DETAILED ACTION
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 6, 7, 11, and 12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 6, 7, 11, and 12 provide for the use of the rubber article, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claims 11 and 12 are also rejected under 35 USC 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). See MPEP 2173.05(q).
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, 4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki (US 20180057665).
Miyazaki discloses rubber compositions and tires thereof. Concerning claim 1, Miyazaki discloses a rubber article that is formed from a vulcanized rubber composition which comprises a rubber component and a syndiotactic 1,2-polybutadiene, wherein the rubber component is a natural rubber at a content of 35 to 65 mass% and the butadiene rubber is a modified butadiene rubber at a content of 25 to 55 mass%, and a content of syndiotactic 1,2-polybutadiene (BR2) per 100 parts total of the butadiene rubber and natural rubber is about 33 parts (Table 2, Examples 1-3 and 5-9; para. 0018-0042). While it is noted that Miyazaki is silent to a thickness of the rubber article, since the articles disclosed by Miyazaki are the same as that disclosed, it would have been obvious to one of ordinary skill in the art to have the claimed thickness for the desired application. Regarding claims 4 and 6, the rubber article is a tire with a sidewall formed from the composition (para. 0041-0042).
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi (WO 2022/113722; Effective filing date 11/24/2020). US 20240010030 is the PG-Pub of the National Stage Application and must be translated as-is into English for entry. See MPEP 1893.01(d).
Noguchi discloses a rubber composition for tires and tires thereof. Concerning claims 1, 3, and 8, Noguchi discloses the tires are formed from a vulcanized rubber composition, wherein the rubber composition comprises an isoprene component that includes natural rubber at a content of 20 to 60 mass% and a second conjugated diene-based compound at a value of 40 to 80 mass% that includes a mixture of butadiene compounds that includes syndiotactic 1,2-polybutadiene having a melting temperature of 105°C at a content of 5 to 30 mass% (para. 0014-0061; Table 1, Examples 1-9). Specifically, it is noted in Example 2, when converted into 100 parts sum of the natural rubber and butadiene, the content of AT300, which is the claimed syndiotactic 1,2-polybutadiene having a melting point of 105°C, is about 14.3 parts when converted (Table 2, Example 2).
With respect to claim 2, the value of 5 to 30 mass% AT300 can overlap and include the claimed range when taking into account 100 parts NR and BR, wherein such a component when added to the composition at the content as claimed affects the durability and performance of the sidewall (para. 0021). In regards to claims 5-7 and 9-12, the resulting product is formed into part of a tire, namely a sidewall for a tire (para. 0021 and 0032-0034).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASHANT J KHATRI whose telephone number is (571)270-3470. The examiner can normally be reached M-F 10AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783
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