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 .
Response to Amendment
The amendments entered on 6/18/2026 have been accepted. Claims 1, 7, 15 are amended. Claims 1-8 and 10-16 are pending, and claim 2 is withdrawn from consideration.
Claim Objections
Claim 1 is objected to because of the following informalities:
It appears that claim 1 line 13 contains inadvertent spaces around the comma of the newly inserted text. Applicant is asked to check for and to remove inadvertent spaces around the comma.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-8, 10-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, the second elastomer comprising natural rubber AND polybutadiene rubber (as claimed in line 13 of claim 1) is considered new matter. While the application as filed fully suggests the inclusion of polybutadiene rubber in the thermally adaptive rubber component, it is not reasonably suggested that the polybutadiene rubber is considered a part of the second elastomer. The second elastomer in the specification is tied specifically to natural rubber, wherein this elastomer has further specific limitations regarding the second elastomer’s second glass transition temperature and the second elastomer’s relationship with the first elastomer, wherein the second glass transition temperature (for example) would clearly change if polybutadiene rubber were considered a part of the second elastomer. Claims 3-8 and 10-16 are rejected for relying upon a rejected claim.
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, 3-8, 10-16 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 newly recites on line 13 “the second elastomer comprises natural rubber and polybutadiene rubber”. This limitation introduces confusion into the claim regarding further limitations regarding the second elastomer. If there are two different rubbers as a part of the second elastomer, it is not clear how a single glass transition temperature would be achieved (as required on lines 5-6 of the claim), as each of the rubbers that constitute this “second elastomer” would have their own glass transition temperature because this is a material property. Applicant is asked to amend and clarify without the addition of new matter. Claims 3-8 and 10-16 are rejected for relying upon a rejected claim. The claim will be examined as if the second elastomer is natural rubber, and wherein the underlayer further comprises polybutadiene rubber.
Claim 15 recites the following ranges: natural rubber from 20-80phr, SSBR from 40-80phr, and polybutadiene up to 20phr (wherein there must be some amount of polybutadiene according to claim 1). Phr stands for parts per hundred rubber, wherein the total amount of rubber in the composition must add up to 100. Within these claimed ranges, there are numerous values that are unable to be satisfied in any scenario. For example, the natural rubber cannot possibly be set to 80phr, as the minimum SSBR is 40phr, which would make the overall rubber amount greater than 100 (without even accounting for the amount of polybutadiene rubber). And similarly, the SSBR cannot be set to 80phr, as even if the NR is set to 20phr the BR would result in a total amount greater than 100phr. Applicant is asked to amend and clarify without the addition of new matter. The claim will be examined such that the claimed ranges must be able to sum to a total of 100phr.
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.
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.
Claims 1, 4-8, 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lopitaux (US2012/0318424A1, newly cited), in view of Ryba (US2021/0079198A1, of record), in view of Sakurai (US2018/0312002A1, of record), and optionally in view of Tadiello (US2020/0095387A1, of record).
Regarding claim 1, Lopitaux teaches a pneumatic tire (Fig. 1) comprising an underlayer (radially inner elastomer layer, sublayer 3b [Fig. 1, 0133]) positioned between a textile component (belt “7” located below the sublayer [0133]) and a tread layer (radially outer elastomer layer 3a [0131-0133, Fig. 1]), wherein the underlayer is a thermally adaptive rubber component (the underlayer would necessarily be “thermally adaptive”, as the properties of all rubber change significantly with changes in temperature), which contains reinforcing filler material (carbon black or silica [065]), additive (various additives may be used [0088-0089]), curing agents ([0089-0090]), and a polymer system (the polymer system is considered to be all of the polymers that make up the underlayer).
Lopitaux suggests a first elastomer at 40-80phr of a solution-polymerized styrene-butadiene rubber, a second elastomer of natural rubber greater than or equal to 20phr, and the underlayer contains polybutadiene rubber (Lopitaux suggests that the underlayer may have natural rubber ranging from 40-80phr and BR and SBR ranging from 20-60phr [see 0044-0047]. Therefore, it would have been obvious for one of ordinary skill in the art to work within these provided ranges to improve the rolling resistance and handling of the tire [0147, 0006], and one would have landed upon an SBR content of at least 40phr and a NR content of at least 20phr. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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). Lopitaux suggests that the SBR may be solution SBR [0044].
