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 .
Election/Restrictions
Claims 17, 18, and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/17/2026.
Claims 1-16 and 20 remain pending.
Information Disclosure Statement
The information disclosure statement filed 6/26/2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Specification
The disclosure is objected to because of the following informalities:
[0013] and [0169]: “3-octoanoylthio-1-propyltriethoxysilane” is a typographical error and should read “3-octanoylthio-1-propyltriethoxysilane”.
[0094] “CATB” is believed to be a typographical error and should read “CTAB”.
Appropriate correction is required.
The use of the terms KBR-820, SE PB-5800, M0511, BUDENE, HI-SIL, HUBERSIL, ZEOSIL, ZEOPOL, NEWSIL, TOKUSIL, NXT SILANE, OPPERA, SPRINTAN, SI266, NEGOZONE, and STRUKTOL, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 10 is objected to because of the following informalities: “3-octoanoylthio-1-propyltriethoxysilane” is a typographical error and should read “3-octanoylthio-1-propyltriethoxysilane”. Appropriate correction is required.
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.
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kajita et al (EP 4039504 B1, priority date 1/11/2022, copy attached).
Regarding claims 1, Kajita discloses a rubber composition for tires, the rubber composition comprising:
100 phr of a diene rubber [0063], which may be polybutadiene rubbers [0063] and styrene-butadiene rubbers [0063] such as solution-polymerized styrene-butadiene rubbers [0064] which may be modified, such as 20-100% by mass of the rubber component of a modified SBR used in combination with 20-100% by mass of the rubber component of an unmodified BR [0080-0083];
50-200 phr of silica [0190];
3-20 phr of a mercapto silane coupling agent [0095-0096]; and
5-120 phr of a modified polymer component [0086, 0087], which is at least one selected from the group consisting of [0008] a modified resin, such as a hydrogenated DCPD/C9 resin (hydrocarbon traction resin) [0143] and a modified thermoplastic elastomer (one or more elastomers other than the polydiene component) [0012].
Kajita discloses that any polybutadiene is suitable for the unmodified BR comprising 20-100% by mass of the rubber component and that it is preferably a high-cis polybutadiene rubber having a cis content of 90% by mass or higher [0071]. Kajita’s disclosure of 20-100% of the 100 phr of a rubber component being a high-cis polybutadiene rubber having a cis content of 90% or higher thus teaches embodiments wherein the elastomers having a cis-butadiene content of greater than 90% total 20-100 phr of the rubber composition, which encompasses the claimed limitation of no more than 45 phr. Kajita further discloses that the styrene content of the styrene-butadiene rubber is preferably 3% by mass or higher and 60% by mass or lower [0065]. Kajita also discloses that the rubber component preferably has a Tg from -10 to -130°C [0055] and particularly discloses an example SBR with a Tg of -89°C [0146] (Table 1, SBR3). 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 claim 2, Kajita’s disclosure of 20-100% of the 100 phr of a rubber component being a high-cis polybutadiene rubber having a cis content of 90% or higher thus teaches embodiments wherein the elastomers having a cis-butadiene content of greater than 90% total 20-100 phr of the rubber composition, which encompasses the claimed limitation of no more than 40 phr. 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 claim 3, Kajita does not particularly disclose the proportion of elastomers having a cis-butadiene content higher than 60%. However, Kajita discloses a preference for high-cis (>90%) butadiene rubbers and does not particularly disclose lower-cis butadiene rubbers. Therefore, Kajita discloses embodiments wherein no elastomers are present with a cis-butadiene content between 60 and 90. As such, Kajita’s disclosure of 20-100 phr of elastomers having a cis-butadiene content greater than 90% also discloses 20-100 phr of elastomers having a cis-butadiene content greater than 60%, which encompasses the claimed limitation of no more than 40 phr. 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 claim 4, Kajita’s disclosure of 100 phr of a diene rubber component [0063], which may be 20-100% by mass of a modified SBR used in combination with 20-100% by mass of an unmodified BR [0080-0083] discloses embodiments wherein the content of the solution-polymerized styrene-butadiene rubber is 20-100 phr and the content of the polybutadiene rubber is 20-100 phr, which encompasses the claimed limitations of 55-90 phr of the solution-polymerized styrene-butadiene rubber and 10-45 phr of the polybutadiene 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 claim 5, as set forth above with respect to claim 4, Kajita discloses embodiments wherein the content of the polybutadiene rubber is 20-100 phr, which encompasses the claimed limitation of no more than 35 phr. 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 claim 6, as set forth above with respect to claim 1, Kajita discloses that the styrene content of the styrene-butadiene rubber is preferably 3% by mass or higher and 60% by mass or lower [0065]. 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 7 and 8, Kajita discloses examples of styrene-butadiene rubbers functionalized with aminoalkoxysilyl groups [0146] (Table 1, SBR1, SBR2, SBR3).
