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 .
Examiner Interpretation
Regarding claim 25, the broadest reasonable interpretation of the limitation of “the tire casing, the cured rubber component, and the cushion gum each respectively include a rubber component that consists of natural rubber” is that the tire casing, the cured rubber component and the cushion gum each have a rubber component in addition to any other component in the composition and with regard to that one rubber component, it is made of natural rubber. Examiner notes that the current limitation does not exclude the inclusion of other rubber components in the compositions. For purposes of demonstration only, examiner notes that a limitation of “the tire casing, the cured rubber component and the cushion gum each respectively comprise of only one rubber component, said rubber component being natural rubber” would exclude the presence of other rubber components that are not natural rubber within the tire casing, the cured rubber component and the cushion gum.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 7, 13 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Hetzel (US20100139825) (of record) in view of Araujo Da Silva et al. (US20120196976) (of record) (“Silva”), Steiner (US7001946) (of record) and Chauvin (US7798190) (of record).
Regarding claim 1, Hetzel discloses a process for retreading a tire, the process comprising the steps of:
(i) providing a tire casing (“carcass”) ([0005]);
(ii) providing a cured rubber component (“tread”) having first (“outer”) and second planar surfaces ([0005], [0006]);
(iii) providing a cushion gum, wherein the cushion gum comprising at least 80 wt. % natural rubber ([0040], which is entirely within the claimed range of at least 80 wt. % natural rubber);
(iv) forming a tire composite by engaging the cured rubber component to the tire casing and sandwiching the cushion gum therebetween ([0005]); and
(v) allowing the cushion gum to cure and then form a retreaded tire ([0005], [0006]).
While Hetzel does not explicitly disclose that the cushion gum contains a cure system comprising at least one stable aryl dinitrile oxide compound, the tire casing contains at least 80 wt. % natural rubber and the cured rubber component contains at least 80 wt. % natural rubber, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
A) Silva, which is within the tire retreading art, teaches that a cushion gum can comprise of at least one stable aryl dinitrile oxide compounds ([0005], [0012]) for the benefit of achieving satisfactory crosslinking during low temperature vulcanization ([0005]);
B) Steiner, which is within the tire manufacturing art, teaches that the cured rubber component (“outer circumferential tread”) contains about 70 to about 90 wt. % of natural rubber (C2 L13-17, which overlaps with the claimed range of at least 80 wt. % natural rubber) for the benefit of increasing the heat durability and the damage resistance of the tire casing (C2 L51-54);
C) Chauvin, which is within the tire manufacturing art, teaches the tire casing (“composite fabric”) comprises of at least 50 wt% of natural rubber (C3 L27-37, which overlaps with the claimed range of at least 80 % natural rubber), with the benefit of increasing the heat durability and the damage resistance of the tire casing, as noted by Steiner (C2 L51-54).
Examiner notes that while Steiner teaches the use of natural rubber in a tread component rather than a tire casing, one of ordinary skill would have nevertheless found it obvious that providing natural rubber in the tire casing composition would yield the same benefits, such as increasing the heat durability and the damage resistance, which are also desirable for a tire casing.
With regards to the amount of natural rubber or synthetic polyisoprene present in either the tire casing, the cushion gum or the cured rubber component, it is noted that the original disclosure fails to provide a conclusive showing of criticality for the claimed amounts (See MPEP 2144.05).
Regarding claim 2, modified Hetzel teaches all limitations of claim 1 as set forth above. Additionally, Hetzel teaches that the first planar surface includes a tread pattern ([0006]).
Regarding claim 3, modified Hetzel teaches all limitations of claim 1 as set forth above. Additionally, Silva teaches that the at least one stable aryl dinitrile oxide compound is selected from the group consisting of mesitylene dinitrile oxide (MDNO) and bismesitylene dinitrile oxide (BMNO) ([0005], [0012]).
Regarding claim 7, modified Hetzel teaches all limitations of claim 1 as set forth above. Additionally, Hetzel teaches that the step of providing the tire casing further comprises buffing off a tread portion of a used tire ([0005]).
Regarding claim 13, modified Hetzel teaches all limitations of claim 1 as set forth above. Additionally, Silva teaches that the cushion gum contains from 1 to 20 weight percent dinitrile oxide per 100 parts by weight of the rubber component ([0013], which is entirely within the claimed range of about 1 to about 20 weight percent). It is noted that the instant original disclosure fails to provide a conclusive showing of criticality for the amount of dinitrile oxide present in the cushion gum (See MPEP 2144.05).
