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 Interpretation
Instant claims are directed to a sulfur crosslinkable composition for metallic strength members which comprises novolac resin that is produced by reaction of phenolic compound, an aldehyde and a carbamate resin. Carbamate resin is produced by reaction of alkyl urethane with aldehyde. Although compounds disclosed in the reaction do impart structural limitation, the claims are directed to the product. The patentable weight is given to product and not process by which it is made. Consequently the novolac resin has to contain phenolic, aldehyde and carbamate functionality (urethane) but the method of reacting is open.
Instant claims are also directed to composition wherein limitation “for metallic strength members” is a recitation of intended use, and recitation of being brass-plated steel cord while definite does not limit the composition claim.
For the nomenclature of N-tert-butyl-2-benzothiazolesulfenimide (95-31-8), this compound is also known as N-tert-butyl-3-benzothiazyl sulfenamide, t-butylbenxothioazole-2-sulfenamide, Nocceler NS, Santocure NS, TBBS. Any of these recitation will meet instant claims.
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.
Claim Rejections - 35 USC § 102
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.
Or
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Schafer (US 2012/0095152).
With respect to claim 1, Schafer discloses vulcanizable rubber composition utilized for the metal reinforcement [0028]. Schafer refers to its novolac resin as adhesion promoter (Abstract). The adhesion promoters are utilized in the teachings of Schaefer in an amount of up to 20% [0033]. The resin is a novolac resin and it is made using phenol, urethane aldehyde (carbamic resin based on butyl urethane) and formaldehyde.
Second component of the composition is an accelerator which is sulfenamide accelerator utilized in amount of 0.6 grams each or 1.2 grams total, 3 grams of novolac, 4 grams of sulfur, 3 grams of HMMM. These additives were incorporated into 183 grams of rubber composition, wherein rubber itself comprises 100 grams balance are additives. As such the total content of the accelerators is 0.59 parts.
With respect to claim 2, the example disclosed right above per 100 parts of rubber includes 3 parts of novolac compound, although the specification encompasses range of up to 20.
With respect to claim 3, exemplified phenolic compound is phenol (see example 1) [0036].
With respect to claim 4, alkyl urethan is butyl urethane (see example 1) [0036].
With respect to claim 5, exemplified aldehyde is formaldehyde (see example 1) [0036].
With respect to claim 6¸ as exemplified above, total content of sulfenamide accelerator is 1.2 parts [0040].
With respect to claims 7, one of the exemplified accelerators is N-tert-butyl-2-benzothiazolesulfenimide (95-31-8), this compound is also known as N-tert-butyl-3-benzothiazyl sulfenamide as described in “claim interpretation” [0040].
With respect to claim 8, as exemplified, composition of Schafer utilizes 3 parts of HMMM which is hexamethoxymethyl melamine.
With respect to claim 9, Schafer discloses use of organic cobalt salts, specifically salts with monobasic carboxylic acids [0030].
With respect to claim 10, recitation of brass-plated steel cord, is non limiting with respect to the composition because it refers to the substrate on which the composition is being applied to. Having said that, Schafer discloses that the composition is utilized for adhesion to metallic reinforcement, specific in [0002] that reinforcement is brass-plated steel cord.
With respect to claim 11, the composition is utilized in making tires [0030].
With respect to claim 12, specific parts of the tire include parts containing steel cord reinforcement. Tire construction is well established in the art and one of ordinary skill in the art would readily understand that in tires the parts that require steel cord reinforcement are belt and sidewalls in order to maintain strength and stability of the tire under various driving conditions.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15, 26-29, 31 and 32 of co-pending Application No. 17/995112(‘112). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 15 of the co-pending application ‘112 discloses sulfur-crosslinkable rubberization mixture for metallic strength members comprising:
1.2-1.8 parts of at least one butyl carbamate-functionalized phenol-formaldehyde resin
From 1.2-1.8 parts of HMMM
0.8-1.5 parts of at least one sulfenamide accelerator, wherein second accelerator can be utilized in amount of less than 0.5 parts.
The limitations of claim 15 of ‘112 meet instant claims 1-6, 8-9.
Claims 26-28 of ‘112 states that the composition is utilized in a pneumatic tire which comprises brass-plated steel cords. This meets instant claims 10-12.
With respect to claim 7, which states specific accelerator, the examiner relies on the application of ‘112 to learn the meaning of the term “other vulcanization accelerators” which practice in consistent with MPEP 804 which allows to utilize specification as a dictionary. Specification of ‘112 [0045] discloses N-t-butyl-2-benzothiazyl sulfenamide as other accelerator.
Consequently, claims of the co-pending ‘112 application fall well within much broader in scope instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 7, 2026