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 .
Response to Amendment
2. The amendment filed by Applicant on July 13, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include the limitation of claim 10 and further adding the limitation of the vulcanized rubber composition having pores with an average diameter of 1-500 micron. This limitation was not previously presented and was taken from instant specification ([0015] of instant specification). In light of the amendment, the previous rejections not cited below are withdrawn. The previous rejections cited below are maintained but suitably framed to better address the current amendment. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1-9, 11-15, 17-19 are rejected under 35 U.S.C. 103 as obvious over Katayama (WO 2019/117168, based on machine translation) in view of Nozawa et al (WO 2020/090665, based on machine translation) and Izumoto et al (US 5,975,173).
4. Katayama discloses a rubber composition for a tread of a tire, specifically for tire of a passenger cars ([0005], [0006], [0084], as to instant claims 1, 11-12) comprising:
A) a rubber component comprising: A1) a natural rubber, A2) a butadiene rubber, used in combination ([0022]-[0024]) and further styrene-butadiene rubber ([0045]);
B) C5 resin, specifically cited as being partially or completely hydrogenated ([0074], [0064]-[0066]);
C) fillers including carbon black and silica ([0057]-[0061]), wherein the amount of silica is 50-100%wt based on total mass of the filler (as to instant claims 2-3);
D) a foaming agent including sodium bicarbonate, ADCA ([0078], as to instant claims 4-7, 13, 17);
Wherein the rubber composition is vulcanized to produce a vulcanized rubber ([0078]) having a foaming rate of 5-30% ([0008], as to instant claims 1, 9, 15, 19) and wherein the foaming agent is used in amount of 0.1-30 phr ([0077]).
5. Thus, Katayama teaches the foaming agent, used to foam the natural rubber/butadiene rubber/hydrogenated C5 resin composition, comprises ADCA, dinitrosopentamethylenetetramine (DPT), used in amount of 0.1-30 phr.
It is noted that the rubber composition including the isoprene rubber, butadiene rubber and a hydrogenated C5 resin, as claimed in instant invention, is foamed using ADCA, DPT, sodium bicarbonate foaming agents, used in the amount of 0.1-20 phr or 1-10 phr ([0055]-[0057] of instant specification).
Since rubber composition of Katayama is the same as that claimed in instant invention, i.e. comprises isoprene rubber, butadiene rubber, hydrogenated C5 resin, and is foamed using the same foaming agents, wherein said foaming agents are used in substantially the same amounts as those used in instant invention, therefore, the rubber composition of Katayama will intrinsically and necessarily comprise, or would be reasonably expected to comprise the pore/cells formed during said foaming having size in the range of 1-500 micron, as claimed in instant invention, especially since said range for the cell sizes is very broad. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
6. Though Katayama does not explicitly recite a softening point and a weight-average molecular weight of the hydrogenated C5 resin (component B),
Nozawa et al discloses a crosslinked rubber composition and a tire using same (Title), wherein the composition comprises natural rubber, isoprene rubber, butadiene rubber, styrene-butadiene rubber used in combination ([0103]), carbon black, silica and further hydrogenated hydrocarbon C5 resin ([0010]), having weight-average molecular weight of 700-6,000, or 1,000-4,000 ([0082]) and a softening point of 80-150⁰C, or 90-140⁰C ([0010], [0015], [0017]), wherein Nozawa et al explicitly teaches that such hydrogenated C5 resin yields a crosslinked rubber product that is excellent in processability, possesses excellent tensile strength, elongation and wet grip, excellent in rolling resistance and abrasion resistance ([0008]).