Regarding claim 22, modified Hetzel teaches all limitations of claim 1 as set forth above. Additionally, Silva teaches that the cushion gum includes at least one part by weight to 20 parts by weight per 100 parts by weight rubber of the stabile aryl dinitrile oxide compound ([0013], which overlaps with the claimed range of at least one part by weight and less than five parts by weight per 100 parts by weight rubber). As overlapping ranges are prima facie evidence of obviousness, it would have been obvious to one having ordinary skill in the art to have selected the portion of cushion gum parts by weight that corresponds to the claimed range (See MPEP 2144.05).
Regarding claim 24, modified Hetzel teaches all limitations of claim 1 as set forth above. Additionally, given that Hetzel teaches that the majority of the cushion gum comprises natural rubber ([0040]), Steiner teaches that the majority of the cured rubber component comprises natural rubber (C2 L13-17) and Chauvin teaches that the majority of the tire casing comprises natural rubber (C3 L27-37), modified Hetzel teaches that the tire casing, the cured rubber component, and the cushion gum each respectively include a rubber component that is substantially comprised of natural rubber.
Regarding claim 25, modified Hetzel teaches all limitations of claim 1 as set forth above. Additionally, given that Hetzel teaches that natural rubber is a component of the cushion gum ([0040]), Steiner teaches that natural rubber is a component of the cured rubber component (C2 L13-17) and Chauvin teaches that natural rubber is a component of the tire casing (C3 L27-37), modified Hetzel teaches that the tire casing, the cured rubber component, and the cushion gum each respectively include a rubber component that consists of natural rubber.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hetzel (US20100139825) (of record) Araujo Da Silva et al. (US20120196976) (of record) (“Silva”), Steiner (US7001946) (of record), and Chauvin (US7798190) (of record) in further view of Harding et al. (US20090133796) (of record) and Bibona (US5342473).
Regarding claim 5, modified Hetzel teaches all limitations of claim 1 as set forth above. While Hetzel does not explicitly disclose that the step of providing the cushion gum includes preparing the cushion gum at the same location in which the step of forming the tire composited takes place, it would have been obvious to one of ordinary skill in the art prior to the earliest priority date of the instant application to do so given that:
A) Harding, which is within the tire retreading art, teaches that a cushion gum can be extruded directly onto the tire casing ([0007], [0025]) for the benefit of not requiring storage space specifically for precut layers of cushion gum ([0004], [0005]); and
B) Harding teaches that the extruder of Bibona is an extruder suitable for directly applying a cushion gum (“cushion layer”) to a tire carcass ([0026]) and the extruder of Bibona is designed for applying a “hot, temperature controlled cushion gum compound to at least the crown surface of a tire carcass” (C3 L37-39, Fig 1), meaning the cushion gum is prepared at a specific temperature at the same location as where the cushion gum is to be extruded directly onto the tire carcass to form a tire composite, for the benefit of providing excellent adhesion between the carcass and the cushion gum (C10 L67- C11 L3);
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hetzel (US20100139825) (of record), Araujo Da Silva et al. (US20120196976) (of record) (“Silva”), Steiner (US7001946) (of record), and Chauvin (US7798190) (of record) in further view of Majumdar (US20050211351) (of record).
Regarding claim 8, modified Hetzel teaches all limitations of claim 1 as set forth above. While modified Hetzel does not explicitly teach that the step of providing the tire casing further comprises buffing off both a tread portion and a subtread of a used tire, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority of the instant application to do so, as Majumdar, which is within the tire retreading art, teaches that a step of providing a tire casing comprises of buffing off both a tread portion (“tire rubber tread”) and a subtread of a used tire (“rubber carcass cushion layer”) ([0002]) for the benefit of ensuring complete removal of the tread layer prior to retreading ([0002]), which one of ordinary skill would readily recognize reduces a possible manufacturing error of incomplete tread buffing.
Claim(s) 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hetzel (US20100139825) (of record), Araujo Da Silva et al. (US20120196976) (of record) (“Silva”), Steiner (US7001946) (of record) and Chauvin (US7798190) (of record) in further view of Young (US20130087940) and at least one of Johnston (US6270602) (of record), Durif (US4424088) (of record) and Martin (US4129474) (of record).
