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 .
Response to Arguments
Applicant’s amendment to claim 1 excluding 6PPD as the diamine obviated anticipation rejections over Tahara and Ono. Anticipation rejection over Otsubo is maintained.
Applicant’s arguments directed at Tahara are considered moot since the reje4ction is withdrawn.
Applicant’s arguments directed at Ono are also considered moot, since other antioxidants of Ono either contain aromatic ring which is unsaturated and diphenyl amines which will not meet the structure of instant claim 1.
With respect to the teachings of Otsubo applicant’s arguments are not persuasive. MPEP 2131 clearly states in its entirety:
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The above MPEP quotation only states that the elements must be arranged as required by the claim, specifically refers to In re Bond which is directed to remote control feature for the telephone answering machine which is purely mechanical/electrical invention. Not chemical. The composition (or chemical) interpretation of the MPEP is covered by Verdegaal Bros. case law and its description of non-reactive component. Additionally, Brown vs. 3M infringement case which overturned district court’s decision which actually followed the exact arrangement as argued by the applicants. Circuit court approach to the anticipation is that a single prior art reference must disclose all elements.
With that in mind, the examiner would like to draw applicant’s attention to example 5 of Otsubo, specifically Table 2.
Composition of Otsubo discloses using rubber component (component 1 of claim 1), phenylene antioxidant 2, which is 77PD (second component of claim 1 and the same compound as that utilized by the applicants. Component 3 of the instant claim 1 is quinoline based antioxidant. While the example discloses use of quinoline antioxidant in an amount of 1 pbw, as it was mentioned earlier the examples do not teach away from the invention of Otsubo as a whole. The examiner relied on Otsubo [0056], which disclosed quinoline compound in a range of 0.1-10, wherein the most preferred embodiment clearly stated that the amount should be 3 parts by mass or less. It should be further noted that more phenyl diamine and quinoline antioxidants are listed in [0047] and [0050].
The MPEP citation above requires that all the components be taught in a single prior art reference, which is consistent with the way the Federal Circuit court viewed anticipation rejection in the MPEP 2131. The citation further discloses that claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the art.
Otsubo further teaches that overall content of antioxidants is tied to the TGC resistance and wet grip performance of the tire which will be formed from the composition of Otsubo. Overall content of antioxidant is 3 parts by mass; preferred embodiment is at least 8 parts by mass and 18 parts by mass or less [0053]. That includes phenylene diamine content of 8-18 parts by mass [0053], bisphenol 3.6-10 parts by mass [0054] and quinone in an amount of 0.7-3 parts by mass (note, these are the most preferred embodiments). Examples disclosed in Otsubo clearly show that lower content of quinoline compound is preferred. Not higher.
Otsubo additionally provides criticality with respect to the overall antioxidant content. Otsubo states that the minimum content of antioxidant is 3 parts by mass [0045]. Since antioxidant, ozone degrading and oxidative degrading performances are saturated in a residual amount of about 3 parts by mass, the abrasion resistance of a tread and durability do not affect running performance, and it is usually a rare case that 3 parts by mass or more of antioxidant is compounded. The total content of phenylenediamine and quinoline antioxidant is preferably 3 parts by mass or more, with diamine content being always higher by at least factor of 4.
As such the examiner will not only maintain the anticipation rejection, because ranges are clearly disclosed in the Otsubo, but further supplement the rejection with an obviousness rejection also suitable in this case.
Additional reference will be applied to better reflect the combination of diamine component that is not excluded by the amended claim with quinoline antioxidant and rubber to make tire treads.
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.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Otsubo (WO 2020/059673) wherein US 2021/0403684 is used as translation.
With respect to claim 1, Otsubo discloses composition comprising rubber [0134-0135], wax [0149-0150], antioxidant 2: Vulcanox 4030, 77PD which is N,N’-bis(1,4-dimethylbutyl-pentyl)-p-phenylenediamine [0154], quinoline antioxidant NOCRAC 224, TMQ which is a polymer of 2,2,4-trimethyl-1,2-dihydroquinoline [0158]. All other components are encompassed by term “comprising”.
Diamine antioxidant content is 2-10 parts [0054], quinoline antioxidant is 0.1-3 parts [0056], which ranges fully encompass claimed content.
With respect to claim 2, SBR and BR rubbers [0134-0135] meet rubbers of the instant invention.
With respect to claims 3, 7, 2,2,4-trimethyl-1,2-dihyroquinoline is sold under tradname NOCRAC 224 disclosed in the rejection of claim 1 above..
With respect to claims 4, 8, 11, 14 and 17, R1 and R2 of 77PD meets, specifically 1,4-dimethyl-pentyl, meets the definition of R1 and R2 of the instant invention.
With respect to claims 5, 9, 12, 14, 18 and 20, content of wax is in preferably less than 5 parts [0062].
With respect to claims 6, 10, 13, 15, 16 and 19, claims of Otsubo are clearly directed to a tire comprising disclosed composition.
Claims 1-4, 6-8, 10, 11, 13, 15, 17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mohanty (WO 2021/56760) for ease of using paragraphs US 2022/0298335 equivalent will be utilized.
With respect to claims 1 and 6, Mohanty discloses rubber composition, which is utilized for making tire treads the composition comprises rubber (abstract) and blend of antioxidants. The antioxidants include quinoline based antioxidant with is polymerized TMDQ [0205], this antioxidant is also exemplified. Antiozonant is selected from the group of three compounds, one of the three is 77PD also utilized by the applicants [0206].
