DETAILED ACTION
This Office Action is responsive to the amendment filed on 8/4/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim Rejections - 35 USC § 103
Claims 6, 7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al, EP3812174, in view of Washizu, US2017/0096550.
Ono discloses a rubber composition (for claim 6) for use in the production of tire treads (for claim 10) (abstract, ¶0150). Example 1-2 (Table 1) discloses a composition comprising 100 parts of a rubber component (for claim 6), corresponding to the claimed diene rubber (for claim 6), which in turn comprises a styrene/butadiene rubber (SBR), natural rubber, and a coumarone-indene resin.
Regarding the claimed terminal-modified SBR: The composition of Ono’s Example 1-2 comprises the commercially available SBR NS612 from Zeon Corporation
(¶0174). Note that applicant’s disclosure teaches that NS612 is a SBR having a vinyl content of 31 mol% (for claim 6) and a glass transition temperature (Tg) of -60 °C (for claim 6) which is terminally modified with a polyorganosiloxane structure (for claim 6) (see specification page 17: lines 16-18). NS612 therefore corresponds to the claimed terminal modified SBR (for claim 6). The prior art composition comprises 60 parts SBR per 100 parts total rubber, -i.e., the SBR content is 60% by mass of the rubber component (for claim 6).
Regarding the claimed silica: The composition of Example 1-2 comprises 60 parts silica per 100 parts rubber (for claim 6).
Regarding the claimed silane coupling agent: The composition of Example 1-1 comprises a silane coupling agent (for claim 6). Furthermore, as the amount of silica is 60 parts, the amount of coupling agent is about 6.7 wt% relative to the mass of silica (for claim 6).
Regarding claim 7: As noted above, the composition of Example 1-2 comprises SBR and natural rubber (see Ono ¶0035 which defines “NR” as an abbreviation for natural rubber). Ono broadly teaches that the prior art composition may comprise SBR in an amount of 35 to 90 wt% (¶0036), overlapping the claimed range, and natural rubber in an amount of 5 to 60 wt% natural rubber (¶0034-0035), overlapping the claimed range.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP § 2144.05).The prior art ranges for the amounts of SBR and natural rubber overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the prior art composition to comprise SBR and natural rubber in the required amounts.
Ono is silent regarding the inclusion of a thermoplastic resin which is a combination of a terpene resin and petroleum resin wherein the mass ratio of terpene resin to thermoplastic resin is 1/3 or more.
Washizu discloses the production of a rubber composition used in the production of tires, wherein said rubber composition comprises a diene rubber component, a resin (A), and a resin (B) (abstract). Said diene rubber component may comprise one or more of natural rubber, butadiene rubber, and terminally modified SBR (¶0014-0015). Said resin (A) is a polar resin such as a terpene phenolic resin (¶0018-0019), corresponding to the claimed terpene resin (for claim 6). Said resin (B) is a nonpolar resin such as a C9 petroleum based resin, corresponding to the claimed petroleum resin (for claim 6) (¶0020-0021). The ratio of the content of resin B/content of resin A is in the range of 0.1 to 50 (¶0024); one of ordinary skill in the art will recognize that the ratio of content of resin A/content of resin B would therefore be in the range of 1/0.1 to 1/50- i.e., from 1/50 to 10, overlapping the claimed range (for claim 6). Washizu teaches that the use of an additive comprising resin (A) and resin (B) in this ratio results in a final composition having excellent properties of abrasion resistance and processability as well as initial grip and stability of grip (¶0024).
Ono and Washizu both disclose rubber compositions based on the same types of rubber (e.g., natural rubber, terminally modified SBR, butadiene rubber) which are used in the production of tires. Furthermore, both Ono and Washizu teach the inclusion of additives to improve grip performance. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the composition of Ono’s Example 1-2 by substituting the coumarone-indene resin-which is added to improve grip (see Ono ¶0062)- with a blend of a terpene phenolic resin and a C9 petroleum resin wherein the ratio of terpene phenolic resin to petroleum resin is 1/50 to 10, with the reasonable expectation of obtaining a final tire having improved properties such as abrasion resistance in addition to improved grip, as taught by Washizu (for claim 6).
Claim(s) 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Ono et al, EP3812174, and Washizu, US2017/0096550, as applied to claims 6, 7, and 10 above, and further in view of Kamahori et al, US2016/0002433.
As discussed earlier in this Action, Ono discloses a rubber composition used for the production of tire treads (for claim 13), wherein said rubber composition comprises a terminally modified SBR, natural rubber, thermoplastic resin, silica, and a silane coupling agent.
Ono is silent regarding the use of a coupling agent having average compositional formula (A)a(B)b(C)c(D)d(R1)eSiO(4-2a-b-c-d-e)/2.
