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
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 11-26 are rejected under 35 U.S.C. 103 as being unpatentable over Giannini (US 2020/0299482) in view of Branan (US 5124396).
Regarding claim 11, Giannini discloses a tire for vehicle wheels comprising:
at least one structural component comprising a vulcanized elastomeric compound ([0037,0148,0209], Fig. 9),
wherein the vulcanized elastomeric compound comprises, before vulcanization, a vulcanizable elastomeric compound made by blending an elastomeric composition comprising
(i) at least one diene elastomeric polymer ([0148-0149]), and
(ii) a reinforcing filler comprising (a) needle-shaped morphology silicate fibres of a nanometric size ([0024-0026]), and
(b) finely dispersed carbon black (Giannini discloses standard reinforcing filler that is preferably carbon black having surface area not smaller than 20m2/g, ([0151,0182]) and
(c) optionally, conventional silica (Giannini discloses microbeads including silica, [0025]).
Giannini discloses carbon black having surface area not smaller than 20m2/g ([0182]) but does not expressly disclose carbon black having a nitrogen surface area (NSA) determined in accordance with ISO 18852:2005 greater than 100 m2/g and smaller than 200 m2/g and a surface area OAN (Oil Absorption Number) determined according to ISO 4656:2012 greater than 100ml/100 g and smaller than 150ml/100g. In the same field of endeavor of tire rubber reinforcements, Branan discloses improved treadwear/hysteresis carbon black that impart greater abrasion resistance and lower hysteresis to improve tread wear, lower heat build-up and provide better fuel economy characteristics (col 2, lines 56-68). Branan discloses the carbon black as having nitrogen adsorption specific surface area (N2SA) as 120-180 m2/g and the DBP oil absorption number of 110 to 145 ml/100g (col 1, lines 56-68; see Table at col 8, lines 47+, where examples 1-4 have NSA and DBP oil absorption values within the claimed ranges).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tire of Giannini with carbon black having NSA and OAN values within the claimed range since Branan discloses carbon black having NSA values of 120 to 180 mg2/g and DBP oil absorption number of 110 to 145 ml/100g as having greater abrasion resistance, reduced heat generation, and better fuel economy (col 1, lines 56-68; col 2, lines 56-68; see working examples in Table of col 8).
Regarding claim 12, Giannini discloses for 100 phr of elastomer; 2-110phr of microbeads (with microbeads being present to preferably provide 27phr to 40 phr of fibers ([0168]); 1-120phr, preferably 20-90 phr, of standard reinforcing filler (preferably carbon black, [0182-183]); 0.1 to 12 phr of vulcanizing agent; and 0.1 to 18 phr of coupling agent ([0148-0153]). Giannini discloses silica present in the microbeads at 0.5:1 to 15:1 weight ratio to the fibers, preferably 1:1 ([0024-0026,0088]). Giannini discloses an example formulation in Table 2 as well where silica is provided at 1:1 ratio with the silica fibers to yield 16 phr of silica.
While Giannini does not expressly disclose an anticipatory example, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the elastomeric composition as claimed since (1) Giannini discloses the components in amounts that overlap the claimed ranges (see above); and (2) Branan discloses carbon black having NSA values of 120 to 180 mg2/g and DBP oil absorption number of 110 to 145 ml/100g as having greater abrasion resistance, reduced heat generation, and better fuel economy (col 1, lines 56-68; col 2, lines 56-68; see working examples in Table of col 8).
Regarding claim 13, Giannini discloses magnesium silicate, aluminum silicate, and calcium silicate fibers ([0073]).
Regarding claim 14, Giannini discloses the recited fibers types (see [0075]).
Regarding claims 15-19, Giannini discloses microbeads comprising silicate fibers and silica with diameter of 50-500 microns and weight ratio of 0.7:1 to 10:1([0024-0029,0047,0051], claim 26).
