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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 7-8, 15 and 17-18 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shoda (2019/0144641) as evidenced by Bodger (Transactions of the Institution of the Rubber Industry, Vol. 11, No. 2, pages 197-223).
Regarding claims 1-3, 7-8 and 17-18: Shoda teaches a vulcanized rubber composition obtained by vulcanizing a rubber composition comprising 100 parts by weight of natural rubber, 2 parts by weight of a cyclic polyol, and the filler carbon black [Examples; Table 1]. Carbon black is being considered the pore introducing agent. Example 5 teaches 40 parts by weight of carbon black and 10 parts by weight of polyol [Table 1], which provides a mass ratio of 40/10 = 4.
All vulcanized rubber inherently contains a plurality of pores, as evidenced by Bodger (whole document). The porosity will vary depending upon the ingredients, and vulcanization method (page 114). Therefore, the presence of carbon black will produce pores in the vulcanized rubber.
Regarding claim 15: Shoda teaches a tire [0092-0093], which is capable of functioning in the claimed capacity.
Claim(s) 1-4, 6-8, and 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kunisawa (EP 3,495,162) as evidenced by Bodger (Transactions of the Institution of the Rubber Industry, Vol. 11, No. 2, pages 197-223).
Regarding claims 1-4, 6-8 and 16-18: Kunisawa teaches a vulcanized rubber composition obtained by vulcanizing a rubber composition comprising 100 parts by weight of natural rubber, 1 part by weight of the cyclic polyol of the claimed structure [0105-0106], which is sorbitan monolaurate, and the filler carbon black [Examples; Table 2]. The carbon black of Kunisawa is considered to be the pore forming agent. Kunisawa teaches Example 7 with 5 parts of carbon black and 1 part of the cyclic polyol [Table 2], which provides a mass ratio of 5/1 = 5.
All vulcanized rubber inherently contains a plurality of pores, as evidenced by Bodger (whole document). The porosity will vary depending upon the ingredients, and vulcanization method (page 114). Therefore, the presence of carbon black will produce pores in the vulcanized rubber.
Regarding claim 14: Kunisawa teaches a tire, wherein the composition is in a tire tread [0002].
Regarding claim 15: Kunisawa teaches a tire [Claims], which is capable of functioning in the claimed capacity [0164].
Claim(s) 1-8, and 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furukawa (JP 2012-117012A) as evidenced by Bodger (Transactions of the Institution of the Rubber Industry, Vol. 11, No. 2, pages 197-223).
Regarding claims 1-8 and 16-18: Furukawa teaches a vulcanized rubber composition obtained by vulcanizing a rubber composition comprising 50 parts by weight of natural rubber, 2 parts by weight (4 parts by weight based on 100 parts by weight of natural rubber) of the cyclic polyol of the claimed structure [0055], which is sorbitan monostearate, and the filler carbon black [0055, Examples; Table 1]. Carbon black is being considered the “pore introducing agent”, and Furukawa teaches the claimed ratio [Examples; Tables].
All vulcanized rubber inherently contains a plurality of pores, as evidenced by Bodger (whole document). The porosity will vary depending upon the ingredients, and vulcanization method (page 114). Therefore, the presence of carbon black will produce pores in the vulcanized rubber.
Regarding claim 14: Furukawa teaches a tire, wherein the composition is in a tire tread [0001; Claim 1].
Regarding claim 15: Furukawa teaches a tire [0011], which is capable of functioning in the claimed capacity.
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) 1-8 and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa (JP 2012-117012A) in view of Shoda et al. (WO 2019/216109 A1).
Regarding claims 1-8 and 16-18: Furukawa teaches a vulcanized rubber composition obtained by vulcanizing a rubber composition comprising 50 parts by weight of natural rubber, 2 parts by weight (4 parts by weight based on 100 parts by weight of natural rubber) of the cyclic polyol of the claimed structure [0055], which is sorbitan monostearate, and the filler carbon black [0055, Examples; Table 1].
Furukawa fail to teach the claimed agent.
However, Shoda et al. teach adding 1 to 30 parts by mass [0153] of a foaming agent selected from hydrophilic short fibers (claimed composite fiber), a metal sulfate, thermally expandable microcapsules, or porous cellulose particles [0018] to a vulcanized rubber composition for a tire tread [0001] to improve the performance of a tire on ice [0002, 0006]. Shoda et al. teach a porosity of 10% to 40% provides excellent ice performance and wear resistance [0029, 0222].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 1 to 30 parts by mass of hydrophilic short fibers (claimed composite fiber), a metal sulfate, thermally expandable microcapsules, or porous cellulose particles as taught by Shoda et al. in the amounts taught by Shoda et al. to provide a porosity as taught by Shoda et al. to the composition of Furukawa to provide a tire tread with good ice performance and wear resistance.
The amounts taught provide a mass ratio that overlaps the mass ratio of claim 1.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 14: Furukawa teaches a tire, wherein the composition is in a tire tread [0001; Claim 1].
Regarding claim 15: Furukawa teaches a tire [0011], which is capable of functioning in the claimed capacity.
Claim(s) 1-8 and 11-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shoda et al. (WO 2019/216109 A1) in view of Hiroko et al. (JP 2011-513559A).
Regarding claims 1-8, 11-13 and 16-18: Shoda et al. teach a vulcanized rubber composition obtained by vulcanizing a rubber composition comprising a rubber component containing 45 parts by weight natural rubber and carbon black [Examples; Table 1]. Shoda et al. teach adding 1 to 30 parts by mass [0153] of a foaming agent selected from hydrophilic short fibers (claimed composite fiber), a metal sulfate, thermally expandable microcapsules, or porous cellulose particles [0018] to a vulcanized rubber composition for a tire tread [0001] to improve the performance of a tire on ice [0002, 0006]. Shoda et al. teach a porosity of 10% to 40% provides excellent ice performance and wear resistance [0029, 0222].
Shoda et al. fail to teach a cyclic polyol.
However, Hiroko et al. teach that adding 1 to 20 phr of the nonionic surfactant sorbitan monostearate to a vulcanized rubber composition for tire tread improves the grip performance of the tread on icy surfaces [0052, 0055, 0056; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 1 to 20 phr of sorbitan monostearate as taught by Hiroko et al. to the composition of Shoda et al. to improve the grip performance of the tire tread on icy conditions. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
The amounts taught provide a mass ratio that overlaps the mass ratio of claim 1.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 14: Shoda et al. teach a tire, wherein the vulcanized rubber composition is in a tread portion [0001, 0006; Examples].
Regarding claim 15: The tire of Shoda et al. is capable of functioning in the claimed capacity.
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 1-8 and 11-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/562444. Although the claims at issue are not identical, they are not patentably distinct from each other
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 and 11-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 11-18 of copending Application No. 18/563021. Although the claims at issue are not identical, they are not patentably distinct from each other
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 8/6/2026 have been fully considered but they are not persuasive.
The applicant has made the argument that the anticipation rejections do not teach the amended mass ratio of claim 1. As demonstrated above, when carbon black is considered to be the claimed “pore introducing agent”, the prior art references teach examples anticipating the claimed mass ratio.
The applicant has made the argument that Furukawa and Hiroko have a different objective than the instant specification. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144.
The applicant has made the argument that natural rubber is merely an optional component in Shoda. This is not persuasive because Shoda teaches natural rubber in the examples. Furthermore, patents are relevant prior art for all that they contain and not just the preferred embodiments. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP 2123. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The Applicant has not responded properly to the double patenting rejections. See MPEP 804(I)(B)(1). Filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application's claims, is necessary. Failure to do so in the next response will be considered non-responsive.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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