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
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ichimoto (WO2021/065615; English equivalent US Pub. No. 2022/0403069 relied upon) in view of Washizu (WO2020/246218; English equivalent US Pub. No. 2022/0235209 relied upon) and Nakazono (JP2013-100449; machine translation relied upon).
Regarding claims 1-2, 8, 13-14 and 16, Ichimoto teaches a tire comprising a tread (paragraphs [0017]-[0018]), where E* when water-wet/E* before water wet x 100 may be 90 or lower (paragraph [0038]), and where the rubber composition can contain carboxylic acid-modified BR or SBR and a metal element as a cation (paragraphs [0046]-[0051]), where the composition can include silica in an amount of preferably 30 parts by mass or more and 100 parts by mass or less per 100 parts by mass of rubber component (paragraph [0066]), with specific embodiment using silica Ultrasil VN3 (same specific silica as used by Applicant and having average primary particle size of 17 nm) and 9000GR (having average primary particle size of 16 nm) (paragraphs [0147]-[0148]), the composition can use carbon black in an amount more preferably 5 parts by mass or more and 15 parts by mass or less (paragraph [0076]), mercapto silane coupling agents can be used (paragraph [0068]) in an amount more preferably 5 parts by mass or more and 15 parts by mass or less (paragraph [0069]), and an amount of sulfur is 0.1 parts by mass or more and 10 parts by mass or less (paragraph [0116]), where the rubber molecules of the rubber components are preferably partially or fully cross-linked by ionic bonding, which allows E* to decrease only when wet with water due to the reversibility of the noncovalent ionic bonds (paragraph [0048]), and where the cation can be derived from compounds containing alkali or alkaline earth metal elements such as lithium, sodium, potassium, magnesium, calcium, or strontium (paragraphs [0051]-[0053]). As a rubber composition comprising a modified rubber containing an anion derived from carboxylic acid and a cation containing alkali or alkaline earth metals reversibly changing with water by reversibly breaking or reforming an ionic bond between rubber molecules is how the invention achieves the E* when water-wet/E* when dry and tan delta when wet/tan delta when dry ratio (see paragraphs [0010]-[0011] of Applicant’s specification), it is expected that the tire of Ichimoto would also achieve tan delta when wet / tan delta when dry ≥ 1.00 as claimed in claim 1. As Applicant teaches that the relationship expressed by formula (3) can be achieved based on increasing the amount of sulfur, increasing coupling agents, using mercapto silane coupling agents, and increasing the proportion of carbon black among the filler components (see paragraph [0034] of Applicant’s specification), and specific embodiments of Applicant (see table 1, Examples 1-1 to 1-14) have amounts of sulfur, coupling agent, and carbon black within the preferred ranges of Ichimoto set forth above, and Ichimoto teaches the use of mercapto silane coupling agents and silica with an average primary particle size as claimed, it would have been obvious to one of ordinary skill in the art to create embodiments of Ichimoto which would be expected to meet the limitations of formula (3). Ichimoto does not specifically disclose the tread thickness. In a tire similarly directed to a composition with different wet and dry properties comprising a carboxyl modified BR or SBR (paragraphs [0071]-[0077]), Washizu teaches using a preferable maximum tread thickness of 4 to 35 mm (paragraph [0172]), overlapping the claimed thickness of 5.0 mm or more and 10.0 mm or less of claim 1, and the claimed thickness of 5.0 mm or more and 9.0 mm or less of claim 8. It would have been obvious to one of ordinary skill in the art to use a tread depth as taught by Washizu in the tire of Ichimoto in order to better achieve advantageous effect with a tread composition that changes properties when wet (see Washizu at paragraph [0172]). Ichimoto does not specifically disclose that the alkali or alkaline earth metal is a salt selected from the group consisting of potassium, calcium, sodium and magnesium acetate. In a tire similarly directed to a BR or SBR rubber (machine translation at page 2, second to last paragraph) which can be modified by a carboxyl group (machine translation at page 4, first two full paragraphs), Nakazono teaches using alkali metal salts and alkaline earth metal salts, preferably magnesium or calcium acetate (machine translation at page 11, second paragraph). It would have been obvious to one of ordinary skill in the art to use an alkali metal salt or alkaline earth metal salt of magnesium or calcium acetate as taught by Nakazono as the cation providing element of the tire of Ichimoto (combined) as a known preferable metal salt for use in a carboxylic acid modified BR or SBR in a tire (see Nakazono machine translation at page 2, second to last paragraph, at page 4, first two paragraphs, and at page 11, second paragraph).
Regarding claim 3, Ichimoto teaches the use of resins (paragraphs [0078] and [0080]).
Regarding claim 9, substituting the minimum claimed thickness of 5 mm, such being taught in the range of Washizu, into the formula of this claim results in a 40% modulus at 70 degrees C after tensile test/40% modulus at 70 degrees C before tensile test of greater than or equal to 0.265, such being less than already required by claim 1, and thus is taken to be met for the same reasons set forth above.
Regarding claim 10, Washizu teaches that a groove depth is usually about 70% of the thickness of the tread (paragraph [0173]), so using a 5 mm tread thickness and 70% depth results in a groove depth D of 3.5 mm, and substituting this depth in to the formula of this claim results in a 40% modulus at 70 degrees C after tensile test/40% modulus at 70 degrees C before tensile test of greater than or equal to 0.28, such being less than already required by claim 1, and thus is taken to be met for the same reasons set forth above.
