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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 – 11, 17, and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention because:
Claims 8 – 11 set forth various percentages but do not specify how these percentages are calculated, e.g. if they correspond to weight percentages, mole percentages, etc. For the purposes of further examination, the various percentages will be interpreted as corresponding to weight percentages. However, applicant is advised that it is unclear if the instant specification contains support for this interpretation.
Claim 17 is indefinite, as the claim does not set forth any steps involved in the method/process. It is consequently unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced (see MPEP 2173.05(q)). For the purposes of further examination, Claim 17 will be interpreted as setting forth a tire comprising the rubber composition of Claim 1 in a tread portion.
The term “light” in the phrase “light trucks” in Claim 18 is a relative term which renders the claim indefinite. The term “light” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of further examination, Claim 18 will be interpreted as simply setting forth the tire is a tire for passenger vehicles, trucks, or buses.
Claim Rejections - 35 USC § 103
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.
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 1 – 13 and 17 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 495 162 to Kunisawa in view of JP 2019001845 to Sone. For the purposes of examination, citations for Sone are taken from a machine translation of the document obtained from the European Patent Office website in June 2026.
Regarding Claim 1. Kunisawa teaches a rubber composition comprising a rubber component comprising a modified natural rubber [0032] and a cyclic polyol compound having a hydrocarbyl group ([0048] and [0090]). The rubber composition may also comprise a softener, wherein the softener may correspond to a liquid diene-based polymer ([0134] – [0135]).
Kunisawa is silent regarding the polystyrene-equivalent weight-average molecular weight of the liquid diene-based polymer used as a softener. However, Sone teaches the concept of providing liquid polymers used as softeners, e.g. diene-based polymers, with molecular weight in the range of 1,000 to 50,000 or more preferably in the range of 5,000 to 20,000 [0080]. Kunisawa and Sone are analogous art as they are from the same field of endeavor, namely rubber compositions for tires. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the liquid diene-based polymer of Kunisawa with a molecular weight in the ranges taught by Sone. The motivation would have been that Sone teaches these to be suitable and preferred ranges for liquid polymers used to make the rubber compositions in which they are included as softeners [0080].
Regarding Claim 2. Kunisawa teaches the rubber composition of Claim 1 wherein the cyclic polyol compound having a hydrocarbyl group contains a hydrocarbyl ester group [0099].
Regarding Claim 3. Kunisawa teaches the rubber composition of Claim 1 wherein the cyclic polyol compound having a hydrocarbyl group has a plurality of hydroxyl groups [0090], i.e. two or more hydroxyl groups.
Regarding Claim 4. Kunisawa teaches the rubber composition of Claim 1 wherein the cyclic polyol compound having a hydrocarbyl group may be represented by the following formula (6):
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in which A represents a C6 to C30 hydrocarbyl ester or ether group; X1 – X4 are the same or different and each represent a hydrogen group, hydroxyl group, or hydroxymethyl group, and wherein at least three of X1 – X4 represent hydroxyl groups [0098] – [0099].
Regarding Claim 5. Kunisawa teaches the rubber composition of Claim 4 wherein the cyclic polyol compound having a hydrocarbyl group even more preferably has 8 to 17 carbon atoms in its hydrocarbyl group moiety [0101].
Regarding Claim 6. Kunisawa teaches the rubber composition of Claim 1 wherein the cyclic polyol compound having a hydrocarbyl group may correspond to sorbitan monostearate [0110], which has a known melting point of roughly 45 to 55°C.
Regarding Claim 7. Kunisawa teaches the rubber composition of Claim 1 wherein the cyclic polyol compound having a hydrocarbyl group is provided in an amount of more preferably not less than 1 part by mass and particularly preferably not greater than 8 parts by mass, per 100 parts by mass of the rubber component [0112].
Regarding Claims 8 – 11. Kunisawa teaches the rubber composition of Claim 1 but does not expressly teach the liquid polymer used as a softener corresponds to an unmodified conjugated diene-based polymer having the claimed features and/or an unmodified polybutadiene. However, Sone teaches the concept of providing an unmodified conjugated diene-based polymer, e.g. an unmodified polybutadiene having no (0%) styrene content, as a softener in a rubber composition. The vinyl bond content thereof may range from 28 – 70 mass% [0079] – [0080]. Before the effective filing date of the instantly claimed invention, it would have been obvious to select an unmodified polybutadiene having no (0%) styrene content and a vinyl bond content in the range suggested by Sone as the liquid polymer softener in Kunisawa. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Sone shows that such polymers are known to be suitable liquid diene-based polymers for use as softeners in rubber compositions [0079] – [0080].
