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 .
Claim Rejections - 35 USC § 112
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
No express antecedent basis is seen for the 160 phr upper limit defining the silica and, as such, said content is deemed new matter. The highest silica content disclosed in the specification appears to be 140 phr [0073].
Claims 1-20 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.
In claims 1, 18 and 20, it is unclear how the hydrocarbon traction resin distinguishes over the rosin-derived tackifier resin. In this regard, it is known in the art, e.g., US 2017/0145195 (Isitman) abstract/[0043], that hydrocarbon resins include rosin resins. Thus, it is unclear whether Applicants’ composition comprises two different hydrocarbon resins or whether it can comprise a single rosin-derived resin which simultaneously meets the definitions of both a traction resin and a tackifier resin.
In claim 7, the type of blocking agent defining the “blocked” mercapto organosilane is unclear.
In claim 18, the type of functional groups defining the “functionalized” solution-polymerized styrene butadiene rubber is unclear.
Claim Rejections - 35 USC § 103
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.
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 1-3, 5, 6 and 8-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0283602 (Isitman ‘602) in view of US 2017/0232795 (Isitman ‘795).
Isitman ‘602 discloses a tire tread formed from a vulcanizable rubber composition comprising:
about 20 to about 60 phr of a solution polymerized styrene-butadiene rubber having a glass transition temperature (Tg) of -85°C to -50°C;
about 45 to about 80 phr of a polybutadiene rubber;
0 to 20 phr of a process oil;
55 to 80 phr of a resin selected from C5/C9 resins and DCPD/C9 resins;
110 to 160 phr silica; and
additional materials inclusive of sulfur-vulcanizing agents, zinc oxide and cure accelerators [0075-0076] (e.g., abstract, [0012-0017], [0030-0032], examples, Tables 1-4, claims).
Illustratively, Isitman ‘602 discloses a tire tread from a composition (example E1 per Table 1) comprising:
45 phr of a solution polymerized styrene-butadiene (Trinseo SLR3402) rubber having a styrene content of 15 wt.% and a Tg of -60°C (meets Applicants’ styrene-butadiene rubber and content thereof);
55 phr of a polybutadiene (Budene 1223) rubber (meets Applicants’ polybutadiene rubber and content thereof);
10 phr of sunflower (Agripure) oil (meets Applicants’ processing oil and content thereof);
8.8 phr of a silane (TESPD) coupling agent (meets Applicants’ organosilane coupling agent and content thereof);
140 phr of silica (Hi-Sil) (meets Applicants’ silica and content thereof);
65 phr of a C5/C9 resin (Wingtack ET) (meets Applicants’ hydrocarbon traction resin and content thereof);
2.5 phr zinc oxide (meets Applicants’ zinc oxide);
1.2 phr sulfur (meets Applicants’ sulfur-based curing agent); and
6.0 phr cure accelerator (meets Applicants’ cure accelerator).
In essence, claim 1 differs from Isitman ‘602 in requiring the additional presence of a rosin-derived resin. In this regard, Isitman ‘795, directed to similar-such tire tread compositions, teaches [0020]/[0042] rosin resins as viable resin alternatives to those expressly disclosed by Isitman ‘602. Accordingly, it would have been obvious to one having ordinary skill in the art to further incorporate a rosin resin as per Isitman ‘795 as an additional resin in the composition disclosed by Isitman ‘602 for its expected additive effect and with the reasonable expectation of success.
As to claim 2, Isitman ‘602 example E1 comprises 55 phr polybutadiene rubber.
As to claim 3, Isitman ‘602 example E1 comprises 45 phr solution polymerized styrene-butadiene rubber.
As to claim 5, Isitman ‘602 example E1 does not comprise polyisoprene rubber.
As to claim 6, Isitman ‘602 example E1 comprises 140 phr silica.
As to claims 8 and 9, Isitman ‘602 example E1 comprises 65 phr resin.
As to claim 10, it would have been obvious to one having ordinary skill in the art to further incorporate any appropriate amount (inclusive of presently claimed weight ratios) of a rosin resin per Isitman ‘795 as an additional resin in the composition disclosed by Isitman ‘602 for its expected additive effect and with the reasonable expectation of success. Thus, absent evidence of criticality for the presently claimed resin weight ratios, no patentability can be seen therein.
