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 1, 2, 4, 8, 11, 12, 14, 16, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchida (JP2018-123260, with English machine translation) in view of Kondo (JP2017-101208, with English machine translation) and Mazaki (JPH09-194640, with English machine translation).
Regarding claims 1 and 4, Tsuchida discloses a rubber composition for tires ([0006]) comprising:
a rubber component ([0051-0054]);
a liquid polymer ([0075-0080]).
As to a polystyrene-equivalent weight average molecular weight measured by gel permeation chromatography of 5,000 or more and less than 40,000, Tsuchida discloses the liquid polymer as having a weight average molecular weight measured by gel permeation chromatography of 1x103 to 2.0x105, preferably 3000 to 15000 ([0076]), said range overlapping the claimed range. Tsuchida also discloses example liquid polymers having molecular weights of 4500 and 8500 ([0139]). Tsuchida discloses 10 to 25 phr of liquid polymer ([0080]).
Tsuchida does not disclose a fatty acid bisamide; however, 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 provided a fatty acid bis amide or ethylene bis fatty acid amide since Kondo, similarly directed towards a tire rubber composition, teaches providing fatty acids in tread rubber compositions to provide water-repellent properties wherein bis amide is disclosed as a preferred type of amide and ethylene bis stearic acid amide, ethylene bis hydroxy acid amide, and ethylene bis behenic acid amide are listed as examples ([0027-0030]). One would have motivated to select a bisamide because they form a water-repellent surface film by blooming, thereby more effectively suppressing snow clogging ([0029]).
As to the mass ratio of the liquid polymer content to fatty acid bisamide content, Kondo discloses the amount of fatty acid amide per 100 parts rubber as preferably 0.05 to 3.0 parts by mass or less ([0030]). Given that Tsuchida discloses 10 to 25 phr of liquid polymer ([0080]), the ranges yield liquid polymer/fatty acid content ratio range of 3 to 500. 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 rubber with liquid polymer to fatty acid amide mass ratio of 1 to 10 since the amounts disclosed by Tsuchida and Kondo yield a ratio range of 3 to 500 (Kondo, [0030]; Tsuchida [0080]), said range overlapping the claimed range. Additionally, Tsuchida discloses that fatty acid amides can act as a processing aid and discloses a preferable amount of 0.5 parts by mass or more to obtain a favorable effect ([0081,0086])--this suggests a ratio upper bound of 50 (25/0.5).
Tsuchida does not disclose a space-introducing agent; however, 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 rubber composition with a space introducing agent since Mazaki discloses providing foaming agents in the composition to generate closed gas cells within the rubber, thereby improving ice performance ([0006,0012,0013]).
Regarding claim 2, Tsuchida discloses the fatty acid processing aid is preferably present at 0.5 to 10 phr ([0086]).
Regarding claims 8 and 20, Tsuchida discloses liquid butadiene polymer ([0077]).
Regarding claims 11 and 12, Tsuchida discloses natural rubber ([0054, 0094]) and modified conjugated diene-based polymer with functional groups ([0052-0054]).
Regarding claim 14, as discussed above, Mazaki discloses foaming agents as the spacing introducing agent ([0006,0012,0013]).
Regarding claim 16, 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 rubber composition with porosity of 5 to 45% since Mazaki discloses the foaming rate of the rubber matrix is preferably 5 to 35% to provide ice performance, fraction properties, and abrasion resistance ([0012]), said range overlapping the claimed range.
Regarding claim 17, Tsuchida discloses the composition can be used in a tire tread ([0136]).
Claims 5-7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchida (JP2018-123260, with English machine translation) in view of Kondo (JP2017-101208, with English machine translation) and Mazaki (JPH09-194640, with English machine translation) as applied to claims above, and further in view of Appel (US 2007/0135564).
