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 .
Response to Amendment
The amendment filed 05/05/2026 has been entered. Claims 1, 5-6, 8 and 15 have been amended. Claims 2-3, 7, 9-13 and 16 have been cancelled. Claims 17-28 are new additions. Claims 1, 4-6, 8, 14-15 and 17-28 are pending.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17, 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 17, 19 recites the limitations "the carbon black" and “the silica” respectively. There is insufficient antecedent basis for these limitations in the claims. The aforementioned claim elements are ambiguous as it is unclear what carbon black or silica the claims make reference. The examiner suggests amending “the carbon black" and “the silica” limitations to read “a carbon black" and “a silica” respectively.
Claims 18, 20-28 are rejected by virtue of their dependence upon and because the fail to cure the deficiencies of claims 17, 19.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim recites the limitation of “the amount of carbon black per 100 parts by mass of the rubber component is 10 parts by mass or more and 70 parts by mass or less”. However, this limitation is required in parent claim 18. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 21-28 are rejected by virtue of their dependence upon and because the fail to cure the deficiencies of claim 20.
Claim Rejections - 35 USC § 103
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, 4-6, 8, 14-15, 17-28 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki (WO 2013/046845 A1), in view of Yasuda (US 2021/0324184 A1 – of record), in view of Sato (US 2018/0264884 A1 – of record).
Regarding claims 1, 4-5, 8, 14-15, Miyazaki discloses a rubber composition for a tire outer layer to include a sidewall, see TECHNICAL FIELD, and page 31 paragraph 1 – (corresponds to a tire comprising a tire external layer component comprising a rubber composition that comprises a rubber component, the tire external layer component is a sidewall). The composition to include rubber such as butadiene rubber (BR), isoprene rubber (IR) and styrene butadiene rubber (SBR), see page 31 paragraph 6 – (construed as the rubber component comprises polybutadiene rubber and at least one of an isoprene based rubber or styrene-butadiene rubber). The rubbers being provided in an amount of BR of 10% by mass or more and 80% by mass or less, see page 31 paragraph 12 – (corresponds and overlaps the amount of polybutadiene rubber per 100% by mass of the rubber component is 15% by mass or more and 60% by mass or less); an amount of IR of 20% by mass or more and 90% by mass or less, see page 32 paragraph 2 – (corresponds and overlaps the amount of isoprene-based rubber, if present, per 100% by mass of the rubber component is 10% by mass or more and 80% by mass or less).
While Miyazaki discloses the use of zinc oxide, see page 34 paragraph 9 – (construed as a metal filler); it does not explicitly disclose the use of an acid-modified liquid polymer, sidewall thickness, or claimed metal filler/sidewall thickness and liquid polymer/metal filler ratios. This at least implies any conventionally known sidewall thicknesses are suitable for use with its inventive rubber composition. Therefore, one of ordinary skill would look to related art for exemplary configurations of such and build to enhance the capabilities of the tire.
Yasuda discloses a tire and rubber composition suitable for a tire tread and/or sidewall, see at least [0135] – [0136]. The composition includes SBR in an amount of 20% by mass or more and 80% by mass or less, see [0084] – (corresponds and overlaps the amount of styrene-butadiene rubber, if present, per 100% by mass of the rubber component is 30% by mass or more and 90% by mass or less).
And where zinc oxide is used and provided in an amount (parts by mass) per 100 parts by mass of the rubber component is preferably 0.5 – 10, see [0123], [0125] – (corresponds to a metal filler and wherein Fs denotes an amount (parts by mass) of the metal filler per 100 parts by mass of the rubber component; the amount of the metal filler per 100 parts by mass of the rubber component is 4.0 parts by mass or more; and 4.0 to 50.0 parts by mass of the metal filler). Yasuda further discloses the composition includes a maleic acid modified liquid polymer, see [0087] – (corresponds to the composition comprises an acid-modified liquid polymer). This includes having an amount of the acid-modified liquid polymer per 100 parts by mass of the rubber component is 1 – 50 parts by mass, see [0089] – (corresponds to wherein Ps denotes an amount (parts by mass) of the acid-modified liquid polymer per 100 parts by mass of the rubber component; and 5 to 35 parts by mass of the acid-modified liquid polymer).
It being readily seen that for a Ps amount of 25 and a Fs amount of 8; a ratio of Ps/Fs ≈ 3 – (corresponds to and overlaps the tire also satisfies the following formula 0.5 ≤ Ps/Fs ≤ 4.5; and 1.0 ≤ Ps/Fs ≤ 4.5). Moreover, one would appreciate Yasuda for its use of SBR, acid-modified liquid polymer and zinc oxide amounts in providing a tire composition beneficial for improved abrasion resistance while ensuring good durability, see abstract, [0084], [0089], [0125].
