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 § 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.
Claim(s) 16-30is/are rejected under 35 U.S.C. 103 as being unpatentable over Tregouet et al (US 2020/0101793).
Regarding claims 16, 22, 24-25 and 27, Tregouet teaches a rubber composition comprising:
an elastomer matrix ([0019])
a reinforcing filler in the amount from 5 to 200 phr ([0034])
a plasticizing agent in the amount from 22 to 29 phr (Examples)
a crumb rubber in the amount from 25 to 100 phr ([0046])
The ratio of the reinforcing filler to the amount of plasticizing agent can be calculated to range from 0.2 to 9.1
The total amount of the reinforcing filler and the crumb rubber can be calculated to range from 30 to 300 phr.
The ratio of the total amount of crumb rubber to the reinforcing filler can range from 0.13 to 20.
An example for clarification would be: 34 phr reinforcing filler, 34 phr of crumb rubber and 22 phr of the plasticizing agent. This would result in a ratio of the filler to the plasticizer of 1.54, the total amount of the filler and the crumb rubber would be 68 phr and the ratio of the crumb rubber to the filler is 1.
Tregouet fails to specifically exemplify the recited rubber composition. However, Tregouet discloses each of the components of the rubber, and teaches that they are all suitable for use in the composition. It is within the ordinary level of skill in the art to make any of the compositions suggested by a reference, including selecting materials from a list in a reference. Therefore, a person of ordinary skill would have been motivated to prepare any of the compositions suggested by Tregouet, including the claimed invention. In view of this, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to use the teachings of Tregouet to arrive at the presently claimed invention. It would have been nothing more than using a known compound in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. 418, 82 USPQ2d 1385 (2007).
Regarding claims 17-20, Tregouet teaches that the elastomer can be a blend of polybutadiene and a polyisoprene ([0031]).
Regarding claim 21, Tregouet teaches that the reinforcing filler can be 100% carbon black ([0032]).
Regarding claim 23, Tregouet teaches that the plasticizing agent can be a hydrocarbon resin and or a liquid plasticizing agent such as an oil ([0074]).
Regarding claim 26, 40 mesh screens have a hole size of about 400 microns. Tregouet teaches that the crumb rubber has a particle size ranging from a few tens up to a few hundreds of microns ([0048]). Therefore, there would be no remaining crumb rubber particles remaining on a 40-mesh sieve.
Regarding claim 28, Tregouet teaches that the crumb rubber has not undergone any further treatment ([0061]).
Regarding claim 29, Tregouet teaches that the rubber is further based on an anti-ozone wax (Exmaples).
Regarding claim 30, Tregouet teaches a rubber product comprising the rubber composition according to claim 16 (Abstract).
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 16 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 29 of copending Application No. 18/705,868 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they recite the same components: elastomer, reinforcing filler, plasticizing agent, crumb rubber and wax and the relative amounts of each of these components overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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