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
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 17-18 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 term “high mileage” in claim 17 is a relative term which renders the claim indefinite. The term “high mileage” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The scope of the claim is unclear because there is no certainty with respect to what qualifies as high mileage and what would fail to qualify as high mileage. How many miles are necessary in order to qualify under the relative term "high" mileage? What mileage would fall outside the scope of the claim? How does one having ordinary skill in the art avoid infringement of Claim 17 by forming a tire without high mileage? The metes and bounds of this claim limitation cannot be readily ascertained. As such, the scope of dependent claim 18 is unclear.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-2, 4-6, 12 and 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shen et al. (CN 110724316) [IDS 5/15/25]. English machine translation for citation.
Regarding claims 1-2, 4-6, 12, and 14-15: Shen et al. (CN ‘316) discloses a conveyor belt prepared from a vulcanizable rubber composition [abstract], wherein Example 1 [Ex. 1] prepares a composition comprising 55 parts by weight natural rubber, 35 parts by weight polystyrene butadiene rubber, 10 parts by weight butadiene rubber, 5 parts by weight zinc oxide, 2 parts by weight fatty acid, 1.5 parts sulfur, 0.8 parts NOBS N-(N-(oxydiethylene)-2-benzothiazole sulfenamide [§ Summary of the invention]), 0.2 parts by weight TMTD (tetramethylthiuram disulfide [§ Summary of the invention]), 4 parts by weight NBC (N,N-dibutyl nickel dithiocarbamate [§ Summary of the invention]), 2 parts by weight 4010NA (N-isopropyl-N'-phenyl-p-phenylenediamine; antioxidant [§ Summary of the invention]), 3 parts by weight wax, and 68 parts by weight total carbon black [Ex. 1]. Shen et al. (CN ‘316) discloses vulcanizing the rubber composition to afford a conveyor belt [Ex. 1].
Shen et al. (CN ‘316) does not disclose a tire tread. However, 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 [see MPEP 2111.02].
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.
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.
Claim(s) 1, 4-11, 13, and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katou et al. (US 2014/0171580).
Regarding claims 1, 4, 6, 9-11, and 15: Katou et al. (US ‘580) discloses rubber compositions for tire treads [abstract; 0019; 0103], wherein Example 197 [Ex. 197; 0096-0102; Table 11, Ex. 197] prepares a rubber from a composition containing 100 parts by mass [0080] SBR-1 (styrene-butadiene rubber [0101]), 50 parts by mass carbon black, 10 parts by mass silica, 4 parts by mass silane coupling agent, 30 parts by mass aromatic oil, 2 parts by mass stearic acid, 1 part by mass antioxidant 6PPD, 0.6 part by mass 2-mercaptobenzothiazole, 1 part by mass zinc dibenzyldithiocarbamate, 1 part by mass antioxidant TMDQ, 2.5 parts by mass zinc flower, 0.6 part by mass 1,3-diphenylguanidine, 1 part by mass MBTS (di-2-benzothiazolyl disulfide [0101]), 0.6 part by mass TBBS (N-tert-butyl-2-benzothiazolylsulfenamide [0102]), and 1.5 parts by mass sulfur [Ex. 197; 0096-0102; Table 11, Ex. 197]. Katou et al. (US ‘580) discloses the rubber component can include natural rubber and synthetic dienic rubber [0071].
Katou et al. (US ‘580) does not specifically disclose Ex. 197 containing styrene-butadiene rubber (SBR-1) and natural rubber. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included natural rubber based on the invention of Katou et al. (US ‘580), and would have been motivated to do so since Katou et al. (US ‘580) discloses the rubber component can include natural rubber and synthetic dienic rubber [0071]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 5: Katou et al. (US ‘580) discloses 20 to 120 phr inorganic fillers, such as silica and carbon black [0072-0082] (50 phr carbon black and 10 phr silica [Ex. 197; 0096-0102; Table 11, Ex. 197]).
Katou et al. (US ‘580) does not specifically disclose no more than 2 phr silica. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claims 7-8: Katou et al. (US ‘580) discloses 0.6 part by mass TBBS, 1 part by mass zinc dibenzyldithiocarbamate and 1 part by mass MBTS [Ex. 197; 0096-0102; Table 11, Ex. 197]. Katou et al. (US ‘580) discloses blending the chemical agents (D) and (E) in adequate amounts as vulcanization accelerators [0061-0063].
Katou et al. (US ‘580) does not specifically disclose 0.05 to 0.4 phr MBTS [instant claim 7]; 0.8-1.5 phr TBBS, 0.4-0.9 phr zinc dibenzyldithiocarbamate and 0.07-0.2 phr MBTS [instant claim 8]. However, differences in concentration will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 13: Katou et al. (US ‘580) discloses 1.5 phr sulfur [Ex. 197; 0096-0102; Table 11, Ex. 197].
Katou et al. (US ‘580) does not specifically disclose 1.2 phr sulfur. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have include 1.2 phr sulfur as 1.2 phr is close enough to 1.5 phr.
