DETAILED CORRESPONDENCE
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/10/2026 has been entered.
Response to Amendment
Acknowledgement is made to applicant’s amendment of claims 1, 5-6 and 8. Claims 3-4 are cancelled. Claims 1-2 and 5-13 are pending in this application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
9. Claims 1-2, 5-13 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. The claim recites the limitation of “an aromatic resin consisting of a polymer or copolymer that consist of an aromatic vinyl compound and optionally (meth)acrylate and/or indene as a constituent monomer”. However, the written description is completely silent to using the transitional phrases “consisting of” and “consists of” with respect to the aromatic resin and a constituent monomer being (meth)acrylate and/or indene in the composition. Thus, the amendment is considered 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.
Claims 6-9 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 pre-AIA the applicant regards as the invention.
Claims 6-9 recites the claim elements "(meth)acrylate" and “indene”. However, this renders the claim indefinite because claim 1 of which claim 6 depends recites the (meth)acrylate and indene as optional non-limiting claim elements. This raises an irrebuttable presumption concerning the necessity of a (meth)acrylate and/or indene compounds.
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.
Claims 1, 5-6, 8-9, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2019/0169404 A1), in view of Noguchi (JP 2023149903 A).
Regarding claims 1, 12-13, Yamada teaches a rubber composition for a tire tread, see [0221]. The composition to include a diene rubber taken as a 100% mass basis of the rubber component, see at least [0107]. The composition to further include a resin as an aromatic compound, see at least [0156] – (corresponds to an aromatic resin consisting of a polymer), the resin is supplied in an amount of 1 part by mass to 50 parts by mass of the rubber component, see [0167] – (corresponds to and overlaps 1 to 50 parts by mass of an amount resin per 100 parts by mass of a diene rubber and 10 to 30 parts by mass of a diene rubber). The resin is liquid at room temperature (25° C), see [0144] – (corresponds to and sufficiently close to 23° C that one would expect the same liquid nature to apply). And the resin maybe styrene used alone or as in combination, a combination to include methyl acrylate and/or indene, see [0147]-[0149], [0151], [0163] – (corresponds to the aromatic resin consist of an aromatic vinyl compound and optionally (meth)acrylate as a constitute monomer).
Yamada does not explicitly disclose the weight average molecular weight of the aromatic resin is 500 to 920.
Noguchi teaches a rubber composition for a tire tread. The composition to include an aromatic resin, see page 31 paragraph 10-11, which is liquid at room temperature 25° C and has a weight average molecular weight (Mw) of 100 to 1000, see page 33 last paragraph to page 34 first paragraph – (corresponds to and overlaps the weight average molecular weight of the aromatic resin is 500 to 920). Noguchi discloses the use of such an aromatic resin is beneficial for increasing the compatibility with rubber leading to improved wear resistance, dry grip performance, and wet grip performance, see at least page 32 paragraph 6.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aromatic resin of Yamada to have a weight average molecular weight (Mw) of 100 to 1000, as taught by Noguchi to provide the tread with improved wear resistance, dry grip performance, and wet grip performance. Concerning the claimed ranges: It has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists”, see MPEP § 2144.05(I).
Regarding claims 5-6, 8-9, modified Yamada discloses the aromatic vinyl compound consists of styrene, see at least Yamada [0163]; and the aromatic resin consist of the aromatic vinyl compound, the (meth)acrylate and optionally indene as the constituent monomer; and the aromatic resin consist of the aromatic vinyl compound, the (meth)acrylate and indene as the constituent monomer, see at least Yamada [0163] – [0164], [0151]. Moreover, one would as a matter of routine experimentation form a composition using indene such that the composition includes an aromatic compound, methacrylate and indene in the claimed amounts to provide a tread composition with the aforementioned benefits. Concerning the claimed ranges: it has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists”, see MPEP § 2144.05(I).
Regarding claim 11, modified Yamada teaches wherein 100 parts by mass of the diene rubber contains 5% to 50% - (corresponds to and overlaps 20 to 65 parts by mass) of an isoprene-based rubber, see Yamada [0123] and 5% to 80% - (corresponds to and overlaps 10 to 55 parts by mass) of a butadiene rubber, see Yamada [0120]. Concerning the claimed ranges: it has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists”, see MPEP § 2144.05(I).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2019/0169404 A1), in view of Noguchi (JP 2023149903 A), as applied to claim 1 above, and further in view of Miyazaki (US 2021/0023882 A1).
Regarding claim 2, modified Yamada does not explicitly disclose the glass transition temperature (Tg) of the aromatic resin.
Miyazaki teaches a rubber composition for a tire tread. The composition to include an aromatic resin, see at least [0099], [0101]; wherein the resin has a Tg of -40 to 100° C, this being beneficial for improving the compatibility with diene rubbers, see [0097] – (corresponds to and overlaps the glass transition temperature of the aromatic resin is -100° C or higher and 0° C or lower).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the glass transition temperature of the aromatic resin of modified Yamada to be within -40 to 100° C, as taught by Miyazaki to improve the compatibility with diene rubbers. Concerning the claimed ranges: it has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists”, see MPEP § 2144.05(I).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2019/0169404 A1), in view of Noguchi (JP 2023149903 A), as applied to claim 6 above, and further in view of Sato et al. (EP 3795628 A1 – of record).
Regarding claim 7, modified Yamada does not explicitly disclose the claimed mass % of styrene or acrylate.
Sato teaches a rubber composition for a tire tread. The composition to include a polymer block A which contains an aromatic vinyl monomer and methacrylic acid – (construed as methacrylate). The methacrylic acid being provided such that a content amount of other monomers being provided as 20 mass% or less (that is the methacrylic acid is provided in an amount of 80% or more, and thus overlaps wherein 100 mass% of the constituent monomers of the aromatic resin contain 10 to 60 mass% of the aromatic vinyl compound and 40 to 90 mass% of the (meth)acrylate) enhances the effects of the inventive composition, see at least [0083]. The effects being improved wet, ice and snowy road performance, see at least [0012].
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the mass % of the aromatic vinyl compound and (meth)acrylate of modified Yamada to 10 to 60 mass% of the aromatic vinyl compound and 40 to 90 mass% of the (meth)acrylate), as taught by Sato to improve the wet, ice and snowy road performance of the tread. Concerning the claimed ranges: it has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists”, see MPEP § 2144.05(I).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US 2019/0169404 A1), in view of Noguchi (JP 2023149903 A), as applied to claim 1 above, and further in view of Sumino (US 2021/0178814 A1 – of record).
Regarding claim 10, modified Yamada does not explicitly disclose the use of porous particle.
Sumino teaches a rubber composition for a tire tread. The composition to include porous cellulose particles to improve on-ice braking performance, see [0005]. And further provide the porous cellulose particles in an amount of 0.3 to 20 parts by mass of porous cellulose particles per 100 parts by mass of the diene rubber, see [0008].
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tread composition of modified Yamada to use porous particles in an amount of 0.3 to 20 parts by mass of porous cellulose particles per 100 parts by mass of the diene rubber, as taught by Sumino to improve on-ice braking performance. Concerning the claimed ranges: it has been held that “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists”, see MPEP § 2144.05(I).
Response to Arguments
Applicant’s arguments with respect to the claims 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEDRICK WILLIAMS whose telephone number is (571) 272-9776. The examiner can normally be reached on Monday - Thursday 8:00AM--5:00 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached on 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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/CEDRICK S WILLIAMS/Primary Examiner, Art Unit 1749