Loptiaux suggests that the first elastomer of SBR may preferably have a glass transition temperature of 0C or below (equivalent to 273K or below) [0059]. Lopitaux does not explicitly give the glass transition temperature of the natural rubber. However, it is well known that natural rubber and SBR differ by more than 20K between the glass transition temperatures. Ryba teaches a pneumatic tire with a composition which may be utilized in the underlayer of the tire [0071], wherein the glass transition temperature of the SSBR ranges from -30 to -10C (243-263K), the NR ranges from -60 to -70C (203-213K), and the polybutadiene is a cis 1,4 polybutadiene with a temperature from -110 to -90C (163-143K) [0013]. Ryba therefore clearly suggests that the difference between the two glass temperatures is well above 20K (difference of 45K between the midpoints of the range, and above 30K regardless of which temperature is used). And further, Ryba suggests that the glass transition temperature difference between the SSBR and the NR should be at least 25C [0031]. The testing method of the glass transition temperatures are according to standard ASTM D7426 or equivalent [0027], wherein a reading is taken at a linear rate of 10 degrees per minute [0027]. In this manner, ASTM D7426 is substantially similar to the measurement method of ISO 11357-2, such that the specific values would similarly be expected to be substantially similar. Additionally, as Ryba states that other similar testing methods may be utilized, the testing method of ISO 11357-2 would similarly be employed in Ryba which would obtain similar Tg values.
One of ordinary skill in the art would have found it obvious to utilize the glass transition temperatures as suggested by Ryba in the tire of Lopitaux. One would have been motivated because Lopitaux is silent as to the glass transition temperature of its natural rubber. One would have expected for the glass transition temperatures to result in a balanced blend of rolling resistance, traction, and wear [0001-0002, Table 2].
Modified Lopitaux suggests that the second elastomer is a natural rubber and is “natural” and would not be synthetic when it is natural [0040-0045]. The natural rubber would therefore necessarily be “biogenic” in origin, meaning that it comes from natural sources. Optionally applied regarding the natural rubber being from a biogenic origin, Tadiello teaches a tire with a composition which may be used for an underlayer [0164]. The composition comprises a natural rubber that is obtained from tropical plants such as Hevea Brasiliensis [0069]. Case law holds that the selection of a known material based on suitability for its intended use support prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045)". See MPEP 2144.07. One of ordinary skill in the art would have found it obvious to utilize the well-known type of natural rubber (Hevea) as suggested by Tadiello in the composition of Lopitaux with a reasonable expectation of success, as an example of a selection of a known material based on suitability for its intended purpose (i.e, a natural rubber which is from biogenic origins in a tire composition in a tread underlayer).
Lopitaux does not specifically give the molecular weight of its natural rubber from 100,000 to 1,000,000 g/mol. However, this is a very broad range and an extremely common range for natural rubber to be. Sakurai provides a rubber composition which may be used for the tread rubber [abstract], where the composition may include natural rubber [0072]. The molecular weight of natural rubber may range from 50,000 to 700,000 [0073]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the composition of Lopitaux so as to have the MW as suggested by Sakurai, as Lopitaux is silent as to the specific MW of its natural rubber. One would have been motivated so as to obtain good breaking resistance, wear resistance, and processability [0073].
Lopitaux does not specifically state that the elastomers have low miscibility towards each other. It is considered that the component of Lopitaux would have the elastomers with low miscibility would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II. In this case, because the component of modified Lopitaux has the same elastomers (SSBR, Natural Rubber, and polybutadiene) at the same concentrations, and because Lopitaux has each of these elastomers at substantially the same glass transition temperatures (including the difference between temperatures being larger than 20K) the component would therefore also have the elastomers having low miscibility towards each other. And similarly, because the polymer system as detailed herein satisfies each of the preferred aspects of the invention (elastomer types, molecular weight, biogenic origin, concentration, glass transition temperatures and differences) it would reasonably be suggested that the polymer system would be the continuous matrix of natural rubber with discrete zones of the SSBR because of the immiscibility properties towards each other. It being noted that the Declaration filed 12/03/2025 paragraph 10 specifies that each of these factors result in the two-phase polymer system as claimed, such that as modified Lopitaux meets each of these aspects it would clearly satisfy the claimed polymer system. And additionally, it is noted that the rubber compositions of Lopitaux undergo mechanical mixing/kneading in the formation of its rubber components wherein the different elastomers all undergo this procedure [see 0112+]. Wherein Applicant argues that a mechanical mixing step is necessary to form the matrix, Lopitaux clearly satisfies this requirement with the mixing/kneading and thus would also clearly form the matrix as claimed.