Regarding claim 9, as set forth above with respect to claim 1, Kajita discloses 50-200 phr of silica [0190]. 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 10, 11, and 12, Kajita particularly discloses 3-20 phr of a silane coupling agent [0095-0096], such as NXT silane (3-octanoylthiopropyltriethoxysilane) [0156] which may be used alone ( less than 2 phr of other coupling agents) or in combination [0095].
Regarding claims 13 and 14, Kajita particularly discloses that the modified resin in the modified polymer component is 50 phr of hydrogenated DCPD/C9 resin, such as OPPERA PR 383 [0143], (Table 3). 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 15 and 16, Kajita further discloses that the rubber composition may further comprise 0.5-10 phr of a wax [0115], 20-120 phr of a plasticizer other than the modified polymer component which may be a liquid plasticizer [0101-0102], and 1-30 phr of carbon black [0089, 0100].
Regarding claim 20, Kajita discloses a rubber composition for tires, the rubber composition comprising:
a diene rubber [0063], which may be polybutadiene rubbers [0063] and styrene-butadiene rubbers [0063] such as solution-polymerized styrene-butadiene rubbers [0064] which may be modified, such as 20-100% by mass of the rubber component of a modified SBR used in combination with 20-100% by mass of the rubber component of an unmodified BR [0080-0083];
50-200 phr of silica [0190];
3-20 phr of a mercapto silane coupling agent [0095-0096] such as NXT silane (3-octanoylthiopropyltriethoxysilane, a blocked mercapto organosilane coupling agent) [0156];
5-120 phr of a modified polymer component [0086, 0087], which is at least one selected from the group consisting of [0008] a modified resin, such as a hydrogenated DCPD/C9 resin (hydrocarbon traction resin) [0143] and a modified thermoplastic elastomer (one or more elastomers other than the polydiene component) [0012];
0.1-6.0 phr of sulfur (sulfur-based curing agent) [0118-0119];
0.5-10 phr of zinc oxide [0113]; and
0.3-10 phr of a vulcanization accelerator (cure accelerator) [0121-0122].
Kajita discloses that any polybutadiene is suitable for the unmodified BR comprising 20-100% by mass of the rubber component, but it is preferably a high-cis polybutadiene rubber having a cis content of 90% by mass or higher [0071]. Kajita’s disclosure of 20-100% of the 100 phr of a rubber component being a high-cis polybutadiene rubber having a cis content of 90% or higher thus teaches embodiments wherein the elastomers having a cis-butadiene content of greater than 90% total 20-100 phr of the rubber composition, which encompasses the claimed limitation of 15-30 phr of a high-cis polybutadiene rubber. Kajita discloses specific examples of suitable BRs with a cis-content of 97% by mass [0156-0157]. Kajita’s disclosure of 5-120 phr of a modified rubber component which may contain a modified thermoplastic elastomer reads on the claimed up to 10 phr of elastomers other than the solution-polymerized butadiene rubber and polybutadiene rubber. Kajita further discloses that the styrene content of the styrene-butadiene rubber is preferably 3% by mass or higher and 60% by mass or lower [0065]. Kajita also discloses that the rubber component preferably has a Tg from -10 to -130°C [0055] and particularly discloses an example SBR with a Tg of -89°C [0146] (Table 1, SBR3). Kajita particularly discloses that the modified resin in the modified polymer component is 50 phr of hydrogenated DCPD/C9 resin, such as OPPERA PR 383 [0143], (Table 3). 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).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 20 of copending Application No. 18/516,301 in view of Sato et al (US 20110086943 A1, priority date 4/14/2011).
