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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-8 are 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.
Claim 1 recites “ a diene-based rubber composition containing ” in lines 1-2. The transitional term “comprising”, which is syn-onymous with “including,” “containing,” or “charac-terized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., >Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) [see MPEP 2111.03]. Claim 1 also recites “A vibration-damping rubber composition, consisting of” in line 1. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith.”) [see MPEP 2111.03]. It is unclear if the vibration-damping rubber composition is open-ended or closed to the inclusion of other materials, therefore claim 1 and dependent claims 2-8 are indefinite.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yonemoto (JP 2020-2379). English machine translation for citation.
Regarding claims 1-4: Yonemoto (JP ‘379) discloses rubber compositions [0001], wherein Example 6 [Ex. 6; 0072-0086; Table 3, Ex. 6] contains 80 parts by mass SBR (styrene-butadiene rubber [0082]), 20 parts by mass BR (polybutadiene rubber [0082]), 60 parts by mass silica ([0082]), 5 parts by mass silane coupling agent (Si69 [0082]), 1.00 parts by mass DM (di-2-benzothiazolyl disulfide ([0084]), and 1.5 parts by mass CZ (N-cyclohexyl-2-benzothiazolylsulfenamide [0084]) [Ex. 6; 0072-0086; Table 3, Ex. 6]. Yonemoto (JP ‘379) discloses N-cyclohexyl-2-benzothiazolylsulfenamide and N-oxydiethylene-2-benzothiazolylsulfenamide as sulfenamide accelerators [0032; 0034] (i.e. exchange N-cyclohexyl-2-benzothiazolylsulfenamide with N-oxydiethylene-2-benzothiazolylsulfenamide as the sulfenamide accelerator in Ex. 6 [see MPEP 2131.02]; thereby affording 2.5 parts by mass N-oxydiethylene-2-benzothiazolylsulfenamide + di-2-benzothiazolyl disulfide per 100 parts by mass diene rubber (SBR+NR); a ratio of N-oxydiethylene-2-benzothiazolylsulfenamide:di-2-benzothiazolyl disulfide of 60:40 in Ex. 6).
Yonemoto (JP ‘379) does not specifically disclose a vibration-damping rubber composition. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claim 8: Yonemoto (JP ‘379) discloses vulcanizing the rubber composition to afford a tire [0070-0071; 0075-0077; 0087; Table 3, Ex. 6].
Yonemoto (JP ‘379) does not specifically disclose a vibration-damping rubber member. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yonemoto (JP 2020-2379) (English machine translation) as applied to claims 1-3 above, respectively, when taken with Nakaji (US 2026/0071049).
Regarding claims 5-7: Yonemoto (JP ‘379) discloses the basic claimed composition [as set forth above in claims 1-3, respectively]; wherein Yonemoto (JP ‘379) discloses bis(3-triethoxysilylpropyl)tetrasulfide as the silane coupling agent (Si69) [0027; 0082; Ex. 6; Table 3, Ex. 6].
Nakaji (US 049) provides evidence that Si69 is bis(3-triethoxysilylpropyl)tetrasulfide [0023].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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