DETAILED ACTION
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 § 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 16-30 are rejected under 35 U.S.C. 103 as being unpatentable over De Gaudemaris et al. (US 2018/0340055 A1, cited in IDS).
Regarding claims 16, 20, and 28, De Gaudemaris teaches a tire comprising a rubber composition ([0011], De Gaudemaris claim 57), wherein the rubber composition is based on at least one elastomer and an optionally hydrogenated hydrocarbon-based resin, predominantly composed of units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof, said hydrocarbon-based resin having an average molecular weight Mz of less than 2000 g/mol and a glass transition temperature Tg, expressed in ° C, such that Tg≥80-2*(% HA), wherein % HA represents the content of aromatic protons of said resin, the content of said hydrocarbon-based resin is within a range extending from 15 to 150 phr ([0006], De Gaudemaris claim 24), wherein the resin has a content of aromatic protons of less than 50% ([0007], De Gaudemaris claim 29), wherein the Mn of the hydrocarbon-based resin is determined by size exclusion chromatography (SEC) on the basis of standards ISO 16014 [0067], wherein the equipment used for the SEC measurement is liquid chromatography system, comprising 4 columns mounted in series in the following order: columns 1 and 2 have a range of molar masses of 200-400000 g/mol, and columns 3 and 4 have a range of molar mass of 200-30000 g/mol [0079], wherein the number-average molar mass (Mn) of the resin analyzed is calculated from a calibration curve [0076], wherein reference is made to molar masses relative to a polystyrene calibration [0076], wherein the polystyrene standards are [0071] black vial is Wp=1220, 4850, 15,500, and 67,500 g/mol [0072], blue vial is Wp=376, 3470, 10,400, and 46,000 g/mol [0073], yellow vial is Wp=266, 1920, 7200, and 28,000 g/mol [0074], and PS162 is Wp=162 g/mol [0075], which means De Gaudemaris’s hydrocarbon resin has a number average molecular weight within a range of 200 to 400,000 g/mol or within 162 to 67,500 g/mol. De Gaudemaris’s teachings therefore read on a tire comprising a rubber composition based on at least an elastomer and a hydrocarbon resin, wherein the hydrocarbon resin is based on a cyclic monomer selected from C5 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 (1) H Ar < 50 mol%, optionally (2) Tg ≥ 95 – 2.2 * (H Ar), optionally (3) Tg ≥ -53 + (0.265 * Mn), and (4) 200 g/mol ≤ Mn ≤ 4,00,000 g/mol or 162 g/mol ≤ Mn ≤ 67,500 g/mol, wherein the cyclic monomer is selected from cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof, wherein a content of the hydrocarbon resin is within a range extending from 15 to 150 phr. The Tg is based on the calculations 80-2 * 12 = 56, 95 – 2.2 * 12 = 68.6, 80-2 * 19 = 42, 95 – 2.2 * 19 = 53.2, -53 + (0.265 * 300) = 26.5, and -53 + (0.265 * 450) = 66.25.
De Gaudemaris does not teach with sufficient specificity that (1) 12 mol%≤H Ar ≤ 19 mol%. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the content of aromatic protons in De Gaudemaris’s hydrocarbon-based resin to be from 12% to 19% by moles. The proposed modification would read on (1) 12 mol%≤H Ar ≤ 19 mol% as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing the glass transition temperature of De Gaudemaris’s hydrocarbon-based resin because De Gaudemaris teaches that the resin has a content of aromatic protons of less than 50%, within a range extending from 0% to 20%, or from 0% to 15% ([0007], [0059], De Gaudemaris claim 29), that the hydrocarbon-based resin has a content of aromatic protons within a range extending from 3% to 15% [0007, 0061], and that said hydrocarbon-based resin has a glass transition temperature Tg, expressed in ° C, such that Tg≥80-2*(% HA), wherein % HA represents the content of aromatic protons of said resin ([0006], De Gaudemaris claim 24), which means that the content of aromatic protons in De Gaudemaris’s hydrocarbon-based resin in % by moles would have affected the glass transition temperature of De Gaudemaris’s hydrocarbon-based resin, and which means that De Gaudemaris desires a high glass transition temperature for the hydrocarbon-based resin.
