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.
Claims 1, 3-4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over WO’024 (WO 2020/145024) in view JP’804 (JP 2015-120804), JP’747 (JP 2019-099747), JP’806 (JP 52-126806), and Shimizu et al. (US 2016/0176241).
US 2022/0161602 is a U.S. equivalent document to WO’024 and relied as an English translation to WO’024. Citations in this office action refer to paragraph numbers of the U.S. equivalent document.
Regarding claims 1, 4, and 6, FIG. 1 of WO’024 teaches a pneumatic tire comprising a tread portion, sidewall portions, bead portions, a carcass layer including polyester cords [0017], belt layers, 7 [0018], and a belt reinforcing layer, 8 [0019]. WO’024 teaches a polyester fiber cords (“cover cord”) constituting the belt cover layer is made of PET fibers having an elongation of 2.0% to 4.0% under a load of 2.0 cN/dtex measured at 100°C [0020], [0026]. The tread portion comprises a cap layer and an under tread; however WO’024 is silent to the claimed properties and composition of the under tread.
However, JP’804 teaches a rubber composition for a tire base tread (under tread) comprising:
Isoprene-based rubber that includes natural rubber wherein the content of isoprene-based rubber is 20%-70% (page 4 of the machine translation),
10%-80% by mass of butadiene rubber A having a high cis content of 96% by mass or more (pages 2-3 of the machine translation),
1%-50% by mass of butadiene rubber B that contains 1,2-syndiotactic polybutadiene crystal (pages 3-4 of the machine translation),
the total content of butadiene rubber A and B is 30%-90% by mass (page 4 of the machine translation),
10-40 parts by mass of carbon black having a CTAB of 30 to 100 m2/g (pages 4-5 of the machine translation),
5-50 parts by mass of silica (page 5 of the machine translation) wherein ultrasil VN3 is used (page 7 of the machine translation) NOTE: ultrasil VN3 is the same silica used by the instant application and therefore is expected to satisfy the claimed CTAB).
JP’804 does not disclose the high cis content butadiene rubber A has 97% or more of cis-1,4 bond content, 42 or more of Mooney viscosity (ML1+4) at 100°C and (T-cp)/(ML1+4) of 2.0 to 3.0. However, in the same field of endeavor a rubber composition suitable for tire base treads (under tread), JP’747 teaches a rubber composition comprising a high cis butadiene rubber; such as Ubepol BR 150L (pages 10 and 18 of the machine translation), which is the same material used by the instant application and accordingly would satisfy 97% or more of cis-1,4 bond content, 42 or more of Mooney viscosity (ML1+4) at 100°C, and (T-cp)/(ML1+4) of 2.0 to 3.0. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the under tread of WO’024 having the claimed composition and properties (i.e. hardness, tensile stress, a product (TB x EB), and elongation at break, as claimed) because:
JP’804 teaches a rubber composition for a tire base tread (under tread) that satisfies the claimed components of the rubber composition and render obvious the corresponding loading amounts,
JP’747 specifically discloses Ubepol BR 150L is a known high cis butadiene rubber suitable in a rubber composition for a tire base tread (under tread), providing the high cis butadiene rubber disclosed by JP’747 for the high cis butadiene rubber A required by JP’804 would predictably yield an operable base tread, and
the claimed properties are expected because the resulting composition of JP’804 with Ubepol BR 150L of JP’747 yields in a rubber composition that is the substantially identical as the instant application and the properties would naturally flow due to the extremely close correspondence to the rubber composition of the instant application; moreover; it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 ( Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
WO’024 is silent to a carcass polyester cord satisfying: an elongation at break of the carcass cord that is from 20% to 30%, an elongation under a load of 1.5 cN/dtex of the carcass cord is 5.5% to 8.5% (claims 4 and 6), and a product A = D x Ec is 2.2 x 105 dtex/50 mm to 2.7 x 105 dtex/50 mm (claim 1).
However, Table 2: cord example 3 of JP’806 teaches a polyester cord having a cord construction of 1500 D/2 (total thickness of 3000 denier ≈ 3,333.3 dtex) with an intermediate elongation of 6.3% at 2.3 g/d (2.0 cN/dtex) with an elongation at break of 24%. And, Shimizu teaches a passenger car tire having a carcass layer with a linear density of 45-70 cords per 50 mm ([0035]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the tire of WO’024 with a carcass layer reinforced with polyester cords satisfying: an elongation at break of the carcass cord being 20% to 30%, an elongation under a load of 1.5 cN/dtex of the carcass cord being 5.5% to 8.5%, and a product A = D x E is 2.2 x 105 dtex/50 mm to 2.7 x 105 dtex/50mm because JP’806 teaches a polyester cord for the carcass layer having a cord construction of 1500 D/2 (3,333.3 dtex) having an intermediate elongation of 6.3% at 2.3 g/d and an elongation at break of 24% and Shimizu teaches a passenger car tire having a carcass layer with a linear density of 45-70 cords per 50 mm and providing known carcass cords and dimensions yields predictable results.