Regarding claim 11, Washizu teaches a land ratio of 30% or higher and 85% or lower (paragraph [0182]), this being equivalent to a negative ratio of 70% or lower and 15% or higher, so using a negative ratio of 15%, and substituting this negative ratio into the formula of this claim results in a 40% modulus at 70 degrees C after tensile test/40% modulus at 70 degrees C before tensile test of greater than or equal to 0.3, such being less than already required by claim 1, and thus is taken to be met for the same reasons set forth above.
Regarding claims 12 and 15, Ichimoto teaches that the amount of the carboxylic acid-modified rubber is still more preferably 80% by mass or more (paragraph [0058]), and that other rubber components may be included, the first specific type of rubber listed being isoprene-based rubbers (paragraph [0059]), suggesting a still more preferable composition of the invention would have 20% or less of isoprene-rubber, overlapping the claimed range.
Response to Arguments
Applicant's arguments filed July 17, 2026 have been fully considered but they are not persuasive.
Applicant argues that the Comparative Examples are all much closer to the present invention than any examples in the cited references. However, 6 of the 10 Comparative Examples (1-1, 1-4, 1-5, 2-1, 2-4 and 2-5) have no carboxylic acid-modified rubber, which is the central feature of the invention leading to the features [1](1) and [1](2), and therefore the Comparative Examples are not all much closer to the present invention than the cited prior art.
Applicant argues that Tables 1 and 2 of the instant application show that E* and tan δ can both be varied independently such that one cannot simply assume that both these features will fall within the claimed invention. However, these tables clearly illustrate the opposite. Specifically, Comparative Examples 1-1, 1-4, 1-5, 2-1, 2-4 and 2-5, the embodiments without carboxylic acid-modified rubber have an E* ratio of 0.98 or higher and a tan δ ratio of 1.0, whereas comparative examples 1-2, 1-3, 2-2, and 2-3, which comprise carboxylic acid-modified rubber have an E* ratio and tan δ ratio falling within the claimed range. In other words, the presence of the carboxylic acid-modified rubber leads directly to these claimed ratios in the examples and comparative examples, the same as has been set forth in the rejections previously and again above, and there is no evidence that E* and tan δ ratio are varied independently.
Further, as Ichimoto teaches using E* when water-wet/E* before water wet x 100 may be 90 or lower, and the tan δ ratio of greater than 1.00 is inherently related to water temporarily breaking ionic bonds, these limitations are taken to be met by Ichimoto. Applicant further argues that since the tan δ properties are not disclosed or suggested by Ichimoto, can vary depending upon the components employed, and can be varied independent of the E* properties, that it is improper to assume that Ichimoto teaches overlapping tan δ properties. However, Ichimoto allows E* to decrease only when wet with water due to the reversibility of the noncovalent ionic bonds (paragraph [0048]). This is the same dynamic that inherently results in the tan δ ratio being greater than 1, and it is such a ratio that is claimed, not specific tan δ values.
Applicant argues that none of the inventive examples of Ichimoto use sulfur, whereas some comparative examples use sulfur. This is not persuasive because Ichimoto teaches the use of 0.1 parts by mass or more and 10 parts by mass or less of sulfur (paragraph [0116]), and Ichimoto is not limited to the examples, and there are more substantive differences between the inventive and comparative examples beyond the difference in amount of sulfur (e.g. modified BR or SBR vs unmodified BR or SBR).
In response to applicant's argument that the prior art fails to disclose or suggest employment of a rubber composition with a 40% modulus ratio ≥ 0.45, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that Ichimoto teaches that the compounds constituting the cation in the rubber composition are preferably nitrogen-containing compounds, and that the inventive examples of Ichimoto use nitrogen-containing compounds, whereas the claims require specific alkali or alkaline earth metal compounds. This is not persuasive because Ichimoto teaches that the cation can be derived from compounds containing alkali or alkaline earth metal elements (paragraphs [0051]-[0053]), Ichimoto is not limited to the examples, Nakazono teaches that magnesium acetate and calcium acetate are preferable cation sources for modifying BR or SBR (machine translation at page 11, second paragraph), and there are more substantive differences between the inventive and comparative examples beyond the difference in type of cation source (e.g. modified BR or SBR vs unmodified BR or SBR).
Applicant argues that Ichimoto has an upper limit of 0.98 in terms of claim feature [1](1) (E* when water-wet/E* when dry ≤ 0.90), this being well above the claimed upper limit of 0.90. However, as is set forth above, Ichimoto teaches that E* when water-wet/E* before water wet x 100 may be 90 or lower (paragraph [0038]), such exactly teaching Applicant’s claimed range, as well as Ichimoto teaching a specific embodiment having this ratio equal to 0.90, such being within the claimed range (table 2, example 2-1).
With respect to Applicant’s arguments with respect to Washizu, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In particular, no arguments are made that Washizu does not teach an overlapping range of tread thickness, or that it would not have been obvious to use such a tread thickness as taught by Washizu in the tire of Ichimoto, and this is the relevant teaching being relied upon to reject claim 1. Applicant argues that Washizu’s inventive examples teach thicknesses outside of the claimed range. However, Washizu teaches specific embodiments having thickness from 3 mm to 20 mm, including 4 mm and 11 mm (see table 2), and these exemplified embodiments, along with the broader disclosure of a thickness of 4 mm to 35 mm (paragraph [0172]), suggest thickness within the claimed range of from 5 to 10 mm.
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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/P.N.S/ Examiner, Art Unit 1749 October 2, 2026
/JUSTIN R FISCHER/ Primary Examiner, Art Unit 1749