As to claims 15-17, Examiner notes that the addition via masterbatch is recited as optional (also recited as admitted prior art in pg 2 of the specification). Additionally, Examiner notes that claim 15 relates to the method in which the composition is prepared. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
Regarding claim 20, Giannini discloses an elastomeric composition comprising:
100 phr of elastomer;
2-110phr of microbeads (with microbeads being present to preferably provide 27phr to 40 phr of fibers ([0168]);
0-110phr, preferably 20-90 phr, of standard reinforcing filler (preferably carbon black, [0148,0182-183]);
0.1 to 12 phr of vulcanizing agent; and
0.1 to 18 phr of coupling agent ([0148-0153]).
Giannini discloses silica present in the microbeads at 0.5:1 to 15:1 weight ratio to the fibers, preferably 1:1 ([0024-0026,0088]). Giannini discloses an example formulation in Table 2 as well where silica is provided at 1:1 ratio with the silica fibers to yield 16 phr of silica.
Giannini discloses carbon black having surface area not smaller than 20m2/g ([0182]) but does not expressly disclose carbon black having a nitrogen surface area (NSA) determined in accordance with ISO 18852:2005 greater than 100 m2/g and smaller than 200 m2/g and a surface area OAN (Oil Absorption Number) determined according to ISO 4656:2012 greater than 100ml/100 g and smaller than 150ml/100g. In the same field of endeavor of tire rubber reinforcements, Branan discloses improved treadwear/hysteresis carbon black that impart greater abrasion resistance and lower hysteresis to improve tread wear, lower heat build-up and provide better fuel economy characteristics (col 2, lines 56-68). Branan discloses the carbon black as having nitrogen adsorption specific surface area (N2SA) as 120-180 m2/g and the DBP oil absorption number of 110 to 145 ml/100g (col 1, lines 56-68; see Table at col 8, lines 47+, where examples 1-4 have NSA and DBP oil absorption values within the claimed ranges).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tire of Giannini with carbon black having NSA and OAN values within the claimed range since Branan discloses carbon black having NSA values of 120 to 180 mg2/g and DBP oil absorption number of 110 to 145 ml/100g as having greater abrasion resistance, reduced heat generation, and better fuel economy (col 1, lines 56-68; col 2, lines 56-68; see working examples in Table of col 8).
Regarding claims 21 and 22, Giannini discloses the microbeads being present to preferably provide 27phr to 40 phr of fibers ([0168]).
Regarding claims 23, Giannini discloses microbeads with diameters of 70 to 300 microns ([0051]).
Regarding claims 24-26, Giannini discloses the recited weight ratios ([0096, 00088]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 11-26 have been considered but are not persuasive.
Applicant's arguments regarding Ishimoto are moot because new grounds of rejection have been made based on Giannini in view of Branan.
Applicant argues that the composition shows unexpected improvements resulting from compositions with carbon black having both a nitrogen surface area and oil absorption number within the claimed range. Applicant argues the unexpected results demonstrated within the specification demonstrate the claimed ranges are critical.
Examiner disagrees. Branan specifically teaches the use of carbon black having a combination of nitrogen surface area and DBP oil absorption numbers that are inside the claimed ranges (col 1, lines 56-68; also see working examples in Table of col 8). Branan discloses the carbon black imparts improved tread wear and hysteresis (affects rolling resistance/heat buildup; col 2, lines 56-68). While the references do not discuss an improvement in the Payne effect, 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).
As to the evidence of unexpected results, Branan teaches carbon black having NSA and DBP that anticipate the claimed ranges. Examiner also notes that to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(II). Here, Applicant has not provided sufficient tests inside and outside the claimed range. The compositions of Table 2 do not contain any comparative carbon blacks having NSA or OAN number greater than the claimed ranges to establish criticality of the upper limits.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nakai (US 5100637) discloses tire tread rubber having carbon black with NSA of 120-165 m2/g and DBP absorption of at least 120 ml/100g (working examples all within 100-150 ml/100g, Table II).
Itoh (US 4871794) discloses tire tread rubber having carbon black with NSA of 110-190 m2/g and DBP absorption of 100-140 ml/100g (col 3, lines 3-11).
Ahmad (US 4703079) discloses a tire tread rubber having carbon black with NSA of 140-160 m2/g and DBP absorption of 120-140 ml/100g (abstract).
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619