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 .
DETAILED ACTION
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6, 9-13 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dohata et al. (US Patent Application 2024/0287285 A1, priority 24 Nov. 2021, published 29 Aug. 2025, hereinafter Dohata) in view of Miyazaki (US Patent Application 2018/0086897 A1, published 29 Mar. 2018, hereinafter Miyazaki) and evidence provided by PubChem (“Stearic Acid,” accessed 11 Jun 2025).
Regarding claims 1-6, 10-13, and 17-18, Dohata teaches a tire including reinforcement layers including reinforcement material and a vulcanized rubber covering the reinforcing material, where the vulcanized rubber containing sulfur and a sulfenamide; the reinforcing material contains a steel cord whose surface is covered with a ternary plating of copper, zinc, and iron (Abstract). Dohata teaches his rubber component contains 60 mass% or more of an isoprene rubber, such as natural rubber or synthetic isoprene rubber, and the rest is a rubber other than an isoprene rubber, such as butadiene rubber (polybutadiene) or styrene-butadiene copolymer (styrene-butadiene rubber) (paragraphs 0075-0079). Dohata teaches the rubber composition has a cobalt content of 0.01% or less (paragraph 0020), and the cobalt content in the tire overall is 1 mass% or less (claim 8); thus, Dohata teaches embodiments that are cobalt free (Table 1, Examples 1 and 2). Dohata teaches resin is an optional component (paragraph 0081), so Dohata teaches an embodiment that contains no resin. Dohata teaches the inclusion of zinc oxide in his rubber component in the amount of 1 to 15 phr (paragraphs 0092 and 0094), and his exemplary example compositions contain 7.5 phr zinc oxide (Table 1). Dohata teaches his rubber composition comprises a filler, including carbon black or silica in the amount of 30-120 phr (paragraphs 0085-0086 and 0089), and these fillers may be used in combination of two or more (paragraph 0086). Dohata teaches the inclusion of N-cyclohexyl-2-benzothiazolylsulfenamide as a vulcanization accelerator in the amount of 0.4-3 parts phr (paragraphs 0028 and 0073). Dohata teaches the ternary plating layer is composed of 63 mass% or more of copper, 1-10 mass% iron, and the remainder being zinc (paragraphs 0043-0044).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of copper, iron, zinc, filler, zinc oxide, accelerator, and two rubbers from the overlapping portions of the ranges taught by Dohata because overlapping ranges have been held to be prima facie obviousness.
Dohata does not disclose the amounts of silica in his rubber composition as distinct from the amounts of other fillers.
Miyazaki teaches the inclusion of further preferably 2 to 20 parts by mass based on 100 parts by mass of the rubber component (that is, 2-20 phr) in his rubber composition that also includes carbon black (paragraph 0045 and 0049).
Given that Dohata and Miyazaki are drawn to rubber compositions for steel cord reinforced tires, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the amount of silica as taught by Miyazaki in the rubber composition taught by Dohata. Since Dohata and Miyazaki are both drawn to rubber compositions for steel cord reinforced tires, one of ordinary skill in the art would have a reasonable expectation of success in incorporating the amount of silica as taught by Miyazaki in the rubber composition taught by Dohata. Further, Miyazaki teaches that crosslinking accelerating effect and crosslinking uniformity can be achieved effectively and a shrink at sheet processing can be inhibited, the content of 2.0 to 20 parts by mass is particularly preferable (paragraph 0045).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of silica from the overlapping portions of the ranges taught by Miyazaki because overlapping ranges have been held to be prima facie obviousness.
Regarding claim 9, Dohata in view of Miyazaki teaches the elements of claim 1, and Dohata teaches the inclusion of stearic acid in the amount of 0.5 to 3 phr (paragraph 0093).
As evidenced by PubChem, stearic acid is a fatty acid (page 2, Description, 2nd paragraph).
Regarding claim 19, Dohata in view of Miyazaki teaches the elements of claim 17, and Dohata teaches his tire is preferably a pneumatic tire (paragraph 0130).
