DETAILED ACTION
Applicant’s reply, filed 24 June 2026 in response to the non-final Office action mailed 8 April 2026, has been fully considered. As per Applicant’s filed claim amendments claims 1-21 are pending, wherein: claims 1-5 and 7-20 are as previously presented, claim 6 has been amended, and claim 21 is new.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Morishita et al. (US PGPub 2019/0194430) in view of Nakagawa et al. (US PGPub 2006/0167160).
Regarding claim 1, Morishita teaches rubber compositions, suitable for tires ([0001]; [0012]; [0059]), comprising a modified conjugated diene-based polymer, silica filler, a crosslinking agent, an optional further rubber component, and various optional additives ([0010]; [0054]; [0056]). Morishita teaches the silica filler component may also include other reinforcing fillers if desired ([0052])(instant filler; instant contains silica).
Morishita further teaches the modified conjugated diene-based polymer component is a reaction product between a conjugated diene-based polymer having an active chain end and a compound [M] having two or more groups selected from “-C(R1)=N-A1” and “-N=C(R1)-A1”, where R1 is a hydrogen or hydrocarbyl group and A1 is a monovalent group having an alkoxysilyl group ([0008]; [0015]; [0033] see Formula (1))(instant modified conjugated diene-based polymer).
Morishita teaches that various additives generally used for tires can be further included ([0056]) but does not specifically teach a hydrogenated resin having a softening point of more than 110 °C and a polystyrene equivalent weight-average molecular weight of 200 g/mol to 1,200 g/mol. However, Nakagawa teaches rubber compositions suitable for producing tires (abstract; [0001]), wherein the rubber composition comprises a liquid resin component (C) selected for the purpose of providing tackiness to the rubber composition (abstract; [0009]; [0043]). Nakagawa teaches the liquid resin component (C) has a weight-average molecular weight of several hundreds to several thousands ([0043]), preferably 1,000 to 5,000 ([0042]), and a softening point of 200°C or lower, preferably 90-120°C ([0068]). Nakagawa teaches the liquid resin component (C) is selected from petroleum-based resins, phenol-based resins, natural rosin based-resins, natural terpene-based resins, etc. ([0044]) including petroleum and natural based resins which are preferably hydrogenated ([0046]; [0065]).
Nakagawa and Morishita are analogous art and are combinable because they are concerned with the same field of endeavor, namely rubber compositions for tires. At the time of filing a person having ordinary skill in the art would have found it obvious to include the liquid resins of Nakagawa in the composition of Morishita and would have been motivated to do so as Morishita invites the inclusion of generally known additives and further as Nakagawa teaches that including the liquid resins as an additive in a diene-based rubber tire composition is advantageous for providing tackiness to the rubber compositon and therefore excellent road gripping, excellent processibility and decreased dependence on temperature ([0007]; [0043]; [0065]).
Regarding claim 2, Morishita in view of Nakagawa renders obvious the rubber composition as set forth in claim 1 above. Morishita further teaches the modified conjugated diene-based polymer is represented by Formula (3) (=instant formula (3)) where the ‘Z’ of Formula (3) is a group represented by formula (4) (=instant formula (4)) or formula (5) (=instant formula (5)), wherein all variables and definitions taught by Morishita are those claimed ([0048]-[0049]).
Regarding claims 3 and 7, Morishita in view of Nakagawa renders obvious the rubber compositions as set forth in claims 1-2 above. Morishita further teaches the conjugated diene-based polymer is preferably a copolymer of a conjugated diene compound (instant a conjugated diene-based unit) and an aromatic vinyl compound (instant aromatic vinyl unit) ([0016]-[0017]). Morishita teaches the aromatic vinyl compound is present in the copolymer in an amount of 3-55% by mass ([0019]).
Regarding claims 4, 8, 11 and 17, Morishita in view of Nakagawa renders obvious the rubber compositions as set forth in claims 1-3 and 7 above. Morishita further teaches the peak top molecular weight at a peak having the smallest molecular weight, as measured by GPC, is preferably in the range of 5.0x104 to 1.0x106 ([0046]).