The instant and copending claims require a solution-polymerized styrene butadiene rubber with a styrene content of 2-10 wt%, a polybutadiene rubber, silica filler, a blocked mercapto organosilane coupling agent, a hydrocarbon traction resin, a sulfur-based curing agent, zinc oxide, and cure accelerator. The copending claims differ slightly from the instant claims in their phr ranges. However, 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).
The copending claims also differ in that they require a substituted or unsubstituted phenol aldehyde resin. In the same field of endeavor, Sato discloses a rubber composition for use in tire treads which preferably includes a softener such as phenol-aldehyde resin [0067], present from 5-40 parts by mass to improve mixing processability without sacrificing physical properties [0068]. Sato particularly discloses that inclusion of such softeners allows for adjustment of the rubber composition’s hardness. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include or exclude a softener such as a phenol-aldehyde resin, motivated by a desire to adjust the hardness of a rubber composition.
The copending and instant claims also differ in that the copending application requires a solution-polymerized styrene butadiene rubber with a cis-1,4-butadiene content of less than 45, while the instant claims require a cis-1,4-butadiene content of at least 95. In the same field of endeavor, Sato discloses that both high-cis and low-cis butadiene rubbers can be used in their rubber composition [0021]. It is prima facie obvious to substitute equivalents known for the same purpose, so long as the equivalency is recognized in the prior art. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
In the alternative, it is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Thus, it would have been prima facie obvious, using no more than ordinary creativity, to vary the cis-1,4-butadiene content anywhere within the range of 0-100 so long as the desired wet skid resistance, low rolling resistance, and snow performance is achieved, which thus renders the claimed ratio prima facie obvious. See Ex Parte Jean-Paul Mardon, Jean Senevat, & Daniel Charquet, 101728,237, 2012 WL 1141738, at *2 (2012); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable...is ordinarily within the skill of the art.”); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“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.”).
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kasai et al (JP 2023072249 A, priority date 11/12/2021, English translation attached) discloses a rubber composition for tires with a styrene content of the rubber composition being 35% by mass or less, comprising (page 1, lines 21-27):
5-95% by mass (page 4, lines 43-46) of styrene-butadiene rubber, such as a solution-polymerized styrene-butadiene rubber (page 3, lines 29-31) which may be modified and is preferably modified with aminoalkoxysilanes (page 3, lines 41-57) and preferably has a styrene content of 3-50% by mass (page 3, lines 16-19),
5-95% by mass (page 5, lines 44-47) of butadiene rubber (page 4, lines 48-51) with a cis content of 80-99% by mass (page 5, lines 33-36),
1-80% by mass (page 6, lines 2-3) of a rubber component other than the butadiene rubber and styrene-butadiene rubber, such as isoprene rubber (page 5, lines 49-51),
70-160 parts by mass (page 8, lines 6-9) of a silica filler (page 7, lines 49-53),
30-90 parts by mass (page 15, lines 33-37) of a plasticizer component containing 10-100 parts by mass (page 14, lines 16-19) of a resin which is preferably dicyclopentadiene(DCPD)-based (page 13, lines 4-11) and plasticizers other than resins, such as 0.5-30 parts by mass (page 15, lines 6-7) of liquid polymers (page 14, lines 35-37) and
1-15% by mass (page 2, lines 12-15) of carbon black,
3-20 parts by mass (page 12, lines 12-15) of a silane coupling agent, of which 3-octanoylthiopropyltriethoxysilane is particularly preferred (page 11, lines 34-42),
0.5-10 parts by mass of a wax (page 16, lines 19-27),
1-10 parts by mass of zinc oxide (page 16, lines 38-45),
0.5-5 parts by mass of sulfur (sulfur-based curing agent) (page 16, line 52 to page 17, line 2), and
1-12 parts by mass of a vulcanization accelerator (cure accelerator) (page 17, lines 11-22).
