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 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.
Claims 1-3, 5-7, 9-10, 12-13 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Balnis et al. (US 20190054781).
Balnis teaches a rubber coating for an electronic communication module (i.e., RFID, see 0067) comprising 100 parts of rubber, 5 parts of Naphthenic oil and 5 parts of phenolic resin tackifier (see Table 1, Examples 1 and 2 at 0071) and a tire based on the composition above (see Abstract).
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.
Claims 4, 8, 11 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Balnis in view of Saiki et al (US 20160017121) or Matsuo et al (US 20190144638).
Balnis teaches a Naphthenic oil, but fails to disclose a Naphthenic oil containing asphalt.
Saiki discloses a composition comprising 100 parts of natural rubber and 5 parts of aromatic oil (see Table 1, Examples 2-8, see 0040), which can be used in tire manufacturing (see 0030).
The oil is represented by A/O MDX produced by Sankyo Yuka Kogyo K.K., which used in the instant Application (see printed publication at 0025).
Saiki teaches that tackifier can be used in the composition (see 0028).
Matsuo teaches a composition comprising 100 parts of rubber and 2 by mass of the phenolic resin and 2 parts of A/O MDX mix oil (see Table 1 , examples 1-7, see 0106).
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) , 325 U.S. at 335, 65 USPQ at 301, see also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) and MPEP 2144.07.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use a Naphthenic oil containing asphalt, since it is a known material based on its suitability for its intended use.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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