Regarding claims 5, 9, 12, 14, 18 and 20, Morishita in view of Nakagawa renders obvious the rubber compositions as set forth in claims 1-4 and 7-8 above. As noted above Nakagawa teaches the liquid resin component (C) is selected from petroleum-based resins, including petroleum resins which are preferably hydrogenated ([0046]; [0065]), wherein the petroleum-based resins include C5- and C5/C9-based copolymers ([0045]-[0048]; [0064]).
Regarding claims 6, 10, 13, 15-16 and 19, Morishita in view of Nakagawa renders obvious the rubber compositions as set forth in claims 1-5 and 7 above. Morishita, as noted, teaches producing tires from the composition ([0059]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Morishita et al. (US PGPub 2019/0194430) in view of Nakagawa et al. (US PGPub 2006/0167160) and further in view of Yokoyama et al. (US PGPub 2017/0305192).
Morishita in view of Nakagawa render obvious the rubber composition as set forth in claim 1 above. Morishita further expressly invites the inclusion of additional/conventional additives including silane coupling agents ([0056]), which Morishita exemplifies with Si75 by Evonik (Table 4, silane coupling agent *5). Morishita does not specifically teach 3-[ethoxybis(3,6,9,12,15-pentaoxaoctacosane-1-yloxy)silyl]-1-propanethiol (trade name “Si 363” produced by Evonik; instant original specification, pg25 [0077]). However, Yokoyama teaches that rubber compositions for tires which comprise silica filler should preferably also contain a silane coupling agent to prevent processability from deteriorating ([0149]) and teaches known agents ([0150]-[0202]). Yokoyama further teaches that agents having the trade names of Si75 and Si363, manufactured by Evonik, are known, equivalent, and suitable representative silane coupling agents ([0204]). Yokoyama and Morishita are analogous art and are combinable because they are concerned with the same field of endeavor, namely rubber compositions for tires comprising silica filler and silane coupling agents. In view of the recognition by Yokoyama that Si75 and Si363 are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute the Si75 of Morishita with Si363 and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
Response to Arguments/Amendments
The 35 U.S.C. 103 rejection of claims 1-20 as unpatentable over Morishita (US PGPub 2019/0194430) in view of Nakagawa (US PGPub 2006/0167160) is maintained. Applicant’s arguments (Remarks, pages 7-9) have been fully considered but were not found persuasive.
Applicant argues that comparing Example 1 and Comparative Example 1 of the secondary reference of Nakagawa demonstrates that hysteresis loss (tan δ) increase “when resins are added” (it is assumed Applicant is referring to the component C) of Nakagawa reading on instant ‘hydrogenated resins’). It is noted that the hysteresis loss property of Nakagawa (see [0093]) is a index value, similar to the low loss property discussed in the instant specification (pg31 [0102]), where a value is expressed in relation to a control value set to 100, and where a larger index value corresponds to a better loss property. In the case of Nakagawa, Comparative Example 1 is the control example whose loss property is set to 100, while Example 1 is an inventive example having a loss property of 120 i.e. a better loss property (see also Examples 2-24 each containing a C) resin and each having a better loss property as compared to the Comparative Example which does not contain the C) resin. From the teaching of Nakagawa, one having ordinary skill in the art would recognize that including a C) resin is advantageous not just for improved hysteresis loss, but also for the improved tackiness, road gripping and processability properties Nakagawa expressly teaches are obtained by its inclusion.
Applicant argues that Morishita “aims to improve low heat build-up” and concludes that one would not combine Nakagawa with Morishita because of the noted aim. Morishita has multiple objectives including low heat build-up (rolling resistance) as well as processability, shape stability, and abrasion resistance ([0006]). None of the stated aims of Morishita teach away from, or otherwise discourage or exclude, the inclusion of the C) resins of Nakagawa taught to impart excellent road gripping without being reliant on temperature, as well as improved processability ([0007]).