Kamahori discloses a rubber composition used in the production of tires, wherein said rubber composition comprises a diene rubber component, silica, and a silane coupling agent (abstract). As said silane coupling agent, Kamahori discloses the use of a polysiloxane having the average compositional formula (A)a(B)b(C)c(D)d(R1)eSiO(4-2a-b-c-d-e)/2 wherein
A is a divalent organic group having a sulfide group, corresponding to claimed A (for claims 9, 12),
B is a monovalent hydrocarbon group having 5 to 10 carbons, corresponding to claimed B (for claims 9, 12),
C is a hydrolysable group, corresponding to claimed C (for claims 9, 12),
D is an organic group containing a mercapto group, corresponding to claimed D (for claims 9, 12), and
E is a monovalent hydrocarbon group having 1 to 4 carbons, corresponding to claimed R1 (for claims 9, 12).
The prior art formula also satisfies the relationships 0 ≤ a ≤ 1, 0 ≤ b < 1, 0 < c < 3, 0 < d < 1, 0 ≤ e < 2, and 0 < 2a+b+c+d+e < 4 (for claims 9, 12). Kamahori teaches that the use of a silane coupling agent corresponding to said formula confers improved dispersibility of the silica, and results in a final tire having improved low heat buildup (¶0066-0067).
Ono and Kamahori are both directed towards the same field of endeavor-i.e., the production of diene-based rubber compositions containing silica and a silane coupling agent which are used in the production of tires. Furthermore, note that Ono teaches that the silane coupling agent used in the composition of EP3812174 may be any silane coupling agent (¶0058). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Ono by using a polysiloxane having the average compositional formula A)a(B)b(C)c(D)d(R1)eSiO(4-2a-b-c-d-e)/2 as the silane coupling agent, with the reasonable expectation of obtaining a final tire having improved properties of low heat buildup as taught by Kamahori (for claims 9, 12).
Claims 6, 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Dire et al, EP3317122, in view of Washizu, US2017/0096550.
The examiner notes that Dire et al, HUE044635, is part of the same patent family as EP3317122 and has been used as an equivalent English translation for the preparation of this Action.
Example 1 of Dire (Table 1) discloses a rubber composition used for the production of tire treads (for claim 10) (page 22: lines 13-14), wherein said composition comprises 100 parts diene rubber (for claim 6) which is a blend of SBR and butadiene rubber.
Regarding the claimed terminal-modified SBR: The Example 1 comprises Polymer A (page 26: line 25 to page 28: line 15), which is a SBR having a vinyl content of 25% (for claim 6) (page 28: lines 9-10) and a Tg of -48.2 °C (page 28: line 13) and is terminally functionalized with an aminoalkoxysilane group, corresponding to the claimed amino group (for claim 6) (page 26: lines 25-26). The prior art composition comprises 80 parts of polymer A per 100 total parts rubber-i.e., the content is 80 mass% of the rubber component (for claim 6).
Regarding the claimed silica: The composition of Example 1 comprises 73 parts silica per 100 parts rubber (for claim 6).
Regarding the claimed silane coupling agent: The composition of Example 1 comprises the coupling agent Si69, corresponding to the claimed silane coupling agent (for claim 6). Furthermore, the composition comprises 6 parts Si69 and 73 parts silica; the amount of coupling agent therefore is about 8.2 mass% relative to the amount of silica (for claim 6).
Regarding claim 7: As noted above, Dire’s Example 1 discloses the production of a rubber composition used in the production of tire treads, wherein said rubber composition comprises a rubber component which is a combination of SBR having a terminal aminoalkoxysilane group and polybutadiene, silica, and a silane coupling agent.
Note that Dire further teaches that the modified SBR may be combined with a conventional rubber such as butadiene rubber or natural rubber (for claim 7) (page 17: lines 25-30). Said conventional rubber is used in an amount of 1 to 70 parts per 100 parts modified rubber (page 18: lines 4-8); this corresponds to an amount in the range of about 1.0 to 41.1 mass% natural rubber relative to the total amount of rubber, overlapping the claimed range (for claim 7) and modified SBR in a (deduced) amount of 58.9 to 99 wt%, overlapping the claimed range.
Dire teaches that both butadiene rubber and natural rubber can be used for the same purpose-i.e., as a conventional rubber which can be combined with the prior art modified SBR. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the composition of Dire’s Example 1 by using natural rubber in lieu of butadiene rubber. Additionally, as the prior art ranges overlap the claimed ranges, it would have been obvious to prepare a composition comprising the required amounts of modified SBR and natural rubber in view of the teachings of Dire; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
Dire is silent regarding the inclusion of a thermoplastic resin which is a combination of a terpene resin and petroleum resin wherein the mass ratio of terpene resin to thermoplastic resin is 1/3 or more.
