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.
Claim(s) 3, 6, and 8 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 because:
Claims 3 and 8 are indefinite because it recites “preferably”. It is unclear whether the limitations following the word “preferably” are mandatory or optional. For the purposes of examination, the limitations following the word “preferably” will be considered optional.
Claim 6 recites the limitation "the first carbon black" and “the second carbon black”. There is insufficient antecedent basis for this limitation in the claim and therefore the scope of the claim 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 6-7, and 9-15 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated over EP3868569 to Mori al. (as found on the IDS dated 11/29/2023)
Regarding Claim(s) 1, 9 ,14-15 Mori teaches a rubber composition that is vulcanized (i.e., crosslinked) to make a tire including a tread [0079] (reading on cross-linkable rubber composition, tyre, and method of claims 9 and 14-15). The rubber composition comprises a rubber component comprising isoprene based rubber [0023] (reading on 100 phr rubber component), reinforcing filler preferably comprising silica and carbon black [0035] (reading on white filler and black filler) wherein two or more silicas are used in combination [0036] (i.e., mixture of first white filler and second white filler) and wherein all inventive examples use silica 1 [table 1] which is ULTRASIL VN3 with a surface area of 175 m2/g [0082] (reading on the first white filler with surface area of 170-180 m2/g).
Regarding Claim(s) 2, Mori teaches the rubber composition of claim 1, comprising other reinforcing fillers wherein clay is preferable [0044] such as crown clay [0082] (i.e., kaolin clay).
Regarding Claim(s) 3 and 6, Mori teaches the rubber composition of claim 1, wherein 1-40 parts by mass [0043] (reading on 30-40 phr of claim 6) of two or more carbon blacks can be used in combination [0041] such as N339 and N550 that are the same commercially available carbon blacks in instant specification [I.S. 0020] and have BET surface areas of 90 and 65 m2/g respectively.
Regarding Claim(s) 7, Mori teaches the rubber composition of claim 1, wherein the rubber component comprises up to 80% my bass isoprene-based rubber [0026].
Regarding Claim(s) 10-13, Mori teaches the rubber composition of claim 1, as set forth above and incorporated herein by reference.
Mori does not particularly teach the elongation at break at 160°C, a rebound value at 70°C, a tan delta value at 70°C, or a tear strength value. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Mori, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. elongation at break at 160°C, a rebound value at 70°C, a tan delta value at 70°C, or a tear strength value - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
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.
Claim(s) 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over EP3868569 to Mori al.
Regarding Claim(s) 4, Mori teaches the rubber composition of claim 1, wherein the total amount of reinforcing filler per 100 parts of rubber component is not less than 20 parts by mass and not greater than 90 parts by mass. Mori further teaches the content of silica in the entire reinforcing filler is preferably not less than 50% by mass and not more than 95% by mass. As such, the amount of silica is reasonably calculated as 10-85 parts per mass.
Though the prior art range is not identical to the claimed range (5-10 phr), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim(s) 8, Mori teaches the rubber composition of claim 1, wherein the rubber component comprises 10-75% by mass butadiene rubber [0032].
Though the prior art further rubber range is not identical to the claimed range (0-20 phr), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over EP3868569 to Mori al. in view of US2004/0249045 to Goodman et al.
Regarding Claim(s) 5, Mori teaches the rubber composition of claim 1, comprising crown clay [0082] (i.e., kaolin clay).
Mori is silent regarding kaolin clan in an range of from 3 phr to 7 phr.
However, Goodman teaches kaolin clay usable as a filler for rubber compositions [Goodman, 0029] in an amount from 5-50 parts based on 100 weight of the rubber [Goodman, 0059]. Goodman and Mori are analogous art as they are from the same field of endeavor, namely rubber compositions comprising filling agents.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to use the amount of kaolin clay as taught by Goodman, in Mori’s rubber composition.
The motivation would have been that when kaolin clay is sued as a filler or extender material in a rubber composition, it provides a composition having an improved east of manufacture and enhance properties [Goodman, 0015].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached on (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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