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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/10/2024 and 3/25/2025 was filed after the mailing date of the ADS on 4/30/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The use of the terms Si363, UV-2450, Asahi #78, Nipsil AS, Aktiplast PP, Ozo Ace-0111, NOCRAC 6C, Petrotack 90, ABC-856, and JOMO Process NC140, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 103
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.
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 1-5, 7-12, 14-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al (JP 2013234252 A, English translation attached, priority date 5/8/2012).
Regarding claims 1-5, 7-12, 14-17, and 19-20, Kawasaki discloses a rubber composition preferably used as a cap tread and as a pneumatic tire (page 2, lines 25-27), comprising:
100 parts by mass of a rubber component, comprising an epoxidized natural rubber (isoprene rubber) present at 10% by mass or more and 80% by mass or less (page 3, lines 25-29) of the rubber component as well as an additional rubber, such as a styrene butadiene rubber which may be epoxidized (modified) (page 3, lines 31-40) and is preferably present at 10% by mass or more and 60% by mass or less (page 3, line 58 to page 4, line 2) of the rubber component,
0.5-20 parts by mass of a silane coupling agent having a mercapto (thiol) group, relative to 100 parts by mass of silica (page 1, lines 55-58) which contains three alkyl substituents having 1 to 12 carbon atoms and one substituent having 1 to 30 carbon atoms, resulting in a range of 4 to 66 carbon atoms on the silane coupling agent (page 2, lines 1-10),
30-120 parts by mass of silica (filler) (page 1, lines 16-20),
An alkaline fatty acid metal salt, preferably 0.5 parts by mass or more and 12 parts by mass or less, with respect to 100 parts by mass of the rubber component (page 8, lines 53-58),
Preferably, carbon black present at 3 parts by mass or more (page 8, lines 24-25), wherein it is preferred that the total content of silica in the total amount of silica and the carbon black is 50% or more, preferably 70% or more, and more preferably 80% or more (page 8, lines 31-34).
A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Kawasaki discloses natural rubber, which by applicant’s own disclosure [0021] is a species of isoprene skeleton rubber. "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989). See MPEP 2131.02.
Claims 6, 13, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al (JP 2013234252 A, English translation attached, priority date 5/8/2012) as applied to claims 1, 2, and 3 above, and further in view of Ito et al (US 20240287293 A1, priority date 5/28/2021). The above rejection with respect to Kawasaki et al is incorporated herein by reference in its entirety.
Regarding claims 6, 13, and 18, Kawasaki discloses all limitations of claims 1, 2, and 3, as set forth in the above rejection. Kawasaki does not particularly disclose the bound styrene content of the styrene-butadiene rubber.
In the same field of endeavor, Ito et al discloses a tire rubber composition, tread rubber, and tire comprising: a rubber component containing an isoprene skeleton rubber and a modified styrene-butadiene rubber with a bound styrene content of 30% by mass or more, a hydrogenated resin, silica, and carbon black (Abstract). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). Ito particularly discloses that a bound styrene content of 30% by mass or more improves the wet gripping performance of tires [0021].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the tire rubber composition taught by Kawasaki with the bound styrene content taught by Ito to improve the tire’s wet gripping performance with a reasonable expectation of success.
In the alternative, it is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Thus, it would have been prima facie obvious, using no more than ordinary creativity, to vary the amount of bound styrene in styrene-butadiene rubber anywhere within the range of 35% by mass or more, so long as the desired wet grip performance is achieved, which thus renders the claimed ratio prima facie obvious. See Ex Parte Jean-Paul Mardon, Jean Senevat, & Daniel Charquet, 101728,237, 2012 WL 1141738, at *2 (2012); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable...is ordinarily within the skill of the art.”); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nakamura et al (JP 2020143200 A, English translation attached, priority date 3/5/2019) discloses a tire rubber composition and tire, comprising: a rubber component which may include, alone or in combination, isoprene-based rubbers such as natural rubber, and styrene butadiene rubber (page 2, lines 4-10), 90 parts by mass or more of silica (page 1, lines 39-41), a mercapto (thiol) silane coupling agent having an alkyl substituent with 1 to 30 carbon atoms and two substituents having 1 to 12 carbon atoms (page 6, lines 56-60 and page 8, lines 4-10), N-phenyl-N-(trichloromethylsulfenyl)benzylsulfenamide (page 1, lines 49-52), carbon black which is preferably 3 parts by mass or more and 50 parts by mass or less (page 9, lines 23-33), and a zinc fatty acid present at 1.0 parts by mass or more and 4.0 parts by mass or less (page 11, lines 47 to 53).
Kameda et al (JP 2018009054 A, English translation attached, priority date 7/11/2016) discloses a rubber composition for tires and tires, comprising 100 parts by mass of a diene rubber, 50-200 parts by mass of silica, 1-15 parts by mass of a mercapto (thiol) silane coupling agent, and 0.05-10 parts by mass of a cationic surfactant which is a quaternary ammonium salt. Kameda discloses examples comprising modified styrene-butadiene rubbers with a styrene amount of 35.5 mass%, carbon black, and magnesium behenate (fatty acid metal salt).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (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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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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