A = 3,333 dtex x 70 cords/50 mm ≈ 2.33 x 105 dtex/50 mm.
Regarding claim 3, the PET cord for the belt reinforcing layer of WO’024 is expected to satisfy the claimed tension in the tire because the PET cord of WO’024 is substantially the same in structure, manufacture, and material to the PET cord of the instant application.
Response to Arguments
Applicant's arguments filed 02/12/2026 have been fully considered but they are not persuasive.
On page 5 of the arguments, Applicant argues “The Office Action provides no motivation for the combination of JP 804 other than because WO 024 does not disclose the base tread composition”.
This argument is unpersuasive. WO’024 teaches a pneumatic tire for a passenger car comprising a tread portion comprising a cap layer and an under tread (also known as a base tread). In the same field of endeavor of a pneumatic tire for a passenger car, JP’804 discloses a rubber composition for a base tread. Providing a known rubber composition for the same tire component (base tread; also known as under tread) of the same type of tire (passenger car tires) yields predictable results of an operable pneumatic tire for a passenger car.
On page 5 of the arguments, Applicant states “great many base tread compositions exist and the selection of JP 804 is clearly based solely on impermissible hindsight, using the claims as a roadmap”.
This argument is unpersuasive because providing a known rubber composition for the same tire component (base tread; also known as under tread) of the same class of tire (passenger car tires) yields predictable results. Moreover, JP’804 teaches a rubber composition suitable for base treads of a pneumatic tire that has good processability, fuel economy, rubber strength, and steering stability in a well-balanced manner (abstract, page 6 of the machine translation) providing ample motivation and clear direction to use the rubber composition suitable for a base tread disclosed by JP’804 to the under tread (base tread) of WO’024
On page 5 of the arguments, Applicant states “there is no reason to look to JP 747 for further combination”.
In response, this argument is unpersuasive. Page 3 of machine translation of JP’804 states the method of preparing the high cis butadiene rubber A is not particularly limited and that commercial products can be used. JP’747 teaches a suitable high cis butadiene commercial product: Ubepol BR 150L, the exact butadiene rubber used by the instant application, used in a rubber composition for a base tread of a pneumatic tire. Thus, JP’747 renders obvious using the high cis butadiene commercial product: Ubepol BR 150L for the high cis butadiene rubber A in JP’804 as both references are directed to a base tread of a pneumatic tire and JP’804 states using commercial products are suitable.
On page 5 of the arguments, Applicant refers to JP 530 (JP 2021-181530).
In response, any arguments related to JP 530 is irrelevant because JP 530 is not relied in the current rejection.
On page 7 of the argument, Applicant refers to inventor declaration demonstrating criticality and unexpected results for the claimed limitation.
In response, page 5 of the declaration states:
“Examples 5 and 6, which used BR4 and BR5, whose butadiene rubber characteristics blended into the undertread rubber composition satisfy the requirement of amended claim 1, showed excellent effects in terms of belt edge separation durability and extrusion processability compared to other examples”.
However, Examples 5 and 6 do not use BR4 and BR5 and Example 5 do not satisfy all the requirements of amended claim 1. Example 5 lists ML1+4 = 38 whereas the claimed invention requires ML1+4 of 42 or more. Example 5 lists (T-cp)(ML1+4) = 3.1 whereas the claimed invention require (T-cp)(ML1+4) ranging from 2.0 to 3.0
JP’804, the closest prior art, teaches a rubber composition suitable for base treads of a pneumatic tire having 20%-70% NR and 10%-80% by mass of butadiene rubber A having a high cis content results in good processability, fuel economy, rubber strength, and steering stability in a well-balanced manner, rendering Applicant’s benefits as expected.
On page 7 of the arguments, Applicant states JP 747 “is not an undertread composition!”.
In response, Applicant is incorrect. On page 18 of the machine translation, it states there is no restriction to the application site of the rubber composition in a tire and explicitly states application of the rubber composition is suitable for a base tread (also known as a under tread).
On pages 7-8 of the arguments, Applicant argues none of the cited reference disclose the hardness, tensile stress, a product (TB x EB), and elongation at break and “the Office Action has made no findings of hardness, elongation at break, or other properties from the JP 804 composition or the Ubepol BR 150L of JP747 along or in combination with JP 804”.
In response, it is acknowledged that JP’804 and JP’747 do not recite values for hardness, tensile stress, a product (TB x EB), and elongation at break. However, the resulting composition of JP’804 with Ubepol BR 150L of JP’747, as the high cis butadiene component of JP’804 yields a rubber composition that is substantially identical as the instant application and the properties would natural flow due to the extremely close correspondence to the rubber composition of the instant application. A reasonable rationale and finding has been provided to render the claimed properties obvious. Attorney arguments cannot take the place of evidence. Applicant has not provided substantiated evidence that the resulting composition of JP’804 with Ubepol BR 150L of JP’747 as the high cis butadiene component A of JP’804 fails to satisfy the claimed properties.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KENDRA LY/Primary Examiner, Art Unit 1749