Regarding claim 4, modified Lopitaux makes obvious a tire wherein the first elastomer has the glass transition temperature ranging from 235K to 260K and the second elastomer natural rubber has a glass transition temperature of less than 215K (as in the rejection of claim 1 above, the solution styrene-butadiene may have a Tg of below 273K [Lopitaux 0059] and from 243 to 263K [Ryba, 0005, 0021]. And the natural rubber may have a Tg ranging from 203 to 213K [Lopitaux, 0013]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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)).
Regarding claim 5, modified Lopitaux makes obvious a tire wherein the thermally adaptive underlayer component contains the reinforcing filler material in an amount equal to or higher than 30 parts per hundred rubber (the composition may include carbon black, silica, or a combination of both [0065]. The total filler between these may range from 30-150phr [0072-0073]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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)).
Regarding claim 6, modified Lopitaux makes obvious silica that has a specific surface area from 70 to 250m2/g (the silica may have a surface area from 30-400, for example [0070-0071]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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)).
Lopitaux further makes obvious any combination of carbon black and silica (a combination of both may be used [0065]).
Regarding claim 7, modified Lopitaux makes obvious a tire wherein the thermally adaptive underlayer contains polybutadiene rubber of not more than 20 parts and wherein the glass temp is 160-193K (BR may range from 20-60phr [see 0044-0047]. The claim would be satisfied when BR is 20, NR is 40, and SSBR is 40, for example, which is within the ranges suggested by Lopitaux. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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 polybutadiene may be of the cis-1,4-polybutadiene type [0040, 0042-0046]. As modified by Ryba, the polybutadiene may have a glass transition temp Tg ranging from -110 to -90C [Ryba, 0005]. This is equivalent to 163 to 183K, such that it is entirely within the claimed range. And as noted previously regarding the testing method of the glass transition temperatures, the Tg is obtained through a substantially similar process through a similar standard ASTM D7426 [0027], such that the specific values of glass transitional temperature would be substantially similar. And as Lopitaux does not specifically suggest a glass transition temp for its polybutadiene, it would have been obvious to utilize the glass transition temp as suggested by Ryba with an expectation of a balanced blend of rolling resistance, traction, and wear [Ryba, 0001-0002, Table 2].
Regarding claim 8, modified Lopitaux makes obvious a tire wherein the underlayer includes additive in an amount from 1-30parts (the composition may include 10-40phr of a plasticizing agent which may be a hydrocarbon-based resin [0091-0092]),
wherein the additive is a resin selected from the given group (the hydrocarbon-based resin may be aromatic [0101]),
wherein the resin has a high miscibility towards the first elastomer (the instant specification lists that hydrocarbon resins which are of the specified group in the claim, including aromatic resins and terpene resins, have high miscibility towards the SSBR [see pg. 25 of the instant specification]. Therefore, the aromatic or terpene resins of Lopitaux would reasonably be considered to have a high miscibility towards the SSBR, as "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II),
wherein the glass transition temp is above the freezing point of water (the Tg is preferably above 20 degrees C [0093]).
Regarding claims 12-13, modified Lopitaux makes obvious a tire wherein the underlayer produces two peak maximums at temperatures separated by at least 35K, with one peak from 273-290K and the second from 213-238K (it is noted that the instant specification pg. 9 details that when an underlayer contains the polymer system described above, the “two peak maximums” at the required temperatures are produced. In other words, the two peak maximums are a direct result of the composition and the glass transition temperatures of the polymer system containing the first and the second elastomers. It is considered, the claimed two peak maximum would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II. Because modified Lopitaux teaches an underlayer composition which has SSBR within the preferred ranges of the instant application, 40phr and Tg of less than 273K [Lopitaux 0059] and from 243K to 263K [Ryba, 0004-0005] (compared to the most preferred Tg of 240-255K), and containing natural rubber at 40-80phr [Lopitaux, 0044-0047] and 203 to 213K [Ryba, 0013] (compared to the most preferred Tg of less than 215K), it would be reasonably suggested that the composition would similarly produce the two peak maximums as required in the claim. Additionally, it is noted that Lopitaux satisfies all other preferred ranges for its compositional aspects, see rejection of claim 15 below which details each of these aspects).
