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 .
Claim Status
Claims 1-10 have been canceled.
Claims 11-30 are newly added.
Information Disclosure Statement
The information disclosure statement filed on March 10, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
The IDS listed Foreign Patent Documents are missing.
EP3186287 A2 by Kraton Polymers US LLC
EP3416796 A1 by Kraton Polymers US LLC
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 15 and 26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
As to Claim 15:
In the present instance, Claim 15 recites the broad recitation of a base rubber amount of “preferably of 20 phr or more”, and then the claim recites “more preferably of 35 phr or more” which is narrower statement of the range/limitation, and further more “most preferable of 50 phr or more” which is further narrower than the previous limitations. This claim is considered indefinite because there is
(a) question or doubt as to whether the feature introduced by such narrower language is a mere exemplary of the remainder of the claim, and therefore not required, or
(b) a required feature of the claim.
As written, Claim 15, can lead to confusion over the intended scope of a claim (MPEP 2173.05(d)).
Also as stated in the MPEP 2173.05(c): Numerical Ranges and Amounts Limitations [R-11.2013] “I. NARROW AND BROADER RANGES IN THE SAME CLAIM “Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible. Description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.”
Suggested claim amendment: pick a single operative range per claim.
As to Claim 26:
Claim 26 recites the broad recitation of a base rubber amount of “10 to 90 phr”, and then the claim recites “preferably of 15 to 40 phr” which is narrower statement of the previous range/limitation, This claim is considered indefinite because there is
(a) question or doubt as to whether the feature introduced by such narrower language is a mere exemplary of the remainder of the claim, and therefore not required, or
(b) a required feature of the claim.
As written, Claim 26, can lead to confusion over the intended scope of a claim (MPEP 2173.05(d)).
Same as above as stated in the MPEP 2173.05(c): Numerical Ranges and Amounts Limitations [R-11.2013] “I. NARROW AND BROADER RANGES IN THE SAME CLAIM (see above).
Claims 11, 28 and 29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Claims 11, 28 and 29 recite “at least partly transmissive to visible light", and the instant Application’s paragraph [0026] recites the definition
“In the context of the present invention, the expression "at least partly transmissive to visible light", in accordance with the understanding of the person skilled in the art, means that the crosslinked rubberization mixture shows sufficiently little interaction with electromagnetic radiation of any wavelength in the visible region, or a portion of the wavelengths in the visible region, that the textile strength members in the vulcanizable composite material and in the vulcanized composite material are visible from the outside. This means that it is unnecessary for the crosslinked rubberization mixture to show no absorption at all in the visible wavelength region, since partial absorption, for example at particular wavelengths, can also be tolerated, especially in the case of transparently colored rubberizations.”
Here the phrase “partly transmissive to visible light” is a relative term, even the Applicant provides additional explanation in [0026] “sufficiently little interaction with electromagnetic radiation of any wavelength in the visible region, or a portion of the wavelengths in the visible region” where the words “sufficiently” “little” “a portion” “visible from outside” “partial absorption” “particular wavelengths” “tolerated” again are all also relative terms.
Under MPEP 2173.05 (b) “A claim may be rendered indefinite when a limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined.” “When a subjective term is used in the claim, the examiner should determine whether the specification supplies some objective standard for measuring the scope of the term.”
Instead of offering a standard, measurable boundary or objective test method, such as percentage of total luminous transmittance or haze per ASTM D1003 (or ISO 14782) or specific spectral transmittance ranges, the instant Application’s specification relies on subjective, qualitative functional results or perceptions.
Without an objective standard or measurable parameter, a PHOSITA reading the claims cannot determine where non-infringing partial transmissibility ends and infringing partial transmissibility begins.
Accordingly, the metes and bounds of Claims 11, 28 and 29 cannot be determined with reasonable certainty, rendering the claims indefinite. Claims 11, 28, and 29 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Applicant regards as the inventions.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 11-13 (Process for producing) is rejected under 35 U.S.C. 103 as being obvious by EP 3,416,796 A1 (Van Der Waal), hereafter referred as Van Der Waal, in view of WO 2017/153654 A1 (Astaix et al.), hereafter referred as Astaix. Note: A machine translation of Astaix was used for the preparation of this Action.
