DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending. Claims 1-20 are under examination on the merits.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-4, 6-14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Mathey et al. (US Pub No. 2015/0259516 A1; hereinafter “Mathey”) in view of Okel et al. (Silica Properties/Rubber Performance Correlation. Carbon Black-Filled Rubber Compounds, Rubber Chemistry and Technology, 1994, Volume 67: Issue 2, 217 – 236; hereinafter “Okel”).
Regarding claim 1: Mathey teaches a rubber composition (Abstract) based on at least a blend of natural rubber (NR), or synthetic polyisoprene, and a styrene-butadiene copolymer (SBR). Composition C10 (page 7, Table 3) comprises:
100 phr of elastomers ( NR- 60 phr, BR – 20 phr, SBR – 25 phr) including a natural rubber and a styrene-butadiene rubber, a ratio by weight of natural rubber to styrene-butadiene rubber being at least 50:50 (NR: SBR = 60: 25 which is larger than 50:50);
at least 45 phr of reinforcing fillers (carbon black – 51 phr and silica – 7 phr), and a ratio of the carbon black to the silica being at least 4:1 ( carbon black : silica = 51:7 which is larger than 4:1);
one or more processing aids (resin and paraffin); and
a sulfur-containing cure package (sulfur).
Mathey teaches that the silica used may be any reinforcing silica known to a person skilled in the art, in particular any precipitated or fumed silica having a BET surface area and also a CTAB specific surface area that are both less than 450 m2/g, preferably from 30 to 400 m2/g, in particular between 60 and 300 m2/g (page 2, [0038]). Mathey does not expressly teach the high surface area silica having a CTAB surface area of at least 220 m2/g.
However, in a similar field of endeavor, Okel teaches that increasing silica surface area beneficially increases rubber compound scorch protection, tensile and tear strengths, flex fatigue life and aged elongation (page 235, paragraph 2). More specifically, Okel teaches that Silica G having CTAB surface area of 227.5 m2/g (Okel, page 219, Table 1) is used in rubber compositions for off-the-road (OTR) tire tread.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mathey to incorporate the teachings of Okel to include a high surface area silica having a CTAB surface area of at least 220 m2/g in the rubber composition. Doing so would increase rubber scorch protection, tensile and tear strengths, flex fatigue life and aged elongation, as recognized by Okel (page 235, paragraph 2).
Regarding claim 2: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that the ratio by weight of natural rubber to styrene-butadiene rubber is at least 55:45 (Composition C10, NR: SBR = 60: 25 which is larger than 55:45) (page 7, Table 3).
Regarding claim 3: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that the ratio by weight of NR: SBR is 60:25 (Composition C10, page 6, Table 1). Mathey does not expressly teach the ratio by weight of NR to SBR is no more than 70:30. However, the disclosed NR:SBR ratio (60:25, 60/25 = 2.4) is sufficiently close to the claimed upper limit (70:30, about 2.3) such that one of the ordinary skill in the art would have reasonably expected compositions containing these respective ratios of NR:SBR to possess substantially the same properties. Therefore, absent evidence that the claimed range is critical or produces unexpected results, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a ratio by weight of NR:SBR within the claimed range (from 50:50 to 70:30). See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); MPEP§ 2144.05.
In addition, Mathey teaches that,
NR with a content ranging preferably from 30 phr to 80 phr, more preferably greater than or equal to 40 phr, more preferably still greater than or equal to 60 phr (Mathey, page 2, [0022]);
SBR with a content greater than or equal to 20 phr, preferably with a content ranging from 20 to 80 phr, more preferably from 20 to 60 phr, and more preferably still from 20 to 40 phr (Mathey, page 2, [0023]).
Thus, the ratio of NR:SBR would have been recognized as a result-effective variable. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of NR:SBR through routine experimentation to obtain the desired properties (wet grip without too great a degradation of the rolling resistance properties), including the ratio within the claimed range (NR:SBR ration by weight from 50:50 to 70:30).
Therefore, the disclosure of Mathey in view of Okel renders obvious the claimed rubber composition wherein the ratio by weight of NR:SBR is in the range of 50:50 to 70:30.
Regarding claim 4: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. As discussed in claim 3, the disclosure of Mathey in view of Okel renders obvious the claimed rubber composition wherein the ratio by weight of NR:SBR is in the range of 50:50 to 65:35.
Regarding claim 6: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Specifically, Okel teaches Silica G having CTAB surface area of 227.5 m2/g (Okel, page 219, Table 1) which is no more than 400 m2/g.
