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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 17, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 has been amended to including the language “consisting essentially of”. The original disclosure, though, fails to include such language and there is no discussion as to what constitutes a composition that “consists essentially of” a first, second, and third component. As such, the amended claim language is seen to constitute new matter.
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.
Claim1-8 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.
The claims have been amended to require a composition “consisting essentially of (i), (ii), and (iii)”. It is unclear, though, what materials materially affect the basic and novel characteristics of the claimed invention and thus, the metes and bounds of the amended claim language is not clear.
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.
Claim(s) 1-5, 7, 8, and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin (US 2003/0130401, of record).
Lin is directed to a tire tread composition comprising a base rubber, an epoxidized rubber, and 1-35 parts by weight of a functionalized polyolefin additive (Abstract and Paragraphs 46 and 47). More particularly, a preferred additive in Lin is an ethylene-propylene copolymer (claimed combination of ethylene and at least one alpha olefin having 3-12 carbon atoms) (Paragraph 25). Lin also states that said additive contains terminal or pendant moieties containing acid of anhydride groups (Paragraph 22).
With further respect to claim 1, Lin teaches that a preferred additive contains from “about” 0.05 to “about” 35% by weight polyethylene (Paragraph 25) and the balance being propylene (and thus at least 20% of units derive from propylene). In such an instance, the language “about” suggests that loadings different from the endpoints are within the scope of Lin. Additionally, Lin states that the loadings are “preferred” and it is well taken that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. As such, one of ordinary skill in the art would have found it obvious to use an ethylene content of 40%, for example, in the rubber composition of Lin. Also, Applicant has not provided a conclusive showing of unexpected results for the claimed ethylene content (lack of comparative examples including a functionalized ethylene copolymer having a content outside the claimed range).
Additionally, regarding claim 1, Lin states that the base rubber can be, for example, natural rubber, polyisoprene, styrene butadiene, polybutadiene, and mixtures thereof (Paragraph 12). Given such a disclosure, one of ordinary skill in the art would have found it obvious to select any number of rubber combinations, including styrene butadiene (corresponds with claimed first conjugated diene polymer) and polybutadiene (corresponds with claimed non-functionalized polybutadiene). Also, Applicant has not provided a conclusive showing of unexpected results for the claimed combination of rubber components. Thus, the composition of Lin would include styrene butadiene rubber, polybutadiene rubber, epoxidized rubber, and a functionalized polyolefin additive and the claims as currently drafted fail to exclude the presence of an epoxidized rubber. It is emphasized that Lin specifically states that the base rubber can be defined by a mixture of rubber components and polybutadiene rubber and styrene butadiene rubber are expressly disclosed as possible rubber materials.
Lastly, with respect to claim 1, the claim language “consisting essentially of” is not seen to exclude the presence of an epoxidized rubber. More particularly, said epoxidized rubber (in Lin) can be included at a loading as small as “about 0.5” weight percent (Paragraph 6). There is no discussion in Applicant’s original disclosure as to what is encompassed by the above noted language- a small or trace amount of epoxidized rubber is not seen to materially affect the basic and novel characteristics of the composition. Thus, the composition of Lin, while including about 0.5 weight percent of epoxidized rubber, is seen to consist essentially of styrene butadiene rubber, a functionalized ethylene copolymer, and a non-functionalized polybutadiene rubber.
Regarding claim 2, Lin teaches that the functionalized polyolefin contains from about 0.01 to about 10 percent by weight of the functional moiety (Paragraph 26).
With respect to claims 3 and 4, Lin describes, for example, the use of maleic anhydride (Paragraph 23).
Regarding claim 5, Lin refers to succinic anhydride (Paragraph 23) and such is seen to correspond with the claimed formulas.
As to claim 7, Lin describes a grafting technique (Paragraph 30).
With respect to claim 12, Lin teaches a functionalized polyolefin loading between 1 and 35 parts by weight of the overall rubber loading (Paragraph 6). This disclosure is seen to encompass the broad range of the claimed invention and Applicant has not provided a conclusive showing of unexpected results.
As to claims 13-15, Lin discloses the inclusion of curing agents (Paragraph 44). With specific respect to claim 14, a shaping step would necessarily be required in the manufacture of a tire tread in Lin.
9. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin as applied above and further in view of Sano (JP 11005859).
While Lin is silent with respect to the melt flow index of the ethylene propylene copolymer, the broad range of the claimed invention is consistent with ethylene propylene copolymers in general (independent of the application). Sano, for example, describes a copolymer having a melt flow index between 2 g/10 min and 150 g/10 min. One of ordinary skill in the art would have found it obvious to use an ethylene propylene copolymer having the claimed melt flow index absent a conclusive showing of unexpected results.
Response to Arguments
10. Applicant’s arguments with respect to claim(s) 1-8 and 12-15 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
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 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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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 April 7, 2026
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