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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 21-24, 26-29 and 33-40 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0259516 (Mathey et al.).
Regarding claim 21, Mathey discloses a tire tread rubber composition comprising 100 parts of an elastomer component comprising 20 to 80 parts of one or more styrene-butadiene rubbers (see paragraph 0023), which overlaps the claimed range of 45-54 parts, further teaching that the styrene butadiene elastomer may be functionalized for coupling to silica with silanol or polysiloxane functional groups having a silanol end (see paragraph 0025), and 30 to 80 parts of natural rubber, or polyisoprene (see paragraph 0022), which overlaps the claimed range of 46-55,
at least one reinforcing filler such as silica in an amount of 20 to 200 phr (see paragraphs 33 and 42), which overlaps the claimed range of 50-150 phr,
1-20 phr of at least one hydrocarbon resin having a Tg of 44 degrees C (see paragraphs 0068 and 0103), which overlaps the claimed range of 11-40 phr,
Oil is not a required component of the embodiments disclosed by Mathey, thus the amount of oil is less than 10 phr, and
A vulcanization system (cure package) (see paragraph 0069),
Wherein the amount of hydrocarbon resin and oil is 20 phr or less (based on disclosure of 1-20 phr resin and the amount of oil being zero), which is within the claimed range of less than 40 phr, and the tire tread rubber composition contains only reinforcing inorganic filler as the filler (see paragraph 0042 where it is stated the total filler may be carbon black and/or reinforcing inorganic filler such as silica), or the carbon black is included as 10-50% of the total reinforcing filler, yielding an amount ranging from 2-100 phr (20/0.10 = 2 phr, 200/0.50 = 100 phr), which overlaps the claimed range of no more than 20 phr of carbon black filler.
While the amount of each component is not taught with sufficient specificity for an anticipation rejection, Mathey teaches the amounts which overlap the claimed ranges for each component. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). At the time of filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use an amount which overlaps the claimed amount for each component of the rubber composition, and would have been motivated to do so since Mathey teaches that those amounts are suitable for use together in the disclosed invention.
Regarding claim 22, Mathey also discloses that the tire tread rubber composition may contain from 10-50% of carbon black as the reinforcing filler, yielding an amount ranging from 2-100 phr (20/0.10 = 2 phr, 200/0.50 = 100 phr), which overlaps the claimed range of 1-10 phr of reinforcing carbon black filler. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 23, Mathey also discloses that the tire tread rubber composition contains hydrocarbon resin and oil in an amount of 20 phr or less (based on disclosure of 1-20 phr resin at paragraph 0068, and the amount of oil being zero), which is within the claimed range of no more than 30 phr.
Regarding claim 24, Mathey also discloses that the styrene-butadiene rubber having a silica reactive functional group has a Tg of greater than -65 degrees C (see paragraphs 0021-0025), which overlaps the claimed range of -65 to about -40 degrees C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 26, Mathey also discloses that the tire tread rubber composition contains hydrocarbon resin and oil in an amount of 20 phr or less (based on disclosure of 1-20 phr resin at paragraph 0068, and the amount of oil being zero), which is within the claimed range of no more than 20 phr.
