DETAILED ACTION
This Office Action is responsive to the amendment filed on 6/30/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action 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 .
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 Objections
Claim 1 is objected to because of the following informalities: In line 11, insert a space between (1) and the word “per”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claim(s) 1, 4-6, 8, and 11-13, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tochika, US2019/0264011, in view of Miyazaki et al, EP2799480.
Tochika discloses a rubber composition for use in tire treads (for claims 1, 8, 11-13, 18) (¶0001), wherein said rubber composition 100 parts of a rubber component (for claim 1) and silica (for claim 1), in an amount of 70 parts or more, overlapping the claimed range (for claim 1) (¶0011, 0021, 0023). The prior art rubber composition may further a terpene resin (¶0026) and a silane coupling agent in an amount of 2 to 20 parts per 100 parts silica (for claim 1) (¶0024). Said tire may be a winter tire (for claim 16) (¶0037).
Regarding the claimed rubber component: The prior art rubber component may be a blend comprising 15 to 45 phr (for claims 1, 4-6) polybutadiene rubber, corresponding to the claimed butadiene rubber (for claim 1); 15 to 50 phr (for claims 5, 6) styrene/butadiene rubber (SBR) having a glass transition temperature (Tg) of -60 °C or less (¶0020), corresponding to the claimed SBR (for claim 1); and 15 to 50 parts natural rubber (for claim 6). Tochika further teaches that the Tg of the entire rubber component should be -60 °C or less (¶0019) (for claim 1).
Tochika is silent regarding the use of a terpene resin having a β-pinene content of 90 mass% or more and a thioester group-containing silane coupling agent corresponding to the claimed formula (1).
Miyazaki discloses the production of a rubber composition for tires, wherein said rubber composition comprises a rubber component which may be a blend of an isoprene-based rubber such as natural rubber, butadiene rubber, and a SBR (abstract, ¶0029).
Regarding the claimed terpene resin: As taught by Miyazaki, it was known in the art that that the addition of a terpene resin to such compositions results in improved properties such as wet grip performance and abrasion resistance (¶0015). As said terpene resin, Miyazaki teaches that it was known in the art to use a β-pinene terpene resin having β-pinene as the main component (¶0024, 0026). Miyazaki teaches that said terpene resin is used in an amount in the range of 1 to 50 parts per 100 parts rubber (¶0027), overlapping the claimed range (for claim 10, 17).
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom"; see In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). Miyazaki teaches that
pinene resins are generally made from a mixture of α-pinene and β-pinene, and
the β-pinene terpene resin contains β-pinene as the main component. (¶0024).
One of ordinary artisan will reasonably infer that the phrase “the main component” implies that β-pinene is the majority monomer-i.e., the content of β-pinene is greater than 50 mass%, overlapping the claimed range (for claim 1). The β-pinene resin of Miyazaki therefore reads on the claimed terpene resin having a β-pinene content of at least 90 mass% (for claim 1).
Regarding the claimed silane coupling agent: Miyazaki teaches that thioester-containing silane coupling agents (for claim 1) were known in the art for use in such rubber compositions (¶0040-0042). As said coupling agent, Miyazaki teaches the use of the compound shown below (¶0042).
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This compound corresponds to the claimed formula (1) wherein R1 is a C2alkoxy group, m is 3, n is 0, R3 is a C3 alkanediyl group, and R4 is a C7 alkyl group (for claim 1).
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07).
Tochika and Miyazaki both disclose the production of rubber compositions used in the production of tire treads. As taught by Miyazaki, it was known in the art to add 1 to 50 parts of a β-pinene resin having a β-pinene content greater than 50% to such rubber compositions in order to improve the wet grip performance and abrasion resistance of the final tire. Miyazaki further teaches that it was known that the use of a thioester-containing silane coupling agents corresponding to the claimed formula (1) was known to improve abrasion resistance and elongation at break (¶0043). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art before the effective date of the invention to modify the rubber composition of Tochika by using the β-pinene resin and thioester-containing silane coupling agent of Miyazaki as the terpene resin and silane coupling agent (for claim 1), respectively, with the reasonable expectation of obtaining a composition having improvements in properties taught by Miyazaki.
Regarding claim 15: A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As discussed above, the prior art broadly teaches the production of a tire comprising a tread, wherein said tread is made from a composition comprising the same components combined in the same amounts as the claimed invention. It is therefore reasonably expected that the prior art tire could be used in all seasons as required. The burden is shifted to applicant to provide evidence demonstrating that the prior art tire could not be used in the required manner.
Claim(s) 2, 3, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tochika, US2019/0264011, in view of Miyazaki et al, EP2799480, as applied to claims 1, 4-8, and 11-16 above, and further in view of Hirabayashi, US2009/0137718.
As discussed earlier in this Action, Tochika discloses a rubber composition for use in tire treads (for claims 9, 10), wherein said rubber composition 100 parts of a rubber component, silica, a terpene resin, and a silane coupling agent Tochika further teaches the inclusion of an oil in the prior art composition (0031).
Tochika is silent regarding the inclusion of a modified polybutadiene.
Hirabayashi discloses a composition used for the production of tire treads, wherein said composition comprises a rubber component, silica, and a terminally-amine modified liquid polybutadiene (abstract; ¶0010). One of ordinary skill in the art will recognize that an amine is a nitrogen-containing functional group; the prior art terminally-amine modified liquid polybutadiene therefore corresponds to the claimed modified polybutadiene (for claim 2) having a functional group containing a nitrogen heteroatom (for claim 3). Said rubber component may comprise one or more of natural rubber, polybutadiene rubber, and SBR (0013). Hirabayashi discloses that replacing a portion of the oil normally used in rubber compositions for tires with the terminally-amine modified liquid polybutadiene results in a final tire having improved cracking suppression and a reduction in the change in hardness of the tread over time (¶0011).