De Gaudemaris does not teach a specific embodiment in which (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 optimize the number-average molar mass (Mn) of De Gaudemaris’s hydrocarbon-based resin to be from 300 g/mol to 450 g/mol. The proposed modification would read on (4) 300 g/mol ≤ Mn ≤ 450 g/mol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an ability of De Gaudemaris’s hydrocarbon-based resin to have an average molecular weight Mz of less than 2000 g/mol because De Gaudemaris teaches that said hydrocarbon-based resin having an average molecular weight Mz of less than 2000 g/mol ([0006], that the Mn of the hydrocarbon-based resin is determined by size exclusion chromatography (SEC) on the basis of standards ISO 16014 [0067], that the equipment used for the SEC measurement is liquid chromatography system, comprising 4 columns mounted in series in the following order: columns 1 and 2 have a range of molar masses of 200-400000 g/mol, and columns 3 and 4 have a range of molar mass of 200-30000 g/mol [0079], that the number-average molar mass (Mn) and the Mz of the resin analyzed is calculated from a calibration curve [0076], that reference is made to molar masses relative to a polystyrene calibration [0076], that the polystyrene standards are [0071] black vial is Wp=1220, 4850, 15,500, and 67,500 g/mol [0072], blue vial is Wp=376, 3470, 10,400, and 46,000 g/mol [0073], yellow vial is Wp=266, 1920, 7200, and 28,000 g/mol [0074], and PS162 is Wp=162 g/mol [0075], and that Mn and Mz are calculated according to the following formulae:
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[0078], which means that the number-average molar mass (Mn) of De Gaudemaris’s hydrocarbon-based resin in g/mol would have affected an ability of De Gaudemaris’s hydrocarbon-based resin to have an average molecular weight Mz of less than 2000 g/mol.
De Gaudemaris does not teach a specific embodiment in which (2) Tg ≥ 95 – 2.2 * (H Ar), and (3) Tg ≥ -53 + (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 optimize the glass transition Tg of De Gaudemaris’s hydrocarbon-based resin to be greater than or equal to 68.6 ° C. The proposed modification would read on (2) Tg ≥ 95 – 2.2 * (H Ar), and (3) Tg ≥ -53 + (0.265 * Mn) as claimed. The Tg is based on the calculations 80-2 * 12 = 56, 95 – 2.2 * 12 = 68.6, 80-2 * 19 = 42, 95 – 2.2 * 19 = 53.2, -53 + (0.265 * 300) = 26.5, 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 optimizing an ability of De Gaudemaris’s rubber composition to be manufactured in a first phase of thermomechanical working or kneading at high temperatures, up to a maximum temperature of between 110° C and 200° C, followed by a second phase of mechanical working at lower temperature, typically below 110° C because De Gaudemaris teaches that said hydrocarbon-based resin has a glass transition temperature Tg, expressed in ° C, such that Tg≥80-2*(% HA), wherein % HA represents the content of aromatic protons of said resin ([0006], [0064], De Gaudemaris claim 24), or that said hydrocarbon-base resin has a glass transition temperature Tg, expressed in ° C, such that Tg≥85-2*(% HA) [0007, 0064], that the resin has a content of aromatic protons of less than 50%, within a range extending from 0% to 20%, or from 0% to 15% ([0007], [0059], De Gaudemaris claim 29), that the hydrocarbon-based resin has a content of aromatic protons within a range extending from 3% to 15% [0007, 0061], that the elastomer predominantly comprises an elastomer having a glass transition temperature Tg of less than -70° C [0008, 0028], and that the composition is manufactured in a first phase of thermomechanical working or kneading at high temperatures, up to a maximum temperature of between 110° C and 200° C, followed by a second phase of mechanical working at lower temperature, typically below 110° C, during which finishing phase the crosslinking or vulcanization system is incorporated [0093], which means that the glass transition Tg of De Gaudemaris’s hydrocarbon-based resin in ° C would have affected an ability of De Gaudemaris’s rubber composition to be manufactured in a first phase of thermomechanical working or kneading at high temperatures, up to a maximum temperature of between 110° C and 200° C, followed by a second phase of mechanical working at lower temperature, typically below 110° C.
Regarding claim 17, De Gaudemaris teaches that said hydrocarbon-based resin has a glass transition temperature Tg, expressed in ° C, such that Tg≥80-2*(% HA), wherein % HA represents the content of aromatic protons of said resin ([0006], De Gaudemaris claim 24), wherein the resin has a content of aromatic protons of less than 50% ([0007]. The proposed modification would read on wherein the transition temperature Tg is greater than -20 °C The Tg is based on the calculation 80-2*50 = -20.
