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 .
The amendment dated 06/25/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained. The amendment necessitates new grounds of rejections based on indefiniteness.
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 1, 6 – 8, 13 – 19 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.
The independent claim 1 recites a composition comprising 20 to 60 parts by mass of a terpene and 100 parts by mass of a diene rubber, but also requires that the terpene and oil is less than 60 parts by mass of the diene rubber which is ambiguous and indefinite because the proviso requiring less than 60 parts of terpene and oil based on the diene rubber makes it impossible for the terpene alone to be present at up to 60 parts by mass of the composition.
Claim 1 recites the limitation "the terpene and oil" in the claim. There is insufficient antecedent basis for that limitation in the claim, as there was no prior recitation of oil.
The claims dependent on claim 1 are all rejected based on indefiniteness.
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.
The factual inquiries 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.
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.
Claims 1, 6 – 8, 13 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over Izumo (EP 3 922 670 A1)
In regard to claims 1, 6, 7, Izumo teaches tire containing rubber composition (abstract). The composition preferably contains 5 to 30% of styrene-butadiene rubber, or preferably 20 to 70% of isoprene rubber, or preferably 10 to 70% polybutadiene, resins such as terpene resins etc. [007 – 0020]. The rubber generally contains diene rubbers such as isoprene, polybutadiene (BR), styrene butadiene (SBR) etc., wherein any one alone may be used as rubber or two or more [0036]. The rubber is modified rubber which is modified with a functional group such as epoxy, ether, carbonyl, sulfide etc. (i.e., heteroatoms) and thus provides modified diene [0037 – 0039]. Isoprene rubber can be present at from 5 to 80% of the rubber preferably [0041].
SBR can be present at from 5 to 45% of the rubber [0043]. Any Br may be used alone or in combination at 20 to 100% of rubber components [0050 – 0053]. Terpene can be solely b-pinene, or in combination with other terpenes, and wherein the terpene is present at from 3 to 30% of the rubber composition [0091 – 0093].
Oils can be present at 15 to 80 parts by mass per 100 parts of the rubber, thus providing terpene and oil overlapping the claimed ranges [0071, 0072]. Fillers such as, preferably, silica can be present at amounts of from 20 to 150 parts by mass based on 100 parts by mass of rubber components [0054, 0055].
In regard to claims 8, 13 – 19, Izumo teaches the rubber component useful in a tire tread [0005, 0024]. The intended use of the tire as an all season would be intrinsically provided.
Double Patenting
Claims 1, 6 – 8, 13 – 16, 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, 12 – 19 of U.S. Patent No. 18/237,605 in view of Izumo (EP 3 922 670 A1). The copending application teach analogous rubber composition comprising the same ingredients in the same amounts but fails to recite that the butadiene rubber is modified butadiene rubber. Izumo teaches similar butadiene tire composition which can comprise the modified butadiene which is modified with heteroatom containing groups as claimed. It would have been obvious for persons of ordinary skill in the art to have used the modified butadiene of Izumo in the composition of the copending application as Izumo teaches the use of modified and non-modified butadiene are interchangeable. While the copending application does not recite oil, claim 2 limits the amount of the terpene resin and oil content to less than 60% and thus the presence of oil is not required.
Claims 1, 6 – 8, 13 – 16, 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 6, 8 – 13, 15 – 18 of copending Application No. 18/374,183. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches the claimed ingredients for the rubber composition but further requires transition temperature values which are not present in the instant claims, thus anticipating or obviating the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant primarily argues that Izumo teaches various characteristics and/or conditions that must be fulfilled by their rubber which would not lead a person of ordinary skill in the art to the claimed composition. The argument is not persuasive.
Izumo teaches the claimed rubber composition having the claimed ingredients in amounts overlapping the claimed ranges and thus provides the claimed composition. The fact that Izumo’s composition must meet other requirements not required by the claims is not a teaching away from the claimed composition.
Applicant argues that the inventive examples of the specification demonstrate unexpected results. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claim teaches modified butadiene rubber at amounts of from 65 to 90 parts by mass, the inventive examples recite a specific amount of 40 to 75 parts, which does not support the breadth of the claims nor demonstrate criticality of the claimed range. The exemplified amounts of less than 65 parts are non-inventive as they are outside the claimed range.
While the claims recite other diene rubber can be natural rubber, isoprene or styrene-butadiene rubber (SBR), the inventive examples are specifically directed to SBR, which does not support the breadth of the claims.
While the claims recite 10 to 35 parts by mass of the other diene rubber, the inventive examples require two different SBR at amounts of from 10 to 30 parts by mass which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
While the claims allow from 60 to 200 parts by mass of silica the inventive examples require an amount of 75 to 150 parts by mass which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
While the claims allow for terpene to be present at from 20 to 60 parts by mass having at least 40% of b-pinene, the inventive examples require its amount at 20 to 45 parts having about 100% of b-pinene which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
The results are not persuasive.
The results of the inventive and comparative examples overlap, and it is unclear what makes the results unexpected.
Thus, applicant has failed to provide inventive examples that are commensurate in scope with the claims and demonstrate unexpected results sufficient to rebut the case of obviousness.
Applicant argues that the amendment overcomes the rejections based on obviousness double patenting. The argument is not persuasive.
The amounts of the recited ingredients in the copending application overlaps the amounts recited in the instant claims.
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 TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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