modification would read on wherein the hydrocarbon resin is further characterized by a Z-average molecular weight Mz of less than 1000 g/mole as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a z-average molecular weight (Mz) that is suitable for Tripathy’s hydrocarbon polymer modifier and/or because it would have been obvious to try with a reasonable expectation of success because Tripathy teaches that the hydrocarbon polymer modifier has Mz less than 15,000, or less than 12,000 [0026], or a z-average molecular weight (Mz) less than about 15,000 g/mole, or less than 12,000 g/mole, or less than about 10,000 g/mole [0028]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 19, Tripathy teaches that the hydrocarbon polymer modifiers [0018] include [0019] optionally relatively minor amounts of one or more other olefins and diolefins such as methylcyclopentadiene, wherein as used herein, “minor amounts” of the other olefins and diolefins refer to less than 8 wt % of the individual olefin or diolefin [0020], and that hydrocarbon polymer modifiers [0018] include 10-20 wt % cyclopentene [0020]. As explained above for claim 16, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s hydrocarbon polymer modifiers to include greater than 0.1 wt % and less than 8 wt % of methylcyclopentadiene. Tripathy therefore renders it obvious wherein the hydrocarbon resin comprises the cyclic monomer in an amount between 10.1 wt. % and 28 wt. % as claimed.
Regarding claim 22, as explained above for claim 16, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s mole percent aromatic hydrogen in Tripathy’s hydrocarbon polymer modifier to be from 12 to 19 mole percent. Also, Tripathy teaches aromatic components [0020] and amount of aromatics component [0033]. Tripathy therefore renders it obvious wherein the hydrocarbon resin is further based on an aromatic monomer as claimed.
Regarding claims 23-25, Tripathy teaches that the hydrocarbon polymer modifier comprises from 1 to 25 mole percent aromatic hydrogen [0025], or at least 8 mole percent aromatic hydrogen, or at least 10 mole percent aromatic hydrogen [0026], and that the hydrocarbon polymer modifier optionally comprises styrene or indene [0023], which optionally reads on wherein the aromatic monomer is selected from the group consisting of olefin-aromatic compounds, aromatic distillation cuts, and mixtures thereof as claimed, wherein the aromatic monomer is an aromatic distillation cut as claimed, wherein the aromatic monomer comprises an olefin-aromatic compound selected from the group consisting of indene derivatives, vinylaromatic compounds, and mixtures there as claimed.
Tripathy does not teach a specific embodiment wherein the aromatic monomer is selected from the group consisting of olefin-aromatic compounds, aromatic distillation cuts, and mixtures thereof, wherein the aromatic monomer is an aromatic distillation cut, wherein the aromatic monomer comprises an olefin-aromatic compound selected from the group consisting of indene derivatives, vinylaromatic compounds, and mixtures thereof. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s mole percent aromatic hydrogen in Tripathy’s hydrocarbon polymer modifier to be from 12 to 19 mole percent, and to select Tripathy’s styrene or indene as the source of Tripathy’s aromatic hydrogen in Tripathy’s hydrocarbon polymer modifier. The proposed modification would read on wherein the aromatic monomer is selected from the group consisting of olefin-aromatic compounds, aromatic distillation cuts, and mixtures thereof as claimed, wherein the aromatic monomer is an aromatic distillation cut as claimed, wherein the aromatic monomer comprises an olefin-aromatic compound selected from the group consisting of indene derivatives, vinylaromatic compounds, and mixtures thereof as claimed. The proposed modification would read on wherein the aromatic monomer is selected from olefin-aromatic compounds as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a mole percent aromatic hydrogen and for providing a species of monomer that are suitable for Tripathy’s hydrocarbon polymer modifier and/or because it would have been obvious to try with a reasonable expectation of success because Tripathy teaches that that the hydrocarbon polymer modifier comprises from 1 to 25 mole percent aromatic hydrogen [0025], at least 8 mole percent aromatic hydrogen, or at least 10 mole percent aromatic hydrogen [0026], and that the hydrocarbon polymer modifier optionally comprises styrene or indene [0023]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 26, Tripathy teaches that the hydrocarbon polymer modifier comprises from 1 to 25 mole percent aromatic hydrogen [0025], or at least 8 mole percent aromatic hydrogen, or at least 10 mole percent aromatic hydrogen [0026], and that the hydrocarbon polymer modifier optionally comprises indene [0023], which optionally reads on wherein the aromatic monomer comprises an indene derivative of Formula (I), wherein R1 and R2 represent, independently of on another, a hydrogen atom as claimed.