Van Der Waal discloses
a process for producing a curable/vulcanizable transparent rubber composition and articles including the rubber composition; (Van Der Waal, [0001])
“A solid curable, transparent, rubber composition…, comprising: Component (a): from 35-60 wt.% of one or more synthetic isoprene polymers … Component (b): from 35-60 wt.% of one or more transparent polymers different from isoprene polymers…” (Van Der Waal, Claim 1), and “component (b) is selected from one or more of the group comprising butadiene polymer, polymers made from C4 to C20 olefins; thermoplastic elastomers (TPEs), styrene-butadiene rubber (SBR), ethylene- propylene rubber (EPM), ethylene-propylene-diene rubber (EPDM), urethane rubber.” (Van Der Waal, Claim 7), which corresponds to Claim 11’s “base rubbers”,
at least one antioxidant/vulcanization and UV absorber agent including “hindered amine, …” (Van Der Waal, [0035]), which corresponds to the instant Application’s Claim 11’s “at least one aging stabilizer”;
and the mixture being curable/vulcanizable “The matured rubber was cured or vulcanized by heating press machine…” (Van Der Waal, [0056]) to obtain a crosslinked rubberized mixture that “has a haze of less than 30% and a total light transmission of more than 80%, both measured according to ASTM D1003-13 …” (Van Der Waal, Claim 1, and Tables 2&3), which corresponds to the instant Application’s claim of “at least partly transmissive to visible light at least in sections.”
Van Der Waal discloses a composite material for vehicle tires comprising rubber and reinforcing elements, but does not expressly disclose a “textile strength member into the crosslinkable rubberization mixture…” as claimed by the Instant Application.
Astaix, however, in the same field of endeavor of rubber composition and tire industry, discloses reinforcement layers for vehicle tire composites comprising heat-shrinkable textile reinforcements embedded in rubber matrix layers “A radial tire …, comprising at least one row of circumferential heat-shrinkable textile reinforcements” (Astaix, Abstract). And “the first textile reinforcements consist of multifilament fibers, for example polyamide or polyester, these fibers being twisted together in the form of textile ropes or twisted individually on themselves, or consist of monofilaments of large diameter or assemblies of such mono filaments.” (Astaix, [0015]) and “this heat-shrinkable textile material is chosen from the group consisting of polyamides, polyesters and polyketones.” (Astaix, [0056]). Using textile as reinforcement in a rubber composition is well known in the art that incorporation of such a textile reinforces a textile strength member embedded in the crosslinkable rubberized mixture to obtain vulcanizable composite material.
It would have been obvious to one of ordinary skill in the art (PHOSITA) at the time of the effective filing date of the invention to modify the reinforcement structure/composition of Van Der Waal to incorporate a textile strength member per Astaix’s teaching to obtain a predictable improvement in performance for textile-reinforced tire components. KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Claims 12-13 (base rubber)
Van Der Waal discloses “component (b) is selected from one or more of the group comprising butadiene polymer, polymers made from C4 to C20 olefins; thermoplastic elastomers (TPEs), styrene-butadiene rubber (SBR), ethylene- propylene rubber (EPM), ethylene-propylene-diene rubber (EPDM), urethane rubber.” (Van Der Waal, Claim 7). As stated above in the section “3. Claim 11”, and it is a matter of routine practice and experimentation in the tire art to further select other rubbers to further improve interfacial adhesion, cure rate and related properties, rendering Claims 12-13 obvious over Van Der Waal.
Claim 14 (base rubber) is rejected under 35 U.S.C. 103 as being obvious by EP 3,416,796 A1 (Van Der Waal), hereafter referred as Van Der Waal, in view of WO 2017/153654 A1 (Astaix et al.), hereafter referred as Astaix, and further in view of EP3,186,287 B1 (Naito et al.), hereafter referred as Naito. (Note: A machine translation of Astaix was used for the preparation of this Action.)
Van Der Waal discloses the limitations of claim 11 and teaches “Component (a): …, isoprene, Component (b):…of one or more transparent polymers different from isoprene polymers…” (Van Der Waal, Claim 1) and “component (b) is selected from one or more of the group comprising butadiene polymer, polymers made from C4 to C20 olefins; thermoplastic elastomers (TPEs), styrene-butadiene rubber (SBR), ethylene- propylene rubber (EPM), ethylene-propylene-diene rubber (EPDM), urethane rubber.” (Van Der Waal, Claim 7).
However, Van Der Waal in view of Astaix does not expressly disclose that the “base rubbers” include halogenated “butyl rubbers” as claimed by the Instant Application.