As discussed earlier in this Action, Washizu discloses the production of a rubber composition used in the production of tires, wherein said rubber composition comprises a diene rubber component, a resin (A), and a resin (B) (abstract). Said diene rubber component may comprise one or more of natural rubber, butadiene rubber, and terminally modified SBR (¶0014-0015). Said resin (A) is a polar resin such as a terpene phenolic resin (¶0018-0019), corresponding to the claimed terpene resin (for claim 6). Said resin (B) is a nonpolar resin such as a C9 petroleum based resin, corresponding to the claimed petroleum resin (for claim 6) (¶0020-0021). The ratio of the content of resin B/content of resin A is in the range of 0.1 to 50 (¶0024); one of ordinary skill in the art will recognize that the ratio of content of resin A/content of resin B would therefore be in the range of 1/0.1 to 1/50- i.e., from 1/50 to 10, overlapping the claimed range (for claim 6). Washizu teaches that the use of an additive comprising resin (A) and resin (B) in this ratio results in a final composition having excellent properties of abrasion resistance and processability as well as initial grip and stability of grip (¶0024).
Dire and Washizu both disclose rubber compositions based on the same types of rubber which are used in the production of tires. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the composition of Dire’s Example 1 by incorporating a blend of a terpene phenolic resin and a C9 petroleum resin wherein the ratio of terpene phenolic resin to petroleum resin is 1/50 to 10, with the reasonable expectation of obtaining a final tire having improved properties such as abrasion resistance in addition to improved grip, as taught by Washizu (for claim 6).
Claim(s) 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Dire et al, EP3317122, and Washizu, US2017/0096550, as applied to claims 6, 7, and 10 above, and further in view of Kamahori et al, US2016/0002433.
As discussed earlier in this Action, Dire discloses a rubber composition used for the production of tire treads (for claim 13), wherein said rubber composition comprises a terminally modified SBR, natural rubber, thermoplastic resin, silica, and a silane coupling agent.
Dire is silent regarding the use of a coupling agent having average compositional formula (A)a(B)b(C)c(D)d(R1)eSiO(4-2a-b-c-d-e)/2.
As discussed earlier in this Action, Kamahori teaches that it was known in the art to use a polysiloxane having the average compositional formula (A)a(B)b(C)c(D)d(R1)eSiO(4-2a-b-c-d-e)/2, corresponding to the claimed average compositional Formula (1) (for claims 9, 12), as a silane coupling agent in rubber compositions used for tire treads. Kamahori teaches that the use of a silane coupling agent corresponding to said formula confers improved dispersibility of the silica, and results in a final tire having improved low heat buildup (¶0066-0067).
Dire and Kamahori are both directed towards the same field of endeavor-i.e., the production of diene-based rubber compositions containing silica and a silane coupling agent which are used in the production of tires. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Dire by using a polysiloxane having the average compositional formula A)a(B)b(C)c(D)d(R1)eSiO(4-2a-b-c-d-e)/2 as the silane coupling agent, with the reasonable expectation of obtaining a final tire having improved properties of low heat buildup as taught by Kamahori (for claims 9, 12).
Response to Arguments
Regarding independent claim 6: Applicant’s arguments, see page 5, filed 8/4/2026, with respect to the rejection(s) of claim(s) over Ono et al, EP3812174, and Dire et al, EP3317122, have been fully considered. Specifically, applicant argues that neither reference teaches the combined use of a terpene resin and a petroleum resin in the recited ratio. Upon further consideration, a new ground(s) of rejection is made in view of Ono in view of Washizu, US2017/0096550 and Dire in view of Washizu, US2017/0096550 as disussed earlier in this Action.
Regarding claim 7: Applicant argues that Ono does not suggest the production of a composition comprising 75 to 90 mass% terminally modified SBR. This is not persuasive. As discussed in paragraphs 12 to 13 of this Action, the broad disclosure of Ono teaches that the prior art composition may comprise SBR and natural rubber in amounts overlapping the claimed ranges. It therefore would have been obvious to prepare a composition comprising the required amounts of each rubber in view of the teachings of Ono; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
Applicant further alleges that claim 7 was not rejected over Dire. In response, the examiner notes that claim 7 rejected under 35 U.S.C. 103(a) over Dire; see paragraphs 29-34 of the Office Action mailed on 5/4/2026. It is therefore maintained that Dire renders the claimed invention obvious per the rationale outlined in paragraphs 28 to 30 of this Action.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
