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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/13/2026 has been entered.
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 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Giannini (US 2020/0299482) in view of Branan (US 5124396) and optionally further in view of Rodgers (Rubber Compounding NPL) and Nocil Limited (Starting Point Rubber Compounding Formulations NPL).
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 a carbon black having greater abrasion resistance, reduced heat generation, and better fuel economy, said carbon black characterized by, among other properties, NSA values of 120 to 180 mg2/g and DBP oil absorption number of 110 to 145 ml/100g (col 1, lines 56-68; col 2, lines 56-68; see working examples in Table of col 8).
As optionally applied additional evidence for obviousness, Examiner notes that carbon blacks having the NSA and OAN values as recited in claim 11 encompass conventional carbon blacks that are typically used in tread rubber compounds. For example, Rodgers discusses carbon black as a reinforcing filler for rubber compounds and discloses that furnace blacks from N100 to N300 are considered reinforcing blacks that are typically used in tread compounds (pg 629; see Table 9 where N100 and N200 blacks generally have nitrogen absorption values and DBP oil absorption within the claimed range). Nocil also discloses typical tire tread rubber formulations wherein N220 and N234 carbon blacks are disclosed as the carbon blacks (pg 2-4); these carbon blacks having nitrogen absorption values and DPB oil absorption values within the claimed ranges (pg 25). 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 employed carbon black having NSA and OAN numbers within the claimed range since Rodgers discloses N100 and N200 carbon blacks as typically used for tread rubbers and Nocil discloses N220 and N234 carbon blacks as typically used for tread rubbers, these carbon blacks having NSA and OAN numbers that satisfy the claimed NSA and OAN properties. One would have been motivated to employ a reinforcing carbon black known to be suitable for tread compounds.
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 a carbon black having greater abrasion resistance, reduced heat generation, and better fuel economy, said carbon black characterized by, among other properties, NSA values of 120 to 180 mg2/g and DBP oil absorption number of 110 to 145 ml/100g (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 greater abrasion resistance, reduced heat generation, and better fuel economy, said carbon black characterized by, among other properties, NSA values of 120 to 180 mg2/g and DBP oil absorption number of 110 to 145 ml/100g (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]).
Regarding claim 28, Giannini is silent regarding the surface resistivity of the structural component; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention for the rubber component to demonstrate the claimed surface resistivity property since Giannini as modified by Branan discloses similar materials and loadings (diene elastomer, silicate fibers of nanometric size, carbon black, and vulcanizing agent and coupling agent; see discussion and citations for claims 11-19 above). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01 (I).
Claims 11-20, 23-28 are rejected under 35 U.S.C. 103 as being unpatentable over Tadiello (US 2020/0095387) in view of Branan (US 5124396) and optionally further in view of Rodgers (Rubber Compounding NPL) and Nocil Limited (Starting Point Rubber Compounding Formulations NPL).
Regarding claim 11, Tadiello discloses a tire for vehicle wheels comprising:
at least one structural component comprising a vulcanized elastomeric compound ([0036,0167], Fig. 1),
wherein the vulcanized elastomeric compound comprises, before vulcanization, a vulcanizable elastomeric compound made by blending an elastomeric composition comprising ([0115])
(i) at least one diene elastomeric polymer ([0116,0122]), and
(ii) a reinforcing filler comprising (a) needle-shaped morphology silicate fibres of a nanometric size ([0133]), and
(b) finely dispersed carbon black (Tadiello discloses standard reinforcing filler that is preferably carbon black having surface area not smaller than 20m2/g, ([0137-0139]) and
(c) optionally, conventional silica (silica is optional, [0137]).
Tadiello discloses carbon black having surface area not smaller than 20m2/g ([0138]) 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 Tadiello with carbon black having NSA and OAN values within the claimed range since Branan discloses a carbon black having greater abrasion resistance, reduced heat generation, and better fuel economy, said carbon black characterized by, among other properties, NSA values of 120 to 180 mg2/g and DBP oil absorption number of 110 to 145 ml/100g (col 1, lines 56-68; col 2, lines 56-68; see working examples in Table of col 8).
