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 .
Response to Amendment
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on January 6, 2026. In particular, claim 1 has been amended to include the ratio of the esterified alkoxylated polyol to the plant-based triglyceride oil. The new grounds of rejection set forth below simply move the arguments from the previous claim 7 into the present claim 1; thus, the following action is properly made final.
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Welles et al (US 2018/0155535) in view of Hunt et al (US 2019/0367831).
Regarding claims 1, and 6-10, Welles teaches a rubber composition (Abstract) comprising 100 phr of an elastomer ([0026]), 5 to 200 phr of a reinforcing filler ([0045]), a sulfur cure package ([0062]).
Welles teaches that the composition can contain a mixture of oils ([0024]). The total amount of the oil can range from 5 to 25 phr ([0070]) and an oil in the mixture can be a plant-based triglyceride oil such as soybean oil ([0010]), however it is silent to the addition of the esterified alkoxylated polyol.
Hunt teaches an esterified alkoxylated polyol oil (Abstract) which is used in rubber applications ([0055]).
Given that the total amount of the oil ranges from 1 to 40 phr (Welles, [0070]), each of the soybean oil and the esterified alkoxylate polyol oil can be present in ranging from 1 to 40 phr and the other calculated to be the remaining amount of oil. And therefore, the amount of each of the soybean oil and the esterified alkoxylate polyol oil would be greater than 1 phr and the amounts would overlap the claimed ratio of these two components. While not explicitly exemplified, nonetheless the teachings within Wells and Hunt teach all the components of the claimed invention and teaches the practitioner to adjust the amounts of each of these components based on the end properties of the desired tire composition as clearly taught by the Hunt reference in paragraph [0055]. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the esterified alkoxylated polyol of Hunt as an additional oil in the rubber composition of Welles. One would have been motivated to do so in order to receive the expected benefit of tailoring the performance of the composition by lowering the glass transition temperature of the composition (Hunt, [0055]).
Regarding claim 2, modified Welles teaches that the polyol has an average degree of alkoxylation of greater than 5 (Hunt, [0045]).
Regarding claim 3, modified Welles teaches that the polyol is an esterified propoxylated glycerol (Hunt, Examples, [0048]).
Regarding claims 4-5, modified Welles teaches that the esterified propoxylated glycerol includes a terminal group derived from C4-24 fatty acid (Hunt, [0046]).
Regarding Claim 11, Welles teaches that the elastomer comprises a polybutadiene and styrene butadiene rubber ([0026]).
Regarding claim 12, Welles teaches that the reinforcing filler comprises silica and carbon black ([0047]).
Regarding claim 13, Welles teaches that the composition contains 5 to 100 phr of carbon black ([0053]).
Regarding claim 14, Welles teaches that the entirety of the reinforcing filler can be carbon black and silica ([0047]). Welles further teaches that the amount of carbon black can range from 0 to 50% by weight of the total amount of reinforcing filler ([0053]) and therefore, the amount of the silica can range from 50 to 100% by weight of the total amount of reinforcing filler and therefore, the ratio of silica to carbon black can overlap the claimed range.
Regarding claim 15, Welles teaches that the rubber composition comprises at least 1 phr of a silane-based coupling agent (Examples).
Regarding claim 16, Welles teaches a rubber composition further comprising a cure accelerator ([0064]), a cure activator ([0062]), an antioxidant ([0067]).
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Isitman et al (US 2017/0232795) in view of Hunt et al (US 2019/0367831).
Regarding claims 1, and 6-10, Isitman teaches a rubber composition (Abstract) comprising 100 phr of an elastomer ([0016]), 100 to 200 phr of a reinforcing filler ([0019]) and a sulfur-based cure package ([0025]). Isitman teaches that rubber processing oils can be present in the amount from 10 to 100 phr ([0044]) and can comprise a plant-based triglyceride oil such as soybean oil ([0044])
However, it is silent to the addition of the esterified alkoxylated polyol.
Hunt teaches an esterified alkoxylated polyol oil (Abstract) which is used in rubber applications ([0055]).
Given that the total amount of the oil ranges from 10 to 100 phr (Isitman, [0044]) each of the soybean oil and the esterified alkoxylate polyol oil can be present in ranging from 10 to 100 phr and the other calculated to be the remaining amount of oil. And therefore, the amount of each of the soybean oil and the esterified alkoxylate polyol oil would be greater than 1 phr and the amounts would overlap the claimed ratio of these two components. While not explicitly exemplified, nonetheless the teachings within Isitman and Hunt teach all the components of the claimed invention and teaches the practitioner to adjust the amounts of each of these components based on the end properties of the desired tire composition as clearly taught by the Hunt reference in paragraph [0055]. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the esterified alkoxylated polyol of Hunt as an additional oil in the rubber composition of Isitman. One would have been motivated to do so in order to receive the expected benefit of tailoring the performance of the composition by lowering the glass transition temperature of the composition (Hunt, [0055]).
Regarding claim 2, modified Isitman teaches that the polyol has an average degree of alkoxylation of greater than 5 (Hunt, [0045]).
Regarding claim 3, modified Isitman teaches that the polyol is an esterified propoxylated glycerol (Hunt, Examples, [0048]).
Regarding claims 4-5, modified Isitman teaches that the esterified propoxylated glycerol includes a terminal group derived from C4-24 fatty acid (Hunt, [0046]).