As to claim 11, Isitman ‘795 teaches [0042] that rosin resins inclusive of gum rosins are viable resin alternatives to those expressly disclosed by Isitman ‘602 and, as such, it would have been obvious to one having ordinary skill in the art to incorporate a gum rosin for its expected additive effect.
As to claim 12, it is within the purview of Isitman ‘602 inventive disclosure [0057], and obvious to one having ordinary skill in the art, to use a hydrogenated dicyclopentadiene/C9 resin, e.g., Oppera 383, for its expected additive effect.
As to claim 13, Isitman ‘602 example E1 comprises 65 phr resin and 10 phr sunflower oil, i.e., a ratio of 6.5:1.
As to claims 14 and 20, it would have been obvious to one having ordinary skill in the art to further incorporate any appropriate amount (inclusive of presently claimed amounts) of a rosin resin per Isitman ‘795 as an additional resin in the composition disclosed by Isitman ‘602 for its expected additive effect and with the reasonable expectation of success. Thus, absent evidence of criticality for the presently claimed resin amounts, no patentability can be seen therein.
As to claim 15, it is within the purview of Isitman ‘602 inventive disclosure [0075], and obvious to one having ordinary skill in the art, to further include a wax for its expected additive effect.
As to claim 16, Isitman ‘602 example E1 does not comprise carbon black.
As to claim 17, Isitman ‘602 discloses pneumatic tires having the tread (e.g., abstract).
As to claim 18, Isitman ‘602 method of producing the tire tread comprises the same steps of forming the vulcanizable rubber composition, shaping and curing [0080].
As to claim 19, Isitman ‘602 method of forming a tire comprises co-curing with other vulcanizable components such as antioxidants, stearic acid (e.g., Table 1).
Further as to claim 20, Isitman ‘602 example E1 comprises the fatty acid stearic acid.
Claim 4 is rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 2020/0283602 (Isitman) in view of US 2017/0232795 (Isitman ‘795), as described hereinabove, further as evidenced by US 2017/0114212 (Pompei).
As to claim 4, the solution polymerized styrene-butadiene rubber (Trinseo SLF3402) used in Isitman ‘602 examples is functionalized with an alkoxysilane group and a thiol group, as evidenced by Pompei [0033].
Claim 7 is rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 2020/0283602 (Isitman) in view of US 2017/0232795 (Isitman ‘795), as described hereinabove, further as evidenced by US 2026/0049207 (Dennis-Pelcher).
As to claim 7, the silane coupling agent (TESPD) used in Isitman’s examples comprises a blocked mercaptosilane, as evidenced by Dennis-Pelcher [0038].
Response to Arguments
Applicants’ arguments filed July 29, 2026 have been fully considered but they are not persuasive in overcoming the 35 USC 103 rejections based on US 2020/0283602 (Isitman ‘602) in view of US 2017/0232795 (Isitman ‘795).
Applicants argue that combining a hydrocarbon traction resin with a rosin derived tackifier resin is not specifically exemplified nor inherently suggested by either of the Isitman references. Isitman ‘795, however, teaches that rosin resins are viable resin alternatives to those expressly disclosed by Isitman ‘602. Accordingly, it would have been obvious to one having ordinary skill in the art to further incorporate a rosin as per Isitman ‘795 as an additional resin in the composition disclosed by Isitman ‘602 for its expected additive effect and with the reasonable expectation of success. While Isitman ‘795 does not expressly describe the rosin resins as tackifier resins, it would have been obvious to further incorporate a rosin as per Isitman ‘795 as an additional resin in the composition disclosed by Isitman ‘602 for its expected additive effect and with the reasonable expectation of success. The fact that Applicants have recognized another advantage, i.e., pacification function, which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Notably, there appears to be no structural difference between the presently claimed rosin-derived tackifier resin and the rosin resins disclosed by Isitman ‘795 and, as such, it is reasonably expected that the latter would be capable of performing the same pacification function. A review of the present specification data fails to demonstrate unusual or unexpected results for using the hydrocarbon resin in combination with the rosin resin.
Conclusion
Applicants’ 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 Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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