Regarding claim 20, Dohata teaches a tire including reinforcement layers including reinforcement material and a vulcanized rubber covering the reinforcing material, where the vulcanized rubber contains sulfur and a sulfenamide; the reinforcing material contains a steel cord whose surface is covered with a ternary plating of copper, zinc, and iron (Abstract and paragraph 0090). Dohata teaches his rubber component contains 60 mass% of an isoprene rubber, such as natural rubber or synthetic isoprene rubber, and the rest is a rubber other than an isoprene rubber, such as butadiene rubber (polybutadiene) or styrene-butadiene copolymer (styrene-butadiene rubber) (paragraphs 0075-0079). Dohata teaches the rubber composition has a cobalt content of 0.01% or less (paragraph 0020), and the cobalt content in the tire overall is 1 mass% or less (claim 8); thus, Dohata teaches embodiments that are cobalt free (Table 1, Examples 1 and 2). Dohata teaches resin is an optional component (paragraph 0081), so Dohata teaches an embodiment that contains no resin. Dohata teaches the inclusion of zinc oxide in his rubber component in the amount of 1 to 15 phr (paragraphs 0092 and 0094), and his exemplary example compositions contain 7.5 phr zinc oxide (Table 1). Dohata teaches his rubber composition comprises a filler, either carbon black or silica in the amount of 30-120 phr (paragraphs 0085 and 0089). Dohata teaches the inclusion of N-cyclohexyl-2-benzothiazolylsulfenamide as a vulcanization accelerator in the amount of 0.4-3 parts phr (paragraphs 0028 and 0073). Dohata teaches the ternary plating layer is composed of 63 mass% or more of copper, 1-10 mass% iron, and the remainder being zinc (paragraphs 0043-0044).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of copper, iron, zinc, filler, zinc oxide, accelerator, and two rubbers from the overlapping portions of the ranges taught by Dohata because overlapping ranges have been held to be prima facie obviousness.
Dohata teaches covering a steel cord with the ternary plating of copper, zinc, and iron, and then covering the ternary plated steel cord with his rubber composition (paragraphs 0154-0155).
Dohata does not disclose the amounts of silica in his rubber composition as distinct from the amounts of other fillers.
Miyazaki teaches the inclusion of further preferably 2 to 20 parts by mass based on 100 parts by mass of the rubber component (that is, 2-20 phr) in his rubber composition that also includes carbon black (paragraph 0045 and 0049).
Given that Dohata and Miyazaki are drawn to rubber compositions for steel cord reinforced tires, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the amount of silica as taught by Miyazaki in the rubber composition taught by Dohata. Since Dohata and Miyazaki are both drawn to rubber compositions for steel cord reinforced tires, one of ordinary skill in the art would have a reasonable expectation of success in incorporating the amount of silica as taught by Miyazaki in the rubber composition taught by Dohata. Further, Miyazaki teaches that crosslinking accelerating effect and crosslinking uniformity can be achieved effectively and a shrink at sheet processing can be inhibited, the content of 2.0 to 20 parts by mass is particularly preferable (paragraph 0045).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of silica from the overlapping portions of the ranges taught by Miyazaki because overlapping ranges have been held to be prima facie obviousness.
Claims 1-6 and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shemenski et al. (US Patent 4,545,834, published 08 Oct. 1985, hereinafter Shemenski) in view of Miyazaki (US Patent Application 2018/0086897 A1, published 29 Mar. 2018, hereinafter Miyazaki) and further in view of Werner et al. EP 3476624 A1, published 01 May 2019, hereinafter Werner) and evidence provided by PubChem (“Stearic Acid,” accessed 11 Jun 2025).
Regarding claims 1-6, 9-12, 17-18, and 20, Shemenski teaches a method of making a ternary alloy coated steel wire, in which the coating comprises a ternary brass alloy containing 55 to 75 mass% copper, 15-45 mass% zinc, and 0.1 to 10 mass% iron, and the coated steel wire is useful as a reinforcement for tires, belts, hoses, and the like (Abstract). Shemenski teaches the rubber articles reinforced by his coated steel wire comprise natural rubber, styrene butadiene rubber, synthetic polyisoprene, and polybutadiene, which are diene elastomers (col. 2, lines 45-60), and an embodiment of his rubber composition rubber contains 2 parts of stearic acid, 10 parts of zinc oxide, 3 parts sulfur, 1 part accelerator, and 55 parts carbon black per 100 parts of natural rubber (col. 5, lines 47-51). Shemenski teaches the steel cords are coated with the three metals, the steel cords are embedded in an uncured natural rubber, and the rubber article is then cured (col. 5, lines 21-53).
Shemenski discloses the inclusion of neither cobalt nor resin in his invention.
As evidenced by PubChem, stearic acid is a fatty acid (page 2, Description, 2nd paragraph).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of copper, iron, and zinc from the overlapping portions of the ranges taught by Shemenski because overlapping ranges have been held to be prima facie obviousness.
Shemenski teaches the inclusion of fillers in his rubber composition (col. 5, line 8-11); thus, Shemenski teaches embodiments containing more than one filler.
Shemenski does not disclose the inclusion of silica in his rubber composition.
Miyazaki teaches the inclusion of further preferably 2 to 20 parts by mass based on 100 parts by mass of the rubber component (that is, 2-20 phr) (paragraph 0045).
