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 .
Priority
The effective date of the instant invention is 2/16/2024. Instant invention claims no foreign or domestic priority. This means that if the prior art applied has at least one common inventor, the grace period for this application is 2/16/2023.
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 § 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.
Claims 1-7, 9-15, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Steiner (US 2020/0071506), reference identified in IDS filed 2/16/2024.
With respect to claims 1, 2, 17 and 18, Steiner discloses composition for use in tires and specifically tire treads (see claim 1 of Steiner):
As component a) a combination of two styrene-butadiene rubbers. The first styrene butadiene rubber having glass transition temperature in a range of -50oC to -80oC and second styrene butadiene having glass transition temperature in a range of -10oC to -40oC. Both rubbers are solution polymerized and both rubbers are modified with functional group which is alkoxy and either amine or thiol. See also inventive example 5 showing total content of rubber to be 80 parts.
As a component b) a polyisoprene rubber in an amount of 0-40 parts, for more specificity, example 5 in Table 1 discloses polyisoprene used in an amount of 20 parts.
As component c) silica in an amount of 120-180 parts
As component d) a hydrocarbon resin having glass transition temperature of at least 30oC and utilized in an amount of 20-60 parts. For better specificity, claim 8 of Steiner discloses a copolymer of styrene/alphamethyl styrene. Exemplified resin is Sylvatraxx 4401, which is the same alpha methyl styrene resin disclosed in applicant’s examples. Please note that the examples are used to show specificity, and by no means exclude or teach away from what is claimed by Steiner. Consequently, by virtue of tradename Sylvatraxx 4401 meets the physical properties of instant claim 2.
With respect to claim 3, Steiner discloses overall BET for silicas to be in a range of 30-300m2/g [0053], wherein one out of 7 tradenames listed is Z1165MP, which is exactly the same tradename utilized in the present invention.
With respect to claim 4, the specific content of silica within the range disclosed above (component c) is 112-155 (see Table 1).
With respect to claim 5, additional components suitable for the tire tread of Steiner include:
1-10 parts of carbon black [0057]
5-15 parts of silanes [0064]
With respect to claim 6, while Steiner teaches oil, they are referred to as processing oils not plasticizers. Content of plasticizer can be zero since limitation of up to 9phr has no lower limit.
With respect to claim 7, Steiner teaches content of mercaptosilanes to be 5-15 phr [0064] and it includes capped mercaptosilane [0062].
With respect to claim 9, the SSBR3 with Tg of -60oC is utilized an amount of 42 parts (first rubber) and SSBR4 (Tg of -27oC) second rubber is utilized in an amount of 38 parts (Example 5).
With respect to claim 10, natural rubber is utilized in 20 parts as per example 5 (Table 1).
With respect to claims 11 and 12, both rubbers are functionalized with alkoxysilane groups (see Steiner’s claim 1), which will have inherent affinity to pendant OH groups on silica filler.
With respect to claim 13, the functional groups on both SBR are described in [0022-0023] wherein one end is a terminating agent comprising primary amine group and alkoxysilyl group [0023]. The second end is modified with alkoxysilane.
With respect to claim 14, exemplified rubber has Tg of -60oC (SSBR3) Table 1, example 5, all other exemplified rubbers have glass transition temperatures of -25oC, -27oC and -37oC (Table 1).
With respect to claim 15, per claim 1 of Steiner, the resin is utilized in an amount of 20-60 phr, which was also addressed in rejection of claim 1.
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.
2 Claims 1-6, 9-11, 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Mondal (US 2022/0372254) in view of evidence in Steiner reference.
With respect to claims 1, 2, 17 and 18, Mondal discloses rubber composition for tires and tire treads. The rubber composition comprising total 100 parts of rubber [0049]:
A solution polymerized SBR rubber has glass transition temperature of –30oC to 0oC utilized in 50 phr or less (Abstract) [0019]. This rubber meets the limitation of the instantly claimed first rubber.
A solution polymerized SBR has glass transition temperature of -120oC to -40oC, utilized in an amount of at least 15 phr (Abstract)[0022], wherein content of second rubber can be as high as 30 parts such that total content of SBR rubber is more than 70 phr. This rubber meets the limitation of instantly claimed second SBR rubber
A natural rubber or synthetic polyisoprene rubber utilized in an amount of at least 10 phr (Abstract) [0023].
60-130 phr of silica [0032]
1-35 parts of resin which has Tg of at least 30oC selected from aliphatic or aromatic resins, wherein the aromatic resin is based on alpha-metal styrene and selected from the list of 7.
A genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because "one skilled in [the] art would... envisage each member" of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962).
While Mondal does not explicitly stated what the molecular weight of the alpha methyl
styrene resin it, he disclosed its glass transition temperature. As it is evidenced by Steiner reference utilized in the rejection above, alpha methyl styrene resin with glass transition temperature has softening point and molecular weight as claimed (see examples of Steiner). Consequently, the molecular weight and the softening temperature are inherent property of the alpha methyl styrene of Mondal additionally anticipating instant claim 2.
With respect to claim 3, the silica exemplified by Mondal HDS MP is made by PPG which sold its silica production in November 2024. The silica in Mandel is a micro pearl dispersion, wherein HDS means highly dispersible and MP means micro pearl. Functional equivalents of this type of silica, based on the industry it was used in include ZEOSill 1165 MP (utilized by applicants). This silica is utilized in tire treads because it enhances abrasion resistance.
With respect to claim 4, silica is utilized in amount of 60-130 phr, exemplified amount is 120 or 130 phr (claim 9 and examples only to provide sufficient specificity).
