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 .
Interview Summary
Applicants’ representative contacted the examiner of record to request supplemental office action. Specifically part of the office action on page 4 was cut off. Additionally, the examiner clarified claims 3 and 7 where the claimed 2,2,4-trimethyl-1,2-dihydroquinone is sold under NOCRAC RD. This will also be clarified in the supplemental office action.
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5-7, 9, 10, 12, 13, 16, 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tahara (US 2019/0225775.
With respect to claim 1, Tahara teaches composition of the instant invention wherein Age resistor*7 6PPD is N-phenyl-N’-(1,3-dimethylbutyl)-p-phenylenediamine; Age resistor*8 TMDQ-1 is (2,2,4-trimethyl-1,2-dihydroquinoline polymer; age resistor*9 TMDQ-2 is 2,2,4-trimethyl-1,2-dihydroquinoline polymer. Both dihydroquinoline compounds include dimer and trimers which constitute polymer according to applicant’s own definition in the specification as originally filed.
In Examples 1-3 (Table 1) composition includes Styrene-butadiene rubber, natural rubber, 2 parts by weight of wax, 1.5 parts by weight of diamine antioxidant and 0.3 parts of quinoline antioxidant (see legend under the tables). These amounts are within ranges claimed by applicants.
Rubber in examples 1-3 meets the requirement of instant claim 2.
Quinoline antioxidant meets the requirement of instant claims 3 and 7.
Amount of wax meets instant claims 5, 9, 12, 18 and 20.
With respect to claims 6, 10, 13, 16 and 19, claim 16 of Tahara teaches a tire comprising claimed composition.
Claims 1-3, 5-7, 9, 10, 12, 13, 16, 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ONO (US 2019/0160870).
With respect to claim 1, Ono discloses rubber composition comprising antioxidant 1 NOCRAC 6C which is N-(1,3-dimethylbutyl)-N-phenyl-p-phenylenediamine [0143], antioxidant 2 NOCRAC RD which is poly(2,2,4-trimethyl-1,2-dihydroquinoline. Examples 1-3 in Table 1 disclose use of natural rubber (polyisoprene), butadiene rubber, 2 parts by weight of antioxidant 1, 0.5 parts by weight of antioxidant 2, and 1.5 parts by weight of wax.
Rubber in examples 1-3 meets the requirement of instant claim 2.
Quinoline antioxidant meets the requirement of instant claims 3 and 7.
Amount of wax meets instant claims 5, 9, 12, 18 and 20.
With respect to claims 6, 10, 13, 16 and 19, claims 6 as well as Abstract and title of the invention of Ono teaches a tire comprising claimed composition.
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 is utilized in amount of 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.
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.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/294,157 (‘157). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1 and 3 of ‘157 discloses composition comprising a rubber, amine age resistor having the same structure as amine resistor of the instant invention and quinoline age resistor. While content of each is not explicitly recited, claim 3 of ‘157 discloses that the amount of amine resistor is in a range of 0.1-11 which is the same content as that of instant claim 1. Additionally claim 1 of ‘157 recites that the ratio of quinoline to amine is in a range of 0.05-2. Consequently, the content of quinoline has to be lower than content of amine. For example, to meet ratio of 0.2 the amount of quinoline has to be 0.4, which falls within instantly claimed amount.
Claim 2 of ‘157 is the same as instant claim 2.
Claim 4 of ‘157 is the same as instant claims 4, 8, 11 and 17.
Claim 5 of ‘157 is the same as instant claims 5, 9, 12, 14, 18 and 20.
Claim 6 of ‘157 is the same as instant claims 3 and 7.
Claim 7 of ‘157 is the same as instant claims 6, 10, 13, 15, 16 and 19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 2, 2026
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