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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-13 and 16-20, drawn to a rubber composition.
Group II, claim(s) 14 and 15, drawn to a tire.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the rubber composition, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of JP 2010-215854, JP 2011-184634, JP 2017-002152 or US 2019/0144641.
During a telephone conversation with Eric Morton on 6/1/26, a provisional election was made with traverse to prosecute the invention of Group I, claims 1-13 and 16-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14 and 15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Objections
Applicant is advised that should claim 8 be found allowable, claim 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The cyclic polyol compound of claim 1 already requires at least two hydroxyl groups, i.e., polyol.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 3-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kose et al. (JP 2010215854)
In the abstract, claims and ¶’s 16, Kose et al. teach a tire tread rubber composition containing, 100 parts by weight of a diene rubber, 0.1-10 parts by weight, of an alkyl group-modified sugar derivative obtained by reacting a primary alcohol with glucose, and 30-70 parts by weight of carbon blac; wherein the diene preferably includes 50% isoprene and 50% natural rubber; wherein the alkyl group-modified sugar derivative is represented by general formula (1) and n in the general formula (1) is 0-12.
As applicant’s specification states that the nature of the modified conjugated diene-based polymer is not particularly limited, the present diene is understood to include the isoprene of Kose et al.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim(s) 1, 3-5 and 7-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsura et al. (JP 2011184634)
In the claims and ¶ 16, Matsura et al. describes a tire base tread rubber composition obtained by adding 0.1-5 parts by weight of a sugar per 100 parts by weight of a diene rubber, and indicates that: the sugar is an alkyl group-modified sugar derivative obtained by reacting a primary alcohol with glucose. The dine rubber is taught to be a blend of 50 natural rubber and 50 of dine rubber, which may include acrylonitrile butadiene rubber; and the alkyl group-modified sugar derivative is represented by general formula (1) and n in the general formula (1) is 0-24.
As applicant’s specification states that the nature of the modified conjugated diene-based polymer is not particularly limited, the present diene is understood to include the acrylonitrile butadiene rubber of Matsura et al.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim(s) 1-3, 7-9 and 17-19 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Shoda (US 2019/0144641)
In the claims and ¶’s 26, 67 and 78, Shoda describes a rubber composition containing a cyclic polyol compound that has a hydrocarbyl group and a hydroxy group and has a cyclic structure, and containing carbon black and a rubber component, and indicates that: the cyclic polyol compound is represented by formula (1) and A in the formula (1) is a hydrocarbyl ester group having 6-30 carbon atoms; and the cyclic polyol compound content is 0.1-4 parts by mass per 100 parts by mass of the rubber component.
In ¶ 30-33, the rubber component is taught to comprise a natural rubber and a synthetic diene rubber, representing at least 70% of a synthetic diene rubber such as acrylonitrile diene rubber.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met.
Claim(s) 1-7, 16, 17, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shoda (JP 2017002152).
In the claims, ¶’s 16 and 24, and the examples, Shoda describes a rubber composition including a rubber component and a cyclic polyol compound having a hydrocarbyl group, and indicates that: the cyclic polyol compound is represented by formula (1) and A in the formula (1) is a hydrocarbyl ester group having 6-30 carbon atoms; the cyclic polyol compound content is 0.1-3 parts by mass per 100 parts by mass of the rubber component; a filling agent such as carbon black may be added thereto; and sorbitan monostearate or the like is an example of the cyclic polyol compound.
The rubber component is taught to be an equivalent blend of natural rubber and synthetic diene rubber, wherein the rubber component used may be modified.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim Rejections - 35 USC § 103
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.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kose et al. or Matsura et al., in view of Mazaki et al. (JP 09194640), Shoda et al. (EP 3792307) or Kawashima et al. (EP 3882046)
While Kose et al. or Matsura et al., do not explicitly mention including a void introducing agent, adding a void introducing agent in order to improve on-ice performance or wear resistance is known in the field of rubber compositions used in tires or the like, such as taught by Mazaki et al. (abstract, claims and ¶’s 6 and 7), Shoda et al. (claims and ¶ 22) and Kawashima et al. (claims and ¶’s 7 and 153-155).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to added a void introducing agent in the rubber compositions of Kose et al. or Matsura et al. in order to obtain the advantages taught by Mazaki et al., Shoda et al. or Kawashima et al., motivated by a reasonable expectation of success.
Claim(s) 10, 11 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shoda (JP) or Shoda (US), in view of Mazaki et al. (JP 09194640), Shoda et al. (EP 3792307) or Kawashima et al. (EP 3882046).
While Shoda (JP) or Shoda (US) do not explicitly mention including a void introducing agent, adding a void introducing agent in order to improve on-ice performance or wear resistance is known in the field of rubber compositions used in tires or the like, such as taught by Mazaki et al. (abstract, claims and ¶’s 6 and 7), Shoda et al. (claims and ¶ 22) and Kawashima et al. (claims and ¶’s 7 and 153-155)
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to added a void introducing agent in the rubber compositions of Shoda (JP) or Shoda (US) in order to obtain the advantages taught by Mazaki et al., Shoda et al. or Kawashima et al., motivated by a reasonable expectation of success.
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kose et al., Matsura et al., Shoda (JP) or Shoda (US), in view of Sone (JP 2019001845) or Mazaki et al. (JP 09194640).
While Kose et al., Matsura et al., Shoda (JP) or Shoda (US) do not explicitly mention including a liquid polymer, adding a specific liquid polymer is known in the field of rubber compositions used in tires or the like, in order to improve flexibility, such as taught in Sone (claims and ¶’s 76-81) or Mazaki et al. (claims and ¶’s 3 and 10).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to added a specific liquid polymer void introducing agent in the rubber compositions of Kose et al., Matsura et al., Shoda (JP) or Shoda (US) in order to obtain the advantages taught by Sone or Mazaki et al., motivated by a reasonable expectation of success.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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