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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification does not provide antecedent basis for the limitations of claims 14 and 20.
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 16-20 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 16-20 all reference a rubber composition, but depend from claim 15, which is a tire.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matmour et al. (WO 2018/015645) in view of Vautard (WO 2019/133442).
Regarding claims 1, 3-6, 9-10, 17: Matmour et al. teach a composition comprising a carbonate functionalized elastomer, fillers comprising carbon black and silica, and a crosslinking system [Examples].
Matmour et al. fail to teach the claimed filler.
However, Vautard teaches an analogous composition comprising a functionalized SBR [0044], carbon black and silica [0046-0047], and that adding reduced graphene oxide with an oxygen content of 5 at% (same as mole%) [0029, 0031; Examples], and a surface area of at least 700 m/g [0014], and between 800 m/g and 900 m/g [0031; Examples] provides good rigidity and reinforcement [0012; Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the reduced graphene oxide of Vautard as an additional filler to the composition of Matmour et al. to provide good rigidity and reinforcement to the composition.
Regarding claim 2: Matmour et al. teach polybutadiene, copolymers of butadiene, or copolymers of isoprene, and styrene-butadiene [0035; Examples].
Regarding claim 7: Matmour et al. teach 2.6 %mol. of the functional group [Examples; Table 1].
Regarding claim 8: Matmour et al. teach 2.6 %mol. of the functional group [Examples; Table 1]. 2.6 % mol. is very close to 2.7 % mol. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Regarding claims 11-12: Matmour et al. teach a Mn of 89 [Examples; Table 1]. 89 is very close to 105 or 107. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Regarding claim 13: Matmour et al. teach styrene butadiene rubber [0035; Examples].
Regarding claim 14 and 20: The claims contain product by process limitations that do not provide a structural different from Matmour et al. [0036].
Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 15: Matmur et al. teach a tire [0013, 0029].
Regarding claim 16: Matmour et al. teach 2.6 %mol. of the functional group [Examples; Table 1]. 2.6 % mol. is very close to 2.7 % mol. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Regarding claims 18: Matmour et al. teach a Mn of 89 [Examples; Table 1]. 89 is very close to 105 or 107. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Regarding claim 19: Matmour et al. teach styrene butadiene rubber [0035; Examples].
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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