De Gaudemaris 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 optimize the glass transition Tg of De Gaudemaris’s hydrocarbon-based 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 optimizing an ability of De Gaudemaris’s rubber composition to be manufactured in a first phase of thermomechanical working or kneading at high temperatures, up to a maximum temperature of between 110° C and 200° C, followed by a second phase of mechanical working at lower temperature, typically below 110° C because De Gaudemaris teaches that said hydrocarbon-based resin has a glass transition temperature Tg, expressed in ° C, such that Tg≥80-2*(% HA), wherein % HA represents the content of aromatic protons of said resin ([0006], [0064], De Gaudemaris claim 24), or that said hydrocarbon-base resin has a glass transition temperature Tg, expressed in ° C, such that Tg≥85-2*(% HA) [0007, 0064], that the resin has a content of aromatic protons of less than 50%, within a range extending from 0% to 20%, or from 0% to 15% ([0007], [0059], De Gaudemaris claim 29), that the hydrocarbon-based resin has a content of aromatic protons within a range extending from 3% to 15% [0007, 0061], that the elastomer predominantly comprises an elastomer having a glass transition temperature Tg of less than -70° C [0008, 0028], and that the composition is manufactured in a first phase of thermomechanical working or kneading at high temperatures, up to a maximum temperature of between 110° C and 200° C, followed by a second phase of mechanical working at lower temperature, typically below 110° C, during which finishing phase the crosslinking or vulcanization system is incorporated [0093], which means that the glass transition Tg of De Gaudemaris’s hydrocarbon-based resin in ° C would have affected an ability of De Gaudemaris’s rubber composition to be manufactured in a first phase of thermomechanical working or kneading at high temperatures, up to a maximum temperature of between 110° C and 200° C, followed by a second phase of mechanical working at lower temperature, typically below 110° C.
Regarding claim 18, De Gaudemaris teaches that said hydrocarbon-based resin having an average molecular weight Mz of less than 2000 g/mol ([0006], [0063], De Gaudemaris claim 24) or less than 1500 g/mol [0007, 0063], which reads on wherein the hydrocarbon resin is further characterized by a Z-average molecular weight Mz of less than 2000 g/mole.
De Gaudemaris 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 the average molecular weight Mz of De Gaudemaris’s hydrocarbon-based resin to be less than 1000 g/mol. 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 obvious to try with a reasonable expectation of success because De Gaudemaris teaches that said hydrocarbon-based resin having an average molecular weight Mz of less than 2000 g/mol ([0006], [0063], De Gaudemaris claim 24) or less than 1500 g/mol [0007, 0063]. 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, De Gaudemaris teaches that the hydrocarbon-based resin is predominantly composed of units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof [0006, 0058, 0084], and that the resin may comprise, in addition to these units and in a minor amount, aliphatic or aromatic units or else units of aliphatic/aromatic type, that is to say based on aliphatic and/or aromatic monomers [0084], which reads on wherein the hydrocarbon resin comprises the cyclic monomer in an amount of greater than 50 wt. %, which reads on the claimed range.
Regarding claim 21, De Gaudemaris teaches that the hydrocarbon-based resin is predominantly composed of units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof ([0006], De Gaudemaris claim 24), which suggests selecting a mixture of De Gaudemaris’s methylcyclopentadiene and De Gaudemaris’s cyclopentadiene, dicyclopentadiene, or a mixture thereof as De Gaudemaris’s units of which De Gaudemaris’s hydrocarbon-based resin is predominantly composed, which suggests wherein the hydrocarbon resin comprises greater than 0 wt. % and less than 50 wt. %.
De Gaudemaris does not teach a specific embodiment wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 wt. % and 15 wt. %. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select a mixture of De Gaudemaris’s methylcyclopentadiene and De Gaudemaris’s cyclopentadiene, dicyclopentadiene, or a mixture thereof as De Gaudemaris’s units of which De Gaudemaris’s hydrocarbon-based resin is predominantly composed, and to select the amount of De Gaudemaris’s methylcyclopentadiene in De Gaudemaris’s hydrocarbon-based resin to be between 0.1 wt. % and 15 wt. %. The proposed modification would read on wherein the hydrocarbon resin comprises methylcyclopentadiene in an amount between 0.1 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 obvious to try with a reasonable expectation of success because De Gaudemaris teaches that the hydrocarbon-based resin is predominantly composed of units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof ([0006], De Gaudemaris claim 24). 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)).
Regarding claim 22, De Gaudemaris teaches that the hydrocarbon-based resin is predominantly composed of units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof [0006, 0058, 0084], and that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], which optionally reads on wherein the hydrocarbon resin is further based on an aromatic monomer as claimed.