Regarding claim 7: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that the rubber composition includes at least 50 phr of the reinforcing fillers (Composition C10, carbon black - 51 phr and silica – 7 phr, total 58 phr) (page 7, Table 3).
Regarding claim 8: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey further teaches that the rubber composition includes no more than 70 phr of the reinforcing fillers (Composition C10, carbon black - 51 phr and silica – 7 phr, total 58 phr) (page 7, Table 3).
Regarding claim 9: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that reinforcing fillers, other than the carbon black and the high surface area silica, are present at no more than 10 phr (Composition C10, no reinforcing fillers other than carbon black and silica) (page 7, Table 3).
Regarding claim 10: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that the at least one processing aid includes at least one of a resin, a wax, and a liquid plasticizer (Composition C10, resin and paraffin) (page 7, Table 3).
Regarding claim 11: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that the cure package includes a sulfur-based vulcanizing agent and at least one of a cure accelerator and a cure inhibitor (Composition C10, sulfur and accelerator) (page 7, Table 3).
Regarding claim 12: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that the rubber further comprises at least one of an antioxidant, an antidegradant, and an antiozonant (Composition C10, antioxidant) (page 7, Table 3).
Regarding claim 13: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that the rubber composition includes no more than 30 phr of components other than the elastomers, the carbon black, and the silica (Composition C10, as highlighted below in the red box) (page 7, Table 3).
PNG
media_image1.png
626
740
media_image1.png
Greyscale
Total of the other components = 0.6+8+1+2+2.4+2+1.1+1.45=18.55 phr
Regarding claim 14: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that the rubber composition can be used for the manufacture of tire tread (page 1, [0017]).
Regarding claim 16: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. As discussed in claim 1, the disclosure of Mathey in view of Okel teaches all the components of the rubber composition. Mathey also teaches a method of forming the cured rubber composition comprising mixing all the components and curing the mixture (page 5, [0079] and [0080]).
Regarding claim 17: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches the mixture further comprises at least one of an antioxidant, an antidegradant, and an antiozonant (Composition C10, antioxidant) (page 7, Table 3).
Regarding claim 18: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that “[t]he vulcanization (or curing) may then be carried out in a known manner at a temperature generally between 130° C. and 200° C., preferably under pressure, for a sufficient time that may vary for example between 5 and 90 min…” (page 5, [0076]).
Regarding claim 19: The disclosure of Mathey in view of Okel is adequately set forth in paragraph above and is incorporated herein by reference. Mathey teaches that the compositions thus obtained are then calendered either in the form of slabs (thickness of 2 to 3 mm) or thin sheets of rubber, for the measurement of their physical or mechanical properties, or in the form of profiled elements that can be used directly, after cutting and/or assembling to the desired dimensions, for example as semi-finished products for tires, in particular as tire treads (page 5, [0080]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mathey et al. (US Pub No. 2015/0259516 A1; hereinafter “Mathey”) in view of Okel et al. (Silica Properties/Rubber Performance Correlation. Carbon Black-Filled Rubber Compounds, Rubber Chemistry and Technology, 1994, Volume 67: Issue 2, 217 – 236; hereinafter “Okel”) and further in view of Feral-Martin et al. (PCT Publication No. WO 2022/207932 A1; hereinafter “Feral-Martin”).
Regarding claim 5, the disclosure of Mathey in view of Okel is adequately set forth in paragraph 4 above and is incorporated herein by reference. Mathey in view of Okei does not expressly teach the high surface area silica has a surface area of at least 240 m2/g.
However, Feral-Martin disclosed silica products which can be used in particular as filler for polymer compositions and in particular in elastomeric compositions (Feral-Martin, page 4, [0033]), optionally combined with carbon black (page 5, [0045]). Specifically, Feral-Martin teaches a silica product “Premium SW” having a CTAB surface area of 245 m2/g (page 12, Table 1).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mathey in view of Okel to incorporate the teachings of Feral-Martin to include the high surface area silica having a CTAB surface area of at least 240 m2/g as reinforcing filler in the rubber composition. Doing so would increase rubber scorch protection, tensile and tear strengths, flex fatigue life and aged elongation, as recognized by Okel (page 235, paragraph 2).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Mathey et al. (US Pub No. 2015/0259516 A1; hereinafter “Mathey”) in view of Okel et al. (Silica Properties/Rubber Performance Correlation. Carbon Black-Filled Rubber Compounds, Rubber Chemistry and Technology, 1994, Volume 67: Issue 2, 217 – 236; hereinafter “Okel”) and in further view of Trabandt et al. (US Patent No. 5,549,146; hereinafter “Trabandt”).
