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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities: Multiple periods in the claims […(1)] (See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995) [MPEP 608.01(m)]. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: Claim does not end in a period (See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995) [MPEP 608.01(m)]. 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.
Claim(s) 1-3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi (JP 2013-28720). English machine translation for citation.
Regarding claims 1 and 5-6: Taniguchi (JP ‘720) discloses rubber compositions for a tire tread [0001], wherein the hardness was measured at 23 oC [0033] and the tan δ was measured at 35 oC [0035]. Taniguchi (JP ‘720) discloses the hardness and tan δ expressed as an index with the value of Comparative Ex. 1 [0032-0033; 0035]. Taniguchi (JP ‘720) discloses Example 1 [Ex. 1; 0029-0041; Table 1, Ex. 1] contains 40 parts by mass E-SBR (styrene butadiene rubber “SBR1502” [0011-0012; 0031]), 30 parts by mass S-SBR (styrene butadiene rubber terminally modified with and alkoxy group and an amino group “HPR355” [0011-0012; 0031]), 30 parts by mass NR (natural rubber 0013]), 25 parts by mass carbon black, and 50 parts by mass silica [Ex. 1; 0029-0041; Table 1, Ex. 1]. Taniguchi (JP ‘720) discloses the tan δ correlates to heat generation and rolling resistance performance [0035], and the hardness correlates to grip performance [0002].
Taniguchi (JP ‘720) does not specifically disclose a hardness (Hs) value of 55-62 and a tan δ value to satisfy 0.240 ≤ tan δ/Hs x 100 ≤ 0.320. However, “[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 2: Taniguchi (JP ‘720) discloses 1 to 100 parts by mass carbon black per 100 parts by mass rubber component [0020].
Taniguchi (JP ‘720) does not disclose Ex. 1 containing 2-5 parts by mass carbon black. 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) [See MPEP 2144.05].
Additionally, while the Ex. 1 does not contain 2-5 parts by mass carbon black, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have prepared a rubber composition containing 2-5 parts by mass carbon black, as Taniguchi (JP ‘720) discloses 1 to 100 parts by mass carbon black per 100 parts by mass rubber component [0020]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05].
Regarding claim 3: Taniguchi (JP ‘720) discloses 10 to 100 parts by mass silica per 100 parts by mass rubber component [0015].
Taniguchi (JP ‘720) does not disclose Ex. 1 containing 60 to 90 parts by mass 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) [See MPEP 2144.05].
Additionally, while the Ex. 1 does not contain 60 to 90 parts by mass silica, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have prepared a rubber composition containing 60 to 90 parts by mass silica, as Taniguchi (JP ‘720) discloses 10 to 100 parts by mass silica per 100 parts by mass rubber component [0015]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05].
Regarding claim 7: Taniguchi (JP ‘720) discloses a tire comprising the tire tread composition [0001; 0030; 0042].
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi (JP 2013-28720) (English machine translation) as applied to claim 1 above, when taken with Miyazaki (EP 2 716 700).
Regarding claim 4: Taniguchi (JP ‘720) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Taniguchi (JP ‘720) discloses HPR355 S-SBR having a Tg of -27 oC [0031].
Miyazaki (EP ‘700) provides evidence for HPR355 S-SBR having a Tg of -27 oC [0110].
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi (JP 2013-28720) (English machine translation) as applied to claim 1 above, when taken with Masumoto (US 2007/0037915).
Regarding claim 4: Taniguchi (JP ‘720) discloses the basic claimed composition [as set forth above with resect to claim 1]; wherein Taniguchi (JP ‘720) discloses SBR1502 E-SBR having a Tg of -66 oC [0031].
Masumoto (US 2007/0037915) provides evidence for SBR1502 E-SBR having a Tg of -66 oC [0032].
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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