Regarding claim 27, Mathey also discloses that the tire tread rubber composition contains reinforcing silica in an amount of 30 to 150 phr (see paragraph 0042), which overlaps the claimed range of 50-89 phr. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 28, Mathey also discloses that the tire tread rubber composition contains reinforcing silica in an amount of 40 to 70 phr (see paragraph 0042), which overlaps the claimed range of 50-70 phr. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 29, Mathey discloses a tire tread rubber composition comprising 100 parts of an elastomer component comprising 20 to 80 parts of one or more styrene-butadiene rubbers (see paragraph 0023), which overlaps the claimed range of 45-54 parts, further teaching that the styrene butadiene elastomer may be functionalized for coupling to silica with silanol or polysiloxane functional groups having a silanol end (see paragraph 0025) and having a Tg of greater than -65 degrees C (see paragraphs 0021-0025), which overlaps the claimed range of -65 to about -40 degrees C,
and 30 to 80 parts of natural rubber, or polyisoprene (see paragraph 0022), which overlaps the claimed range of 46-55,
at least one reinforcing filler such as silica in an amount of 20 to 200 phr (see paragraphs 33 and 42), which overlaps the claimed range of 50-89 phr,
1-20 phr of at least one hydrocarbon resin having a Tg of 44 degrees C (see paragraphs 0068 and 0103), which overlaps the claimed range of 11-40 phr,
Oil is not a required component of the embodiments disclosed by Mathey, thus the amount of oil is less than 5 phr, and
A vulcanization system (cure package) (see paragraph 0069),
Wherein the amount of hydrocarbon resin and oil is 20 phr or less (based on disclosure of 1-20 phr resin and the amount of oil being zero), which is within the claimed range of less than 30 phr, and the tire tread rubber composition contains only reinforcing inorganic filler as the filler (see paragraph 0042 where it is stated the total filler may be carbon black and/or reinforcing inorganic filler such as silica), or the carbon black is included as 10-50% of the total reinforcing filler, yielding an amount ranging from 2-100 phr (20/0.10 = 2 phr, 200/0.50 = 100 phr), which overlaps the claimed range of no more than 10 phr of carbon black filler.
While the amount of each component is not taught with sufficient specificity for an anticipation rejection, Mathey teaches the amounts which overlap the claimed ranges for each component. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). At the time of filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use an amount which overlaps the claimed amount for each component of the rubber composition, and would have been motivated to do so since Mathey teaches that those amounts are suitable for use together in the disclosed invention.
Regarding claim 33, Mathey also discloses that the tire tread rubber composition comprising a hydrocarbon resin wherein the hydrocarbon rein comprises an aliphatic resin, an aromatic resin, or a combination thereof (see paragraph 0052).
Regarding claim 34, Mathey also discloses that the elastomer component may include polybutadiene rubber (see paragraph 0024), which would suggest to one having ordinary skill in the art before the effective filing date that polybutadiene rubber is optional, and an embodiment is possible where 0 parts are included.
Regarding claim 35, oil is not a required component of the embodiments disclosed by Mathey, thus the amount of oil is 0 phr.
Regarding claim 36, Mathey also discloses that the reinforcing silica filler has a CTAB surface area and BET surface area of between 60 and 300 m2/g (see paragraph 0038), which overlaps the claimed ranges of greater than 200 m2/g and at least 150 m2/g, respectively. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claims 37-39, Mathey does not disclose that the rubber composition has a value for tan δ at 60 degrees of 0.09-0.23 and meets at least one or all of the following (a) has a value for tan δ at -30 degrees C of at least 2.5 times the tan δ at 60 degree C value; (b) has a value for tan δ at 0 degrees C at least 2.5 times the tan δ at 60 degrees C value; or (c) has a value for tan δ at 30 degrees C of at least 1.1 times the tan δ at 60 degrees C value; however, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 40, Mathey also discloses a tire including a tread comprising the tire tread rubber composition of claim 21 (see paragraphs 0007 and 0093).
Allowable Subject Matter
Claims 25, 30 and 31 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 32 is allowed.
The following is a statement of reasons for the indication of allowable subject matter: Claims 25, 30 and 32 each contain the limitation that the styrene butadiene elastomer consists of two styrene-butadiene rubbers having a silica-reactive functional group. None of the prior art of record teaches or renders obvious this limitation in combination with the other claimed compositional limitations. Therefore, these claims contain allowable subject matter. Claim 31 is dependent upon a claim which contains the allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENDY L BOSS whose telephone number is (571)272-7466. The examiner can normally be reached 8:30-6:30.
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/WENDY L BOSS/Examiner, Art Unit 1749