Regarding claim 15, the disclosure of Mathey in view of Okel is adequately set forth in paragraph 4 above and is incorporated herein by reference. Mathey teaches a rubber composition, especially for a tire tread, and more particularly for a tire intended to be fitted onto vehicles carrying heavy loads and running at a sustained speed, such as, for example, lorries (trucks), tractors, trailers or buses, aircraft, etc. (page 1, [0003]). Okel also teaches rubber compositions used for off-the-road (OTR) tire tread (page 221, paragraph 4, lines 1-2). Mathey in view of Okel teaches all limitations of claim 14, but does not expressly teach the tire tread has a tread depth of 20 to 25 mm.
However, in a similar field of endeavor, Trabandt teaches that truck tires usually have tread depth of 22 mm (Trabandt, column 1, line 35). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mathey in view of Okel to incorporate the teachings of Trabandt to provide a tire tread having a tread depth of 20 to 25 mm. Doing so is to apply the known technique (tread depth of 22 mm) to a known product (the rubber composition) to yield predictable results (tire tread for trucks).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Mathey et al. (US Pub No. 2015/0259516 A1; hereinafter “Mathey”) in view of Okel et al. (Silica Properties/Rubber Performance Correlation. Carbon Black-Filled Rubber Compounds, Rubber Chemistry and Technology, 1994, Volume 67: Issue 2, 217 – 236; hereinafter “Okel”) and in further view of Schweitzer et al. (US Pub no.2023/0033878 A1; hereinafter “Schweitzer”).
Regarding claim 20, the disclosure of Mathey in view of Okel is adequately set forth in paragraph 4 above and is incorporated herein by reference. Mathey teaches a rubber composition (Abstract) based on at least a blend of natural rubber (NR), or synthetic polyisoprene, and a styrene-butadiene copolymer (SBR). Composition C10 (page 7, Table 3) comprises:
100 phr of elastomers ( NR- 60 phr, BR – 20 phr, SBR – 25 phr) including a natural rubber and a styrene-butadiene rubber, a ratio by weight of natural rubber to styrene-butadiene rubber being at least 50:50 (NR: SBR = 60: 25 which is larger than 50:50);
45-70 phr of reinforcing fillers (carbon black – 51 phr and silica – 7 phr), and a ratio of the carbon black to the silica being at least 4:1 (carbon black : silica = 51:7 which is larger than 4:1);
3 to 20.0 phr of processing aids selected from the group consisting of a resin, a wax, and a liquid plasticizer ( resin – 8 phr and paraffin – 1 phr );
a total of 1-5 phr of at least one of an antioxidant, an antidegradant, and an antiozonant (antioxidant – 2 phr).
Mathey teaches that the silica used may be any reinforcing silica known to a person skilled in the art, in particular any precipitated or fumed silica having a BET surface area and also a CTAB specific surface area that are both less than 450 m2/g, preferably from 30 to 400 m2/g, in particular between 60 and 300 m2/g (page 2, [0038]). Mathey does not expressly teaches the high surface area silica having a CTAB surface area of at least 220 m2/g. As discussed in claim 1, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mathey to incorporate the teachings of Okel to include a high surface area silica having a CTAB surface area of at least 220 m2/g in the rubber composition.
The sulfur-containing cure package taught by Mathey in Composition C10 (page 7, Table 3) comprises a sulfur cure agent (sulfur – 1.1 phr ), a fatty acid (stearic acid – 2 phr) and a sulfenamide (Accelerator, N- cyclohexyl-2-benzothiazyl sulfenamide – 1.45 phr) and zinc oxide (ZnO – 2.4 phr). The total of the sulfur-containing cure package is 1.1 + 2 + 1.45 + 2.4 = 6.95 phr. It reads on “a total of 5-15 phr of a sulfur-containing cure package” of the claimed invention.
Mathey does not expressly teach that composition 10 further comprises N,N’-diphenyl guanidine.