Regarding claim 14, modified Lopitaux makes obvious a tire wherein the underlayer comprises a dynamic stiffness onset point temperature which is in the range of 278K to 300K (it is noted that the instant specification pg. 9 details that when an underlayer contains the polymer system described above, the result is “a dynamic stiffness E* onset point temperature which is in a range of 278K to 300K”. in other words, the dynamic stiffness E* onset point temperature is a direct result of the composition and the glass temperatures of the polymer system containing the first and second elastomers. It is considered, the dynamic stiffness onset point temperature would implicitly be achieved, as "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II. Because modified Lopitaux teaches an underlayer composition which has SSBR within the preferred ranges of the instant application, 40phr and Tg of less than 273K [Lopitaux 0059] and from 243K to 263K [Ryba, 0004-0005] (compared to the most preferred Tg of 240-255K), and containing natural rubber at 40-80phr [Lopitaux, 0044-0047] and 203 to 213K [Ryba, 0013] (compared to the most preferred Tg of less than 215K), it would be reasonably suggested that the composition would similarly produce the onset point temperature within the range of 278 to 300K. Additionally, it is noted that Lopitaux satisfies all other preferred ranges for its compositional aspects, see rejection of claim 15 below which details each of these aspects, such that it is further made clear that the underlayer would have this property).
Regarding claim 15, modified Lopitaux makes obvious a tire wherein the thermally adaptive underlayer comprises natural rubber from 20 to 80phr (40-80phr [0044-0047])
Solution-polymerized styrene-butadiene rubber (20-60phr [0044-0047]),
Polybutadiene rubber in the range of less than 20phr (20-60phr [0044-0047]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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)),
Reinforcing filler material in the range of 30 to 80phr (the total reinforcing filler may be, for example, from 30-150phr [0072-0073]),
Resin that has a high miscibility towards the first elastomer in the range of 1 to 30phr (the composition may include 10-40phr of a plasticizing agent which may be a hydrocarbon-based resin [0091-0092]. The hydrocarbon-based resin may be aromatic [0101]). The instant specification lists that hydrocarbon resins which are of the specified group in the claim, including aromatic resins and terpene resins, have high miscibility towards the SSBR [see pg. 25 of the instant specification]. Therefore, the aromatic or terpene resins of Lopitaux would reasonably be considered to have a high miscibility towards the SSBR, as "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II),
Oil in the range of 0 to 30phr (it is noted that oil is not specifically required. However, oil may be utilized [0111]),
Antidegradants ranging from 0 to 10phr (these are not specifically required),
ZnO from 2 to 4phr (ZnO may be from 0.5 to 5phr [0121]),
Stearic acid from 1 to 3phr (Stearic acid may be from 0.5 to 5phr [0121]),
Vulcanization accelerators from 1 to 5phr (the amount of the accelerator may range from 0.5 to 5phr [0121-0122]),
Sulphur from 1 to 5phr (the amount of sulfur may range from 0.5 to 3phr [0121]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lopitaux (US2012/0318424A1, newly cited), in view of Ryba (US2021/0079198A1, of record), in view of Sakurai (US2018/0312002A1, of record), and optionally in view of Tadiello (US2020/0095387A1, of record), as applied to claim 1 above, and further in view of either Kanbara (US2020/0207956A1, of record) or Sekine (US2018/0179364, of record).
Regarding claim 3, Lopitaux does not explicitly give the styrene and vinyl content of its ssbr. Kanbara teaches a tire with a rubber composition which has SBR which may be ssbr [0041, 0051]. The styrene content of the SBR’s would preferably range from 5 to 50% by mass [0037]. The vinyl content in the SBR’s range from 0.1 to 80% with respect to the amount of butadiene-derived units contained in the SBR [0037-0038]. This is a wide range that would reasonably be considered to significantly overlap with the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the SSBR of Lopitaux to have the amounts of styrene/vinyl as suggested by Kanbara because Lopitaux is silent as to its preferred ranges. One would have been motivated to improve the properties of the tire such as wet grip, strength, abrasion resistance, steering stability [0036-0040].