7. Since both Katayama and Nozawa et al are related to crosslinked/vulcanized rubber compositions comprising isoprene-based rubber, butadiene rubber, carbon black and silica, further hydrogenated C5 resin, used for making tires/tread, and thereby belong to the same field of endeavor, wherein Nozawa et al explicitly teaches the use hydrogenated C5 resin having weight-average molecular weight of 700-6,000, or 1,000-4,000 and a softening point of 80-150⁰C, or 90-140⁰C, providing said composition and tires with excellent processability, excellent tensile strength, elongation and wet grip, excellent rolling resistance and abrasion resistance, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Nozawa et al and Katayama, and to use, or obvious to try to use the hydrogenated C5 resin having weight-average molecular weight of 700-6,000, or 1,000-4,000 and a softening point of 80-150⁰C, or 90-140⁰C of Nozawa et al as the hydrogenated C5 resin in the composition of Katayama, so to further improve processability, tensile strength, elongation, wet grip, rolling resistance and/or abrasion resistance of the composition and tires of Katayama, and since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
8. All ranges in the composition of Katayama in view of Nozawa et al are overlapping with the corresponding ranges of those a claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
9. Though Katayama in view of Nozawa et al do not recite the composition further comprising composite fibers, and do not recite the pore sizes of the foamed vulcanized rubber,
Izumoto et al discloses tires, specifically tire tread (col. 3, lines 31-33), made from foamed rubber composition comprising:
a combination of a natural rubber and a polybutadiene rubber (Abstract), carbon black and silica, further comprising a composite fiber material (Abstract), wherein the use of said fiber composite material improves on-ice friction of tire tread (col. 2, lines 60-67; col. 6, lines 18-22).
The foamed rubber is produced by using sodium bicarbonate, ADCA and has an average cell diameter of 10-120 micron and expansion ratio of 3-50% (col. 3, lines 25-48; col. 5, lines 46-50).
10. Since both Izumoto et al and Katayama are related to foamed rubber compositions based on the combination of natural rubber, butadiene rubber, silica and carbon black, foamed by sodium bicarbonate and/or ADCA blowing agents, having expansion ratio of 5-30%, used for making tire tread, and thereby belong to the same field of endeavor, wherein Izumoto et al specifies the foamed rubber having an average cell diameter of 10-120 micron, and further comprising composite fiber material to improve on-ice friction of the tires, exhibiting an excellent water-removing effect and outstanding running performance on the icy roads (col. 3, lines 1-7), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Izumoto et al and Katayama in view of Nozawa et al, and include, or obvious to try to include the composite fiber material of Izumoto et al as additional filler into the composition for making tires of Katayama in view of Nozawa et al and to prepare the foamed rubber composition of Katayama in view of Nozawa et al having pore size of 10-120 micron, so to further improve on-ice friction of the tires, exhibiting an excellent water-removing effect and outstanding running performance of said tires of Katayama in view of Nozawa et al on the icy roads, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
11. Claims 1-5, 9, 11-13, 15, 17, 19 are rejected under 35 U.S.C. 103 as obvious over Mouri et al (US 5,147,477) in view of Nozawa et al (WO 2020/090665, based on machine translation).
12. Mouri et al discloses a pneumatic tire comprising a tread (as to instant claims 11-12), the tread including a foamed rubber formed of a rubber composition comprising:
a combination of polyisoprene rubber and butadiene rubber, specifically a combination of natural rubber and polybutadiene rubber (Abstract, Table 1, col. 3, lines 9-14), carbon black (Table 1, as to instant claim 2) and short fibers (col. 4, lines 34-40);
wherein the foamed rubber has cell diameter of 5-150 micron and an expansion ratio of 5-50% (col. 2, lines 63-66, as to instant claims 9, 15, 19) and
wherein the foamed rubber is vulcanized and foamed during said vulcanization (col. 6, lines 26-31).
13. The foamed rubber is foamed using a blowing agent including azodicarbonamide (col. 4, lines 13-20, as to instant claims 4-5, 13).
14. Mouri et al does not recite the foamed rubber composition further comprising a hydrogenated C5 resin and silica.
15. However, Nozawa et al discloses a crosslinked rubber composition and a tire using same (Title), wherein the composition comprises natural rubber, isoprene rubber, butadiene rubber, styrene-butadiene rubber used in combination ([0103]), carbon black in amount of 120 phr or less ([0110]), further silica in amount of 30-150 phr ([0108]) and further hydrogenated hydrocarbon C5 resin ([0010]), having weight-average molecular weight of 700-6,000, or 1,000-4,000 ([0082]) and a softening point of 80-150⁰C, or 90-140⁰C ([0010], [0015], [0017]), wherein Nozawa et al explicitly teaches that such hydrogenated C5 resin yields a crosslinked rubber product that is excellent in processability, possesses excellent tensile strength, elongation and wet grip, excellent in rolling resistance and abrasion resistance ([0008]).