Applicant argues that comparison of instant Comparative Example 1 (using polymer A) and Example 1 demonstrates that ‘when’ a rubber composition comprises (ii) a hydrogenated resin along with (i) a modified conjugated diene-based polymer as specified, the low loss property ‘improves by 23%’. Applicant misinterprets the data. Table 1 contains a comparative example 1 and an example 1. Comparative Example 1 contains “modified conjugated diene-based polymer A*2” while Example 1 contains “modified conjugated diene-based polymer B*3” and both examples contain the hydrogenated resin (*8). The comparison of Table 1 is demonstrating the difference between modified conjugated diene-based polymers (A*2 vs B*3) and NOT the difference between a composition comprising a hydrogenated resin vs one that does not and the allegedly improved low loss property cannot be fairly or reasonably attributed to the presence of the hydrogenated resin (absent further examples).
Applicant argues that the primary reference of Morishita demonstrates by example that ‘when the rubber composition does not comprise (ii) a hydrogenated resin…even when a rubber composition comprises (i) the modified conjugated diene-based polymer’, the rolling resistance improves by “a maximum of only about 8%”. Firstly, the primary reference of Morishita was not relied upon to teach a hydrogenated resin (see secondary reference of Nakagawa) and Applicant cannot derive therefrom any conclusions by Morishita regarding hydrogenated resins nor can Applicant conclude that rolling resistance cannot be further improved (i.e. Morishita does not teach a maximum of 8% improvement). Secondly, Applicant is comparing Comparative Example 1 of Morishita (asserted to correspond to instant Comparative Example 1 with respect to the modifying agent used to modify the conjugated diene-based polymer) to Example 6 of Morishita in asserting that when no hydrogenated resin is present the rolling resistance only improves by about 8%. In the examples Morishita is demonstrating that the selection of the modifying agent for modifying a conjugated diene-based polymer is important to obtain desired property objectives and, much like the instant Applicant, utilizes a comparative based on N,N-bis(trimethylsilyl) aminopropyl methyldiethoxysilane. As such, Morishita is demonstrating only that modifying with a compound [M] (reading on instant [M]) will result in better properties than other modifiers including N,N-bis(trimethylsilyl) aminopropyl methyldiethoxysilane (as well as comparisons to modifier 2, modifier 3, and SiCl4, where rolling resistance comparatives of far greater than 8% can be found, depending on the modifier).
Applicant argues that ‘when the (ii) hydrogenated resins are included the loss property is significantly improved by incorporating (i) the modified conjugated diene-based polymer, as compared to when (ii) the hydrogenated resin is not included’. Again, both the instant Comparative Example 1 and the instant Example 1 contain the hydrogenated resin (same resin, same amount), and the instant specification contains no examples demonstrating the low loss property of an example without the hydrogenated resin (or different resins, different amounts). The primary reference of Morishita teaches improved properties, including processability and rolling resistance, are obtained when using a modified conjugated diene-based polymer as described (instant modified conjugated diene-based polymer). The secondary reference of Nakagawa teaches that inclusion of C) liquid hydrogenated resins into rubber compositions for tires will result in excellent processability and excellent road gripping regardless of temperature. At the time of filing a person having ordinary skill in the art having been appraised of the teachings of Morishita regarding improving processability would have found it obvious to look to the teachings of Nakagawa for further improvement in processability, as well as excellent road grip, and arrive at the instant invention with a reasonable expectation of success.
Applicant is reminded that the rejection under 35 U.S.C. 103 is based upon a combination of references and that the reason or motivation to modify the prior art reference(s) may often suggest what the inventor has done, but for a different purpose or to solve a different problem. Furthermore, it is noted that it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. The motivation question arises in the context of the general problem confronting the inventor, rather than the specific problem solved by the invention (see In re Kahn, 441 F.3d 977, 987, 78 USPQ 2d 1329, 1336 (Fed. Cir. 2006); see also Cross Med. Prods., Inc. v. Medtronic Sofamore Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) one of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings; see also In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990); MPEP 2144 and 2141.01).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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