DETAILED ACTION
Applicant’s reply, filed 30 June 2026 in response to the non-final Office action mailed 7 April 2026, has been fully considered. As per Applicant’s filed claim amendments claims 1-9 are pending, wherein: claims 1-2 have been amended, claims 3-8 are as previously presented, and claim 9 is new.
Claim Rejections - 35 USC § 112(d)
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 3 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. As-amended claim 1 now contains the entire recitation found in dependent claim 3. As such, claim 3 fails to further limit the subject matter of the claim upon which it depends. 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 6 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. As-amended claim 1, from which claim 6 ultimately depends, now contains the entire recitation found in dependent claim 6. As such, claim 6 fails to further limit the subject matter of the claim upon which it depends. 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
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Morishita et al. (US PGPub 2019/0194430) in view of Tomida et al. (US PGPub 2018/0111424).
Regarding claims 1, 3 and 6, Morishita teaches rubber compositions, suitable for tires ([0001]; [0012]; [0059]), comprising a modified conjugated diene-based polymer, silica filler, a crosslinking agent, a further rubber component, and various optional additives ([0010]; [0054]; [0056]). Morishita teaches the further rubber component includes isoprene rubber ([0054])(instant isoprene-based rubber) in an amount of 60 mass% or less of the combination of modified conjugated diene-based rubber plus the further rubber (see [0054]: meaning the modified conjugated diene-based rubber would then be the remainder, i.e. 60 mass% or more, of the combination; readable over instant rubber component being 30-70 mass% isoprene and 30-70 mass% modified conjugated diene-based rubber).
Morishita further teaches the silica filler component may also include other reinforcing fillers if desired ([0052])(instant filler containing at least silica), specifically carbon black ([0052]). Morishita teaches it is preferred to use a combination of silica and carbon black for a total amount of 20 to 130 parts by mass, per 100 parts polymer components ([0052]), and exemplifies use of 70 parts silica to 5.6 parts carbon black (see Table 4).
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 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])(where 3-55 mass% overlaps with and renders taught 10 mass% or less).
Morishita teaches that various additives generally used for tires can be further included ([0056]) but does not specifically teach 5 parts by more of a thermoplastic resin with respect to 100 parts rubber. However, Tomida teaches tires which are formed from a rubber composition comprising a rubber component A, which comprises a diene-based rubber, and at least one additive component B selected from thermoplastic resins, wherein the component B is present from 5 to 50 parts by mass per 100 parts rubber ([0017]; [0067]-[0071]). Tomida teaches that thermoplastic resins, as additive B, are present for the purpose of improving braking performance on dry road surfaces and on wet road surfaces more securely by raising the loss tangent ([0018]; [0070]-[0071]; [0075]). Tomida 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 thermoplastic additives of Tomida 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 Tomida teaches that including a thermoplastic resin as an additive in a diene-based rubber tire composition is advantageous for improving braking performance on dry and we road surfaces.
Regarding claim 2, Morishita in view of Tomida 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 4 and 7-8, Morishita in view of Tomida renders obvious the rubber compositions as set forth in claims 1-3 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 claim 5, Morishita in view of Tomida renders obvious the rubber composition as set forth in claim 1 above. Morishita, as noted, teaches producing tires from the composition ([0059]).
Regarding claim 9, Morishita in view of Tomida renders obvious the rubber composition as set forth in claim 1 above. Morishita teaches it is preferred to use a combination of silica and carbon black for a total amount of 20 to 130 parts by mass, per 100 parts polymer components ([0052]), and exemplifies use of 70 parts silica to 5.6 parts carbon black (see Table 4; = a ratio of carbon black to silica of 0.08 falling within and rendering taught the instant ratio of 0.05 to 1.2 carbon black to silica).
Response to Arguments/Amendments
The objection to claim 2 is withdrawn as a result of Applicant’s filed claim amendment.
The 35 U.S.C. 103 rejection of claims 1-8 as unpatentable over Morishita (US PGPub 2019/0194430) in view of Tomida (US PGPub 2018/0111424) is maintained. Applicant’s arguments (Remarks, pages 7-9) have been fully considered but were not found persuasive.
