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 3 and 4 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 recitation of “a ratio of 6 to 15% by mass” in claims 3 and 4 causes confusion. Ratios are unitless. However, the claims recite a percentage as a unit for the ratio. Therefore, the recitation of a ratio with a percentage causes confusion. For purposes of examination, Claim 3 and 4 are interpreted as “an amount of 6 to 15% by mass”.
Claim Interpretation
The examiner interprets the phrase “for a tire tread” in claims 1-9 and “for a heavy-load tire” in claim 2 as reciting the purpose or intended use of the claimed rubber composition. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. (MPEP 2111.02(11) (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161,1165 (Fed. Cir. 1999) and Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation")).)
Claim Analysis
Summary of Claim 1:
A rubber composition for a tire tread, comprising:
100 parts by mass of diene rubber containing 50% by mass or more of natural rubber and/or isoprene rubber;
14 to 30 parts by mass of carbon black having a nitrogen adsorption specific surface area of 80 to 150 m2/g; and
30 to 80 parts by mass of silica having a nitrogen adsorption specific surface area of 120 to 250 m2/g,
wherein a content rate between the silica and the carbon black (silica/carbon black) by mass rate is more than 1.
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.
Claims 1-3, 5-6, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oshimo et al. (WO 2022024884).
The examiner refers to the US equivalent of WO 2022024884, US 20230286325.
Regarding claim 1, Oshimo et al. disclose a rubber composition in Example 6 comprising 50 parts by mass of natural rubber, 30 parts by mass of styrene butadiene rubber, 20 parts by mass of butadiene rubber, 15 parts by mass of a carbon black having a nitrogen adsorption specific surface area of 115 m2/g, and 60 parts by mass of a silica having a nitrogen adsorption specific surface area of 230 m2/g (see Table 1, [0112-0132], equivalent to 100 parts by mass of diene rubber and containing 50% by mass of natural rubber and a content rate of 3, thereby lying within the claimed ranges of the amount of diene rubber, natural rubber, carbon black, and silica, nitrogen adsorption specific surface area of carbon black and silica, and content rate between silica and carbon black.
Regarding claim 2, Oshimo et al. disclose the rubber composition of claim 1 as rejected above.
Regarding claim 3, Oshimo et al. disclose the rubber composition of Example 6 comprises 6.0 parts by mass of a silane coupling agent Si266 which is bis(triethoxysilylpropyl)disulfide (Table 1), thereby reading on a silane coupling agent having a sulfide bond and equivalent to an amount of 10% by mass relative to the content of silica and thereby lying within the claimed range.
Regarding claim 5 and 6, Oshimo et al. disclose the rubber composition of Example 6 comprises 60 parts by weight of silica and 15 parts by weight of carbon black (Table 1), equivalent to a content rate of 4 and thereby lying within the claimed ranges.
Regarding claim 9, Oshimo et al. disclose the rubber composition of Example 6 comprises 60 parts by weight of silica and 15 parts by mass of carbon black (Table 1), equivalent to a total of content of silica and carbon black of 75 parts by mass per 100 parts by mass of diene rubber and thereby lying within the claimed range.
Regarding claim 10, Oshimo et al. disclose the rubber composition of Example 6 was used to form a test tire and filled with air to a normal internal pressure [0134-0139], thereby reading on a pneumatic tire.
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.
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Oshimo et al. (WO 2022024884).
The rubber composition of claim 1 is incorporated herein by reference.
Regarding claim 4, Oshimo et al. disclose the rubber composition of Example 6 comprises 6.0 parts by mass of a silane coupling agent Si266 which is bis(triethoxysilylpropyl)disulfide (Table 1), equivalent to an amount of 10% by mass relative to the content of silica and thereby lying within the claimed range.
Oshimo et al. do not disclose Example 6 comprises a mercapto silane coupling agent.
However, Oshimo et al. broadly teach mercapto based silane coupling agents can also be used [0047]. Therefore, one of ordinary skill in the art would have considered it obvious to substitute the sulfide based coupling agent in Example 6 with the mercapto based silane coupling agent as broadly taught by Oshimo et al.
Regarding claim 7, Oshimo et al. disclose the rubber composition of Example 6 comprises a silica having a nitrogen adsorption specific surface area of 230 m2/g (Table 1), thereby lying outside the claimed range.
However, Oshimo et al. broadly teach the nitrogen adsorption specific surface area of the silica is 170 m2/g or more [0037-0040], thereby overlapping the claimed range. 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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Oshimo et al.
Regarding claim 8, Oshimo et al. disclose the rubber composition of Example 6 comprises a carbon black having a nitrogen adsorption specific surface area of 115 m2/g (Table 1), thereby lying outside the claimed range.
However, Oshimo et al. broadly teach the nitrogen adsorption specific surface area of the carbon black is 50 m2/g or more [0041-0043], thereby overlapping the claimed range. 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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Oshimo et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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