Given that Shemenski and Miyazaki are drawn to rubber compositions for steel cord reinforced tires, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the amount of silica as taught by Miyazaki in the rubber composition taught by Shemenski. Since Shemenski and Miyazaki are both drawn to rubber compositions for steel cord reinforced tires, one of ordinary skill in the art would have a reasonable expectation of success in incorporating the amount of silica as taught by Miyazaki in the rubber composition taught by Shemenski. Further, Miyazaki teaches that crosslinking accelerating effect and crosslinking uniformity can be achieved effectively and a shrink at sheet processing can be inhibited, the content of 2.0 to 20 parts by mass is particularly preferable (paragraph 0045).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected amounts of silica from the overlapping portions of the ranges taught by Miyazaki because overlapping ranges have been held to be prima facie obviousness.
Regarding claims 13-16, Shemenski in view of Miyazaki teaches the elements of claim 1, and Shemenski teaches the inclusion of an accelerator in his rubber composition in the amount of 1 part per 100 parts of natural rubber (col. 5, lines 47-51).
Shemenski does not disclose the use of a sulfenamide accelerator.
Werner teaches a rubber composition and brass coated steel cords for a tire (Abstract), and Werner teaches the use of the sulfenamide accelerator, benzothiazyl-2-dicyclohexylsulfenamide (DCBS) in his rubber composition (paragraph 0040).
Given that Shemenski and Werner are drawn to tires comprising brass-coated steel cords in a rubber composition, it would have been obvious to one of ordinary skill in the art before the effective filing date to use DCBS as taught by Werner as the accelerator in the rubber composition in the tire taught by Shemenski in view of Miyazaki. Since Shemenski and Werner are both drawn to tires comprising brass-coated steel cords in a rubber composition, one of ordinary skill in the art would have a reasonable expectation of success in using DCBS as taught by Werner as the accelerator in the rubber composition taught by Shemenski in view of Miyazaki. Further, Werner teaches vulcanization accelerators, such as DCBS, are used to control the required time and/or temperature of vulcanization and to improve vulcanizate properties (paragraph 0040).
Miyazaki teaches a rubber composition for coating steel cord for a tire (Abstract), and Miyazaki teaches the use of either N-tert-butyl-2-benzothiazolyl sulfenamide (TBBS) or N,N-dicyclohexyl-2-benzothiazolylsulfenamide (DCBS) as vulcanization accelerators in his rubber composition for use with steel cord to form a tire (Abstract and paragraphs 0061 and 0064).
Given that Shemenski, Werner, and Miyazaki are all drawn to rubber compositions for steel cord reinforced tires and given that Miyazaki discloses the equivalence and interchangeability of using either TBBS or DCBS as sulfenamide vulcanization accelerators, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use DCBS as taught by Miyazaki as the sulfenamide accelerator in the rubber composition as taught by Shemenski in view of Miyazaki and further in view of Werner. Since Shemenski, Werner, and Miyazaki are all drawn to rubber compositions for steel cord reinforced tires, one of ordinary skill in the art would have a reasonable expectation of success in using DCBS as the sulfenamide accelerator in the rubber composition as taught by Shemenski in view of Miyazaki and further in view of Werner, since Miyazaki teaches that TBBS and DCBS are functionally equivalent as accelerators for rubber compositions. Therefore, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art that TBBS and DCBS can be substituted one for the other in the rubber composition taught by Shemenski in view of Miyazaki and further in view of Werner.
Regarding claim 19, Shemenski in view of Miyazaki teaches the elements of claim 17, and Shemenski teaches that it is frequently desirable to reinforce rubber articles by incorporating therein steel reinforcing elements, and pneumatic tires are often reinforced with cords prepared from brass coated steel filaments (col. 1, lines 9-14).
Therefore, it is the examiner’s position that one of ordinary skill in the art would conclude that pneumatic tires are an application for the invention taught by Shemenski in view of Miyazaki.
Response to Arguments
Applicant's arguments filed 15 Sep. 2025 have been fully considered. Applicant’s amendments have necessitated new grounds of rejection, which are presented above.
Applicant amended claims 1 and 20 and cancelled claims 7-8.
Applicant argues that Dohata and Shemenski fail to teach the claimed amount of silica.
However, as presented above, Miyazaki teaches the claimed amount of silica and motivates the use of amounts that overlap with the claimed amount of silica in rubber compositions for coating steel cord.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hasegawa et al. (EP 4015704 A1, published 22 Jun. 2022) teaches steel cord-rubber composite with the claimed amounts of carbon black, silica, and zinc oxide, with less than 0.01 parts of cobalt (per 100 parts rubber).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/
Primary Examiner, Art Unit 1787