DETAILED ACTION
Based on the submission of the IDS submitted on 17 October 2025, this application was withdrawn from issue. Currently, claims 1-5, 7-14, 19-21, and 23-26 are pending.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 7-9, 11-14, and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hardman et al. (US 2017/0073522).
Regarding claims 1, 2, 8, 9, and 11, Hardman et al. teaches a rubber composition comprising 100 parts by mass of styrene-butadiene rubber, 50 parts by mass of carbon black (about 32% by weight of the composition; calculated by Examiner), 1.75 parts by mass of sulfur (about 1% by weight of the composition; calculated by Examiner), 3 parts by mass of zinc oxide, 1 part by mass of stearic acid, and 1 part by mass of TBBS (a vulcanization accelerator; 0.6% by weight of the composition; calculated by Examiner) (¶40) (See, ASTM D3191 Test Method Sheet supplied by applicant on 17 October 2025). Table 1 lists the different carbon blacks that were used in the rubber compositions. Carbon black N762, a furnace carbon black, has a STSA of 25.6 m2/g and a DBP (oil number) of 65 mL/100 g; and carbon black M762, a plasma carbon black, has a STSA of 26.5 m2/g and a DBP of 70 mL/100 g (Table 1). The difference between the STSA values is about 7% and the difference between the DBP values is about 3% (calculated by Examiner). These values are less than 15%. The rubber composition is used for tire treads (¶49).
Hardman et al. does not teach that the rubber article has an enhanced thermal conductivity of at least 5% greater, preferably at least 10% greater, or most preferably at least 20% greater, than a thermal conductivity of a second rubber article of the same type that comprises furnace carbon black filler and no plasma carbon black filler. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., an enhanced thermal conductivity of at least 5%, 10% or 20% greater than that of a second rubber article of the same type, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 7, Hardman et al. does not teach that the rubber article has an enhanced thermal conductivity of greater than or equal to 0.33 W/mK. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., an enhanced thermal conductivity of greater than or equal to 0.33 W/mK, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 12, Hardman et al. does not teach that the rubber article has an enhanced diffusion compared to a second rubber article of the same type that comprises furnace carbon black filler and no plasma carbon black filler. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., an enhanced diffusion compared to a second rubber article of the same type that comprises furnace carbon black filler and no plasma carbon black filler, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claims 13 and 14, Hardman et al. does not teach that the rubber article has a reduced viscoelastic loss tangent (tan δ) of at least 2% when compared to a second rubber article of the same type, wherein the second rubber article comprises (i) furnace carbon black in a weight percentage within 20% of the plasma carbon black filler in the rubber article and (ii) 0% by weight of the plasma carbon black filler. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a reduced viscoelastic loss tangent (tan δ) of at least 2% when compared to a second rubber article of the same type, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 24, Hardman et al. teaches a rubber composition comprising furnace carbon black with a Shore A hardness of 63 and the same rubber composition but containing a plasma carbon black with a Shore A hardness of 64 (Table 2, samples containing N762 and M762, respectively). These values are within 15% of each other.
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.
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 3-5 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hardman et al. (US 2017/0073522) as applied to claim 1 above, and further in view of Kutsovsky et al. (US 2022/0332016).
Regarding claims 3-5, Hardman et al. teaches the rubber article of claim 1 as set forth above. Hardman et al. does not teach that the rubber article comprises from 15 to 60 phr of a precipitated silica, wherein the ratio of the plasma carbon black to the precipitated silica is in a range of 1:10 to 10:1. However, Kutsovsky et al. teaches a rubber composition used for tire treads (¶74) comprising 100 phr of styrene butadiene rubber and 56 phr of filler, which is a blend of carbon black and precipitated silica in a ratio of 1:10 (¶644, 632, Table 107). The composition comprises 5 phr of carbon black and 51 phr of silica (calculated by Examiner using the weight ratio of 1:10). The carbon black used in Kutsovsky et al. can be a plasma carbon black (¶294). Hardman et al. and Kutsovsky et al. are analogous art because they are from the same field of endeavor as that of the instant application, namely that of rubber compositions for tire treads. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 15 to 60 phr of a precipitated silica, with a weight ratio of carbon black to silica of 1:10, as taught by Kutsovsky et al., to the composition, as taught by Hardman et al., and would have been motivated to do so in order to ensure the proper amount of reinforcement within the tire tread.
Regarding claim 21, Hardman et al. teaches the rubber article of claim 1 as set forth above. Hardman et al. does not teach that the rubber article comprises a carbon black with a silicon content of greater than 0.05% and less than 1%. However, Kutsovsky et al. teaches that the carbon black, which may be a plasma carbon black, can be a silicon-treated carbon black containing from about 0.1% to about 2% by weight of silicon (¶294, 295). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use a carbon black that has been treated with silicon, as taught by Kutsovsky et al., as the carbon black in the composition, as taught by Hardman et al., and would have been motivated to do so by improvements in the tan delta at 60° C and the tensile stress (¶416), which translate to improved rolling resistance and durability of the tire tread.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hardman et al. (US 2017/0073522) as applied to claim 1 above, and further in view of Placke et al. (US 2022/0235207).