As optionally applied additional evidence for obviousness, Examiner notes that carbon blacks having the NSA and OAN values as recited in claim 11 encompass conventional carbon blacks that are typically used in tread rubber compounds. For example, Rodgers discusses carbon black as a reinforcing filler for rubber compounds and discloses that furnace blacks from N100 to N300 are considered reinforcing blacks that are typically used in tread compounds (pg 629; see Table 9 where N100 and N200 blacks generally have nitrogen absorption values and DBP oil absorption within the claimed range). Nocil also discloses typical tire tread rubber formulations wherein N220 and N234 carbon blacks are disclosed as the carbon blacks (pg 2-4); these carbon blacks having nitrogen absorption values and DPB oil absorption values within the claimed ranges (pg 25). 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 employed carbon black having NSA and OAN numbers within the claimed range since Rodgers discloses N100 and N200 carbon blacks as typically used for tread rubbers and Nocil discloses N220 and N234 carbon blacks as typically used for tread rubbers, these carbon blacks having NSA and OAN numbers that satisfy the claimed NSA and OAN properties. One would have been motivated to employ a reinforcing carbon black known to be suitable for tread compounds.
Regarding claim 12, Tadiello discloses for 100 phr of elastomer ([0116]); 5-100 phr of silicate fibers ([0134]; introduced by way of the masterbatch); 1-120 phr, preferably 20-90 phr, of standard reinforcing filler (preferably carbon black, [0118;0136-0139]); 0.1 to 15 phr of vulcanizing agent [0149]; and 0.1 to 20 phr of coupling agent ([0153]). Tadiello discloses silica is optional ([0137,0140-0144]).
While Tadiello 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) Tadiello discloses the components in amounts that overlap the claimed ranges (see above); and (2) Branan discloses a carbon black having greater abrasion resistance, reduced heat generation, and better fuel economy, said carbon black characterized by, among other properties, NSA values of 120 to 180 mg2/g and DBP oil absorption number of 110 to 145 ml/100g (col 1, lines 56-68; col 2, lines 56-68; see working examples in Table of col 8).
Regarding claim 13, Tadiello discloses magnesium silicate, aluminum silicate, and calcium silicate fibers ([0053]).
Regarding claim 14, Tadiello discloses the recited fibers types (see [0055]).
Regarding claims 15-19, Tadiello discloses a solid masterbatch elastomeric composition comprising NR or SBR, silicate fibers in an amount of 50 to 200 phr ([0075-0082]). As to claims 18-19, Examiner notes that the addition via microbeads is recited as optional. 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, Tadiello discloses an elastomeric composition comprising:
100 phr of elastomer ([0116,0122]);
5-100 phr of silicate fibers ([0134]; introduced by way of the masterbatch);
1-120 phr, preferably 20-90 phr, of standard reinforcing filler (preferably carbon black, [0118;0136-0139]);
0.1 to 15 phr of vulcanizing agent [0149]; and
0.1 to 20 phr of coupling agent ([0153]).
Tadiello discloses silica is optional ([0137,0140-0144]).
While Tadiello 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 Tadiello discloses the components in amounts that overlap the claimed ranges (see above).
Tadiello discloses carbon black having surface area not smaller than 20m2/g ([0138]) 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 Tadiello with carbon black having NSA and OAN values within the claimed range since Branan discloses a carbon black having greater abrasion resistance, reduced heat generation, and better fuel economy, said carbon black characterized by, among other properties, NSA values of 120 to 180 mg2/g and DBP oil absorption number of 110 to 145 ml/100g (col 1, lines 56-68; col 2, lines 56-68; see working examples in Table of col 8).
As optionally applied additional evidence for obviousness, Examiner notes that carbon blacks having the NSA and OAN values as recited in claim 11 encompass conventional carbon blacks that are typically used in tread rubber compounds. For example, Rodgers discusses carbon black as a reinforcing filler for rubber compounds and discloses that furnace blacks from N100 to N300 are considered reinforcing blacks that are typically used in tread compounds (pg 629; see Table 9 where N100 and N200 blacks generally have nitrogen absorption values and DBP oil absorption within the claimed range). Nocil also discloses typical tire tread rubber formulations wherein N220 and N234 carbon blacks are disclosed as the carbon blacks (pg 2-4); these carbon blacks having nitrogen absorption values and DPB oil absorption values within the claimed ranges (pg 25). 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 employed carbon black having NSA and OAN numbers within the claimed range since Rodgers discloses N100 and N200 carbon blacks as typically used for tread rubbers and Nocil discloses N220 and N234 carbon blacks as typically used for tread rubbers, these carbon blacks having NSA and OAN numbers that satisfy the claimed NSA and OAN properties. One would have been motivated to employ a reinforcing carbon black known to be suitable for tread compounds.