Regarding claim 10, modified Hetzel teaches all limitations of claim 1 as set forth above. While modified Hetzel does not explicitly teach that the process further comprises encasing the tire composite in an envelope; placing the enveloped tire composite in a pressure chamber; and applying pressure at an applied pressure of from about 70 PSI to about 100 PSI relative to atmospheric to the enveloped tire composite to form a retread tire, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
A) Young, which is within the tire retreading art, teaches that a process of retreading includes the step of encasing the tire composite in an envelope ([0004]), placing the enveloped tire composite in a pressure chamber ([0006]) and applying pressure to the enveloped tire composite to form a retread tire ([0006] for the benefit of avoiding subjecting the tire to improper curing conditions ([0006]) that would negatively impact the tire structure; and
B) pressures of from about 70 PSI to about 100 PSI relative to atmospheric applied to the enveloped tire composite are conventional and known to be suitable of retreading operations, as evidenced by at least one of Johnston (C2 L28-30, 85 PSI), Durif (C5 L24-28, about 80 PSI) and Martin (C4 L48-52, 90-100 PSI).
Regarding claim 11, modified Hetzel teaches all limitations of claim 10 as set forth above. Additionally, Silva teaches that the step of allowing the at least one stable aryl dinitrile oxide compound to cure the cushion gum takes place at a temperature of between about 18 °C and 45 °C ([0014], which is within the claimed range of about 10 °C and about 60 °C). It is noted that the original disclosure fails to provide a conclusive showing of criticality for the temperature at which the cushion gum cures (See MPEP 2144.05).
Regarding claim 12, modified Hetzel teaches all limitations of claim 10 as set forth above. Additionally, Hetzel teaches that the cushion gum includes a reinforcing inorganic filler ([0042]), and wherein the cushion gum contains from 20 to 80 parts by weight reinforcing filler per 100 parts by weight of the rubber component ([0045], which is within the claimed range of about 10 to about 120). It is noted that the instant original disclosure fails to provide a conclusive showing of criticality for the amount of reinforcing filler present in the cushion gum.
Claim(s) 20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Hetzel (US20100139825) (of record), Harding et al. (US20090133796) (of record), Araujo Da Silva et al. (US20120196976) (of record) (“Silva”) and Kimura (US20120308793) (of record).
Regarding claim 20, Hetzel discloses a process for retreading a tire where a cured rubber component is mated to a tire casing (“carcass”) by using a cushion gum, the method comprising:
(i) preparing a cushion gum composition by mixing a vulcanizable rubber ([0005], [0051]) with the cushion gum comprising at least 80 wt. % natural rubber ([0040], which is within the claimed range of at least 80 wt. % natural rubber);
(ii) extruding the cushion gum composition onto a surface of the tire casing and/or cured rubber component (“tread”) ([0005]);
(iii) engaging the cured rubber component and tire casing to thereby sandwich the cushion gum therebetween and form a retread composite ([0005]); and
(iv) allowing the cushion gum to cure and thereby form a retread tire ([0006]).
While Hetzel does not explicitly disclose that the cushion gum composition is extruded directly onto said tire casing or said second planar surface of said cured rubber component to form the cushion gum, wherein the cushion gum contains a cure system comprising at least one stable aryl dinitrile oxide compound, the tire casing contains at least 80 wt. % natural rubber, the cured rubber component contains at least 80 wt. % natural rubber, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
A) Harding, which is within the tire retreading art, teaches that a cushion gum can be extruded directly onto the tire casing ([0007], [0025]) for the benefit of not requiring storage space specifically for precut layers of cushion gum ([0004], [0005]);
B) Silva, which is within the tire retreading art, teaches that a cushion gum can comprise of at least one stable aryl dinitrile oxide compounds ([0005], [0012]) for the benefit of achieving satisfactory crosslinking during low temperature vulcanization ([0005]);
C) Kimura, which is within the tire manufacturing art, teaches that the cured rubber component (“innermost layer (C) of the precured tread rubber”) and the tire casing (“outermost layer (B) of the base tire) contains 60 to 100 % mass of natural rubber ([0050]-[0052] which overlaps with the claimed range of at least 80 wt. % natural rubber) for the benefit of avoiding a reduction in adhesion at the interface, decreasing the chance of separation ([0051], [0052]);
With regards to the amount of natural rubber or synthetic polyisoprene present in either the tire casing, the cushion gum or the cured rubber component, it is noted that the instant original disclosure fails to provide a conclusive showing of criticality for the claimed amounts (See MPEP 2144.05).
Regarding claim 23, modified Hetzel teaches all limitations of claim 20 as set forth above. Additionally, given that Hetzel teaches that the cushion gum can consist of 100 phr of natural rubber ([0040]) and Kimura teaches that the innermost layer (C) of the precured tread rubber and the outermost layer (B) of the base tire consist of 100% mass % of natural rubber ([0050]), modified Hetzel teaches that the vulcanizable rubber consists of natural rubber and where the tire casing and cured rubber component consist of vulcanized natural rubber.
