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 Objections
Claims 5and 15 are objected to because the term “reinforcing carbon black filler” is inconsistent previous recitation and should refer to properly refer to the previous recitation and therefore read as “the at least one reinforcing carbon black filler.”
Appropriate correction is required.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 1, 2, 5-11, 14, and 15, the term “about” is an approximate term and it is unclear how the term “about” extends the endpoints of each claimed range. The specification does not provide guidance on the meaning of term “about.”
With respect to claims 3, 4, 12, 13, and 16-20, they are rejected for failing to cure the deficiency of the claim from which they depend.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 10,246,581 in view of Sumner (US 5,886,106). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to instant claims 1, 2, 4-11, and 13-15, US ‘581 claims a cured rubber composition comprising at least one butyl or halogenated butyl rubber, 5-200 phr of at least one reinforcing carbon filler and/or silica, 0.1-10 phr whey protein, and a cure package wherein the whey protein has a majority of the protein chains having a molecular weight of greater than about 10 kDaltons and are a combination of alpha-lactalbumin and beta-lactoglobulin and a degree of hydrolysis of less than 50 %.
US ‘581 fails to claim a tire article having a tread of sidewall.
Sumner discloses halogenated butyl rubber composition that are suitable for tire inner liners, sidewalls, and treads (abstract). The exemplified formulations include carbon black and curatives (Table 2).
Given that the claims of US ‘581 are drawn to a rubber composition comprising butyl rubber and carbon filler and further given that Sumner teaches that a composition comprising butyl rubbers is suitable for tire parts including the inner liner, the sidewall, or the tread, it would have been obvious to one of ordinary skill in the art to utilize the rubber composition claimed by US ‘581 in a tire like claimed.
With respect to instant claims 3 and 12, claim 8 of US ‘581 does not specify the whey protein powder, however, case law holds that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619,622 (CCPA 1970).
Consistent with case law attention is drawn totable 1 in col. 23 of US ‘581 exemplifies formulations comprising whey protein from WPC (i.e., whey protein concentration).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize a whey protein powder such as whey protein concentrate.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,999,830. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘830 claims tire rubber composition and a tire tread or sidewall thereof comprising a rubber composition that identical to that presently claimed except that US ‘830 does not include butyl rubber or halogenated butyl rubber as one of the claimed “at least one rubber.” Given that US ‘830 claims a “tire rubber composition,” it would have been obvious to one of ordinary skill in the art to utilize the composition in a tire part, including tread and sidewall like claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. References US 2015/0159001, US 8,476,342, and US 6,780,925 are considered to be the closest prior art but do not fairly disclose or suggest the claimed tire.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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