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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 30, 2026 has been entered.
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.
4. Claim(s) 1-9, 16, 17, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tahara (JP 2010-144039, of record) and further in view of Hilmer (US 2008/0248295, of record) and Shibata (US 5,576,376, newly cited).
Tahara is directed to a tire composition comprising 100 phr of SBR, 3-60 phr of a thermoplastic polyurethane, and 20-100 phr of carbon black. It is particularly noted that Tahara states that the disclosed rubber components, including solution polymerized SBR, can be used alone or in combination with two or more. Thus, the use of 100 phr of SBR is within the scope of Tahara. In such an instance, though, Tahara is silent with respect to any mechanical properties, such as hardness, of said TPU.
In any event, the claimed hardness values are consistent with those that are associated with thermoplastic polyurethanes (in general) based on polyether or polyester, as shown for example by Hilmer (Paragraphs 32 and 45). It is further noted that Hilmer recognizes a relationship between the TPU hardness and the amount of chain extenders, with smaller chain extender loadings associated with smaller hardness values (Paragraph 43). Given that a chain extender is an optional ingredient in the composition of Tahara (Page 4 of machine translation), it further reasons that a fair reading of Tahara encompasses a wide variety of known TPU hardness values. One of ordinary skill in the art would have found it obvious to use any number of conventional hardness values for the TPU of Tahara, including that required by the broad range of the claimed invention, absent a conclusive showing of unexpected results. Table 2 in Applicant’s original disclosure compares compositions devoid of a TPU component (non-inventive; A1, B1, and C1) and compositions including a TPU component (inventive; A2, B2, and C2) and thus, there is no evidence that a TPU having a Shore A hardness between “about” 30 and “about” 60 unexpectedly results in superior characteristics (lack of comparative examples with TPU having a hardness outside the claimed range).
Lastly, regarding claim 1, the composition of Tahara includes a conventional softener in the form of a process oil, such as paraffin oil, naphthenic oil, and vegetable oils. While Tahara is silent with respect to the inclusion of liquid SBR, it is well recognized that liquid SBR falls under the general class of softeners commonly used in tire compositions, as shown for example by Shibata (Column 8, Lines 20+). Shibata teaches the combined use or alternate use of process oils and liquid polymers, such as liquid SBR. A fair reading of Tahara suggests the general inclusion of a softener and thus, one of ordinary skill in the art would have found it obvious to use any number of conventional softeners, such as liquid SBR (designation of solution polymerization is directed to a processing method as opposed to further defining the structure, it being noted that Tahara does recognize emulsion and solution polymerization). It is emphasized that a wide variety of additives, including softeners, are commonly included in almost every tire rubber composition (provides processing benefits) The specific selection of liquid SBR as said softener in Tahara would have been obvious given its common use in tire rubber compositions and the art recognition that liquid SBR and the exemplary softener materials of Tahara are alternatively used (or used in combination) in tire rubber compositions. Lastly, Applicant has not provided a conclusive showing of unexpected results for the claimed type of softener (claimed softener is present in all of the comparative examples in inventive examples of Table 2).
Regarding claim 4, the composition of Tahara includes 10 phr of aromatic oil (see Table 1- component is listed directly under TPU (4)).
With respect to claims 5 and 6, a composition formed solely of SBR (100 phr of SBR) is seen to be “about” 95 phr.
Regarding claim 7, as noted above, Tahara teaches a TPU loading between 3 phr and 60 phr and such fully encompasses the broad range of the claimed invention (exemplary compositions in table 1 include 20 phr of TPU).
As to claims 8 and 9, Tahara teaches polyurethanes formed with either polyether or polyester blocks (Paragraph 20).
With respect to claim 16, Tahara teaches the inclusion of zinc oxide (Page 7 of attached machine translation).
Regarding claims 17, 19, and 20, Tahara is directed to a composition designed for use in tire treads, it being well recognized that a tire is a cured or vulcanized product. Tahara also refers to passenger car tires and motorcycle tires (Paragraphs 1-3).
5. Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tahara, Hilmer, and Shibata as applied in claim 1 above and further in view of Ansems (US 2010/0029827, of record).
As detailed above, Tahara is directed to a composition comprising SBR and 3-60 phr of a TPU based on polyether or polyester. In such an instance, though, Tahara is silent with respect to any material properties, such as density, of the TPU. In any event, the claimed densities are consistent with those that are associated with thermoplastic polyurethanes based on polyether or polyester, as shown for example by Ansems (Paragraph 672). One of ordinary skill in the art would have found it obvious to use any number of conventional densities for the TPU of Tahara, including that required by the broad range of the claimed invention, absent a conclusive showing of unexpected results. Furthermore, a density of 0.995 grams per cubic centimeter, as taught by Ansems, is seen to be “about” 1.00 grams per cubic centimeter and “about” 1.05 grams per cubic centimeter.
6. Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tahara, Hilmer, and Shibata as applied in claim 1 above and further in view of Hennig (WO 2007/025690, of record).
As detailed above, Tahara is directed to a composition comprising SBR and 3-60 phr of a TPU based on polyether or polyester. In such an instance, though, Tahara is silent with respect to any mechanical properties, such as elongation at break or tensile strength, of said TPU. In any event, the claimed values are consistent with those that are associated with thermoplastic polyurethanes based on polyether or polyester, as shown for example by Henning (Table 1- Estane 58630). The disclosed polyether based TPU in Henning has a tensile strength of 36.6 MPa and an elongation at break of 670%, which is seen to be “about” 700%. One of ordinary skill in the art would have found it obvious to use any number of conventional elongation at break and tensile strength values for the TPU of Tahara, including that required by the broad range of the claimed invention, absent a conclusive showing of unexpected results.
Response to Arguments
7. Applicant's arguments filed September 30, 2026 have been fully considered but they are not persuasive.
Applicant argues that Tahara neither measures nor seeks increased hysteresis or increased loss compliance but rather is directed to improving rigidity and stiffness.
It is emphasized that the claims are directed to a composition including one or more thermoplastic polyurethanes, at least 75 phr of one or more SBR, and a liquid solution polymerized SBR. It is not required, though, for a reference or combination of references to specifically identify purported benefits disclosed by Applicant. In this instance, the composition of Tahara includes 3-60 phr of a thermoplastic urethane and thus, any benefits associated with including a thermoplastic polyurethane in an SBR-containing composition would be present in the tire rubber composition of Tahara. It is emphasized that Tahara, in an analogous manner to the claimed invention, is specifically directed to TPU-containing SSBR compositions and the claims are limited by the structural elements as opposed to purported benefits.
Applicant further contends that the compositions of Tahara are based on SBR together with natural rubber and/or butadiene rubber. As detailed above, though, Tahara specifically states that the disclosed rubber components, such as SSBR, can be used alone OR in combination with two or more. Thus, the use of a single rubber component is in fact within the scope of Tahara.
Applicant also argues that the working examples only employ emulsion polymerized SBR. It is well taken, though, that a reference is not limited by working examples. As detailed above, Tahara specifically teaches the use of solution polymerized SBR. It is further noted that the manner in which the SBR is formed fails to further define the structure of the claimed tire article (lack of evidence that the manner in which the SBR is formed results in a materially different composition and thus materially different tire article).
Lastly, the pending rejection above addresses the obviousness of including a softener in the form of liquid SBR.
Conclusion
8. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 October 7, 2026
