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.
Claims 2 and 7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claims 2 and 7, the term “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 of this title, 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Schoeffel (WO 2019/105614, English-language equivalent US 2020/0377699 is relied upon below for document citations) in view of Isitman (US 2019/0062533).
With respect to claims 1-6, Schoeffel discloses a sulfur-crosslinkable rubber mixture comprising at least one diene rubber, 10-300 phr silica, and 1-2 phf at least one silane A having formula (R1)oSi—R2—(S—R3)-q—S—X and 0.5-30 phf at least one silane B having formula (R1)oSi—R2—(S—R3)-u—S—R2—Si(R1)-o (abstract), wherein preferred silane A has formula (EtO)3Si—(CH2)3—S—(CH2)6—S—C(=O)—CH3 (paragraph 0096) and preferred silane B is
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(paragraph 0108).
Schoeffel teaches that the diene rubber includes 25-80 phr of a styrene-butadiene, preferably solution-polymerized styrene-butadiene rubber (SSBR) (paragraphs 0051 and 0053) but fails to disclose the Tg of the SSBR or any of the diene rubber.
Isitman discloses a pneumatic tire tread comprising 20-80 phr of a solution polymerized styrene-butadiene rubber having a Tg of -85 to -50°C (abstract) which is measured by DSC (paragraph 0028). In Tables 1 and 2, Isitman shows that SSBR having Tg of -60°C provides for improved rolling resistance (RR) and wet related properties (paragraphs 0073).
Given that both Schoeffel and Isitman disclose rubber compositions for tire tread comprising SSBR and further given that Isitman discloses that an advantageous Tg for the SSBR is -85 to -50°C for optimizing rolling resistance and wet properties, it would have been obvious to one of ordinary skill in the art to select a SSBR in the composition of Schoeffel within the claimed range of -35 to -85°C.
With respect to claim 7, Schoeffel teaches that the ratio of silane A to B is 20:80 to 90:10, preferably (paragraph 0120).
With respect to claims 8-10, Schoeffel teaches that the composition is formed into a vulcanizate for tire treads (paragraph 0033).
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 10,927,241 in view of Isitman (US 2019/0062533). Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘241 claims a sulfur-crosslinkable rubber mixture comprising at least one diene rubber such as SSBR, 10-300 phr of at least one silica, 1-30 phf silane A like claimed, and 0.5-30 phf silane B like claimed.
US ‘241 fails to claim the Tg of the SSBR.
Isitman discloses a pneumatic tire tread comprising 20-80 phr of a solution polymerized styrene-butadiene rubber having a Tg of -85 to -50°C (abstract) which is measured by DSC (paragraph 0028). In Tables 1 and 2, Isitman shows that SSBR having Tg of -60°C provides for improved rolling resistance (RR) and wet related properties (paragraphs 0073).
Given that Isitman discloses rubber compositions for tire tread comprising SSBR having an advantageous Tg of -85 to -50°C for optimizing rolling resistance and wet properties, it would have been obvious to one of ordinary skill in the art to select a SSBR in the claims of US ‘241 within the claimed range of -35 to -85°C and to use the composition in a tire tread.
Claims 1-10 are rejected under 35 U.S.C. 103 as being obvious over U.S. Patent No. 10,927,241 in view of Isitman (US 2019/0062533).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). See the discussion in the previous paragraph.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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