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 .
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.
Drawings
The drawings are objected to because they are labeled with word Figure. Numbering of figures should be preceded by the expression “Fig.” (MPEP § 1825). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
The disclosure is objected to because of the following informalities:
The specification does not include a Brief Description of the Drawings section, instead simply listing the drawings before the examples (see page 40: lines 13-30).
In view of the objection to the drawings, replace the word “Figure” with “Fig.” in the listing of drawings.
Appropriate correction is required.
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.
Claim 20 is 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.
Regarding claim 20: As written, claim 20 depends from itself. It is therefore unclear what combination of limitations claim 20 is intended to require.
Claim Interpretation
Regarding claim 20: For the purposes of searching for prior art, claim 20 has been interpreted to depend from claim 16.
Regarding claim 28: The term SSBR has been interpreted to be an abbreviation referring to solution polymerized styrene/butadiene rubber (see specification page 29: lines 29-30).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 16-27, 29, 30, and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Pavon Sierra et al, EP3156443, in view of Guy et al, US2017/0015830.
The examiner notes that a machine translation of Pavon Sierra was used to prepare this rejection.
Pavon Sierra discloses a crosslinkable rubber composition (for claim 16) used for the production of tire treads (for claim 35) (¶0001), wherein said composition comprises at least one diene rubber and a filler system comprising first silica and second silica (¶0008, 0028-0029). The prior art composition is vulcanized (for claim 34) when used in the production of such treads (¶0047, 0054).
Regarding the claimed diene rubber: As noted above, the prior art composition comprises at least one diene rubber, corresponding to the claimed diene rubber component (for claim 16). Said diene rubber may be a styrene/butadiene rubber (SBR) (for claim 27) (¶0014, 0017). Pavon Sierra further discloses the use of a combination of solution polymerized SBR (for claims 27, 30) and emulsion polymerized SBR (for claim 30), corresponding to the additional SBR (for claim 29), as the prior art diene rubber (¶0016).
Regarding the claimed first silica: The prior art second silica is characterized by a BET surface area of more than 140 m2/g, overlapping the claimed range, and a CTAB surface are of more than 130 m2/g, overlapping the claimed range (¶0028); the prior art second silica therefore corresponds to the claimed first silica (for claim 16). The prior art second silica is present in an amount in the range of 10 to 125 phr (¶0029), overlapping the claimed range (for claim 21).
Regarding the claimed second silica: The prior art first silica is characterized by a BET surface area of 60 to 140 m2/g, overlapping the claimed range (for claim 16), and a CTAB surface area of 50 to 130 m2/g, overlapping the claimed range (for claim 16) (¶0008); the prior art first silica therefore corresponds to the claimed second silica (for claim 16). Said first silica is present in an amount in the range of 30 to 125 phr, overlapping the claimed range (for claim 21).
Regarding claims 17-20: As noted above, the prior art composition comprises 30 to 125 phr of the first silica, corresponding to the claimed second silica, and 10 to 125 phr of the second silica, corresponding to the claimed first silica. The weight ratio of the prior art first silica to second silica therefore is in the range of 30:125 to 125: 10- i.e., 0.24 to 12.5, overlapping the claimed ranges (for claims 17, 18). Furthermore, based on the amounts of each silica, the total amount of silica ranges from 40 to 250 phr, overlapping the claimed range (for claims 19, 20).
Regarding claim 33: Pavon Sierra teaches that the diene rubber may be a solution polymerized SBR (0016). Furthermore, the prior art phrase “at least one diene rubber” (0008) reads on the use of a single diene rubber-i.e., Pavon Sierra does not require that a combination of diene rubbers be used. The prior art therefore reads on a composition wherein the diene rubber comprises 100 phr solution polymerized SBR.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art ranges for the BET surface areas, CTAB surfaces areas, and amounts of first and second silicas all overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to prepare a rubber composition comprising the required amounts (for claims 17-19) of first and second silicas having the required BET and CTAB surface areas.
Pavon Sierra is silent regarding the use of a surface functionalized silica having a BET surface area if 250 to 310 m2/g and a CTAB surface area of 230 to 285 m2/g.
Guy discloses a process of preparing modified silica (for claim 16) which is used as a filler in polymer compositions (abstract, ¶0003-0004). As said modification, a polycarboxylic acid (for claims 22, 23) such as methylglutaric acid (for claim 24) is adsorbed onto the surface of the silica such that the carbon content of the modified silica is at least 0.15 wt% (for claim 25) (¶0028, 0039, 0066). Guy further exemplifies the production of silica having a pH of 4.6 and 6.1 (for claim 26) (¶0110).
