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 .
Response to Amendment
The amendment filed 8/26/2026 has been entered. Claims 1, 4-7, and 9 remain pending in the application.
Claims 2, 3, and 8 have been canceled.
Any rejections and/or objections made in the previous Office Action and not repeated below are hereby withdrawn.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.
Claim Rejections - 35 USC § 103
Claims 1, 4-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashiro et al (US 2018/0142089, priority date 10/24/2017).
Regarding claims 1 and 9, Yamashiro discloses a pneumatic tire formed from a rubber composition (Abstract), comprising:
10-80% mass hydrogenated aromatic vinyl conjugated diene copolymer with 30-100% hydrogenation [0012],
1-200 parts by mass of silica [0021],
60 parts by mass or less of carbon black [0103], and
40% by mass or more and 90% by mass or less [0091] of a general purpose rubber which is at least one selected from the group consisting of natural rubber, isoprene rubber, styrene-butadiene rubber, and butadiene rubber [0012].
Yamashiro discloses that the hydrogenated copolymer preferably has a weight average molecular weight of 200,000-2,000,000 [0017] and is preferably a hydrogenated styrene butadiene copolymer [0015] which is functionalized [0016]. Note that the optional inclusion of butadiene rubber reads on applicant’s claimed 0-10 parts by mass of a butadiene rubber. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claims 4, 5, 6, and 7, Yamashiro further discloses the hydrogenated styrene butadiene copolymer having the following functional groups at an end thereof: a hydrocarbyloxysilyl group (formula 1) or a nitrogen, phosphorous, or sulfur-containing monovalent functional group [0057-0058].
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Yamashiro further discloses that groups R3, R4, and R5 (formula 1) are preferably 1-20 carbons in length [0020 and 0021]. Note that R3, R4, and R5 in Yamashiro are analogous to instant groups R1, R2, and R3 in instant formula (1). With respect to claim 7, the claimed functional group is an embodiment covered under the scope of Yamashiro [0048] and a specific embodiment listed in [0066]. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” (325 U.S. at 335, 65 USPQ at 301.). See MPEP 2144.07.
Response to Arguments
Applicant’s arguments, see (4), page 7, filed 9/4/2026, with respect to the 35 U.S.C. 112(b) rejection of claims 1-9 have been fully considered and are persuasive. The 112(b) rejection of pending claims 1, 4-7, and 9 has been withdrawn.
Applicant's arguments, see (5), page 9, filed 9/4/2026 have been fully considered but they are not persuasive. Applicant argues that the specific examples disclosed by Yamashiro contain 20 parts by mass of a butadiene rubber, which do not read on amended claim 1’s limitation of 0 to 10 parts by mass of a butadiene rubber. This is not persuasive because a teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Applicant’s arguments with respect to claims 4-6, see (6), page 12, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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