In [0151] Mohanty teaches that the content of the antioxidants is in a range of 0.5-2 parts based on the amount of rubber. While Mohanty does not explicitly teach ranges for each of the antioxidants, hydroquinone is utilized in 0.75 phr and diamine is utilized in 2 phr, wherein both amounts lie within the claimed range (Table 5).
With respect to claim 2 and 10, the rubber of Mohanty include exemplified SBR (Table 4).
With respect to claims 3, 4, 7, 8, 11, 13, 15, 17, 19, the quinone compound of Mohanty is polymerized 1,2-dihydro-2,2,4-trimethyl quinoline (TMQ) which as mentioned above is exemplified in Table 5.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Otsubo (WO 2020/059673) wherein US 2021/0403684 is used as translation.
With respect to claim 1, Otsubo discloses composition comprising rubber [0134-0135], wax [0149-0150], antioxidant 2: Vulcanox 4030, 77PD which is N,N’-bis(1,4-dimethylbutyl-pentyl)-p-phenylenediamine [0154], quinoline antioxidant NOCRAC 224, TMQ which is a polymer of 2,2,4-trimethyl-1,2-dihydroquinoline [0158]. All other components are encompassed by term “comprising”.
Diamine antioxidant content is 2-10 parts [0054], quinoline antioxidant is 0.1-3 parts [0056], which ranges fully encompass claimed content.
In response to applicant’s arguments directed at the examples showing content of the hydroquinone of 1 phr which is slightly higher than claimed 0.95 phr (upper range), Otsubo clearly and explicitly discloses that ranges lower than 1 phr can be utilized. Otsubo clearly envisaged the lower ranges as suitable for use within the disclosed composition.
It would therefore be obvious to one having ordinary skill in the art at the time instant invention was filed to utilize quinone component in the amount of less than 1phr as disclosed in [0056] and therefore obtain the claimed invention. Such content of quinoline is not viewed as modification per se, because the range of 0.1 phr is clearly envisaged by Otsubo.
(“[I]t is proper to take into account not only specific teachings of the references but also the inference which one skilled in the art would reasonable be expected to draw therefrom …”). The analysis supporting obviousness, however, should be made explicit and should “identify reason that would have prompted a person of ordinary skill in the relevant field to combine elements” in manner claimed. KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1396.
With respect to claim 2, SBR and BR rubbers [0134-0135] meet rubbers of the instant invention.
With respect to claims 3, 7, 2,2,4-trimethyl-1,2-dihyroquinoline is sold under tradname NOCRAC 224 disclosed in the rejection of claim 1 above..
With respect to claims 4, 8, 11, 14 and 17, R1 and R2 of 77PD meets, specifically 1,4-dimethyl-pentyl, meets the definition of R1 and R2 of the instant invention.
With respect to claims 5, 9, 12, 14, 18 and 20, content of wax is in preferably less than 5 parts [0062].
With respect to claims 6, 10, 13, 15, 16 and 19, claims of Otsubo are clearly directed to a tire comprising disclosed composition.
Claims 5, 9, 12, 14, 16, 18, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mohanty (WO 2021/56760) in view of Miyazaki (US 2014/0202609) or Otsubo as disclosed above. For ease of using paragraphs US 2022/0298335 equivalent will be utilized in lieu of WO reference.
The discussion of teachings of Mohanty from paragraph 2 of this office action is incorporated here by reference.
The difference between instant invention and the teachings of Mohanty is use of wax in an amount of 0.1-5 phr.
Miyazaki discloses another rubber composition, which is utilized for making tires. Composition of Miyazaki also comprises rubber component and a blend of antioxidants. Phenylene diamine antioxidants include 77PD [0066] which is the same as the antioxidant of Mohanty. Diamine is utilized in an amount of 2-10 phr [0069]. Second antioxidant is TMQ which is exemplified and also the same quinoline compound as in the teachings of Mohanty [0071]. TMQ is utilized in a range of 0.6-2.0 parts as preferred embodiment, which also includes 0.85 parts disclosed by Mohanty.
Additional component of Miyazaki is wax. While Miyazaki does not disclose any ranges, the examples have a wax content of 2 parts.
Wax in tire industry is utilized for several reasons each of which is well established in the art. Wax is known as lubricant and processing aid enhancing material flow. Considering .
For these reasons alone, it would have been obvious to one of ordinary skill in the art at the time instant invention was filed, to utilize wax of Miyazaki as lubricant or dispersing aid in the composition of Mohanty and thereby obtain the claimed invention. Such modification is suggested by Mohanty, who teaches addition of processing aids such as lubricants. Wax would be functional equivalent of stearates utilized by Mohanty, wherein equivalency is set forth in Miyazaki.
Alternatively, Otsubo utilized above (see rejection in paragraph 1) discloses use of wax. In Otsubo wax is specifically utilized from its ability to migrate and form a layer on a rubber surface [0004], and as a lubricant [0059-0063]. The preferred content of wax is in a range of 0.12-4 parts [0063].
For these reasons alone, it would have been obvious to one of ordinary skill in the art at the time instant invention was filed, to utilize wax of Otsubo as lubricant or dispersing aid in the composition of Mohanty and thereby obtain the claimed invention. Such modification is suggested by Mohanty, who teaches addition of processing aids such as lubricants. However, wax of Otsubo would be more effective than fatty acid soaps of Mohanty, since one of ordinary skill in the art can tailor the melting point of wax. Melting temperature higher than 50oC prevents early blooming and consumption of wax in a short time. Otsubo further teaches that wax with melt temperature of about 90oC also contributes to ozone resistance [0063].
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 September 22, 2026
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