Tripathy does not teach a specific embodiment wherein the aromatic monomer comprises an indene derivative of Formula (I) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s mole percent aromatic hydrogen in Tripathy’s hydrocarbon polymer modifier to be from 12 to 19 mole percent, and to select Tripathy’s indene as the source of Tripathy’s aromatic hydrogen in Tripathy’s hydrocarbon polymer modifier. The proposed modification would read on wherein the aromatic monomer comprises an indene derivative of Formula (I), wherein R1 and R2 represent, independently of on another, a hydrogen atom as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a mole percent aromatic hydrogen and for providing a species of monomer that are suitable for Tripathy’s hydrocarbon polymer modifier and/or because it would have been obvious to try with a reasonable expectation of success because Tripathy teaches that that the hydrocarbon polymer modifier comprises from 1 to 25 mole percent aromatic hydrogen [0025], at least 8 mole percent aromatic hydrogen, or at least 10 mole percent aromatic hydrogen [0026], and that the hydrocarbon polymer modifier optionally comprises indene [0023]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 27, Tripathy teaches that the hydrocarbon polymer modifier comprises from 1 to 25 mole percent aromatic hydrogen [0025], at least 8 mole percent aromatic hydrogen, or at least 10 mole percent aromatic hydrogen [0026], has Mn from 400 to 2000 [0026], or a number average molecular weight (Mn) greater than about 200 g/mole, or an Mn between about 400 g/mole and 2000 g/mole [0027], and has a glass transition temperature (Tg) of from about -10° C to about 110° C [0030], which reads on wherein the hydrocarbon resin has at least one of the following additional features: a number average molecular weight (Mn) of between 400 and 420 g/mol, a glass transition temperature (Tg) represented by Tg ≥ or ≤ 100 - 2.2 * (H Ar), and a glass transition temperature (Tg) represented by Tg ≥ or ≤ -32 + (0.265 * Mn). These are based on the calculations 100 - 2.2 * 12 = 73.6, 100 - 2.2 * 19 = 58.2, -32 + 0.265 * 400 = 74 and -32 + 0.265 * 420 = 79.3.
Tripathy does not teach a specific embodiment wherein the hydrocarbon resin has at least one of the following additional features: a number average molecular weight (Mn) of between 350 and 420 g/mol, a glass transition temperature (Tg) represented by Tg ≥ 100 - 2.2 * (H Ar), and a glass transition temperature (Tg) represented by Tg ≥ -32 + (0.265 * Mn). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s mole percent aromatic hydrogen in Tripathy’s hydrocarbon polymer modifier to be from 12 to 19 mole percent, to select Tripathy’s number average molecular weight (Mn) of Tripathy’s hydrocarbon polymer modifier to be from 400 g/mole to 420 g/mole, and to select Tripathy’s glass transition temperature (Tg) of Tripathy’s hydrocarbon polymer modifier to be from 79.3° C to 110° C. The proposed modification would read on wherein the hydrocarbon resin has at least one of the following additional features: a number average molecular weight (Mn) of between 400 and 420 g/mol, a glass transition temperature (Tg) represented by Tg ≥ 100 - 2.2 * (H Ar), and a glass transition temperature (Tg) represented by Tg ≥ -32 + (0.265 * Mn) as claimed. These are based on the calculations 100 - 2.2 * 12 = 73.6, 100 - 2.2 * 19 = 58.2, -32 + 0.265 * 400 = 74 and -32 + 0.265 * 420 = 79.3. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a mole percent aromatic hydrogen, Mn, and glass transition temperature (Tg) that are suitable for Tripathy’s hydrocarbon polymer modifier and/or because it would have been obvious to try with a reasonable expectation of success because Tripathy teaches that that the hydrocarbon polymer modifier comprises from 1 to 25 mole percent aromatic hydrogen [0025], at least 8 mole percent aromatic hydrogen, or at least 10 mole percent aromatic hydrogen [0026], has Mn from 400 to 2000 [0026], or a number average molecular weight (Mn) greater than about 200 g/mole, or an Mn between about 400 g/mole and 2000 g/mole [0027], and has a glass transition temperature (Tg) of from about -10° C to about 110° C [0030]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 28, Tripathy teaches that the elastomeric composition comprises 100 phr of elastomer(s), and from 5 to 50 phr of the hydrocarbon polymer modifier(s) [0014], which reads on wherein a content of the hydrocarbon resin is within a range extending from 5 to 50 phr, which reads on the claimed range.