Regarding claim 11, Isitman teaches that the elastomer comprises a polybutadiene and a styrene butadiene rubber (Abstract).
Regarding claim 12, Isitman teaches a rubber composition where the reinforcing filler comprises silica and carbon black ([0019]).
Regarding claims 13-14, Isitman teaches that the amount of carbon black ranges from 2 to 15 phr ([0019]) and given that the entire amount of the filler is 100 to 200 phr ([0019]), the ratio of the silica to the carbon black is at least 2:1.
Regarding claim 15, Isitman teaches that the composition further comprises at least 1 phr of a silane-based silica coupling agent (Example).
Regarding claim 16, Isitman teaches that the composition contains an antioxidant ([0045]).
Regarding claim 17, Isitman teaches a pneumatic tire comprising a circumferential rubber tread comprising the rubber composition of claim 1 ([0015]).
Regarding claims 18-19, please refer to the rejection of claim 1 for the compositional limitations. Isitman teaches a method of forming a shaped article from the rubber composition by curing the article to form the shaped article ([0049]) and the shape can be a tire tread ([0048]).
Regarding claim 20, Isitman teaches a rubber composition (Abstract)
comprising 100 phr of an elastomer ([0016]),
100 to 200 phr of a reinforcing filler ([0019]). Isitman teaches a rubber composition where the reinforcing filler comprises silica and carbon black ([0019]). Isitman teaches that the amount of carbon black ranges from 2 to 15 phr ([0019]) and given that the entire amount of the filler is 100 to 200 phr ([0019]), the ratio of the silica to the carbon black is at least 4:1.
1 to 5 phr of an antioxidant ([0045])
7.8 to 9.1 phr of a sulfur containing cure package comprising a sulfur cure agent, a cure activator (zinc oxide) and a cure accelerator (Examples).
10 to 100 phr ([0044]) of processing oils which can comprise a plant-based triglyceride oil such as soybean oil ([0044])
However, it is silent to the addition of the esterified alkoxylated polyol.
Hunt teaches an esterified alkoxylated polyol oil (Abstract) which is used in rubber applications ([0055]).
Given that the total amount of the oil ranges from 10 to 100 phr (Isitman, [0044]) each of the soybean oil and the esterified alkoxylate polyol oil can be present in ranging from 10 to 100 phr and the other calculated to be the remaining amount of oil. And therefore, the amount of each of the soybean oil and the esterified alkoxylate polyol oil would be greater than 1 phr and the amounts would overlap the claimed ratio of these two components. While not explicitly exemplified, nonetheless the teachings within Isitman and Hunt teach all the components of the claimed invention and teaches the practitioner to adjust the amounts of each of these components based on the end properties of the desired tire composition as clearly taught by the Hunt reference in paragraph [0055]. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the esterified alkoxylated polyol of Hunt as an additional oil in the rubber composition of Isitman. One would have been motivated to do so in order to receive the expected benefit of tailoring the performance of the composition by lowering the glass transition temperature of the composition (Hunt, [0055]).
Response to Arguments
Applicant's arguments filed January 6, 2026 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: Hunt does not provide any specific amounts or ratios for using EPG oils in tire or rubber formulations.
Examiner’s response: While Hunt does not explicitly state a ratio between the EPG oil and the plant-based oil, it clearly suggests experimentation. The amount of the EPG oil and the amount of the soybean oil can be used to tailor performance as noted by Hunt in paragraph [0055]. Soybean oil is clearly advantageous to cold weather performance, while the EPG oil can be used to tailor performance characteristic in general. This experimentation is well with the ordinary skill of a practitioner in the art and Hunt gives guidance to the blended ratio.
Applicant’s argument: Applicants argue that the results of the experiments show that combining EPG with soybean oil provides a well-balanced enhancement across multiple performance metrics, outperforming soybean oil alone in overall tire performance.
Examiner’s response: While the blend of EPG oil with the plant oil does outperform the plant oil only formulation on 5 attributes, it underperforms on 3 attributes (Table 4). Is this a better tire? Is it a more balanced tire for performance? The examiner would argue that it depends on what an end user would want. If all the tensile attributes were equally important, it is noted that for Ex C, the addition of all the tensile properties would be 800 and the addition of all the tensile properties for Ex. D is also 800 – so the weighted average of these properties show that the tires are somewhat equivalent.
Applicant’s argument: EPG alone cannot replace triglyceride oil for winter performance because samples containing only EPG show diminished winter performance compared to that of the soybean baseline.
Examiner’s response: This goes back to the Hunt reference which explicitly teaches a tailoring of performance qualities using EPG oil and that soybean oil is good for winter applications. There is nothing unexpected with this data.
Applicant’s argument: The application suggests that the ratio of EPG oil to plant-based triglyceride oil should be from 2:1 to 1:2 because it delivers the best overall performance, maintaining acceptable winter traction while significantly improving handling, wet braking, etc. Ratios outside this range such as EPG only formulations, show severe winter performance loss.
Examiner’s response: Applicant has shown only a 1:1 ratio of the EPG oil to the plant-based oil. It has also tested only one type of plant-based oil (soybean oil) and only one type of esterified alkoxylated polyol. Therefore, unexpected results over the entire scope of the claimed invention cannot be determined.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764