DETAILED ACTION
This office action follows a reply filed on May 27, 2026. Claims 1, 9, 12 and 21 have been amended. Claims 1-9, 11-17 and 21 are currently pending and under examination.
The 112(b) rejection over claims 19-20 is withdrawn, as applicants have canceled claims 19-20.
The 102(a)(1) rejection over Ulmer is withdrawn, as applicants have amended to limit the filler to 45-70 phr of a carbonate filler, and have also limited a ratio of carbonate filler to carbon black, the combination of which was not previously required by the claimed invention.
However, upon further consideration, a new grounds of rejection is proposed below.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
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 § 103
Claims 1-9, 11-17 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Riou (US 9,951,195).
Riou exemplifies a rubber composition for preparing a tire inner liner comprising the following (col. 13, Table I, composition C3):
100 parts rubber comprising,
90 phr butyl rubber, particularly brominated polyisobutylene, which meets applicants’ butyl rubber and halobutyl rubber, and
10 phr synthetic polyisoprene, which meets applicants’ diene-based rubber;
40 phr chalk, also known in the art as calcium carbonate and 5 phr carbon black, the combination of which meets applicants’ reinforcing filler with a ratio of calcium carbonate to carbon black of 8:1; and
a curing system comprising an plasticizing agent (oil), sulfur, MBTS (accelerator), and zinc oxide.
Riou teaches the rubber composition as comprising 1-60 phr inert filler, which is preferably chalk (calcium carbonate) and 5-15 phr carbon black as a suitable combination (col. 8, ll. 1-32), which overlaps with the claimed range of 45-60 phr calcium carbonate and 2-12 phr carbon black, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Modifying Composition C3 to include 45 phr calcium carbonate is prima facie obvious and suggests a ratio of carbonate to carbon black of 9:1.
Riou is prima facie obvious over instant claims 1-2, 4, 7-9 and 11-17.
As to claims 3, 5, 6 and 21, Riou does not exemplify a composition comprising the claimed amount of butyl rubber and diene-based elastomer, but does teach an elastomeric matrix comprising at least 50 phr butyl rubber, specifically listed to include bromobutyl rubbers (col. 3, ll. 40-45) and up to 50 phr of a diene elastomer, specifically listed to include polyisoprene or natural rubber (col. 5, ll., 21-34).
This teaching suggests a composition comprising 50-100 phr butyl rubber and 0-50 phr diene elastomer, the ranges of which overlap with the claimed range of 60-80 phr butyl rubber of instant claim 3, the claimed range of 20-40 phr diene-based rubber of instant claim 5, the claimed range of 0-35 phr diene-based rubber of instant claim 6, or the claimed ranges of 25-35 phr natural rubber and 65-75 phr halobutyl rubber of instant claim 21, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed May 27, 2026 have been fully considered but they are not persuasive.
Applicants argue that Riou fails to teach the carbonate-dominant filler system and ratio, arguing that Riou explicitly includes carbon black as a core component, while adding a secondary filler.
Riou explicitly discloses the following:
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This embodiment or particular mode is exemplified in C3. Modifying C3 within the disclosed ranges is prima facie obvious, and suggests a weight ratio of carbonate to carbon black of about 0.1:1 to 12:1, which overlaps with the claimed ratio of at least 4:1.
Applicants have not shown the criticality of the claimed ratio of at least 4:1; therefore, the teachings of Riou remain prima facie obvious over the claimed invention.
Applicants argue that original claim 12 was not addressed in the office action.
The examiner disagrees, as the office action clearly states the following:
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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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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