With respect to a sidewall thickness:
Sato discloses a conventional tire external layer component as a sidewall. The sidewall having a thickness of 3.5 mm or less. This being beneficial for ensuring excellent fuel efficiency, handling stability, ride quality while maintaining a good balance between them, see [0131] – (corresponds to and overlaps Ts denotes a largest thickness (mm) of the tire sidewall of 2.8 mm or greater; 2.8 mm ≤ Ts ≤ 6.0 mm; and 2.8 mm ≤ Ts ≤ 5.0 mm).
It being readily seen that for Yasuda’s zinc oxide amount Fs of 8 parts and Sato’s sidewall thickness amount of 3 mm gives a Fs/Ts ratio ≈ 2.7 – (corresponds to and overlaps the tire satisfies the following formula: 0.6 ≤ Fs/Ts ≤ 5.0). Moreover, one would appreciate Yasuda for its zinc oxide amount in providing a tire composition beneficial for improved abrasion resistance while ensuring good durability, see abstract, [0125]. In combination with Sato’s sidewall thickness suitable for providing excellent fuel efficiency, handling stability, ride quality while maintaining a good balance between them.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Miyazaki’s sidewall composition to include the use of zinc oxide and an acid-modified liquid polymer and in the claimed amounts as taught by Yasuda and have a sidewall thickness as claimed and taught by Sato to provide the tire sidewall with aforementioned benefits as suggested by the prior art. Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 6, modified Miyazaki disclose the use of carbon black, see Miyazaki page 33 paragraph 9 and silica, see Miyazaki page 34 paragraph 1.
Regarding claim 17, modified Miyazaki discloses a nitrogen adsorption specific surface area (N2SA) of the carbon black in the rubber composition for sidewalls is 20 m2/g or and 150 m2/g or less, see Sato [0077], [0128] – (corresponds to and overlaps 30 m2/g or and 100 m2/g or less). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 18, modified Miyazaki discloses the carbon black is provided in an amount of per 100 parts by mass of the rubber component is 10 parts by mass or more and 70 by parts mass or less, see Sato [0087] – (corresponds to and overlaps 10 parts by mass or more and 70 parts by mass or less). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 19, modified Miyazaki discloses a nitrogen adsorption specific surface area (N2SA) of the silica in the rubber composition for sidewalls is 40 m2/g or and 220 m2/g or less, see Sato [0083], [0128] – (corresponds to and overlaps 50 m2/g or and 350 m2/g or less). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 21, modified Miyazaki discloses the silica is provided in an amount of per 100 parts by mass of the rubber component is 30 parts by mass or more and 150 by parts mass or less, see Sato [0075], [0086] – (corresponds to and overlaps 30 parts by mass or more and 150 parts by mass or less). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 22, modified Miyazaki discloses the rubber composition comprises, per 100 parts by mass of silica and thus of the rubber component, 3 to 15 parts by mass of a silane coupling agent, see Sato [0088], [0092] – (corresponds to and overlaps 0.1 to 50 parts by mass). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 23, modified Miyazaki discloses the rubber composition comprises, per 100 parts by mass of the rubber component, 2 to 15 parts by mass of a process oil – (construed as a plasticizer), see Miyazaki page 34 paragraph 8 – (corresponds to and overlaps 5 to 50 parts by mass). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 24, modified Miyazaki discloses the rubber composition comprises, per 100 parts by mass of the rubber component, 0.5 to 10 parts by mass of antioxidants, see Yasuda [0119] – (corresponds to and overlaps 0.5 to 10 parts by mass). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 25, modified Miyazaki discloses the rubber composition comprises, per 100 parts by mass of the rubber component, 0.5 to 10 parts by mass of wax, see Yasuda [0115] – (corresponds to and overlaps 0.5 to 10 parts by mass). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 26, modified Miyazaki discloses the rubber composition comprises, per 100 parts by mass of the rubber component, 0.5 to 10 parts by mass of stearic acid, see Yasuda [0122] – (corresponds to and overlaps 0.5 to 10 parts by mass). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 27, modified Miyazaki discloses the rubber composition comprises, per 100 parts by mass of the rubber component, 0.5 to 5 parts by mass of sulfur, see Yasuda [0129] – (corresponds to and overlaps 0.5 to 3.5 parts by mass). Concerning the claimed ranges: Miyazaki modified with Yasuda and Sato teaches the claimed compounds and amounts which are fully encompassed therein. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 28, as previously discussed, modified Miyazaki discloses the acid-modified liquid polymer comprises maleic acid-modified liquid diene-based polymers, see Yasuda [0087].
Response to Arguments
Applicant’s arguments with respect to claims 1, 4-6, 8, 14-15 and 17-28 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEDRICK S WILLIAMS whose telephone number is (571) 272-9776. The examiner can normally be reached on Monday - Thursday 8:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/CEDRICK S WILLIAMS/Primary Examiner, Art Unit 1749
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