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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 29 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 29, the examiner suggests amending the phrase “and a content of vinylaromatic units, relative to the diene portion” to read “and a content of vinyl units, relative to the diene portion” – please refer to paragraph [0057] of the specification for support. As written, the limitations do not provide internal consistency for what the polymer can be.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 16-20 and 22-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over De Gaudemaris (CA 3 017 422).
Regarding claims 16-18, 20, 26 and 28, De Gaudemaris teaches a tire ([0001]) comprising a rubber composition based on at least one elastomer comprising from 90 to 100 phr of one or more copolymers of butadiene and vinyl aromatic monomer ([0013]). The content of the vinyl aromatic unit is between 0 and 5 % by weight and the glass transition temperature is from -110 to -80 C ([0013]). De Gaudemaris further teaches that the composition contains a hydrocarbon resin ([0013]) which is based on a cyclic monomer such as cyclopentadiene and methylcyclopentadiene ([0090]) which is a C5 cyclic olefin. De Gaudemaris teaches that the contains of the aromatic protons is less than 50% ([0067]), the Z-average molecular weight is less than 2000 g/mol ([0071]) and has a glass transition temperature such as that Tg ≥ 80-2(HA) ([0072]). These parameters overlap the claimed invention – for example, when HA is 17%, Tg ≥ 57.6 and Mn =417.
De Gaudemaris fails to specifically exemplify the exact rubber composition. However, it clearly discloses each of the components of the composition, and teaches that they are all suitable for use in the tire. It is within the ordinary level of skill in the art to make any of the tire compositions suggested by a reference, including selecting materials from a list in a reference. Therefore, a person of ordinary skill would have been motivated to prepare any of the tire suggested by reference, including the claimed invention. In view of this, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to use the teachings of De Gaudemaris to arrive at the presently claimed invention. It would be nothing more than using known compounds in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. 398, 421, 82 USPQ2d 1385 (2007).
Regarding claim 19, De Gaudemaris teaches that the units of cyclopentadiene are present in the hydrocarbon as the predominate unit ([0088]) and this indicates that this cyclic monomer is present in the resin at greater than 50 % by weight.
Regarding claim 22, De Gaudemaris teaches that the hydrocarbon resin is further based on aromatic monomers ([0089]).
Regarding claim 23, De Gaudemaris teaches that the aromatic monomer is an olefin-aromatic such as a vinyl aromatic compound such as styrene ([0089]).
Regarding claim 24, De Gaudemaris teaches that the aromatic monomer is an aromatic distillation cut (from a C9 fraction) ([0089]).
Regarding claim 25, De Gaudemaris teaches that the aromatic monomer can be a styrene which reads on the claimed formula II. ([0024]).
Regarding claim 27, De Gaudemaris teaches that the hydrocarbon resin is present in the amount from 15 to 150 phr ([0006]).
Regarding claim 29, De Gaudemaris teaches that the copolymer has a content of vinyl aromatic units of 1 to 4 % by weight relative to the total weight of the copolymer and a content of vinyl units ranging from 8 to 15 % by weight ([0032]).
Regarding claim 30, De Gaudemaris teaches that at least 70% by weight of the copolymer is functionalized ([0033]).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over De Gaudemaris (CA 3 017 422) in view Rogers et al (WO 2016/043851)
The discussion regarding De Gaudemaris in paragraph 5 above is incorporated here by reference.
Regarding claim 21, De Gaudemaris teaches that the hydrocarbon resin can contain methylcyclopentadiene ([0091]), however, fails to teach that the hydrocarbon resin is made up of between 0.1 to 15 wt. % methylcyclopentadiene.
Rogers teaches a tire composition with an elastomer that incorporates a hydrocarbon resin (Abstract, [0034]). Rogers teaches that the hydrocarbon resin comprises from 5 to 70 mol % of derived from DCPD ([0035]). Rogers teaches that while the information in paragraph [0035] is directed to DCPD, any polymer comprised of cyclic units are suitable. In paragraph [0036], Rogers teaches that methylcyclopentadiene is a suitable cyclic unit. While this is in mole units, based on the molecular weights of the components, it would overlap the recited weight ranges.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the hydrocarbon resin of De Gaudemaris to have the 5-70% mole of methylcyclopentadiene as taught by Rogers. One would have been motivated to do so in order to receive the expected benefit of using a hydrocarbon resin which provides improved durability along with improved impermeability in a cost-effective manner for use in tire applications (Rogers, [0007])
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.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,485,385. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite a tire comprising the same elastomer matrix and a hydrocarbon resin with the same characteristics.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 26 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 they both recite a tire comprising the same elastomer matrix and a hydrocarbon resin with the same characteristics.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764