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 .
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 § 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 19-20 are 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.
Claims 19 and 20 depend on canceled claim 18 and relate to a method, which is not claimed in any other claim. Therefore, it is unclear as to whether claims 19 and 20 are meant to limit the scope of the invention.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 and 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ulmer (US 2010/0096058).
Ulmer exemplifies a tire innerliner prepared from a rubber composition comprising the following (p. 6, Table 1, Sample 1):
100 parts rubber comprising
85 phr BIIR (brominated isobutylene-isoprene rubber), which meets applicants’ halobutyl rubber, and
15 phr NR (natural rubber, also known as polyisoprene), which meets applicants’ diene-based rubber;
60 phr carbon black, which meets applicants’ reinforcing filler; and
a curing system comprising an processing oil, hydrocarbon resin, accelerator, sulfur and zinc oxide.
Sample 1 anticipates instant claims 1-2, 4, 6-8 and 13-17.
Ulmer also exemplifies a tire innerliner prepared from a rubber composition comprising the following (p. 6, Table 1, Sample 4):
100 parts rubber comprising
60 phr BIIR (brominated isobutylene-isoprene rubber), which meets applicants’ halobutyl rubber, and
40 phr NR (natural rubber, also known as polyisoprene), which meets applicants’ diene-based rubber;
60 phr carbon black, which meets applicants’ reinforcing filler; and
a curing system comprising an processing oil, hydrocarbon resin, accelerator, sulfur and zinc oxide.
Sample 4 anticipates instant claims 1, 3-5, 7-8 and 13-17.
Claims 1-2, 4 and 7-17 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 anticipates instant claims 1-2, 4 and 7-17.
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.
Claims 3, 5, 6 and 21 is rejected under 35 U.S.C. 103 as being unpatentable over Riou (US 9,951,195).
Riou anticipates instant claims 1-2, 4 and 7-17, as described above and applied herein as such, as Riou teaches a tire inner liner prepared from a rubber composition comprising a blend of brominated butyl rubber and polyisoprene rubber, chalk (calcium carbonate), carbon black, a plasticizing oil and a sulfur vulcanizing system comprising an accelerator.
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.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claim 21, Riou does not exemplify a composition comprising the claimed amount of calcium carbonate and carbon black, but does teach 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.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to the remaining components claimed in instant claim 21, Riou exemplifies the inclusion of 1.5 phr zinc oxide, sulfur, plasticizing agent and vulcanization accelerator in each and every composition.
Therefore, Riou is prima facie obvious over the composition of claim 21.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Brieann R Johnston/Primary Examiner, Art Unit 1766