Applicant argues that Morishita does not teach either i) isoprene-based rubber as an essential component or ii) content of isoprene-based rubber being 30 to 70 mass%. Applicant admits that isoprene rubber is in fact taught by Morishita as an additional rubber component that may be present but argues that while Morishita may teach isoprene rubber such is one of “many” optional alternatives and asserts there is no teaching that would lead one of ordinary skill to select isoprene-based rubber. This argument is not persuasive. Applicant cannot fairly conclude that a component expressly taught by Morishita as suitable to be selected would not be obvious to one of ordinary skill in the art to so-select. Isoprene rubber is taught by Morishita as a suitable additional rubber component that may be present, therefore Morishita teaches isoprene rubber and meets the instant claim. The list of additional rubbers by Morishita is not exhaustive nor is the list particularly long, rather Morishita teaches a finite, small list of six rubbers which may be selected from which does not rise to the level of being ‘a significant technical hurdle’. Furthermore, Morishita teaches that the so-selected additional rubber component is present in an amount of 60 mass% or less of the combination of the modified conjugated diene-based rubber plus further rubber ([0054]), which one of ordinary skill in the art would understand to mean the remainder (i.e. 60 mass% or more) of the rubber combination would be the modified conjugated diene-based rubber.
Applicant also argues that the rejection as set forth does not render obvious:
(i) the silica content of 30 to 120 parts by mass, which is not persuasive as Morishita teaches the total combined amount of silica filler and carbon black reinforcing filler is 20 to 130 parts by mass ([0052]) and exemplifies 70 parts silica to 5.6 parts carbon black (see Table 4);
(ii) the proportion of aromatic vinyl units in the conjugated diene-based polymer being 10 mass% or less, which is not persuasive as this limitation was met in the above maintained rejection where the Examiner noted Morishita teaches the aromatic vinyl compound is present in the copolymer in an amount of 3-55% by mass ([0019])(where 3-55 mass% overlaps with and renders taught 10 mass% or less); and
(iii) the filler containing 0.5 to 15 parts by mass carbon black, which is not persuasive as noted in response to (i) above.
Applicant argues that the objective of the secondary reference of Tomida is ‘fundamentally different’ from the objective of the instant invention as Tomida is concerned with braking performance on dry and wet road surfaces while the instant invention is concerned with improving on-ice performance. This argument lacks merit. Tomida is concerned with tire braking, driving performance, and steering stability on dry road surfaces, wet road surfaces, and on slippery surfaces, icy road surfaces and snowy road surfaces ([0002]; [0006]-[0008]). The instant application states objectives including: on-ice performance and steering stability (instant original specification [0010]). The objectives of Tomida and the instant invention are in no way fundamentally different by any reasonable analysis. Tomida is analogous art to the instant invention and further is analogous to the primary reference of Morishita (see above rejection).
Applicant argues the formulation of Tomida is ‘significantly different’ from the composition of Morishita. This is not persuasive. Firstly, Tomida teaches that it is known to include thermoplastic resins into a diene-rubber based tire composition and further it is known to do so for the express purpose of improving braking performance (see rejection; [0017]-[0018; [0067]-[0071]; [0075]). Secondly, it is noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the primary reference of Morishita invites inclusion of various additives in their appropriate blending ratio ([0056]) and the secondary reference of Tomida teaches inclusion of 5 to 50 parts of thermoplastic resin into a diene-based rubber tire compositions is advantageous as such will improve braking performance on a plurality of road surfaces (see rejection). One of ordinary skill in the art having been appraised of the teachings of Morishita to include further modifying additives would have found it obvious to look to the teachings of Tomida for such a teaching and arrive at the instant invention with a reasonable expectation of success.
Applicant again repeats the argument that the proportion of aromatic vinyl units being 10 mass% or less of the conjugated diene-based polymer is not met by the cited references. This argument has been addressed above and the limitation can be readily found in Morishita.
Conclusion
THIS ACTION IS MADE FINAL. 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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