Tochika and Hirabayashi are both directed towards the production of rubber compositions used in the production of tire treads. Barring a showing of evidence demonstrating unexpected results, it would have been obvious to one of ordinary skill in the art to modify the rubber composition of Tochika by substituting a terminally-amine modified liquid polybutadiene for part of the oil, as taught by Hirabayashi, with the reasonable expectation of obtaining a final composition having improved cracking suppression.
Response to Arguments
Applicant's arguments filed 6/30/2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed invention yields unexpected results, citing the examples from Tables 1-3 of the specification.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP § 716.02(d)).
As currently written, the claimed invention broadly recites composition comprising 100 parts of a rubber component, which in turn comprises 20 parts or more of any butadiene rubber and any SBR having Tg of -50 °C or less, wherein the average Tg of the rubber component is -60 °C or less. In contrast, the inventive examples were all prepared using a polybutadiene having Tg of either -102 °C or -92 °C (¶0069-0070), a SBR having Tg of -60 °C (specification ¶0071), and have an average Tg of the rubber component of -68, -70, 72.8, or -84 °C.
Similarly, the claimed invention recites the use of a terpene resin having a β pinene content of 90 mass% or more and a silane coupling agent of the claimed formula (1); in contrast, the inventive examples were prepared using terpene resins having a β-pinene content of 98 or 100 mass% (specification ¶0083-0084) and a single species of thioester-containing coupling agent (specification ¶0077). The cited examples therefore are not commensurate in scope with the broad range of compositions that fall within the scope of the rubber component of the instant claims with regards to the rubber component, terpene resin, and coupling agent.
Further note that all inventive examples in Tables 1-3 comprise SBR1, which is reported to be a modified solution polymerized styrene/butadiene rubber (SSBR) (specification ¶0071). Note that the specification does not disclose how SBR1 is modified; however, it is presumed from the specification that the term “modified” indicates that SBR1 has been chemically modified with functional group(s) either at its terminus or within the polymer backbone (see specification ¶0027-0028). The claimed invention, however, does not require the use of a modified SBR. It is therefore unclear whether the allegedly unexpected results require the presence of a modified SBR-and if so, what that modification is- or if they could be obtained from a composition that contains only unmodified SBR as allowed by the claimed invention.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range; see In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP § 716.02(d)(II)). Applicant can rebut a prima facie case of obviousness by showing that there are new or unexpected results relative to the prior art; see Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004).
With regards to the claimed terpene resin, note that there are no comparative examples wherein the terpene resin has a β-pinene unit content outside the claimed range. Rather, applicant compares an inventive example comprising a terpene resin having high β-pinene unit content to a terpene resin having 100% α-pinene unit (remarks page 8: lines 3-14). As discussed earlier in this Action, however, Miyazaki specifically teaches the use of a terpene resin wherein the β-pinene unit is the majority component (i.e., β-pinene unit content is greater than 50%). The data cited by applicant therefore neither demonstrates the criticality of the claimed range of β-pinene unit content nor compares the claimed invention to the prior art as required. Applicant’s argument that the claimed invention yields unexpected results therefore are not persuasive.
Applicant argues that the Tochika limits the amount of silica to 20 to 70 parts and therefore does not teach the claimed invention comprising 80 to 180 parts silica.
It has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]).
Tochika specifically teaches that
the reinforcing filler is present in an amount of 70 parts or more (¶0021),
the upper limit for the amount of filler is not set (¶0021), and
the reinforcing filler may be silica alone (¶0023).
Given that the reinforcing filler may be silica alone and can be present in any amount greater than or equal to 70 parts, and ordinary artisan will recognize that the amount of silica in the composition of Tochika is 70 parts or more, overlapping the claimed range. The mere fact that Tochika teaches that the amount of silica “may be” -which indicates that the disclosed range is optional-20 to 70 parts does not teach away from the broader range taught by Tochika, which allows the amount of silica to be 70 parts or more when it is used alone.
With regards to claim 17, applicant argues that Tochika teaches that the terpene resin is added in an amount of 0.5 to 20 parts by mass, with only 3 parts being exemplified. Applicant therefore argues that the prior art does not teach the claimed invention comprising 25 to 60 parts terpene resin per 100 parts rubber.
In response, Tochika does not state that the amount of terpene resin is required to be in the range of 0.5 to 20 parts by mass; rather, Tochika states the following (¶0027).
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As shown in the cited text, Tochika specifically states that the amount of resin used in the prior art composition is not particularly limited, with the range 0.5 to 20 parts only being taught as an example. Contrary to applicant’s argument, Tochika’s disclosure of the range of 0.5 to 20 as an example does not prohibit the inclusion of a terpene resin in amounts greater than 20 parts per 100 parts rubber, particularly given Tochika’s statement that the amount of resin is not limited; see Merck & Co. v. Biocraft Laboratories cited earlier in this Action.
As noted earlier in this Action, Miyazaki teaches that it was known in the art to add 1 to 50 parts of a terpene resin per 100 parts rubber in order to improve the wet grip performance and abrasion resistance of the final tire; note that this range overlaps the claimed range. It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). It therefore would have been obvious to modify the composition of Tochika by adding the required amount of terpene resin in order to obtain the improvements in wet grip performance and abrasion resistance taught by Miyazaki.
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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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