Regarding claim 16: Katou et al. (US ‘580) discloses pneumatic truck tires [0019; 0039; 0103].
Claim(s) 2 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katou et al. (US 2014/0171580) as applied to claim 1 above, and further in view of Isitman et al. (US 2019/0062532).
Regarding claim 2: Katou et al. (US ‘580) discloses the basic claimed tire tread [as set forth above with respect to claim 1]; wherein Katou et al. (US ‘580) discloses the rubber component can include polybutadiene rubber (BR) [0071].
Katou et al. (US ‘580) does not specifically disclose 45-65 phr natural rubber and 30-55 phr styrene butadiene SBR-1. However, Isitman et al. (US ‘532) discloses rubber compositions for tire treads [abstract], wherein Example 1, Sample E3 [Ex. 1, E-3; 0078-0080; Table 1, E3] contains 50 phr styrene-butadiene and 50 phr natural rubber [Ex. 1, E-3; 0078-0080; Table 1, E3]. Katou et al. (US ‘580) and Isitman et al. (US ‘532) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of rubber compositions for tire treads. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 50 phr styrene-butadiene and 50 phr natural rubber, as taught by Isitman et al. (US ‘532) in the invention of Katou et al. (US ‘580), and would have been motivated to do so since Isitman et al. (US ‘532) discloses 50 phr styrene-butadiene and 50 phr natural rubber affords a tire having a very good wet property, a very good winter property, and improved RR [0080].
Regarding claim 12: Katou et al. (US ‘580) discloses the basic claimed tire tread [as set forth above with respect to claim 1]; wherein Katou et al. (US ‘580) discloses the rubber composition can include additives [0088].
Katou et al. (US ‘580) does not disclose 2.5-8 phr of wax. However, Isitman et al. (US ‘532) discloses rubber compositions for tire treads [abstract], wherein the rubber composition can contain about 5 phr of waxes [0070]. Katou et al. (US ‘580) and Isitman et al. (US ‘532) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of rubber compositions for tire treads. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined about 5 phr of waxes, as taught by Isitman et al. (US ‘532) in the invention of Katou et al. (US ‘580), and would have been motivated to do so since Isitman et al. (US ‘532) discloses the rubber composition can contain about 5 phr of waxes [0070].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katou et al. (US 2014/0171580) as applied to claim 1 above, and further in view of Nakamura (US 2021/0332221).
Regarding claim 3: Katou et al. (US ‘580) discloses the basic claimed tire tread [as set forth above with respect to claim 1]; wherein Katou et al. (US ‘580) discloses the rubber component can include natural rubber and synthetic dienic rubber [0071].
Katou et al. (US ‘580) does not specifically disclose polybutadiene rubber and styrene butadiene (SBR-1) at a weight ratio of at least 1.5:1. However, Nakamura (US ‘221) discloses rubber compositions for tire treads containing 10% by mass or more of polybutadiene rubber (BR) and 10% by mass or more styrene butadiene rubber (SBR) [abstract; 0017]. Nakamura (US ‘221) discloses up 60 mass% BR [0045-0046] and 20 mass% SBR [0031-0032] {thereby affording a 3:1 mass ratio of BR:SBR, and up to a 6:1 mass ratio of BR:SBR}. Katou et al. (US ‘580) and Nakamura (US ‘221) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of rubber compositions for tire treads. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 3:1 mass ratio of BR:SBR, as taught by Nakamura (US ‘221) in the invention of Katou et al. (US ‘580), and would have been motivated to do so since Nakamura (US ‘221) discloses up 60 mass% BR [0045-0046] and 20 mass% SBR [0031-0032] [0080] affords abrasion resistance (grip performance) of the tire tread [0031-0032; 0045-0046].
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN 110724316) as applied to claim 1 above
Regarding claim 13: Shen et al. (CN ‘316) discloses the basic claimed tire tread [as set forth above with respect to claim 1]; wherein Shen et al. (CN ‘316) discloses 1.5 phr sulfur [Ex. 1].
Shen et al. (CN ‘316) does not specifically disclose 1.2 phr sulfur. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have include 1.2 phr sulfur as 1.2 phr is close enough to 1.5 phr.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katou et al. (US 2014/0171580) as applied to claim 1 above, when taken with Ihara (US 2014/0128498).
Regarding claim 14: Katou et al. (US ‘580) discloses the basic claimed tire tread [as set forth above with respect to claim 1]; wherein Katou et al. (US ‘580) discloses 2.5 parts by mass zinc oxide (per 100 parts by mass SBR-1) [Ex. 197; 0096-0102; Table 11, Ex. 197].
Ihara (US ‘498) provides evidence that zinc flower is zinc oxide [0075].
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katou et al. (US 2014/0171580).
