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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10 and 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “the liquid plasticizer comprises at least 10 phr”, and the claim also recites “or at least 20 phr” which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “the resin is at least 2 phr”, and the claim also recites “at least 5 phr”, “up to 20 phr”, “up to 15 phr” and “up to 12 phr” which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Analysis
Summary of Claim 1:
A rubber composition comprising, expressed as parts by weight per hundred parts of rubber (phr): 100 phr of an elastomer component, the elastomer component comprising:
a) a polybutadiene rubber, and
b) a styrene butadiene rubber;
a filler component comprising:
a) at least 10 phr aluminum hydroxide,
b) at least 70 phr silica, and
c) 0-20 phr carbon black;
an organosilane coupling agent;
one or more processing aids, selected from the group consisting of:
a) a liquid plasticizer,
b) a wax,
c) a resin, and mixtures thereof; and
a cure package comprising:
a) a sulfur-based curing agent,
b) an activator selected from inorganic activators, organic activators, and combinations thereof, and
c) a cure accelerator.
Claim Rejections - 35 USC § 102
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.
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 1-17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyazaki et al. (US 20160052340 as listed on IDS dated February 17, 2025).
Regarding claim 1, Miyazaki et al. disclose in Example 3 a rubber composition comprising 30 parts by mass of a polybutadiene rubber and 70 parts by mass of a styrene butadiene rubber equivalent to 100 phr of an elastomer component, 10 phr of aluminum hydroxide, 75 phr of silica, 15 phr of carbon black, an organosilane coupling agent, oil, thereby reading on liquid plasticizer, a wax, a resin, a sulfur based curing agent, zinc oxide as the activator, and a cure accelerator (Table 1), thereby reading on the instant claim.
Regarding claim 2, 3, and 4, Miyazaki et al. disclose the rubber composition of Example 3 comprises 30 phr of polybutadiene rubber and 70 phr of a styrene butadiene rubber (Table 1), equivalent to a 3:7 ratio and thereby lying within the claimed ranges of instant claim 2, 3, and 4.
Regarding claim 5, 6, and 7, Miyazaki et al. disclose the rubber composition of Example 3 comprises 10 phr of aluminum hydroxide, 15 phr of carbon black, and 6 phr of organosilane coupling agent (Table 1), thereby lying within the claimed ranges of instant claim 5, 6, and 7.
Regarding claim 8, Miyazaki et al. disclose the rubber composition comprises a ratio of 6:75 of organosilane coupling agent to silica (Table 1), thereby lying within the claimed range.
Regarding claim 9, Miyazaki et al. disclose the rubber composition of Example 3 comprises silane coupling agent is Si75 (Table 1), which is a bis(3-triethoxysilylpropyl)disulfide as evidenced by the data sheet provided (?), thereby reading on the instant claim.
Regarding claim 10, Miyazaki et al. disclose the rubber composition of Example 3 comprises 10 phr of an oil (Table 1), thereby lying within the claimed range.
Regarding claim 11 and 13, Miyazaki et al. disclose the rubber composition of Example 3 comprises 10 phr of resin (Table 1), thereby lying within the claimed range of at least 2 phr.
Regarding claim 12, Miyazaki et al. disclose the resin of the rubber composition of Example 3 is an alpha-methylstyrene resin (Table 1, [0091]), thereby reading on the instant claim.
Regarding claim 14, Miyazaki et al. disclose the rubber composition of Example 3 comprises 1.060 phr (Table 1), thereby lying within the claimed range.
Regarding claim 15, Miyazaki et al. disclose the rubber composition of Example 3 comprises zinc oxide and stearic acid (Table 1), which is a fatty acid, thereby reading on the instant claim.
Regarding claim 16 and 17, Miyazaki et al. disclose the rubber composition of Example 3 is used to form a tire tread(Table 1, [0096-0097]), thereby reading on the instant claim.
Regarding claim 19, Miyazaki et al. disclose in Example 3 a rubber composition comprising 30 parts by mass of a polybutadiene rubber and 70 parts by mass of a styrene butadiene rubber equivalent to 100 phr of an elastomer component, 10 phr of aluminum hydroxide, 75 phr of silica, 15 phr of carbon black, 6 phr of an organosilane coupling agent, 10 phr of oil, 1.5 phr of a wax, 10 phr of a resin, 1.060 phr of a sulfur based curing agent, 2.5 phr zinc oxide, 3 phr of stearic acid, which is a fatty acid, and 3.6 phr of a cure accelerator, thereby reading on the instant claim (Table 1).
Regarding claim 20, Miyazaki et al. disclose in Example 3 a tire tread formed from a rubber composition comprising 30 parts by mass of a polybutadiene rubber and 70 parts by mass of a styrene butadiene rubber equivalent to 100 phr of an elastomer component, 10 phr of aluminum hydroxide, 75 phr of silica, 15 phr of carbon black, 6 phr of an organosilane coupling agent, 10 phr of oil, 1.5 phr of a wax, 10 phr of a resin, 1.060 phr of a sulfur based curing agent, 2.5 phr zinc oxide, 3 phr of stearic acid, which is a fatty acid, and 3.6 phr of a cure accelerator, thereby reading on the instant claim (Table 1, [0096-0097]).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/516301 (reference application) in view of Miyazaki et al. (US 20160052340). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims refer to a rubber composition comprising styrene butadiene, polybutadiene, and silica in overlapping amounts, resin, and a cure package.
The instant application and ‘301 differs in that ‘301 does not comprise aluminum hydroxide, carbon black, a sulfur based curing agent, activator, and cure accelerator.
Miyazaki et al. teach a rubber composition comprising 1-60 phr of aluminum hydroxide, 30-180 phr of carbon black, a sulfur based curing agent, activator, and cure accelerator (claim 1, [0067], Table 1). Miyazaki et al. offer the motivation that aluminum hydroxide and carbon black improves wet grip performance [0029, 0067]. Miyazaki et al. also offer the motivation that carbon black Miyazaki et al. also teaches sulfur based curing agents, activators, and accelerators are common in the rubber field [0038] [0073]. Therefore, it would have been obvious to add the aluminum hydroxide, carbon black, a sulfur based curing agent, activator, and cure accelerator as taught by Miyazaki et al. with reasonable expectation that the wet grip performance would improve and the additives are well known in the rubber industry.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763