Naito, in the same endeavor of producing transparent rubber composition for articles (such as vehicle tires and footwear), however, expressly discloses using various diene and non-diene rubbers components, specifically “ The term of "diene polymer" means a kind of olefin polymers. A diene polymer … may include, but not limited to, isoprene rubber (IR), …, ” (Naito, [0049]) and “The term of "non-diene polymer" means a polymer in which its unit lacks two double bonds. The non-diene polymer may include, but not limited to, butyl rubber (IIR), …, ethylene-propylene rubber (EPM), ethylene-propylene-diene rubber (EPDM),…” (Naito, [0051]), which corresponds to the instant Application’s claim of using halogenated “butyl rubber”.
It would have been obvious to a person of ordinary skill (PHOSITA) at the time of the effective filing date of the invention to modify Van Der Waal’s in view of Astaix’s composition with Naito’s teaching of “butyl rubber”, and halogenated “butyl rubber”, as both are well-known rubbers in the rubber industry, to improve gas/air impermeability, aging resistance, and thermal stability in the transparent rubber composite while maintaining acceptable optical transparency (low haze). The substitution of one known elastomer for another well-known elastomer in a transparent rubber mixture represents a predictable selection of known materials from a finite pool of suitable polymers to achieve the intended properties and goals.
Claims 16-21 (aging stabilizer) are rejected under 35 U.S.C. 103 as being obvious by EP 3,416,796 A1 (Van Der Waal), hereafter referred as Van Der Waal, in view of WO 2017/153654 A1 (Astaix et al.), hereafter referred as Astaix, and further in view of US 2001/0056138 A1 (Vasseur), hereafter referred as Vasseur. (Note: A machine translation of Astaix was used for the preparation of this Action.)
As shown above, Van Der Waal in view of Astaix discloses at least one antioxidant/vulcanization and UV absorber agent “The additional component may include, …, light stabilizers, …, heat stabilizers, …, UV absorbents (e.g., …, hindered amine), …” (Van Der Waal, [0035]). Van Der Waal in view of Astaix does not expressly disclose the use of “dihydroquinoline”-type aging stabilizers as claimed by the instant application.
Vasseur, however, discloses TMQ and PPD/PPDA-type antioxidants derivatives “the most effective of which are, known derivatives of quinoline (“TMQ”), or derivatives of p-phenylenediamine (“PPD” or “PPDA”), which are even more active than the former, such as, for example, N-1,3-dimethylbutyl-N′-phenyl-p-phenylenediamine (6-PPD). These TMQ and PPD-type antidegradants” (Vasseur, [0004]).
It would have been obvious to one of ordinary skill in the art (PHOSITA) at the time of the effective filing date of the invention to modify the process/composition of Van Der Waal’s curable, transparent and aging resistant rubber composition and textile-reinforced rubber matrix of Astaix by combining with Vasseur’s stabilizers, and to experiment different aging stabilizers and antioxidants, including “dihydroquinoline”-type antioxidants which are one of the most widely used antioxidants in rubber compositions, to obtain a predictable improvement in aging resistance and durability suitable for textile-reinforced tire components. A skilled artisan would have been motivated to make such an experimentation of using different antioxidants/UV stabilizers/aging stabilizers to improve the performance of the obtained tire components. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Claims 22-25 (0.1-10 phr aging stabilizer) are rejected under 35 U.S.C. 103 as being obvious by EP 3,416,796 A1 (Van Der Waal), hereafter referred as Van Der Waal.
Van Der Waal discloses “Component (e): from 0.01-20 wt.% of additives” and “Component (e)” includes “The additional component may include, …, antioxidants,…, light stabilizers,…, fillers,…, UV stabilizer,…,UV absorbers, …, silica,…” (Van Der Waal, [0035]) which overlaps with or lies inside and renders obvious the claimed range of 0.1-10 phr of the instant Application’s Claims 22-25.
It would have been obvious to one having ordinary skill in the art at the effective filling time of the invention to select the portion of the Van Der Waal’s stabilizer range that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974). Because Van Der Waal explicitly discloses a broader additive range of 0.01 to 20 wt% that encompasses aging stabilizers, antioxidants, light stabilizers, and UV absorbers, which entirely encompasses/overlaps with the claimed range of 0.1 to 10 phr. Overlapping ranges are prima facie evidence of obviousness. Selecting an optimal concentration of an aging stabilizer within a known, operable range is a matter of routine experimentation for a PHOSITA.
Claim 26 (silicon dioxide) is rejected under 35 U.S.C. 103 as being obvious by EP 3,416,796 A1 (Van Der Waal), hereafter referred as Van Der Waal.