With respect to claim 5, Mondal discloses use of silane coupling agents in an amount of 1-15 phr [0030].
With respect to clam 6, term at most 9 phr is viewed as including zero. Mondal does not teach use of liquid plasticizers.
With respect o claim 9, the content of the two rubbers meets instant claims, as shown in several examples.
With respect to claim 10, content of the natural rubber can be at least 15 parts (example 3).
With respect to claim 11, both SBR rubber disclosed in examples HPR850 which is modified with alkyoxysilane and primary amine wherein structure of the modifying agent is disclosed in [0018].
With respect to claim 14, the exemplified rubbers SSBR I has Tg of -25oC, and SSBR II has Tg of -65oC [0055-0056].
With respect to claim 15, content of the resin is at most 35 parts as mentioned in the rejection of claim 1.
With respect to claim 16, while the glass transition temperature of the instant invention is not disclosed, such will be obvious for following reasons: The SBR rubbers are utilized with the overlapping amounts, which meet the minimum content of claim 9, the natural rubber is utilized in the same amount as is silica and resin. Consequently, the glass transition temperature of the composition of claim 1 is met. Based on the scope of claim 1, the claimed components in the claimed amounts is all that is needed to meet instant claim 16.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kaes (CN 115044115 translation provided, US equivalent for table translations is 2023/0086513) in view of Stainer (2020/0071506).
With respect to claim 1, Kaes discloses rubber blend for tire treads, wherein the blend comprises following (claim 1 of Kaes):
70-90 phr of styrene butadiene rubber (SBR) comprising first SBR having glass transition temperature of -49oC to -15oC, and second SBR having glass transition temperature in a range of -50oC to -89oC,
10-30 phr of natural rubber,
At least 10 phr of resin, wherein C9 resin is defined in [0013] as including alpha methyl styrene. The resin is defined as having softening point in a range of 80-110oC, and weight average molecular weight of 80-150oC [0009] which properties further meet instant claim 2.
The difference between instant invention is the content of silica. Specifically, Kaes teaches that silica is utilized in an amount of 40-70 phr because it improves hysteresis properties or rolling resistance while substantially maintaining or even improving wet grip properties of the tire tread [0008]. Kaes discloses this range as preferred range without excluding higher amounts, and without providing any information as to detrimental effects of the higher content of silica.
Steiner discloses another tire tread composition comprising blend of SBR having the same Tgs and the same resin in the same ranges, including natural rubber and its content. Rubbers disclosed in Steiner are also modified with aminosilanes, wherein functionalization with aminosilanes improves adhesion property between silica filler and rubber itself. Steiner’s composition is also utilized to make tire treads however, silica content is in a range of 120-180 phr. The silica has BET in a range of 50-300 and includes silicas such as Z1165MP (BET 160 also utilized by the applicants).
The goal of Steiner’s composition is to provide tire tread with improved rolling resistance and wet skid resistance. Since these two properties are viscoelastically inconsistent a lot of research has to be performed. Steiner disclosed in Table 2 change in properties based on the content of silica, specifically example 5, the composition has properties in the same range. For example, rolling resistance of 103 and wet performance index 104 meet the properties of Kaes’ examples 3.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art to utilize amount of silica of Sandstrom and still obtain the composition having the same properties. Having said that if the content of silica is changed the type of silica will also have to be changed. This is because factor in balancing wet grip and rolling resistance of the composition is the BET of the silica. Higher BET, more surface area for interaction with rubber and coupling agents increases rubber-silica interface. This interface is what enhances wet traction and at high BET (above 220) the tradeoff will plateau.
Consequently, the amount of silica and its BET further meet the limitations of instant claims 3 and 4.
With respect to claims 5 and 6, Kaes discloses additional components in his claim 8 to include:
0.1-10 phr carbon black,
4-8 phr of silanes,
4-7 phr of capped mercaptosilanes,
0-10 phr of liquid plasticizers.
With respect to claim 7, Kaes teaches content of capped mercapto silanes in an amount of 4-8 phr. However, this amount is tied to the content of fillers and additives. Consequently, if the content of silica is as disclosed in Steiner, then the content of the mercaptosilane will also change. Steiner teaches that for the composition having silica content of 120-180 phr the content of blocked mercaptosilane [0062] will be in a range of 0.5-20 phr. Preferably 5-15 phr [0064].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize content of capped mercaptosilane as taught in Steiner because the content of silica has increased. The content of the silane has to be increased as well in order to ensure that all silica has proper functionalization in order to properly adhere to the base rubber composition.
With respect to claim 8, Kaes discloses use of oil in an amount of 0-10 phr preferably less than 5 phr [0018].
With respect to claim 9, the content of first SBR is 5-50 phr and content of second SBR is 5-30 phr. The examples disclosed in Table 1, teach that first rubber (SSBR3) is 20 phr or more, and the content of second SBR (SSBR2) is at least 45 phr.
With respect to claim 10, in addition to range disclosed above, natural rubber in Table 1 is utilized in amount of 20 phr.
With respect to claims 11-13, the SBR rubbers are functionalized with amino siloxanes (See legend between Table 1) [0021, 0023], which functionalities are configured for coupling with silica [0022].
With respect to claim 14, first exemplified SBR has Tg of -27oC and second exemplified rubber has Tg of -62oC (see legend under Table 1).
With respect to claim 15, the composition comprises 10-40 parts of resin (claim 1).
With respect to claim 16, glass transition temperature of the composition is in a range of -15oC to -25oC [0069].
With respect to claims 17 and 18, the composition of Kaes is utilized to make tire treads.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 29, 2026
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