Regarding Claim 12. Kunisawa teaches the rubber composition of Claim 1 may further comprise silica or carbon black as a filler [0113] – [0114].
Regarding Claim 13. Kunisawa teaches the rubber composition of Claim 1 may further comprise an epoxidized natural rubber [0047], corresponding to a conjugated diene-based polymer having epoxide functional groups.
Regarding Claims 17 and 18. Kunisawa teaches the rubber composition of Claim 1 may be used as tires for passenger cars, trucks, and buses [0164]. The treads of such tires would then be expected to comprise said rubber composition.
Regarding Claim 19. Kunisawa teaches the rubber composition of Claim 2 wherein the cyclic polyol compound having a hydrocarbyl group may correspond to sorbitan monostearate [0110], which has a known melting point of roughly 45 to 55°C.
Regarding Claim 20. Kunisawa teaches the rubber composition of Claim 2 wherein the cyclic polyol compound having a hydrocarbyl group is provided in an amount of more preferably not less than 1 part by mass and particularly preferably not greater than 8 parts by mass, per 100 parts by mass of the rubber component [0112].
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 495 162 to Kunisawa in view of JP 2019001845 to Sone, as applied to Claim 1 above, and further in view of US 2019/0185642 to Kishimoto.
Regarding Claims 14 and 15. Kunisawa teaches the rubber composition of Claim 1 but does not expressly teach it further comprises a pore introducing agent. However, Kishimoto teaches the concept of providing a foaming agent in rubber compositions [0152]. Foaming agents are set forth as a species of pore introducing agent in instant Claim 15. Kunisawa and Kishimoto are analogous art as they are from the same field of endeavor, namely rubber compositions for tires. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include a foaming agent in the rubber composition of Kunisawa. The motivation would have been that Kishimoto teaches the inclusion of a foaming agent in rubber compositions provides advantages, including the formation of pores which serve as water channels for draining water from the surface of tires formed from such rubber compositions [0153].
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over EP 3 495 162 to Kunisawa in view of JP 2019001845 to Sone, as applied to Claim 1 above, and further in view of JP 2012219245A to Amamoto et al. (hereinafter Amamoto). For the purposes of examination, citations for Amamoto are taken from a machine translation of the document obtained from the European Patent Office website in June 2026.
Regarding Claim 16. Kunisawa teaches the rubber composition of Claim 1 but does not expressly teach it further comprises a composite fiber. However, Amamoto teaches the concept of providing a composite fiber in rubber compositions [0014]. Kunisawa and Amamoto are analogous art as they are from the same field of endeavor, namely rubber compositions for tires. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include a composite fiber in the rubber composition of Kunisawa. The motivation would have been that Amamoto teaches the inclusion of a composite fiber in rubber compositions provides advantages, including providing tires formed from such rubber compositions with excellent draining properties [0014].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 20 of copending Application No. 18/562,482 (reference application) in view of JP 2019001845 to Sone. For the purposes of examination, citations for Sone are taken from a machine translation of the document obtained from the European Patent Office website in June 2026. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
The claims of Application No. 18/562,482 differ from the instant claims in that they do not set forth a liquid polymer is further provided in the rubber composition. However, Sone teaches the concept of providing liquid polymers, e.g. diene-based polymers, with molecular weight of 1,000 to 50,000 or more preferably 5,000 to 20,000 in rubber compositions [0080]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a liquid diene-based polymer as taught by Sone in the rubber composition set forth in the claims of Application No. 18/562,482. The motivation would have been that Sone teaches such liquid polymers function as softeners in the rubber compositions in which they are included [0080].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 20 of copending Application No. 18/563,021 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
It is clear that all the elements of the instant claims are to be found in the claims of18/563,021, as the instant claims fully encompass the claims of 18/563,021. The difference between the instant claims and the claims of18/563,021 lies in the fact that the latter claims include more elements, e.g. a rubber component which further comprises a modified diene-based polymer and proportions of the natural rubber and modified diene-based polymer, and are therefore more specific. The invention of the claims of 18/563,021 is thus in effect a "species" of the "generic" invention of the instant claims. It has been held that the generic invention is "anticipated" by the "species". See In Re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the instant claims are anticipated by the claims of 18/563,021, they are not patentably distinct from these claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to rubber compositions comprising two or more of the instantly claimed components.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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