De Gaudemaris does not teach a specific embodiment wherein the hydrocarbon resin is further based on an aromatic monomer. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use De Gaudemaris’s units based on aromatic monomers to modify De Gaudemaris’s hydrocarbon-based resin in a minor amount. The proposed modification would read on wherein the hydrocarbon resin is further based on an aromatic monomer as claimed. One of ordinary skill in the art would have been motivated to do so because De Gaudemaris teaches that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], which would have been beneficial for modifying mechanical properties of De Gaudemaris’s rubber composition because aromatic monomers have aromatic rings, which are more rigid and less flexible than units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof, which are cycloaliphatic, and which therefore would provide mechanical properties that are different to some extent from those of units that are less rigid and more flexible.
Regarding claim 23, De Gaudemaris teaches that the hydrocarbon-based resin is predominantly composed of units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof [0006, 0058, 0084], that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], that suitable as aromatic monomers are, for example, styrene, α-methylstyrene, ortho-, meta-, or para-methylstyrene, vinylmesitylene, or indene [0085], which optionally reads on wherein the aromatic monomer is selected from olefin-aromatic compounds, aromatic distillation cuts, and mixtures thereof as claimed.
De Gaudemaris 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. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use De Gaudemaris’s units based on aromatic monomers that are styrene, α-methylstyrene, ortho-, meta-, or para-methylstyrene, vinylmesitylene, indene, or a combination thereof to modify De Gaudemaris’s hydrocarbon-based resin in a minor amount. The proposed modification would read on wherein the aromatic monomer is selected from olefin-aromatic compounds, aromatic distillation cuts, and mixtures thereof as claimed. One of ordinary skill in the art would have been motivated to do so because De Gaudemaris teaches that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], and that suitable as aromatic monomers are, for example, styrene, α-methylstyrene, ortho-, meta-, or para-methylstyrene, vinylmesitylene, or indene [0085], which would have been beneficial for modifying mechanical properties of De Gaudemaris’s rubber composition because aromatic monomers have aromatic rings, which are more rigid and less flexible than units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof, which are cycloaliphatic, and which therefore would provide mechanical properties that are different to some extent from those of units that are less rigid and more flexible.
Regarding claim 24, De Gaudemaris teaches that the hydrocarbon-based resin is predominantly composed of units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof [0006, 0058, 0084], that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], that suitable as aromatic monomers are, for example, styrene, α-methylstyrene, ortho-, meta-, or para-methylstyrene, or vinylmesitylene [0085], which optionally reads on wherein the aromatic monomer is an aromatic distillation cut as claimed.
De Gaudemaris 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 De Gaudemaris’s units based on aromatic monomers that are styrene, α-methylstyrene, ortho-, meta-, or para-methylstyrene, vinylmesitylene, or a combination thereof to modify De Gaudemaris’s hydrocarbon-based resin in a minor amount. 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 De Gaudemaris teaches that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], and that suitable as aromatic monomers are, for example, styrene, α-methylstyrene, ortho-, meta-, or para-methylstyrene, or vinylmesitylene [0085], which would have been beneficial for modifying mechanical properties of De Gaudemaris’s rubber composition because aromatic monomers have aromatic rings, which are more rigid and less flexible than units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof, which are cycloaliphatic, and which therefore would provide mechanical properties that are different to some extent from those of units that are less rigid and more flexible.
Regarding claim 25, De Gaudemaris teaches that the hydrocarbon-based resin is predominantly composed of units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof [0006, 0058, 0084], that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], that suitable as aromatic monomers are, for example, α-methylstyrene, or indene [0085], which optionally reads on wherein the aromatic monomer comprises an olefin-aromatic compound selected from the group consisting of indene derivatives, vinylaromatic compounds, and mixtures thereof as claimed.
De Gaudemaris does not teach a specific embodiment 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 use De Gaudemaris’s units based on aromatic monomers that are α-methylstyrene, indene, or a combination thereof to modify De Gaudemaris’s hydrocarbon-based resin in a minor amount. The proposed modification would read on wherein the aromatic monomer comprises an olefin-aromatic compound selected from the group consisting of indene derivatives, vinylaromatic compounds, and mixtures thereof as claimed. One of ordinary skill in the art would have been motivated to do so because De Gaudemaris teaches that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], and that suitable as aromatic monomers are, for example, α-methylstyrene, or indene [0085], which would have been beneficial for modifying mechanical properties of De Gaudemaris’s rubber composition because aromatic monomers have aromatic rings, which are more rigid and less flexible than units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof, which are cycloaliphatic, and which therefore would provide mechanical properties that are different to some extent from those of units that are less rigid and more flexible.