However, Mathey further teaches, “[a]dded to this base vulcanization system, incorporated during the first non-productive phase and/or during the productive phase as described subsequently, are various known secondary vulcanization accelerators or vulcanization activators such as zinc oxide, stearic acid or equivalent compounds, and guanidine derivatives (in particular diphenyl guanidine)” (page 4, [0069]). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Composition 10 so as to further include N,N’-diphenyl guanidine, as taught by Mathey, with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to include N,N’-diphenyl guanidine in the sulfur-containing cure package as a secondary curing accelerator.
Mathey does not expressly teach that composition 10 further comprises 1,6-bis-N,N-dibenzylthiocarbamoyldithiohexane. However, in a similar field or endeavor, Schweitzer teaches a rubber composition comprising 1,6-bis(N,N-dibenzylthiocarbamoyldithio)hexane (Schweitzer, page 2, [0027]). In particular, Schweitzer teaches that this cross-linking agent is deemed to further improve the abrasion resistance of the rubber composition. Sample rubber compositions taught by Schweitzer comprises natural rubber, styrene-butadiene rubber, silica and carbon black as reinforcing fillers, sulfenamide and guanidine types accelerators (Schweitzer, page 6, Table 1). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mathey in view of Okel to incorporate the teachings of Schweitzer to include 1,6-bis(N,N-dibenzylthiocarbamoyldithio)hexane in the sulfur-containing cure package to further improve the abrasion resistance of the rubber composition, as recognized by Schweitzer.
Thus, the disclosure or Mathey in view of Okel and in further view of Schweitzer teaches all limitations of claim 20.
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 1-2, 5-14 and 16-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-9, 11-13 and 15-18 of copending Application No. 18/537,926 (hereinafter “ ‘926 ”). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1-2, 5-14 and 16-19 are anticipated by claims 1, 3-9, 11-13 and 15-18 of ‘926.
Regarding instant claim 1:
‘926 claim 1 recites a rubber composition comprising:
100 phr of elastomers, including at least 50 phr natural rubber, at least 10 phr of butadiene rubber and at least 10 phr styrene-butadiene rubber;
at least 45 phr of reinforcing fillers, including carbon black and a high surface area silica, a ratio of the carbon black to the high surface area silica being at least 4:1, the high surface area silica having a CTAB surface area of at least 220 m2/g;
one or more processing aids;
and a sulfur-containing cure package including a vulcanizing agent and an ultra-accelerator.
According to component a) of ‘926 claim 1, the possible ranges by phr of natural rubber (NR) and styrene-butadiene rubber (SBR) are:
NR from 50 phr to 80 phr, and
SBR from 10 phr to 40 phr.
Thus, the ratio by weight of NR:SBR is from 50:40 to 80:10, which is always more than 50:50.
Components b), c) and d) of ‘926 claim 1 read on correspondingly those recited in instant claim 1. Accordingly, ‘926 claim 1 contains each limitation of instant claim 1 and anticipates instant claim 1.
Regarding instant claim 2: The scope of ‘926 claim 1 is adequately set forth in paragraph above and is incorporated herein by reference. The additional limitation in instant claim 2 is met by ‘926 claim 1, wherein the possible ratio by weight of NR:SBR is from 50:40 to 80:10, which is always more than 55:45.
Regarding instant claims 5-14: The scope of ‘926 claim 1 is adequately set forth in paragraph above and is incorporated herein by reference. ‘926, claims 3-9 and 11-14 recite different limitations of ‘926 claim 1. The limitations of instant claims 5-10 and 12-14 are each met by ‘926 claims. Specifically,
'926 claim 3 reads on instant claim 5;
'926 claim 4 reads on instant claim 6;
'926 claim 5 reads on instant claim 7;
'926 claim 6 reads on instant claim 8;
'926 claim 7 reads on instant claim 9;
'926 claim 8 reads on instant claim 10;
'926 claim 9 reads on instant claim 11;
'926 claim 11 reads on instant claim 12;
'926 claim 12 reads on instant claim 13;
'926 claim 13 reads on instant claim 14.
Regarding instant claim 16, ‘926 claim 15 recites method of forming a cured rubber composition comprising:
mixing together:
100 phr of elastomers, including at least 50 phr natural rubber, at least 10 phr of butadiene rubber and at least 10 phr styrene-butadiene rubber,
at least 45 phr of reinforcing fillers, including carbon black and a high surface area silica, a ratio of the carbon black to the high surface area silica being at least 4:1, the high surface area silica having a CTAB surface area of at least 220 m2/g,
one or more processing aids,
and a sulfur-containing cure package including a vulcanizing agent and an ultra-accelerator,
to form a mixture;
and curing the mixture to form the cured rubber composition.
