CTNF 18/561,516 CTNF 98021 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. This communication responds to the application and amended claim filed November 16, 2023. Claims 1-18 are currently pending. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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 . 07-21-aia AIA Claim s 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Maekawa et al. (EP 3626482 A1 or JP 2020-45073 as listed on the IDS dated 11/16/2023) . The examiner will refer to the EP equivalent of Maekawa et al., EP 3626482. Regarding claims 1-2, Maekawa et al. teach a tire tread having a balance of wet grip performance and abrasion resistance (abstract), wherein the tread is produced by using a rubber composition comprising a rubber component including styrene-butadiene rubber, silica, a silane coupling agent and a resin ([0041], claim 8), wherein the rubber component is preferably isoprene-based rubber, styrene-butadiene rubber (SBR), butadiene rubber or combinations thereof [0045], wherein the SBR is modified with a functional group [0056] and the styrene content of the SBR is preferably not less than 5% by mass, and not greater than 40% by mass [0053], which overlaps with the claimed styrene content (15% by mass or less), thereby reading on the claimed rubber component containing an isoprene rubber and a modified SBR. Further, 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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the styrene content range of the SBR taught by Maekawa et al. to improve the balance between the wet grip performance and wear resistance and to improve the dispersion of the polymer. Maekawa et al. further teach the rubber composition comprises preferably a solid resin having a softening point of higher than 100°C ([0097]-[0099]) including terpene-based resins [0101], aromatic modified terpene resins and hydrogenated products thereof ([0106], [0108-[0110]). In addition, Maekawa et al. teach as one of the examples of the resin, CLEARON M125, an hydrogenated aromatic modified terpene resin having a softening point of 125°C [0153] and a weight-molecular weight of 1363 g/mol, as disclosed by the instant specification (Table 3), thereby reading on the hydrogenated resin as required by the instant claims 1 and 2; wherein the rubber composition comprises silica [0067], the amount of silica per 100 parts by mass of the rubber component is preferably not less than 70 parts by mass, more preferably not less than 80 parts by mass, further preferably not less than 100 parts by mass, and particularly preferably not less than 110 parts by mass and preferably not greater than 120 parts by mass [0068]. Maekawa et al. further teach the rubber composition comprises carbon black, wherein the amount of the carbon black per 100 parts by mass of the rubber component is preferably not less than 1 part by mass, more preferably not less than 3 parts by mass, preferably not greater than 20 parts by mass and more preferably not greater than 15 parts by mass [0078], thereby reading on the claimed percentage of silica with respect to the total amount of silica and carbon black (see examples, Tables 1-4, [0159]-[0160]). Maekawa et a. do not particularly teach the claimed ingredients isoprene rubber, modified styrene butadiene rubber, a hydrogenated resin, silica and carbon black together in one embodiment. However, Maekawa et al. teach the isoprene rubber, the modified styrene butadiene rubber, the hydrogenated resin, silica and carbon black with “sufficient specificity” that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” isoprene rubber, the modified styrene butadiene rubber, the hydrogenated resin, silica and carbon black as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc. , 550 U.S. 398 (2007). A reference must be considered in its entirety, and it is well established that the disclosure of a reference is not limited to specific working examples contained therein. In re Fracalossi , 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (C.C.P.A. 1982). Regarding claim 3 , Maekawa et al. teach aromatic modified terpene resins are preferable as the solid resin, wherein the solid resins are obtained by modifying a terpene resin with an aromatic compound, and by hydrogenating the resins [0110], wherein examples of the aromatic compound include styrene derivatives such as styrene, alkylstyrenes, alkoxystyrenes, and unsaturated hydrocarbon group-containing styrene [0110], thereby reading hydrogenated resin further containing a styrene-derived moiety. Regarding claims 4, 7 and 9, the disclosure of Maekawa et al. teach the limitation of the silica as recited by the instant claims, see paragraph 6 above ([0068],[0078]). More specifically, Maekawa et al. teach percentages of silica of 85% by mass of more with respect to the total amount of silica and carbon black (i.e. example 1: carbon black 10 parts by mas and silica 80 parts by mass, which is equivalent to 88% by mass), (see examples, Tables 1-4, [0159]-[0160]). Regarding claims 5-6, 8, 10-18, Maekawa et al. teach a tire tread comprising the rubber composition (abstract), see paragraph 6 above, as required by the instant claims . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure (listed on the IDS dated 11/16/2023) . JP2011099026 (A) by Yamagishi EP 3064543 B1 or WO 2015/076048A1 by Miyazaki Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00. 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, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /OLGA LUCIA DONAHUE/Examiner, Art Unit 1763 /JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763 Application/Control Number: 18/561,516 Page 2 Art Unit: 1763 Application/Control Number: 18/561,516 Page 3 Art Unit: 1763 Application/Control Number: 18/561,516 Page 4 Art Unit: 1763 Application/Control Number: 18/561,516 Page 5 Art Unit: 1763 Application/Control Number: 18/561,516 Page 6 Art Unit: 1763
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