Regarding claim 26, De Gaudemaris teaches that the hydrocarbon-based resin is predominantly composed of units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof [0006, 0058, 0084], that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], that suitable as aromatic monomers are, for example, indene [0085], 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 as claimed.
De Gaudemaris does not teach a specific embodiment wherein the aromatic monomer comprises an indene derivative of Formula (I). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use De Gaudemaris’s units based on aromatic monomers that are indene to modify De Gaudemaris’s hydrocarbon-based resin in a minor amount. 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 as claimed. One of ordinary skill in the art would have been motivated to do so because De Gaudemaris teaches that the resin may comprise, in addition to these units and in a minor amount, aromatic units or else units of aromatic type, that is to say based on aromatic monomers [0084], and that suitable as aromatic monomers are, for example, indene [0085], which would have been beneficial for modifying mechanical properties of De Gaudemaris’s rubber composition because aromatic monomers have aromatic rings, which are more rigid and less flexible than units selected from the group consisting of cyclopentadiene, dicyclopentadiene, methylcyclopentadiene, and mixtures thereof, which are cycloaliphatic, and which therefore would provide mechanical properties that are different to some extent from those of units that are less rigid and more flexible.
Regarding claim 27, De Gaudemaris teaches that said hydrocarbon-based resin has an average molecular weight Mz of less than 2000 g/mol and a glass transition temperature Tg, expressed in ° C, such that Tg≥80-2*(% HA), wherein % HA represents the content of aromatic protons of said resin, the content of said hydrocarbon-based resin is within a range extending from 15 to 150 phr ([0006], De Gaudemaris claim 24), that the resin has a content of aromatic protons of less than 50% ([0007], De Gaudemaris claim 29), that the Mn of the hydrocarbon-based resin is determined by size exclusion chromatography (SEC) on the basis of standards ISO 16014 [0067], that the equipment used for the SEC measurement is liquid chromatography system, comprising 4 columns mounted in series in the following order: columns 1 and 2 have a range of molar masses of 200-400000 g/mol, and columns 3 and 4 have a range of molar mass of 200-30000 g/mol [0079], that the number-average molar mass (Mn) of the resin analyzed is calculated from a calibration curve [0076], that reference is made to molar masses relative to a polystyrene calibration [0076], that the polystyrene standards are [0071] black vial is Wp=1220, 4850, 15,500, and 67,500 g/mol [0072], blue vial is Wp=376, 3470, 10,400, and 46,000 g/mol [0073], yellow vial is Wp=266, 1920, 7200, and 28,000 g/mol [0074], and PS162 is Wp=162 g/mol [0075], which means De Gaudemaris’s hydrocarbon resin has a number average molecular weight within a range of 200 to 400,000 g/mol or within 162 to 67,500 g/mol. De Gaudemaris’s teachings therefore read on wherein the hydrocarbon resin has at least one of the following additional features: a number average molecular weight (Mn) of between 200 and 4,000,000 g/mol or between 162 and 67,500 g/mol, optionally a glass transition temperature (Tg) represented by Tg≥ 100 - 2.2 * (H Ar), and optionally a glass transition temperature (Tg) represented by Tg≥ -32 + (0.265 * Mn). The Tg is based on the calculations 80-2 * 12 = 56, 100 – 2.2 * 12 = 73.6, 80-2 * 19 = 42, 100 – 2.2 * 19 = 58.2, -32 + (0.265 * 350) = 60.75, and -32 + (0.265 * 420) = 79.3.