Regarding claim 10, Hardman et al. teaches the rubber article of claim 1 as set forth above. Hardman et al. teaches that the rubber article comprises 0.6% by weight of TBBS as a vulcanization accelerator. Hardman et al. does not teach that the rubber article comprises either MBT or MBTS as a vulcanization accelerator. However, Placke et al. teaches a rubber composition for a tire tread comprising styrene butadiene rubber, carbon black, silica, (¶8) and a vulcanization accelerator that can be TBBS or MBTS (¶105). Hardman et al. and Placke et al. are analogous art because they are from the same field of endeavor as that of the instant application, namely that of rubber compositions for tire treads. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use MBTS as the vulcanization accelerator, as taught by Placke et al., in the composition, as taught by Hardman et al., and would have been motivated to do so because MBTS and TBBS are art recognized equivalents used for the same purpose in rubber compositions for tire treads and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. MPEP 2144.06 II.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Hardman et al. (US 2017/0073522) in view of Lemarchand et al. (US 2019/0351716).
Regarding claim 23, Hardman et al. teaches a rubber composition comprising 100 parts by mass of styrene-butadiene rubber, 50 parts by mass of carbon black (about 32% by weight of the composition; calculated by Examiner), 1.75 parts by mass of sulfur (about 1% by weight of the composition; calculated by Examiner), 3 parts by mass of zinc oxide, 1 part by mass of stearic acid, and 1 part by mass of TBBS (a vulcanization accelerator; 0.6% by weight of the composition; calculated by Examiner) (¶40) (See, ASTM D3191 Test Method Sheet supplied by applicant on 17 October 2025). Table 1 lists the different carbon blacks that were used in the rubber compositions. Carbon black N762, a furnace carbon black, has a STSA of 25.6 m2/g and a DBP (oil number) of 65 mL/100 g; and carbon black M762, a plasma carbon black, has a STSA of 26.5 m2/g and a DBP of 70 mL/100 g (Table 1). The difference between the STSA values is about 7% and the difference between the DBP values is about 3% (calculated by Examiner). These values are less than 15%. The rubber composition is used for tire treads (¶49).
Hardman et al. does not teach that the tire of the tire tread has a structure comprising two sidewalls, two bead skims, and a tread, wherein each sidewall is configured to connect one of the two bead skims to the tread. However, Lemarchand et al. teaches a tire that includes a tread, two sidewalls, and two beads, wherein each sidewall connects the tread to the beads (¶53). Hardman et al. and Lemarchand et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of tires comprising diene rubber-based compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to form a tire comprising two sidewalls, two bead skims, and a tread, wherein each sidewall is configured to connect one of the two bead skims to the tread, as taught by Lemarchand et al., and use the rubber composition, as taught by Hardman et al., as the composition of the tread, and would have been motivated to do so because Hardman et al. teaches that its composition is suitable for use in tire treads and Lemarchand et al. simply teaches the basic structure of a tire.
Allowable Subject Matter
Claims 19, 20, 25, and 26 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claims 19, 25, and 26, independent claim 19 is directed to a rubber article comprising at least 2% by weight of a plasma carbon black filler compounded therein, wherein the rubber article is of a type that is an inner liner, a sidewall, a sub-tread, a bead skim, a wire skim, a tread, or a body ply skim; and wherein the plasma carbon black filler comprising a carbon particle, wherein the filler itself possess the properties of a centrifugal particle sedimentary (CPS) measured equivalent sphere diameter of less than 1 micrometer (µm); and a deviation of less than 20% between a measured aggregate diameter and a calculated aggregate diameter, wherein the measured aggregate diameter is a Z-average value measured by dynamic light scattering (DLS), and wherein the calculated aggregate diameter (Da) is determined by the equation [Da = (2540 + (71*OAN))/STSA]. None of the prior art of record teaches or renders obvious these particular properties of the plasma carbon black. Therefore, claims 19, 25, and 26 are allowable.
Regarding claim 20, independent claim 20 is directed to a rubber article comprising at least 2% by weight of a plasma carbon black filler compounded therein, wherein the rubber article is of a type that is an inner liner, a sidewall, a sub-tread, a bead skim, a wire skim, a tread, or a body ply skim; and wherein the plasma carbon black filler comprises a carbon particle that is pelletized and comprises a silane or siloxane added to the carbon particle after pelletization. While Kutsovsky et al. (US 2022/0332016) does teach carbon black that has been treated with silicon, it further teaches that silicon oxide or carbide is used for this purpose and that the silicon is part of the particle and not added as coating or after manufacture and processing of the carbon black (¶294). No other prior art of record teaches or renders obvious this limitation of the plasma carbon black. Therefore, claim 20 is allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANGELA C SCOTT/Primary Examiner, Art Unit 1767