Regarding claims 5-7 and 19, Tsuchida discloses liquid polybutadiene as the liquid polymer but does not disclose the vinyl content. 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 polybutadiene with vinyl content as claimed since Appel, similarly directed towards tire rubber, teaches liquid polybutadiene with vinyl content of 15 to 50% to achieve good abrasion characteristics, good winter properties, and to reduce the amount of other softeners in the rubber ([0018]), said range overlapping the claimed ranges. Examiner notes that there is 0% styrene content in polybutadiene rubber.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuchida (JP2018-123260, with English machine translation) in view of Kondo (JP2017-101208, with English machine translation) and Mazaki (JPH09-194640, with English machine translation) as applied to claim 1 above, and further in view of Yokoyama (US 20180093533).
Regarding claim 15, Tsuchida does not disclose composite fibers; however, 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 rubber composition with composite fibers since Yokoyama, similarly directed towards tire rubber compositions, teaches providing composite fiber to obtain good water drainage and sufficient durability ([0063,0072]).
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
Applicant argues that Tsuchida discloses fatty acid amide as a "processing aid" whereas Kondo teaches using a fatty acid bisamide to form a water repellent surface film by blooming. Applicant argues that a skilled artisan focused on processibility would not look to a reference solving snow clogging to modify the processing aid.
Applicant's arguments are unpersuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Tsuchida concerns a rubber composition for a tire tread ([0136]). Kondo also concerns rubber composition for tire treads ([0001]) and thus is in the same field of endeavor. Kondo discloses that adding a fatty acid bisamide to the rubber composition provides advantages by forming a water-repellent surface film, thereby obtaining excellent snow-shedding properties and suppressing snow clogging ([0027-0030]). One having ordinary skill in the art would have been motivated to add a fatty acid bisamide to the rubber composition of Tsuchida to obtain the expected and predictable effect of improved snow shedding properties. The fact that Tsuchida recognizes that fatty acids can serve as a processing aid does not teach away from Kondo's disclosure that fatty acid bisamides improve snow performance of tread rubber compositions. Examiner notes that rubber additives can serve multiple functions.
Applicant argues that Tsuchida does not disclose or suggest the claimed liquid polymer content and mass ratio. Applicant argues that claim 1 requires a specific content of the liquid polymer (1 to 40 parts by mass per 100 parts by mass of the rubber component. Applicant argues that Tsuchida does not disclose or suggest this specific range. Applicant also argues that Tsuchida does not disclose the specific mass ratio of liquid polymer to fatty acid.
Examiner disagrees. Tsuchida discloses the amount of liquid polymer is preferably 10 to 25 parts by mass per 100 parts rubber ([0080]). This amount lies entirely inside the claimed range. As to the ratio of liquid polymer to fatty acid, Tsuchida and Kondo disclose liquid polymer and fatty acid bisamide in amounts that yield a ratio range that overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05. Furthermore, Applicant has not established a showing of unexpected results or criticality to the claimed ratio range.
Applicant argues there is no motivation to combine Tsuchida and Mazaki to include a space-introducing agent. Applicant argues that Tsuchida's primary objective is to improve the balance of processability, wet grip performance, fuel efficiency, and wear resistance ([0008]). Tsuchida does not aim to improve "on-ice performance." Applicant argues that introducing spaces into rubber matrix typically degrades wear resistance and fuel efficiency which would be counterproductive to Tsuchida's stated goals.
Examiner disagrees. Arguments presented by applicant cannot take the place of evidence in the record. Nothing in the prior art teaches that the proposed modification of the rubber composition of Tsuchida with a space-introducing agent in the amount recited by Mazaki would have resulted in a rubber composition with undesirable properties or one that is inoperable. Mazaki does not teach away from the combination. Examiner notes that Mazaki discloses that the foaming ratio is kept below 35% to avoid lowering wear resistance ([0012]). Furthermore, Tsuchida is concerned with a balance of properties ([0006]). While the introduction of a foaming agent may modify this balance, there is no evidence that the tire properties would be rendered unsatisfactory.
As to Applicant's argument that there is no motivation to apply the teachings of Mizaki to Tsuchida, Examiner notes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See MPEP 2143.01. Here, Mizaki provides motivation to add a foaming agent to a tread rubber composition to improve ice performance ([0006,0012,0013]). This motivation does not conflict with Tsuchida or render the composition inoperable.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Momper can be reached at (571) 270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
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