Claim(s) 21 is rejected under 35 U.S.C. 103 as being unpatentable over Hetzel (US20100139825) (of record), Araujo Da Silva et al. (US20120196976) (of record) (“Silva”), Steiner (US7001946) (of record) and Chauvin (US7798190) (of record) in further view of Harding et al. (US20090133796) (of record).
Regarding claim 21, modified Hetzel teaches all limitations of claim 1 as set forth above. While Hetzel does not explicitly disclose that the step of providing a cushion gum includes extruding the cushion gum directly onto said tire casing or said second planar surface of said cured rubber component to form the cushion gum, it would have been obvious to one of ordinary skill in the art prior to the earliest priority date of the instant application to do so given that Harding, which is within the tire retreading art, teaches that a cushion gum can be extruded directly onto the tire casing ([0007], [0025]) for the benefit of not requiring storage space specifically for precut layers of cushion gum ([0004], [0005]).
Response to Amendment
The Declaration under 37 CFR 1.132 filed 22 September 2025 is insufficient to overcome the rejection of claims 1 based on Hetzel (US20100139825) (of record) in view of Araujo Da Silva et al. (US20120196976) (of record) (“Silva”), Steiner (US7001946) (of record) and Chauvin (US7798190) (of record) and claim 20 based upon Hetzel (US20100139825) (of record), Harding et al. (US20090133796) (of record), Araujo Da Silva et al. (US20120196976) (of record) (“Silva”) and Kimura (US20120308793) (of record) as set forth in the last Office action because:
With the submission of the Declaration of Dr Marcela Castano under 37 C.F.R. §1.132, applicant argues that the evidence shows that adequate bonding between rubber substrates is only achieved when the cushion gum includes natural rubber and the substrates being adhered include natural rubber and “that a person having ordinary skill in the art would not predict a result of this nature”. Based on the evidence presented, examiner disagrees. The burden is on Applicant to establish that the results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." (See MPEP 716.02(b)). Applicant has the burden of explaining any data they proffer as evidence of non-obviousness (See MPEP 716.02(b)(II)). Moreover, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (See MPEP 715.02(d)). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (See MPEP 716.02(d)(II)). With regards to the results submitted in the Declaration:
The only samples available for direct comparison based on a difference of amount in natural rubber for the cushion gum are samples 2-3 and 5-6, as sample 1 comprises different amounts of dinitrile oxide, carbon black and oil compared to samples 2-3 and 5-6, and sample 4 comprises a different amount of dinitrile oxide compared to samples 2-3 and 5-6.
Of those comparable samples (2-3 and 5-6), the amount of natural rubber present in the cushion gum composition is limited to only 100 phr. In comparison to the ranges of “at least 80 wt % natural rubber” disclosed in claims 1 and 20, the samples do not show a sufficient number of tests both inside of and outside of the claimed range as to show the criticality of the claimed range resulting in unpredictable results;
Even if sample 2, which is compositionally identical to samples 3 and 5, is considered to be “an outlier” by the author of the declaration, the limited amount of experimental data and the large difference in adhesion between it and samples 3 and 5 with no clear explanation for what caused such a difference calls into question whether the applicant truly had possession of the claimed invention at the earliest effective priority date of the instant application;
Even if sample 4 was considered, the range of data does not cover the entirety of the claimed ranges or outside of it, including when the sample cushion rubber has 100 phr synthetic styrene-butadiene rubber and the substrate comprises natural rubber, only when the sample cushion rubber has 100 phr synthetic styrene-butadiene rubber and the substrate comprises synthetic styrene-butadiene rubber (Sample 4);
It is unclear whether, with regards to the substrate of the samples, the designation of either “NR” or “SBR” implies that the substrate comprised some amount of natural rubber (NR) and/or synthetic styrene-butadiene rubber (SBR) or consisted only of natural rubber or synthetic styrene-butadiene rubber;
It is unclear based on the data given as to whether the Failure Modes of “Cohesive” vs “Adhesive” are indication of desired outcomes; and
The table of sample compositions includes a row for “RESIN (phr)” amounts, but no sample is indicated as having any RESIN present.
Response to Arguments
Applicant's arguments filed 22 September 2025 have been fully considered but they are not persuasive.
On p.7 of applicant’s response, applicant argues that as Silva does teach whether the vulcanized rubber parts to which the stabile aryl dinitrile oxide compound is added to is natural or synthetic rubber and therefore is not combinable with Hetzel. Examiner disagrees, given that, as set forth above previously and in the rejection above, Silva teaching of the implementation of the stabile aryl dinitrile oxide compound in cushion gum vulcanizing is directly relevant to the curing of the cushion gum in Hetzel for satisfactory crosslinking during low temperature vulcanization, establishing a prima facie case of obviousness. Additionally, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
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/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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