Alternatively, Sekine teaches a tire with a rubber composition which may be applied to the undertread [0079]. The composition has SBR which may be made via solution polymerization [0059], such that it is highly relevant to Lopitaux. The styrene content is preferably from 10 to 40% by wt% [0024]. The vinyl content is preferably from 20% to 50% by mol compared to the butadiene, wherein the measurement method is 1H-NMR [0057]. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the composition of the ssbr of Lopitaux to have the percentages of styrene/vinyl suggested by Sekine. One would have been motivated so as to balance wet skid and wear resistance [0024, 0057].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lopitaux (US2012/0318424A1, newly cited), in view of Ryba (US2021/0079198A1, of record), in view of Sakurai (US2018/0312002A1, of record), and optionally in view of Tadiello (US2020/0095387A1, of record), as applied to claim 1 above, and further in view of Oshimo (US2022/0371372A1, of record) or Sandstrom (US5997673A, of record).
Regarding claim 10, Lopitaux is silent as to the specific thickness of the underlayer. However, it is very common in the art for underlayers to have a thickness less than 7mm. Oshimo, for example, teaches a tire which may be used on passenger vehicles or other vehicles [0021, 0100] (similar to Lopitaux [see 0012]). Oshimo has a cap/base rubber layer configuration in its tread [see Fig. 1]. The sum of the thickness of the cap and base layers combined is from 5.5 to 8.5mm [0082]. Under such an arrangement, the base layer would necessarily be 7mm or less at least when the combined thickness is 7mm. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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). One of ordinary skill in the art would have found it obvious to modify the tread layers of Lopitaux to have a thickness as suggested by Oshimo. One would have been motivated to provide good abrasion resistance and handling stability [0082].
Alternatively, Sandstrom teaches a pneumatic tire with a cap/base rubber layer arrangement [Fig. 1]. The thickness of the base rubber portion “12” is conventionally in a range from 0.6mm to 2mm for passenger tires using conventional passenger wheel rims [Col5 L34+]. Lopitaux may similarly be tied to passenger tires [0012]. One of ordinary skill in the art would have found it obvious to apply the base rubber thickness to the tire of Lopitaux because Lopitaux is silent as to the thickness and Sandstrom indicates that these are conventionally used values. One would have been additionally motivated improve rolling resistance [Col5 L34+].
Claims 11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Lopitaux (US2012/0318424A1, newly cited), in view of Ryba (US2021/0079198A1, of record), in view of Sakurai (US2018/0312002A1, of record), and optionally in view of Tadiello (US2020/0095387A1, of record), as applied to claim 1 above, and further in view of De Barsy (US2009/0095387A1, of record).
Regarding claims 11 and 16, Lopitaux does not specifically state that the tire comprises sipes. However, sipes are ubiquitous within the art of tires as means for improving traction and they would have been obvious to include in the tread thereof. Barsy, for example, teaches that the pneumatic tire tread includes narrow grooves called sipes [0005]. One of ordinary skill in the art would have found it obvious to include sipes in the tire tread of Lopitaux. One would have been motivated to form additional edges in the tread elements that improve traction performance in all road conditions [Barsy, 0005].
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, the arguments pertaining to the newly added limitations of the higher range of the first elastomer and the addition of polybutadiene are moot, as the newly applied reference Lopitaux suggests these ranges, and the previously applied references of Ryba and Mangili are not applied.
Applicant argues on pgs. 9-10 that the prior art does not suggest the continuous matrix of the second elastomer with discrete zones of SSBR. Applicant argues that the mechanical mixing step is necessary to form the polymer system.
The Examiner respectfully disagrees. First, it is noted that essentially every tire component will undergo some form of mechanical mixing during the formation of said tire component. Applicant’s specification merely generally states that a mechanical mixing step (with the elastomers in question) results in the claimed polymer matrix system. In the case of Lopitaux, it is specifically suggested that the polymer system that makes up the components of the underlayer undergoes a mixing step. See 0112+, wherein the different elastomers are added together and mixed in an appropriate mixer, which would clearly constitute the “mechanical mixing” step which is argued by Applicant. As argued by Applicant in pgs. 9-10 of the Remarks, the polymer system would be obtained when the elastomers are chosen at the claimed concentrations with the glass transition temperatures and when they are mixed mechanically together. As in the rejections above, modified Lopitaux suggests an underlayer component with SSBR, NR, and BR overlapping with the claimed ranges, glass transition temperatures of these rubbers overlapping with the claimed ranges, and wherein these rubbers are mechanically mixed together. Based off of the instant specification and off of Applicant’s own arguments, it would then necessarily flow that modified Lopitaux would similarly have the structure of a continuous matrix with discrete zones of the SSBR. "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II.
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.
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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