The silica used in the prior art modification preferably has a BET surface area of at least 130m2/g (¶0017) and a CTAB surface area of 40 to 650 m2/g (¶0020). Guy discloses that the modified silica may be used as a filler in vulcanizable diene rubber-based compositions used for the production of tire treads(¶0089-0091, 0094, 0096, 0103). Guy further teaches that the addition of said modified silica to a polymer results in reduced melt viscosity without comprising its dynamic and mechanical properties (¶0004).
Pavon Sierra and Guy both disclose rubber compositions used in the same field of endeavor-i.e., tire treads. As taught by Guy, it was known in the art that modification of a silica having a BET surface of at least 130m2/g and a CTAB surface area of 40 to 650 m2/g with a polycarboxylic acid results in a final composition having improved melt viscosity without comprising its dynamic and mechanical properties; note that the ranges for BET surface area and CTAB surface area overlap both the ranges disclosed by Pavon Sierra for its second silica and the claimed ranges for the claimed first silica. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date to modify the composition of Pavon Sierra by using the acid modified silica of Guy as the second silica of EP3156443, with the reasonable expectation of obtaining a final composition having the improved melt viscosity taught by Guy (for claim 16).
Furthermore, to the extent that the claimed invention requires that the claimed second silica is not functionalized, note that Pavon Sierra specifically attributes its improved properties of ice braking and handling to the interaction of the prior art first silica with a mercaptosilane that is present in the composition of EP3156443 (¶0025, 0019). It therefore would be obvious to leave the prior art first silica unmodified, as surface modification could potentially interfere with its interactions with said mercaptosilane. It therefore would have been obvious to one of ordinary skill in the art to use a combination of a surface modified prior art second silica, corresponding to the claimed first silica, and a non-surface modified prior art first silica, corresponding to the claimed second silica, in view of the combination of Pavon Sierra and Guy (for claim 16).
Claims 28, 31, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Pavon Sierra et al, EP3156443, in view of Guy et al, US2017/0015830, as applied to claims 16-27, 29, 30, and 33-35 above, and further in view of Martter et al, US2021/0179822.
The disclosures of Pavon Sierra and Guy are discussed in paragraphs 13 to 26 of this Action, incorporated here by reference. As discussed above, the combination of Pavon Sierra and Guy renders obvious a rubber composition used in the production of tire treads, wherein said rubber composition comprises at least one diene rubber, a second silica which is modified with an acid such as methylglutaric acid (for claim 31), and a non-modified first silica.
Pavon Sierra further teaches that the diene rubber may comprise a solution polymerized SBR, which may be modified/functionalized at its terminus (¶0016).
Pavon Sierra and Guy are silent regarding the use of a SBR which either has a glass transition temperature (Tg) of -65 to -15 °C or is functionalized with a hydrocarbyloxysilane.
Martter discloses a rubber composition used for the production of tire treads (¶0041), wherein said composition comprises first and second functionalized SBR and silica (abstract). Said first functionalized SBR is a solution polymerized SBR (for claims 28, 31) having a Tg of -70 to -50 °C, overlapping the claimed range (for claim 28) (¶0012), which is end-functionalized (for claims 28, 31) (¶0009) with a terminating agent such as N,N-bis(trimethylsilyl)aminopropylmethyldiethoxysilane (¶0011). Note that applicant’s specification teaches that this compound corresponds to claimed formula IV (for claim 32); see specification page 27: lines 23-24). Martter teaches that the use of the combination of first and second SBRs of US2021/0179822 results in a final composition having improved wet traction while promoting low temperature (e.g. winter) performance (¶0001-0004).
Pavon Sierra and Martter are both directed towards the same field of endeavor-i.e., rubber compositions used in the production of tire treads. Furthermore, as noted above, Pavon Sierra teaches that the rubber component of EP3156443 may comprise end-functionalized SBR. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the composition of Pavon Sierra by using a combination of SBR wherein the first SBR has a Tg of -70 to -50 °C and is end-functionalized as the rubber component with the reasonable expectation of obtaining a final tire having good wet traction and suitable for use in low temperature (i.e., winter) conditions, as taught by Martter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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