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 § 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 Unterberg (EP 2604651 A1, hereinafter referring to the attached ESPACENET translation).
Regarding claims 1-20, Unterberg teaches a novel rubber formulation ([0001]), comprising a rubber ([0024]) and an antioxidant such as N,N’-bis-1,4,-(1,4-dimethylpentyl)-p-phenylenediamine (77PD) ([0063]). 77PD reads on the claimed “amine-based antioxidant” because it has an identical structure to the claimed “general formula (1)” wherein “R1” – “R2” are both 1,4-dimethylpentyl groups. These 1,4-dimethylpentyl groups are saturated hydrocarbon groups having 7 carbons, and they therefore also read on the substituents stipulated upon within claims 4, 8, 11, and 17. Unterberg teaches that said antioxidant is included in amounts ranging from 0.1 to 5 phr ([0063]). This range falls just outside of the claimed range of “8 to 11 parts by mass per 100 parts by mass of the rubber component.” However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, on the grounds that prima facie one skilled in the art would have expected them to have the same properties (see MPEP 2144.05.I.). In this case, the prior art and claimed ranges differ by as little as 3 phr of antioxidant. Therefore, prima facie, one having ordinary skill in the art would expect the claimed composition to have the same properties as the composition of Unterberg.
Unterberg further teaches the incorporation of anti-aging agents such as polymerized 2,2,4-trimethyl-1,2-dihydroquinoline (TMQ) ([0062]), in amounts ranging from 0.1 to 5 phr, which encompasses the claimed range of “1.75 to 2.5 parts by mass,” establishing a prima facie case of obviousness. This anti-aging agent likewise reads on the specifically claimed antioxidant within claims 3 and 7.
Unterberg teaches that the rubber within the formulation is preferably a styrene/butadiene rubber or a polyisoprene rubber ([0035]), which reads on list of rubbers within claim 2.
Unterberg further teaches the incorporation of waxes in amounts ranging from 1 to 50 phr ([0066]), which overlaps the claimed ranges within claims 5, 9, 12, 14, 18, and 20, establishing prima facie cases of obviousness.
Unterberg teaches the formation of a tire from the inventive composition ([0094]), and therefore meets the limitations of claims 6, 10, 13, 15, 16, and 19.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed July 18, 2026, with respect to the rejections of the claims under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Unterberg under 35 U.S.C. 103, as described above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