Given the amount of carbon black is 120 phr and the amount of silica is 30 phr, therefore, the amount of silica will be 20%wt based on the total content of the silica and carbon black (as to instant claim 3).
16. Since both Mouri et al and Nozawa et al are related to crosslinked/vulcanized rubber compositions comprising isoprene-based rubber, butadiene rubber, carbon black, used for making tires, and thereby belong to the same field of endeavor, wherein Nozawa et al explicitly teaches the composition further comprising hydrogenated C5 resin having weight-average molecular weight of 700-6,000, or 1,000-4,000 and a softening point of 80-150⁰C, or 90-140⁰C, providing said composition and tires with excellent processability, excellent tensile strength, elongation and wet grip, excellent rolling resistance and abrasion resistance, and further silica as the filler, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Nozawa et al and Mouri et al, and to include, or obvious to try to include the hydrogenated C5 resin having weight-average molecular weight of 700-6,000, or 1,000-4,000 and a softening point of 80-150⁰C, or 90-140⁰C of Nozawa et al and further silica in the composition of Mouri et al, so to further improve processability, tensile strength, elongation, wet grip, rolling resistance and/or abrasion resistance of the composition and tires of Mouri et al, and since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
17. All ranges in the composition of Mouri et al in view of Nozawa et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
18. Claims 1-9, 11-15, 17-19 are rejected under 35 U.S.C. 103 as obvious over Mouri et al (US 5,147,477) in view of Nozawa et al (WO 2020/090665, based on machine translation), in further view of Amamoto et al (US 2014/0326376).
19. The discussion with respect to Mouri et al in view of Nozawa et al set forth in paragraphs 11-17 above, is incorporated here by reference.
20. Though Mouri et al in view of Nozawa et al do not specify the composition further comprising a composite fiber and the foaming agent including sodium bicarbonate,
Amamoto et al discloses a rubber composition for making tires, specifically tire tread, comprising:
A) a rubber component including combination of polyisoprene rubber, polybutadiene rubber ([0020]);
B) a foaming agent including ADCA, sodium bicarbonate or ammonium bicarbonate ([0033], [0034], as to instant claims 6-7) and
C) a composite fiber,
wherein the presence of said composite fiber along with the foaming agent allows to sustain improved on-ice performance of a tire over a long period of time ([0008], [0011], [0033]).
21. Since Amamoto et al and Mouri et al in view of Nozawa et al are related to rubber compositions based on polyisoprene rubber and polybutadiene rubber, foaming agents and fibers, used for making tire tread, and thereby belong to the same field of endeavor, wherein Amamoto et al discloses said composition comprising composite fibers and sodium bicarbonate as the foaming agent, wherein the presence of said composite fiber along with the foaming agent allows to sustain improved on-ice performance of a tire over a long period of time, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Amamoto et al and Mouri et al in view of Nozawa et al, and to include, or obvious to try to include the composite fiber and the sodium bicarbonate as the foaming agent into the composition of Mouri et al in view of Nozawa et al, so that the presence of said composite fiber along with the foaming agent in the composition of Mouri et al in view of Nozawa et al will sustain improved on-ice performance of a tire of Mouri et al in view of Nozawa et al over a long period of time, as taught by Amamoto et al, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Response to Arguments
22. Applicant's arguments filed on July 13, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussions set forth above.
23. With respect to Applicant’s arguments regarding the teachings of Katayama (WO 2019/117168, based on machine translation) and Nozawa et al (WO 2020/090665, based on machine translation), it is noted that:
1) Katayama discloses the rubber composition comprising hydrogenated C5 resin along with butadiene rubber and isoprene rubber, used for making tire tread.
Though Katayama does not explicitly teach the softening point and Mw of said C5 resin, the secondary reference of Nozawa et al was applied for the teachings of that, wherein Nozawa et al specifies the properties of the hydrogenated C5 resin used in substantially same rubber compositions used for the same purpose of making tire tread.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
2) It is not clear why such modification of the composition of Katayama comprising a hydrogenated C5 resin by using the hydrogenated C5 of Nozawa et al will be “unsatisfactory for its intended purpose or change the principle of operation of a reference”, as argued by Applicant.
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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