Regarding claims 29 and 30, Tripathy teaches that the elastomer is optionally polybutadiene rubber, polyisoprene rubber, isoprene-butadiene rubber, styrene-isoprene-butadiene rubber, styrene-butadiene rubber, or natural rubber [0036]. Since these species of elastomers read on the species of elastomers recited in the specification of the instant application [0051], Tripathy’s teachings optionally read on wherein the elastomer predominantly comprises an elastomer having a glass transition temperature Tg of less than -40°C as claimed, wherein the elastomer predominantly comprises an elastomer selected from the group consisting of essentially unsaturated diene elastomers as claimed.
Tripathy does not teach a specific embodiment wherein the elastomer predominantly comprises an elastomer having a glass transition temperature Tg of less than -40°C, wherein the elastomer predominantly comprises an elastomer selected from the group consisting of essentially unsaturated diene elastomers. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Tripathy’s elastomer to be Tripathy’s polybutadiene rubber, polyisoprene rubber, isoprene-butadiene rubber, styrene-isoprene-butadiene rubber, styrene-butadiene rubber, or natural rubber. The proposed modification would read on wherein the elastomer predominantly comprises an elastomer having a glass transition temperature Tg of less than -40°C as claimed, wherein the elastomer predominantly comprises an elastomer selected from the group consisting of essentially unsaturated diene elastomers as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of elastomer that is suitable for Tripathy’s elastomeric composition and/or because it would have been obvious to try with a reasonable expectation of success because Tripathy teaches that the elastomer is optionally polybutadiene rubber, polyisoprene rubber, isoprene-butadiene rubber, styrene-isoprene-butadiene rubber, styrene-butadiene rubber, or natural rubber [0036]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
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 16-20 and 22-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-20 and 22-30 of copending Application No. 18/274,122 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a tire comprising a rubber composition based on at least an elastomer matrix comprising from 50 to 100 phr of at least one copolymer of butadiene and of vinylaromatic monomer, having a content of vinylaroamtic units of between 0 and 5% by weight and a Tg within a range extending from -110°C to -70°C, and a hydrocarbon resin, wherein the hydrocarbon resin is based on a cyclic monomer selected from the group consisting of a distillation cut from a petroleum refinery stream, C4, C5, and C6 cyclic olefins, and mixtures thereof, wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 15 wt. %, and wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) 12 mol%≤ H Ar ≤ 19 mol%, (2) Tg ≥ 95 – 2.2 * (H Ar), (3) Tg ≥ -53 + (0.265 * Mn), and (4) 300 g/mol ≤ Mn ≤ 450 g/mol (claim 16), which reads on a tire comprising a rubber composition based on at least an elastomer matrix and a hydrocarbon resin, wherein the hydrocarbon resin is based on a cyclic monomer selected from the group consisting of a distillation cut from a petroleum refinery stream, C4, C5, and C6 cyclic olefins, and mixtures thereof, wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 15 wt. %, and wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) 12 mol%≤ H Ar ≤ 19 mol%, (2) Tg ≥ 95 – 2.2 * (H Ar), (3) Tg ≥ -53 + (0.265 * Mn), and (4) 300 g/mol ≤ Mn ≤ 450 g/mol as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16, 17, 19, 20, and 22-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16, 22-24, 26, and 27 of copending Application No. 17/629,659 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a tire comprising a rubber composition based on at least one elastomer and a hydrocarbon resin, wherein the hydrocarbon resin is based on between 25 wt.% and 80 wt. % of a cyclic monomer selected from the group consisting of cyclopentene, cyclopentadiene, cyclohexene, 1,3-cyclohexadiene, 1,4-cyclohexadiene, methylcyclopentadiene, di(methylcyclopentadiene), and mixtures thereof, between w0 wt. % and 75 wt. % of an aromatic monomer selected from the group consisting of olefin-aromatic compounds, aromatic distillation cuts and mixtures thereof, wherein, when the cyclic monomer comprises methylcyclopentadiene, the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 5 wt. %, wherein the hydrocarbon resin has a content of aromatic protons (H Ar, expressed in mol%), a glass transition temperature (Tg, expressed in °C), an a number average molecular weight (Mn, expressed in g/mol) that are represented by (1) H Ar > 6 mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), and (3) Tg ≥ -53 + (0.265 * Mn) (claim 16), which reads on a tire comprising a rubber composition based on at least an elastomer matrix and a hydrocarbon resin, wherein the hydrocarbon resin is based on a cyclic monomer selected from the group consisting of a distillation cut from a petroleum refinery stream, C4, C5, and C6 cyclic olefins, and mixtures thereof, wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 5 wt. %, and wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) 6 mol%< H Ar mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), (3) Tg ≥ -53 + (0.265 * Mn), and (4) 0 g/mol < Mn.