De Gaudemaris does not teach a specific embodiment of a number average molecular weight (Mn) of between 350 and 420 g/mol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the number-average molar mass (Mn) of De Gaudemaris’s hydrocarbon-based resin to be between 350 g/mol and 420 g/mol. The proposed modification would read on a number average molecular weight (Mn) of between 350 and 420 g/mol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an ability of De Gaudemaris’s hydrocarbon-based resin to have an average molecular weight Mz of less than 2000 g/mol because De Gaudemaris teaches that said hydrocarbon-based resin having an average molecular weight Mz of less than 2000 g/mol ([0006], that the Mn of the hydrocarbon-based resin is determined by size exclusion chromatography (SEC) on the basis of standards ISO 16014 [0067], that the equipment used for the SEC measurement is liquid chromatography system, comprising 4 columns mounted in series in the following order: columns 1 and 2 have a range of molar masses of 200-400000 g/mol, and columns 3 and 4 have a range of molar mass of 200-30000 g/mol [0079], that the number-average molar mass (Mn) and the Mz of the resin analyzed is calculated from a calibration curve [0076], that reference is made to molar masses relative to a polystyrene calibration [0076], that the polystyrene standards are [0071] black vial is Wp=1220, 4850, 15,500, and 67,500 g/mol [0072], blue vial is Wp=376, 3470, 10,400, and 46,000 g/mol [0073], yellow vial is Wp=266, 1920, 7200, and 28,000 g/mol [0074], and PS162 is Wp=162 g/mol [0075], and that Mn and Mz are calculated according to the following formulae:
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Greyscale
[0078], which means that the number-average molar mass (Mn) of De Gaudemaris’s hydrocarbon-based resin in g/mol would have affected an ability of De Gaudemaris’s hydrocarbon-based resin to have an average molecular weight Mz of less than 2000 g/mol.
De Gaudemaris does not teach a specific embodiment of 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 optimize the glass transition Tg of De Gaudemaris’s hydrocarbon-based resin to be greater than or equal to 79.3 ° C. The proposed modification would read on 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. The Tg is based on the calculations 80-2 * 12 = 56, 100 – 2.2 * 12 = 73.6, 80-2 * 19 = 42, 100 – 2.2 * 19 = 58.2, -32 + (0.265 * 350) = 60.75, 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 optimizing an ability of De Gaudemaris’s rubber composition to be manufactured in a first phase of thermomechanical working or kneading at high temperatures, up to a maximum temperature of between 110° C and 200° C, followed by a second phase of mechanical working at lower temperature, typically below 110° C because De Gaudemaris teaches that said hydrocarbon-based resin has a glass transition temperature Tg, expressed in ° C, such that Tg≥80-2*(% HA), wherein % HA represents the content of aromatic protons of said resin ([0006], [0064], De Gaudemaris claim 24), or that said hydrocarbon-base resin has a glass transition temperature Tg, expressed in ° C, such that Tg≥85-2*(% HA) [0007, 0064], that the resin has a content of aromatic protons of less than 50%, within a range extending from 0% to 20%, or from 0% to 15% ([0007], [0059], De Gaudemaris claim 29), that the hydrocarbon-based resin has a content of aromatic protons within a range extending from 3% to 15% [0007, 0061], that the elastomer predominantly comprises an elastomer having a glass transition temperature Tg of less than -70° C [0008, 0028], and that the composition is manufactured in a first phase of thermomechanical working or kneading at high temperatures, up to a maximum temperature of between 110° C and 200° C, followed by a second phase of mechanical working at lower temperature, typically below 110° C, during which finishing phase the crosslinking or vulcanization system is incorporated [0093], which means that the glass transition Tg of De Gaudemaris’s hydrocarbon-based resin in ° C would have affected an ability of De Gaudemaris’s rubber composition to be manufactured in a first phase of thermomechanical working or kneading at high temperatures, up to a maximum temperature of between 110° C and 200° C, followed by a second phase of mechanical working at lower temperature, typically below 110° C.
Regarding claim 29. De Gaudemaris teaches that the elastomer predominantly comprises an elastomer having an elastomer having a glass transition temperature Tg of less than -70° C [0008], which reads on wherein the elastomer predominantly comprises an elastomer having a glass transition temperature Tg of less than -70°C as claimed.
Regarding claim 30, De Gaudemaris teaches that the elastomer predominantly comprises an elastomer that is selected from the group consisting of essentially unsaturated diene elastomers [0008], which reads on wherein the elastomer predominantly comprises an elastomer selected from the group consisting of essentially unsaturated diene elastomers as claimed.
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 16-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-30 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 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, 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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16, 17, and 19-30 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 a cyclic monomer selected from the group consisting of cyclopentene, cyclopentadiene, cyclohexene, 1,3-cyclohexadiene, 1,4-cyclohexadiene, methylcyclopentadiene, and mixtures thereof, 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 (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 and 19-30 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 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 (1) H Ar > 6 mol%, (2) Tg ≥ 95 - 2.2 * (H Ar), and (3) Tg ≥ -53 + (0.265 * Mn) (claim 1), which reads (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)).
Correspondence
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/DAVID T KARST/Primary Examiner, Art Unit 1767