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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 10, 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
4. Claim(s) 1-8 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horikawa (JP 2014-1278, of record) in view of Washizu (US 2016/0272796, newly cited) and Hasegawa (US 5,914,372, newly cited).
Horikawa is directed to a rubber composition having applicability in tire treads, wherein said composition includes a base rubber component (e.g. natural rubber), at least 10 phr or more of a specific copolymer, and between 5 phr and 200 phr of a reinforcing filler, such as carbon black and/or silica.
With further respect to said copolymer, Horikawa teaches the inclusion of 10-90% by mass of at least one conjugated diene compound and 10-90% by mass of at least one non-conjugated olefin, preferably ethylene. In regards to said diene compound, Horikawa specifically teaches the use of two or more compounds. Thus, the copolymer of Horikawa is seen to include ethylene, a first diene compound, and a second diene compound. Horikawa further includes a list of exemplary diene compounds, including 1,3, butadiene and isoprene. In such an instance, though, Horikawa is silent with respect to a diene compound (as a second diene compound) as required by the claimed invention (i.e. myrcene or farnesene).
It is extremely well known, though, that myrcene and farnesene are derivatives of 1,3 butadiene and isoprene and are commonly disclosed in an alternative manner to 1,3 butadiene and isoprene in tire rubber compositions, as shown for example by Washizu (Paragraph 35). It is emphasized that myrcene and farnesene fall under the general class of materials having two conjugated carbon-carbon double bonds and at least one non-conjugated carbon-carbon double bonds (general class is seen to encompass 1,3 butadiene, isoprene, myrcene, and farnesene). One of ordinary skill in the art would have found it obvious to use myrcene or farnesene in the copolymer of Horikawa since the disclosure of Horikawa teaches a plurality of exemplary diene materials that are well recognized as being similar to myrcene and farnesene and more particularly, are disclosed as alternatives to myrcene and farnesene in tire rubber compositions (reasonable expectation of success when using myrcene or farnesene in the copolymer of Horikawa).
It is emphasized that Horikawa specifically teaches a copolymer including a plurality of diene compounds and the claimed diene compounds are consistent with those that are commonly used in ethylene based copolymers and copolymers designed for tire applications.
Additionally, the claimed glass transition temperatures are consistent with those associated with ethylene based copolymers having a first diene component and a second diene component and used in tire components, as shown for example by Hasegawa (Column 3, Lines 50-57, Column 4, Lines 45-50, and Column 12, Lines 18+).
Also, copolymers in general are well recognized as having any number of conventional arrangements, including alternating, periodic, random, or statistical. One of ordinary skill in the art would have found it obvious to use any conventional arrangement for copolymers absent a conclusive showing of unexpected results.
Lastly, Table 6 is not seen to provide a conclusive showing of unexpected results since the lone comparative example is devoid of first and second diene compounds, while the closest prior art of record (Horikawa) specifically teaches a copolymer including two or more diene compounds (unclear if any realized benefits are simply a function of including first and second diene compounds, as opposed to being a function of specific first and second diene compounds).
Regarding claims 2, 3, and 8, Horikawa teaches an ethylene content (olefin content) between 10% and 90%.
With respect claims 4 and 5, Horikawa teaches an overall conjugated diene content between 10% and 90%. It is evident that each of the first diene compound and the second diene compound in a wide variety of modified rubber compositions of Horikawa would satisfy the claimed invention. For example, given an olefin content of 90%, each of a first diene content and a second diene content would have loadings less than 10%.
As to claims 6 and 7, the general disclosure of a conjugated diene content between 10% and 90% is seen to encompass the claimed loadings for the second diene compound.
With respect to claims 12 and 13, the rubber composition of Horikawa includes 5-200 phr of a reinforcing filler, such as carbon black and/or silica. This disclosure encompasses rubber compositions in which silica, for example, constitutes the entirety of the reinforcing filler.
Regarding claim 15, Horikawa is silent with respect to the inclusion of 1,2 cyclohexanediyl moieties and such is seen to satisfy the claimed invention. Additionally, the copolymer of Horikawa can include ethylene at loadings as high as 90 % and in such an instance, any additional monomers or materials would be present at loadings less than 10%.
Response to Arguments
5. Applicant’s arguments with respect to claim(s) 1-8 and 12-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 September 15, 2026
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