Van Der Waal expressly discloses “Component (e): from 0.01-20 wt.% of additives that do not influence the transparency,…” (Van Der Waal, Claim 1), where the additive may be silica “Component ( e)” is “The additional component may include, …, fillers,…silica…” (Van Der Waal, [0035]) which overlaps with or lies inside the instant Application Claim 26’s limitation of “15 to 40 phr”. It would have been obvious to one having ordinary skill in the art at the effective filling time of the invention to select the portion of the Van Der Waal’s silica range that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974). Because Van Der Waal explicitly discloses a broader additive range of 0.01 to 20wt% that encompasses silica, which encompasses/overlaps with the claimed range of 15 to 40 phr. Overlapping ranges are prima facie evidence of obviousness. Selecting an optimal concentration of silica within a known, operable range is a matter of routine experimentation for a PHOSITA.
Claim 27 (vehicle tire process) is rejected under 35 U.S.C. 103 as being obvious by EP 3,416,796 A1 (Van Der Waal), hereafter referred as Van Der Waal, in view of WO 2017/153654 A1 (Astaix et al.), hereafter referred as Astaix. (Note: A machine translation of Astaix was used for the preparation of this Action.)
Van Der Waal discloses that its composition sheet material can be used to produce vehicle tires by curing/vulcanizing the composite sheet together with an unvulcanized vehicle tire compound, which is an industrial conventional technique in tire manufacture “The article according to claim 15, wherein the article is selected from the group consisting of footwear, tires,…” (Van Der Waal, Claim 16), and process of producing “The matured rubber was cured or vulcanized by …” (Van Der Waal, [0056]). Astaix supplies textile-strength-reinforcement rubber tire (Astaix, Abstract). Note examiner interprets “unvulcanized vehicle tire blank” as an assembled, shaped piece of raw, pliable rubber that has not yet undergone heat and pressure curing. The underlying vulcanizable-composite-material process is rejected above in Claim 11. It would have been obvious as the effective date of the invention to combine the teachings of Van der Waal’s curable, transparent and aging resistant rubber composition with Astaix’s teaching of the textile reinforced rubber because using textile as reinforcement in a rubber composition creates strong, flexible composite materials like tires, conveyor belts, and hoses, which is a well-known process in the rubber art.
Claim 28 (vulcanizable composite material for the production of vehicle tires, product) is rejected under 35 U.S.C. 103 as being obvious by EP 3,416,796 A1 (Van Der Waal), hereafter referred as Van Der Waal, in view of WO 2017/153654 A1 (Astaix et al.), hereafter referred as Astaix. (Note: A machine translation of Astaix was used for the preparation of this Action.)
Claim 28 , in product form, is also rejected on the same combination and rational as shown by the above “3. Claim 11” because Van Der Waal discloses the rubberization mixture composition and aging stabilizers which is “curable, transparent” (Van Dr Waal, Claim 1), Astaix supplies textile-strength-reinforcement rubber tire (Astaix, Abstract).
It would have been obvious to one of ordinary skill in the art (PHOSITA) at the time of the effective filing date of the invention to modify the rubber process/composition of Van Der Waal to incorporate a textile strength member per Astaix’s teaching to obtain a predictable improvement in performance for textile-reinforced tire components. KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Claim 29 (vulcanized composite) is rejected under 35 U.S.C. 103 as being obvious by EP 3,416,796 A1 (Van Der Waal), hereafter referred as Van Der Waal, and furthermore in view of WO 2017/153654 A1 (Astaix et al.), hereafter referred as Astaix. (Note: A machine translation of Astaix was used for the preparation of this Action.)
Van Der Waal discloses a transparent rubber composition rubber composition produced by vulcanizing/curing a curable composite composition material comprising a crosslinkable mixture composition and aging stabilizers, Astaix supplies textile-strength reinforcement, and Claim 28 is rejected as obvious, Claim 29 being dependent from Claim 28, is rejected on the same rational.
Claim 30 (vehicle tire) is rejected under 35 U.S.C. 103 as being obvious by EP 3,416,796 A1 (Van Der Waal), hereafter referred as Van Der Waal, and furthermore in view of WO 2017/153654 A1 (Astaix et al.), hereafter referred as Astaix. (Note: A machine translation of Astaix was used for the preparation of this Action.)
Van Der Waal discloses that its composition is used in tires “The article according to claim 15, wherein the article is selected from the group consisting of footwear, tires,…” (Van Der Waal, Claim 16), Astaix supplies textile-strength-reinforcement (Astaix, Abstract), and because Claim 29 is rejected as obvious (see above “11. Claim 29”), Claim 30 being dependent from Claim 29, is also rejected on the same rational and combination.
Conclusion
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/G.S./
Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
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