Yamada et al (JP 2023081568 A, priority date 12/1/2021, English translation attached) discloses a rubber composition for tires with a total styrene content of the rubber component that is preferably 15-45% by mass (page 1, lines 58-59), comprising:
60-95% by mass of the rubber component (page 3, lines 45-48) of styrene-butadiene rubber, which may be solution-polymerized styrene-butadiene rubber (page 2, lines 29-31) which may be modified (page 2, line 42),
A diene rubber other than styrene-butadiene rubber, which is preferably isoprene rubber (1-20% by mass of the rubber component, page 4, lines 5-8) or butadiene rubber (1-30% by mass of the rubber component, page 5, lines 7-10) having a cis-content of 25-70% by mass (page 4, lines 56-59), which may be used together (page 3, lines 50-54),
90-170 parts by mass (page 7, lines 21-24) of silica (page 7, line 5),
A resin component containing a solid resin which may be a cyclopentadiene resin (page 11, lines 23-25) and is preferred to be a dicyclopentadiene-based resin present at 5-45 parts by mass (page 12, lines 38-47),
1-30 parts by mass of the rubber component (page 7, lines 2-3) of a thermoplastic elastomer other than the rubber component (page 6, lines 32-35) which is preferably styrene-based (page 6, lines 46-47) and has a styrene content of 5-50% by mass (page 6, lines 57-60),
1-20 parts by mass of an ester plasticizer that is liquid at room temperature (liquid plasticizer) (page 15, lines 17-40),
1-10 parts by mass of a wax (page 16, lines 17-25),
1-10 parts by mass of zinc oxide (page 16, lines 36-43),
0.5-3.5 parts by mass of sulfur (sulfur-based curing agent) (page 16, lines 51-60),
1-10 parts by mass of a vulcanization accelerator (cure accelerator) (page 17, lines 9-20),
1-30 parts by mass of carbon black (page 7, lines 53-56), and
3-16 parts by mass of a silane coupling agent (page 9, line 58 to page 10, line 2) which is particularly preferred to be 3-octanoylthiopropyltriethoxysilane (page 9, lines 27-28).
Kang et al (KR 102384417 B1, priority date 9/7/2020, English translation attached) discloses a rubber composition for tire tread, comprising:
100 parts by weight of rubber which is preferably a styrene-butadiene rubber and butadiene rubber [0035], particularly solution-polymerized styrene-butadiene rubber [0083],
80-120 parts by weight of silica [0015],
7-12 parts by weigh of a silica coupling agent [0015] which is preferably 3-octanoylthiopropyltriethoxysilane [0086],
45-75 parts by weight [0017] of a hydrogenated hydrocarbon resin and a terpene or terpene phenol resin [0015],
5-15 parts by weight [0017] of a process oil [0015],
2-5 parts by weight of sulfur (sulfur-based curing agent) [0017],
1.5-3 parts by weight of an accelerator [0017],
Black carbon [0088],
A wax [0089], and
Zinc oxide [0087].
Muller et al (DE 102021206271 A1, priority date 6/18/2021, English translation attached) discloses a sulfur-crosslinkable rubber composition and tires, comprising:
20-90 phr of a hydrogenated solution-polymerized styrene-butadiene copolymer [0012] with a styrene content of 5-40 wt% [0019],
10-50 phr of a solution-polymerized and functionalized polybutadiene [0012] which is preferably a low-cis polybutadiene with a cis content of 20-50 wt% [0021], ,
0-70 phr of at least one other diene rubber [0012] which may be a polybutadiene [0024],
40-350 phr of at least one filler [0012] which may be carbon black or silica among others [0026] but is preferably silica [0028] at 50-180 phr [0030],
1-15 parts by weight per 100 parts of silica of a silane coupling agent [0031] such as NXT silane (3-octanoylthiopropyltriethoxysilane) [0033],
Zinc oxide and waxes [0035],
A vulcanization accelerator (cure accelerator) [0037], and
A sulfur-donating substance or network-forming system (sulfur-based curing agent) [0040, 0041].
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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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763 .
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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