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 § 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 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (CN 112280233, with English machine translation).
Regarding claim 11, Liu discloses an adhesive sealant formulation for tires ([0002]) that reads on the claimed composition comprising:
- from a minimum of 20% to a maximum of 35% by weight of the total formulation of block copolymers chosen from the group consisting of: polyisobutadiene (PIB), styrene-isoprene-styrene (SIS), styrene-butadiene-styrene (SBS), styrene-isoprene-butadiene-styrene (SIBS), styrene-ethylene-butadiene-styrene (SEBS), styrene-ethylene-propylene-styrene (SEPS), thermoplastic elastomers (TPE) (Liu discloses 30 wt% polymer rubber elastomer that includes SBS, SIBS, SEBS, SEPS [0039,0040]);
- from a minimum of 55% to a maximum of 75% by weight of the total formulation of resins chosen from the group consisting of: rosin resins, esterified rosin resins and other rosin derivatives, hydrocarbon resins, hydrogenated cycloaliphatic hydrocarbon resins, phenolic resins, styrene resins, or mixtures thereof (Liu discloses 55 wt% tackifier that includes rosin resins, petroleum resins, phenolic resins, [0039,0041]);
- from a minimum of 0.2% up to a maximum of 2.0% by weight of the total formulation of a mixture of stabilizers and antioxidants, wherein the quantity of stabilizers within the mixture varies from 0 up to a maximum of 1.50% by weight of the total formulation, and the amount of antioxidants varies from 0 up to a maximum of 1.50% by weight of the total formulation (Liu discloses 1 wt% antioxidant, [0039,0043])
- from a minimum of 5% up to a maximum of 35% by weight of the total formulation of paraffinic or naphthenic plasticizers (Liu discloses 11 wt% compatibilizer that includes hydrogenated cyclohexane oil, [0039,0042]); and
- from a minimum of 2% up to a maximum of 5% by weight of the total formulation of mineral fillers, including calcium carbonate and carbon black (2 wt% filler that includes calcium carbonate, carbon black, or a mixture thereof ([0039,0044]).
While Liu discloses multiple elastomers, resins, tackifiers and does not expressly disclose a specific combination, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the composition with the claimed components since Liu discloses the claimed weight percentages and suggests elastomers, resins, tackifiers, and mineral fillers that satisfy the claimed composition.
As to the adhesive sealant formulation being a thermoplastic hot-melt that is substantially free of vulcanizing agents, Examiner notes that Liu does not disclose vulcanization, cross-linking, or sulfur additives. While Applicant argues that zinc oxide is a vulcanization agent, Liu discloses DOP, liquid hydrogenated rosin ester, and liquid modified petroleum resin as alternatives to zinc oxide ([0045]) and thus suggests formulations without zinc oxide. Examiner notes that the instant application includes resins in the formulation (pg 3). As to the formulation being thermoplastic, "[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." See MPEP 2112.01. Here, the claimed and prior art compositions are substantially identical (both disclose a mixture of block copolymers, resins, plasticizers and filler and Liu does not disclose vulcanization) such that the thermoplastic characteristic is considered to be inherent or rendered obvious to a person having ordinary skill in the art at the time of the invention. Examiner notes that Liu discloses the material is designed to melt at high temperatures for application to the tire ([0055]).
Regarding claim 12, Liu does not expressly disclose the melting temperature of the formulation as 160C to 180C; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention for the formulation to satisfy the claimed melting temperature since Liu discloses a formulation having weight percentages and components that are substantially identical to the components of the claimed composition and thus the formulation is presumed to have a substantially identical melting temperature. See MPEP 2112.01 (I,II).
Response to Arguments
Applicant’s arguments regarding the rejection of claims 11-12 under 35 U.S.C. 112(a) are persuasive and the rejection is withdrawn.
Applicant's arguments regarding the rejection of claim 11-12 under 35 U.S.C. 103 as unpatentable over Liu (CN 112280233) have been fully considered but they are not persuasive. Applicant argues that Liu requires as a mandatory component of its composition, an “active agent” in amount of 0.5-1% and that the active agent is "one or a mixture of zinc oxide, DOP, liquid hydrogenated rosin ester, and liquid modified petroleum resin” ([0024]). Applicant argues that zinc oxide is a well-known vulcanization activator and its presence defines the chemical character of the composition. The other three named alternatives (DOP, liquid hydrogenated rosin ester, and liquid modified petroleum resin) are tackifiers and plasticizers. They are not substitute non-reactive "activators" performing the function that zinc oxide performs, and their mere listing as alternatives does not alter the reactive, vulcanization-prone nature of Liu' s primary processing teachings. Applicant also points to Liu’s teachings of sustained kneading of the elastomer-based mass at 200-230°C for 12 to 15 hours and that the material remains in shape at high temperatures between 70 and 120 degrees.
Examiner disagrees. Liu discloses zinc oxide as one of four options. The three alternatives are not involved with vulcanization. Liu does not disclose the inclusion of a vulcanization or cross-linking agent such as sulfur and expressly states that the material is “melted at high temperature by special spraying equipment,” “sprayed on the inner wall of the tire,” and then cooled with cold air to solidify the material ([0055-0056]). One having ordinary skill in the art would understand a thermoset material to be functionally incapable of melting due to cross-linking reactions. Also, it is unclear how a thermoset could be melted and sprayed. One having ordinary skill in the art would not expect a thermoset to be sprayable, as they cannot melt nor can they dissolve in solvents. Thermosets therefore cannot be in a liquid state, which would presumably be required for spraying the composition. Examiner notes that remaining solid at temperatures between 70 and 120C degrees does not preclude the material from melting at higher temperatures—for example, the instant invention cites a melting temperature of 160-180C which means it would be solid between 70 and 120C.
Additionally, arguments presented by the applicant cannot take the place of evidence in the record. See MPEP 2145(I). Applicant states that the kneading conditions are “a processing regime indicative of a reactive process apt to induce chemical cross-linking” but has not provided factual evidence demonstrating that the composition of Liu is vulcanized or cross-linked. Examiner notes that while zinc oxide is a cure activator in sulfur-based vulcanization of rubber, Liu does not disclose sulfur added to the composition. Examiner also emphasizes that Liu does not necessarily require zinc oxide ([0045]) and that the material must melt at high temperature for application ([0055]).
As additional evidence regarding the function of the listed “activator” components in a rubber mixture, Examiner notes that Ma (CN 201410032968, cited in IDS filed 8/06/2026) similarly discloses a tire sealant layer composition comprising elastomer, tackifier, solvent, antioxidant, filler, and an “active agent” (see English machine translation, middle of pg 4). Similarly to Liu, Ma discloses the active agent is one or more of “zinc oxide, dioctyl phthalate (DOP), liquid hydrogenated rosin ester, and liquid modified petroleum resin” and Ma explains that this component improves mixing and increases the speed to make the material. Thus, these “active agent” / “activator” components are not included for vulcanization, but for blending/mixing purposes.
Regarding claim 12, Applicant argues that the compositions are not identical or substantially identical because the formulation is at least partially cross-linked.
Applicant’s arguments regarding cross-linking of the composition are unpersuasive for the reasons noted above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