Regarding claims 23-26, Examiner notes that the addition via microbeads is recited as optional in claim 15. Additionally, Examiner notes that claim 15 relates to the method in which the composition is prepared.
Regarding claim 27, Tadiello discloses silica is optional ([0137]) and that "the standard reinforcing filler (c) is carbon black" ([0138]).
Regarding claim 28, Tadiello is silent regarding the surface resistivity of the structural component; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention for the rubber component to demonstrate the claimed surface resistivity property since Tadiello as modified by Branan discloses similar materials and loadings (diene elastomer, silicate fibers of nanometric size, carbon black, and vulcanizing agent and coupling agent; see discussion and citations for claims 11-19 above). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01 (I).
Response to Arguments
Applicant's arguments filed 5/13/2026 have been fully considered but they are not persuasive. Applicant argues that Branan's carbon black is designed to be the sole functional filler of the compound. Branan's disclosure does not discuss other fillers and the working example formulations only use carbon black as the filler.
Examiner disagrees. Branan discloses a carbon black that is suitable for various applications, particularly for rubber compositions (pg 1, lines 9-12). Branan does not teach or suggest anywhere in the disclosure that the carbon black should not be used with other reinforcing fillers or that the presence of other fillers would render the invention inoperable. Examiner notes that both Giannini and Tadiello disclose providing a standard reinforcing filler that is preferably carbon black having a surface area of not less than 20m2/g in addition to the nanometric silicate fibers (Giannini, [0182]; Tadiello, [0138]). Branan discloses a carbon black characterized by surface area, NSA, and OAN properties, among others, wherein the carbon black is particularly well suited for use in rubber compositions in tires (col 1, lines 9-12, 49-68). One would have been motivated to select this type of carbon black to achieve the expected and predictable benefits disclosed by Branan (improved abrasion and hysteresis; col 2, lines 56-68). Examiner has also cited Rodgers and Nocil as optionally applied additional evidence that the claimed carbon blacks encompass conventional carbon blacks that are typically used in tire components. Given that Giannini and Tadiello expressly disclose adding carbon black to the rubber compound with a broad range of surface areas, one would have a reasonable expectation of success in forming an operable tire, particularly since the carbon black properties encompass conventional carbon blacks typically used in tire applications.
Applicant argues that Giannini and Branan do not identify or recognize the technical problem addressed by the claimed subject matter.
In response to applicant's argument that the references do not recognize the technical problem addressed by the invention, 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). Giannini expressly discloses the use of a broad range of carbon blacks within the rubber composition in addition to the nanometric silicate fibers. Branan discloses a particular class of carbon blacks that provide improved abrasion and hysteresis properties and thus one would have been motivated to employ the Branan carbon black as the carbon black in Giannini.
Applicant argues that the combination of nanometric silicate fibers and carbon black provides unexpected results.
Examiner has reviewed and fully considered the data presented in the instant specification. The data does not provide a conclusive showing of unexpected results. 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. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP 716.02(d). Examiner notes that the test data only provides carbon black and silicate fibers in a fixed amount. Claim 11 covers any amount of silicate fiber and carbon black and it is not apparent the improved/synergistic properties would be present when across the range of carbon black/silicate fiber loads (e.g., when only trace amounts of carbon black or silicate fiber were present).
As to surface resistivity, Applicant argues that Branan does not disclose anything regarding the formulation's impact on surface resistivity and no reasoning present in the prior art suggests that the combination of Giannini and Branan would result in a surface resistivity less than 10kΩ.
In response to applicant's argument that Branan fails to recognized surface resistivity, 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). Giannini as modified by Branan discloses materials and loadings (diene elastomer, silicate fibers of nanometric size, carbon black with NSA/OAN values, and vulcanizing agent and coupling agent; see discussion and citations for claims 11-19 above) similar to that of the claimed rubber compound and thus would be expected to similarly demonstrate the claimed surface resistivity property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01 (I).
Conclusion
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
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