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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horikawa (JP 2014-1278, of record) in view of Egami (US 5,422,185, of record) and Washizu (US 2014/0100316, of record).
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 (corresponds, for example, with myrcene and farnesene).
It is extremely well known and conventional to include any number of diene compounds, including myrcene, for example, when forming ethylene based copolymers, as shown for example by Egami (Column 3, Lines 1-24). It is emphasized that Egami similarly includes 1,3 butadiene and isoprene as possible diene compounds, suggesting the alternative use of 1,3 butadiene, isoprene, and myrcene. Washizu is further provided to evidence the specific use of copolymers including (a) myrcene and/or farnesene (claimed second diene compound) AND (b) a conjugated diene compound, such as 1,3 butadiene or isoprene (claimed first diene compound), for tire tread applications in order to promote wet grip performance and low fuel consumption (associated with tan delta property) (Abstract and Paragraphs 34-36 and 102). As such, one of ordinary skill in the art would have found it obvious to use the claimed combination of diene compounds in the tire rubber composition 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. 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.
Regarding claims 9 and 10, Horikawa specifically teaches the use of first and second diene compounds and the claimed combination of diene compounds are consistent with those that are commonly used in copolymers, as shown for example by Egami and Washizu.
As to claim 11, 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.
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.
Response to Arguments
Applicant's arguments filed June 3, 2026 have been fully considered but they are not persuasive.
Applicant argues Horikawa teaches that a combination of 1,3-butadiene and isoprene is preferable, but the use of 1,3-butadiene alone is the most preferred. First, it is emphasized that Horikawa expressly teaches a composition comprising two or more conjugated diene compounds. In this instance, there is no picking and choosing- the use of first and second conjugated diene compounds constitutes an expressly disclosed embodiment. Second, the fact that the use of 1,3-butadeiene is preferred is completely independent of the express disclosure of Horikawa to include first and second conjugated diene compounds. It is well taken that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments.
Applicant further states that Egami is not analogous art and the teachings of Egami are not reasonably pertinent to the problem faced by the inventors of the present application. First, Horikawa suggests the use of two or more conjugated diene compounds, including 1,3-butadiene, isoprene, 1,3-pentadiene, 2,3-dimethylbutadiene, AND THE LIKE. Thus, there is a specific invitation to use conjugated diene compounds that differ from those expressly disclosed by Horikawa. Second, it is known across a multitude of applications, both within the tire industry and outside the tire industry, that myrcene and farnesene are used alternatively with several of the exemplary conjugated diene compounds disclosed by Horikawa, as shown for example by Egami and Washizu. Thus, the combination of Egami and Washizu evidence, in general, the known class of conjugated diene compounds that can be fairly characterized as being “and the like” as set forth by Horikawa.
Lastly, as set forth in the previous communication, 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).
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.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 June 9, 2026
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