The copending application does not claim with sufficient specificity that (1) 12 mol%≤H Ar ≤ 19 mol% and (4) 300 g/mol ≤ Mn ≤ 450 g/mol. Before the effective filing date of the claimed invention one of ordinary skill in the art would have found it obvious to select the copending application’s H Ar to be 13.1 mol% ≤ H Ar ≤ 19 mol%. The proposed modification would read on (1) 13.1 mol% ≤ H Ar ≤ 19 mol%, and (4) 401 g/mol ≤ Mn ≤ 450 g/mol as claimed. The Mn is based on the calculations (95 - 2.2 * 13.1 + 53) / 0.265 = 450 and (95 - 2.2 * 19 + 53) / 0.265 = 401. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because the copending application claims that (1) H Ar > 6 mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), and (3) Tg ≥ -53 + (0.265 * Mn) (claim 16). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16, 19, 20, and 22-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 9, and 12-15 of U.S. Patent No. 12,486,385 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a tire comprising a rubber composition based on at least an elastomer matrix comprising from 50 to 100 phr of one or more copolymers of butadiene and of vinylaromatic monomer, having a content of vinylaromatic units of between 0 and 5% by weight and a Tg within a range extending from -110° C to -70° C, and a hydrocarbon resin, wherein the hydrocarbon resin is based on a cyclic monomer selected from the group consisting of a distillation cut from a petroleum refinery stream, C4, C6, and C6 cyclic olefins, and mixtures thereof, and wherein the hydrocarbon resin has a content of aromatic protons (H Ar expressed in mol%), a glass transition temperature (Tg, expressed in ° C), and a number average molecular weight (Mn, expressed in g/mol) that are represented by H Ar > 6 mol% (1), Tg ≥ 95 - 2.2 * (H Ar) (2), and Tg ≥ -53 + (0.265 * Mn) (3) (claim 1), wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 15 wt. % (claim 2), which reads a tire comprising a rubber composition based on at least an elastomer matrix and a hydrocarbon resin, wherein the hydrocarbon resin is based on a cyclic monomer selected from the group consisting of a distillation cut from a petroleum refinery stream, C4, C6, and C6 cyclic olefins, and mixtures thereof, wherein the hydrocarbon comprises methylcyclopentadiene in an amount between 0.1 wt. % and 15 wt. %, and wherein the hydrocarbon resin has a content of aromatic protons H Ar expressed in mol%, a glass transition temperature Tg expressed in °C, and a number average molecular weight Mn expressed in g/mol that are represented by (1) H Ar > 6 mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), (3) Tg ≥ -53 + (0.265 * Mn), and (4) 0 g/mol < Mn.
The patent does not claim with sufficient specificity that (1) 12 mol% ≤ H Ar ≤ 19 mol% and (4) 300 g/mol ≤ Mn ≤ 450 g/mol. Before the effective filing date of the claimed invention one of ordinary skill in the art would have found it obvious to select the patent’s H Ar to be 13.1 mol% ≤ H Ar ≤ 19 mol%. The proposed modification would read on (1) 13.1 mol% ≤ H Ar ≤ 19 mol%, and (4) 401 g/mol ≤ Mn ≤ 450 g/mol as claimed. The Mn is based on the calculations (95 - 2.2 * 13.1 + 53) / 0.265 = 450 and (95 - 2.2 * 19 + 53) / 0.265 = 401. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because the patent claims that (1) H Ar > 6 mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), and (3) Tg ≥ -53 + (0.265 * Mn) (claim 1). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Response to Arguments
Applicant’s arguments, see p. 1-5, filed 05/26/2026, with respect to the rejection(s) of claims 16-20 and 22-30 under 35 U.S.C. 103 as being unpatentable over De Gaudemaris et al. (US 2018/0340055 A1, cited in IDS) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Isitman et al. (US 2020/0283602 A1, cited in IDS) or Tripathy et al. (US 2018/0127527 A1, cited in IDS).
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that no allowable subject matter has yet been identified, and that Applicant will address the double patenting rejections after allowable subject matter is found (p. 1-5), the provisional rejection of claims 16-20 and 22-30 on the ground of nonstatutory double patenting as being unpatentable over claims 16-20 and 22-30 of copending Application No. 18/274,122 (reference application) is maintained. The provisional rejection of claims 16, 17, 19, 20, and 22-30 on the ground of nonstatutory double patenting as being unpatentable over claims 16, 22-24, 26, and 27 of copending Application No. 17/629,659 (reference application) is maintained. The rejection of claims 16, 19, 20, and 22-30 on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 9, and 12-15 of U.S. Patent No. 12,486,385 B2 is maintained.
Correspondence
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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