For the same rationale as discussed in instant claim 1, ‘926 claim 15 anticipates instant claim 16.
Regarding claims 17-19: The scope of ‘926 claim 15 is adequately set forth in paragraph above and is incorporated herein by reference. ‘926 claims 16-18 recite different limitations of ‘926 claim 15. The limitations of instant claims 17-19 are each met by ‘926 claims. Specifically,
'926 claim 16 reads on instant claim 17;
'926 claim 17 reads on instant claim 18;
'926 claim 18 reads on instant claim 19.
Claims 3, 4 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of copending Application No. 18/537,926 (hereinafter “ ‘926 ”), respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 14 of ‘926 render obvious instant claims 3, 4 and 15.
Regarding instant claim 3: The scope of ‘926 claim 1 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘926 claim 1 teaches that ratio by weight of NR:SBR is from 50:40 to 80:10, which overlaps with the ratio by weight of NR:SBR recited by instant claim 3 (from 50:50 to 70:30).
Regarding instant claim 4: The scope of ‘926 claim 1 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘926 claim 1 teaches that ratio by weight of NR:SBR is from 50:40 to 80:10, which overlaps with the ratio by weight of NR:SBR recited by instant claim 4 (from 50:50 to 65:35).
Regarding instant claim 15: The scopes of ‘926 claims 1 and 13 are adequately set forth in paragraph 9 above and are incorporated herein by reference. ‘926 claim 14 recites additional limitation that the tire tread has a tread depth of 22 to 28 mm, which overlaps with that of instant claim 15 (20 to 25 mm).
Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of copending Application No. 18/537,926 (hereinafter “ ‘926 ”) in view of Mathey et al. (US Pub No. 2015/0259516 A1; hereinafter “Mathey”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 of ‘926 in view of Man render obvious instant claim 20.
Regarding claim 20: The disclosure of Mathey is adequately set forth in paragraph 4 above and is incorporated herein by reference.
‘926 claim 19 recites a rubber composition comprising:
100 phr of elastomers, comprising a natural rubber, a butadiene rubber, and a styrene-butadiene rubber;
45-70 phr of a combination of carbon black and a high surface area silica, a ratio of the carbon black to the high surface area silica being at least 4:1, the high surface area silica having a CTAB surface area of at least 240 m2/g;
3.0 to 20.0 phr of processing aids selected from the group consisting of a resin, a wax, a liquid plasticizer, and mixtures thereof;
a total of 1-5 phr of at least one of an antioxidant and an antidegradant;
and a total of 5-15 phr of a sulfur-containing cure package comprising a sulfur cure agent, one or more fatty acids, a benzothiazole sulfenamide, zinc oxide, and 1,6-bis-(N,N-dibenzylthiocarbamoyldithio)hexane.
‘926 claim 19 does not expressly teach a ratio by weight of natural rubber to styrene-butadiene rubber being at least 50:50. However, Mathey teaches a rubber composition, Composition C10 (page 7, Table 3), comprising 100 phr of elastomers ( NR- 60 phr, BR – 20 phr, SBR – 25 phr). Also, Mathey teaches that Composition 10 shows a very significant improvement in the wet grip of tires (page 6, [0100]). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘926 claim 19 to incorporate the teachings of Mathey to provide 100 phr elastomer including NR- 60 phr, BR – 20 phr, and SBR – 25 phr. Doing so would improve wet grip of tires, as recognized by Mathey. Thus, the ratio by weight of NR:SBR (60:25) is more than 50:50.
‘926 claim 19 does not expressly teach a sulfur-containing cure package comprising N,N’-diphenyl guanidine. However, Mathey further teaches, “[a]dded to this base vulcanization system, incorporated during the first non-productive phase and/or during the productive phase as described subsequently, are various known secondary vulcanization accelerators or vulcanization activators such as zinc oxide, stearic acid or equivalent compounds, and guanidine derivatives (in particular diphenyl guanidine)” (page 4, [0069]). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of the sulfur-containing cure package (taught by ‘926 claim 19) so as to further include N,N’-diphenyl guanidine, as taught by Mathey, with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to include N,N’-diphenyl guanidine in the sulfur-containing cure package as a secondary curing accelerator.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAOPENG WANG whose telephone number is (571)270-7704. The examiner can normally be reached Monday - Friday 8:30am - 5pm.
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, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAOPENG WANG/ Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/ Supervisory Patent Examiner, Art Unit 1763
