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 Arguments
In their response dated 5/29/2026 the applicants argued that the vulcanization accelerators are not sulfenamides but sulfenamides. The applicants is correct. A non-final rejection is issued to reflect that not only sulfenimides can be utilized as accelerators in metal adhesion composition but also that they are functional equivalent of sulfenamide. Double patenting rejection will also be restated to reflect newly added claims.
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.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shaefer (US 2012/0095152) in view of Beers (US 6,120,911).
With respect to claims 1, 6, 7 and 13, 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.
The difference between instant invention and teachings of Schafer is use of sulfenimide as accelerator.
Beers discloses metal tire cords which are coated by rubber composition. The tire cords are also steel cords just like those of Schafer.
Beers teaches use of accelerators which allow to control the time and/or temperature required for vulcanization and to improve the properties of the rubber compound or wire coat. The accelerator can be utilized alone of in combination with second accelerator. The second accelerator is utilized in amount smaller than the first accelerator. Overall content of the accelerator is in a range of 1.25-3.75, preferably in an amount of 1.4-3.0 parts (col. 4, l. 10-17, l. 28-33).
The types of accelerators which can allow such control includes both sulfenamides and sulfenamides (col. 4, l. 17-28). Exemplary accelerator is N-t-butyl-2-benzothiazole sulfenamide (col. 5, l. 4-6). See also table 1, where the sulfenamide as primary accelerator is utilized in amount of 1.8 parts, secondary accelerator, when utilized its content is 0.3 parts. Wherein the content of the accelerators further meets newly added claim 13.
In the light of the above disclosure, it would have been obvious to one of ordinary skill in the art at the time instant invention was filed to utilize sulfenamide accelerator in lieu of sulfenamide. Both accelerators have labile sulfur-nitrogen bonds and can undergo cleavage during vulcanization process. This lability is the key for these compounds to function as accelerators. Beers also indicated that these accelerators are utilized because they allow to control time and temperature of the vulcanization process. That is because the activation of both sulfenamides and sulfenamides is temperature-sensitive. Both remain relatively inert at lower temperatures providing a long scorch time. Both help achieving faster cure rates once activation occurs improving efficiency and providing more uniform crosslink distribution. In other words, their shared chemistry makes them both effective in producing high-quality durable rubber products. Consequently two compounds are functional equivalents, which is something on of ordinary skill in the art would readily understand. Additionally, while Schafer discloses sulfenamides in the examples, in his specification [0030] Schafer is open to other accelerators, especially when they are functional equivalents.
“[A]nalysis [of whether the subject matter of claim would have been obvious] need no seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ.“ KSR Int’l v. Teleflex, Inc. 127 S. Ct 1727, 1740-1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441, F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006)). See DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patric Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”; In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”); In re Hoeschelle, 406 F.2d 1403, 1406-407, 160 USPQ 809, 811-12 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inference which one skilled in the art would reasonable be expected to draw therefrom …”). The analysis supporting obviousness, however, should be made explicit and should “identify reason that would have prompted a person of ordinary skill in the relevant field to combine elements” in manner claimed. KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1396.
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 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.
With respect to claim 14, the novolac adhesion promoter is utilized in a range of 0.5-10 wt.%, HMMM is utilized in amount of 3grams. With 189 grams of base rubber (Table 1) [0040] and mixing stage 2 (table 2) the content of HMMM is 1.5 %.
While Schafer discloses use of organic cobalt salt [0030] he does not provide any specific range on what the content of such salt should be.
Beers discloses rubber composition with adhesion promoted which renders the rubber composition suitable for steel cord adhesion within a tire. Beers teaches that rubber composition, especially used as wire coat includes a cobalt salt which increases adhesion of rubber to metal cords (col. 7, l. 24-47). The cobalt salt is an organic cobalt salt of fatty acids and is utilized in amount of 0.5-3 parts (col. 7, l. 48-61).
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, to utilize cobalt salt of Schafer in the amount disclosed by Beers. The cobalt salts of Schafer are also based on the fatty acids such as is-octanoic acid or naphthenic acid which fall within Beer’s aliphatic fatty acid having 6-30 carbon atoms or cobalt naphthenate. Use of such compounds as disclosed by Beers improves adhesion between rubber and metal cords.
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 1-14 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, 13 and 14.
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 June 24, 2026
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