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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5, 7, and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hatano (US 2019/0100643, newly cited).
Hatano is directed to a tire rubber composition comprising 26 phr of natural rubber, 14 phr of butadiene rubber, 2 phr of wax, and 1 phr of a processing aid (Struktol WB 16) (Paragraph 107 and Examples 2, 3, 5-8, 11, and 12). It is further noted that Struktol WB16 is a mixture of a fatty acid metal salt and a fatty acid amide. Lastly, the claim language “for a white sidewall cover rubber” corresponds with the intended use of the claimed rubber composition and as such, fails to further define the structure of the claimed rubber composition.
As to claim 5, natural rubber is recognized as having essentially 100% cis 1,4 content.
With respect to claim 7, 0 phr of butyl rubber is included in Examples 2, 3, 5-8, 11, and 12.
Regarding claim 9, the language “white sidewall cover rubber” fails to require the presence of a white sidewall rubber member.
Claim(s) 1, 5, and 7-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyazaki (US 2014/0090764, newly cited).
Miyazaki is directed to a tire rubber composition comprising 50 phr of natural rubber, 25 phr of a butadiene rubber BR3, 2 phr of wax and 2 phr of a release agent (WB 16) (Example 17 in Table 1). It is further noted that WB16 is a mixture of a fatty acid metal salt and a fatty acid amide. While the rubber composition of Miyazaki also includes 25 phr of a terminally modified butadiene rubber, such is not excluded by the claims as currently drafted (disclosed butadiene rubber is separate and distinct from the terminally modified butadiene rubber and the claims are directed to a composition that contains 10-35 parts by mass of a butadiene rubber). Lastly, the claim language “for a white sidewall cover rubber” corresponds with the intended use of the claimed rubber composition and as such, fails to further define the structure of the claimed rubber composition.
As to claim 5, natural rubber is recognized as having essentially 100% cis 1,4 content.
With respect to claim 7, 0 phr of butyl rubber is included in Example 17.
As to claim 8, the rubber composition in Example 17 includes 35 phr of carbon black.
Regarding claim 9, the language “white sidewall cover rubber” fails to require the presence of a white sidewall rubber member.
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatano.
The rubber composition of Hatano includes 1-60 phr of carbon black (Paragraph 66) and such fully encompasses the claimed range between 10 phr and 60 phr. One of ordinary skill in the art would have found it obvious to include the claimed carbon black loadings in the rubber composition of Hatano given the extreme similarities between the claimed range and that taught by Hatano and Applicant has not provided a conclusive showing of unexpected results.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki and further in view of Dillenschneider (US 3,937,862).
As detailed above, Miyazaki is directed to a tire having a specific carbon black-containing sidewall rubber composition. One of ordinary skill in the art would have found it obvious to form any number of tire constructions with such a sidewall composition, including those in which a white sidewall is covered by common carbon black-containing sidewall portions. The inclusion of white sidewall regions is extremely well known and conventional and provides a desired aesthetic characteristic. Dillenschneider provides one example of a common tire comprising a white sidewall portion 20 is covered by carbon black-containing sidewall portions 18,19 (Column 4, Lines 25+). It is emphasized that white sidewall portions are extensively included in tire constructions- one of ordinary skill in the art would have found it obvious to include a white sidewall portion in the tire of Miyazaki for the benefits detailed above and following the teachings of Dillenschneider, such a white sidewall portion would be covered by carbon black-containing sidewall portions.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 5, and 7-12 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
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 JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 October 3, 2025