Regarding 17: Katou et al. (US ‘580) discloses a process for producing rubber compositions for tire treads [abstract; 0019; 0103], wherein Example 197 [Ex. 197; 0096-0102; Table 11, Ex. 197] prepares a rubber composition containing 100 parts by mass [0080] SBR-1 (styrene-butadiene rubber [0101]), 50 parts by mass carbon black, 10 parts by mass silica, 4 parts by mass silane coupling agent, 30 parts by mass aromatic oil, 2 parts by mass stearic acid, 1 part by mass antioxidant 6PPD, 0.6 part by mass 2-mercaptobenzothiazole, 1 part by mass zinc dibenzyldithiocarbamate, 1 part by mass antioxidant TMDQ, 2.5 parts by mass zinc flower, 0.6 part by mass 1,3-diphenylguanidine, 1 part by mass MBTS (di-2-benzothiazolyl disulfide [0101]), 0.6 part by mass TBBS (N-tert-butyl-2-benzothiazolylsulfenamide [0102]), and 1.5 parts by mass sulfur [Ex. 197; 0096-0102; Table 11, Ex. 197]. Katou et al. (US ‘580) discloses vulcanizing the rubber composition [Ex. 197; 0096-0102; Table 11, Ex. 197]. Katou et al. (US ‘580) discloses the rubber component can include natural rubber and synthetic dienic rubber [0071].
Katou et al. (US ‘580) does not specifically disclose Ex. 197 styrene-butadiene rubber and natural rubber. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included natural rubber based on the invention of Katou et al. (US ‘580), and would have been motivated to do so since Katou et al. (US ‘580) discloses the rubber component can include natural rubber and synthetic dienic rubber [0071]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 18: Katou et al. (US ‘580) discloses pneumatic truck tires [0019; 0103].
Allowable Subject Matter
Claims 19-20 are allowable.
The following is a statement of reasons for the indication of allowable subject matter: Katou et al. (US 2014/0171580) discloses rubber compositions for tire treads [abstract; 0019; 0103], wherein Example 197 [Ex. 197; 0096-0102; Table 11, Ex. 197] prepares a rubber from a composition containing 100 parts by mass [0080] SBR-1 (styrene-butadiene rubber [0101]), 50 parts by mass carbon black, 10 parts by mass silica, 4 parts by mass silane coupling agent, 30 parts by mass aromatic oil, 2 parts by mass stearic acid, 1 part by mass antioxidant 6PPD, 0.6 part by mass 2-mercaptobenzothiazole, 1 part by mass zinc dibenzyldithiocarbamate, 1 part by mass antioxidant TMDQ, 2.5 parts by mass zinc flower, 0.6 part by mass 1,3-diphenylguanidine, 1 part by mass MBTS (di-2-benzothiazolyl disulfide [0101]), 0.6 part by mass TBBS (N-tert-butyl-2-benzothiazolylsulfenamide [0102]), and 1.5 parts by mass sulfur [Ex. 197; 0096-0102; Table 11, Ex. 197]. While Katou et al. (US ‘580) discloses the rubber component can include natural rubber and synthetic dienic rubber [0071], Katou et al. (US ‘580) does not disclose a rubber composition for tire treads containing a ratio of natural rubber to polybutadiene rubber of 50:40 to 60:30, a ratio of polybutadiene to styrene-butadiene from 30:20 to 40:10, no more than 2 phr silica, and 0.05 to 0.4 phr MBTS with sufficient specificity. Such a reconstruction of the claims would be based on improper hindsight reasoning.
Nakamura (US 2021/0332221) discloses rubber compositions for tire treads [abstract; 0017] containing 10% by mass or more of polybutadiene rubber (BR) [0045-0046], 10% by mass or more styrene butadiene rubber (SBR) [0031-0032], 25% mass or more of natural rubber [0051-0053], 45 parts by mass carbon black, 0058], 5 parts by mass silica [0062], 0.75-1.5 parts by mass zinc dithiophosphates [0102-0106], and 0.5-3.0 parts by mass accelerators (ex. N-cyclocohexyl-2-benzothiazole sulfenamide and di-2-benzothiazolyl disulfide) 0107-0109]. Nakamura (US ‘221) does not disclose a rubber composition for tire treads containing a ratio of natural rubber to polybutadiene rubber of 50:40 to 60:30, a ratio of polybutadiene to styrene-butadiene from 30:20 to 40:10, no more than 2 phr silica, 0.5 to 2.0 phr N-cyclocohexyl-2-benzothiazole sulfenamide, and 0.05 to 0.4 phr di-2-benzothiazolyl disulfide with sufficient specificity. Such a reconstruction of the claims would be based on improper hindsight reasoning.
While Shen et al. (CN 110724316) discloses 40-70 parts by weight natural rubber, 25-50 parts by weight polystyrene butadiene rubber, 5-30 parts by weight butadiene rubber [abstract], and 4 parts by weight NBC (N,N-dibutyl nickel dithiocarbamate) [Ex. 1], Shen et al. (CN ‘316) does not disclose a ratio of natural rubber to polybutadiene rubber of 50:40 to 60:30, a ratio of polybutadiene to styrene-butadiene from 30:20 to 40:10, and 0.3 to 1.2 phr of NBC with sufficient specificity. Such a reconstruction of the claims would be based on improper hindsight reasoning.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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