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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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).
Tahara is directed to a tire composition comprising 100 phr of SBR, natural rubber and/or butadiene rubber, 3-60 phr of a thermoplastic polyurethane, and 20-100 phr of carbon black. This disclosure suggests compositions formed solely with SBR. 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).
Regarding claim 5, the composition of Tahara includes 10 phr of aromatic oil (see Table 1- component is listed directly under TPU (4)).
With respect to claim 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).
4. Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tahara and Hilmer 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.
5. Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tahara and Hilmer 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
6. Applicant's arguments filed June 26, 2026 have been fully considered but they are not persuasive.
Applicant argues that there is no motivation to combine Tahara and Hilmer in a manner that would lead a skilled artisan to select a TPU having the claimed hardness. As acknowledged by Applicant, Tahara discloses a plurality of exemplary thermoplastic polyurethanes having a Shore A hardness between 70 and 80. A fair reading of Tahara does not limit the hardness of the thermoplastic polyurethane- one of ordinary skill in the art would have found it obvious to use any number of known thermoplastic polyurethanes, including those having the claimed range of hardness values. It is emphasized that an inventive concept of Tahara is the mere inclusion of a thermoplastic polyurethane to provide superior mechanical properties independent of the hardness of the thermoplastic polyurethane. It is further noted that an exemplary hardness of 70 in Tahara is extremely close to the upper end of “about” 60 required by the claimed invention. Hilmer provides evidence of the general order of hardness values associated with thermoplastic polyurethanes (independent of the application) and such fully encompasses the hardness values required by the claimed invention. There is absolutely nothing in Tahara that limits a thermoplastic polyurethane hardness to between 70 and 80- one of ordinary skill in the art would have found it obvious to use thermoplastic polyurethanes having a hardness in accordance to the claimed invention as such thermoplastic polyurethanes are consistent with conventional thermoplastic polyurethanes and would be expected to provide the desired mechanical properties (reasonable expectation of success when including a thermoplastic polyurethane, for example, having a Shore A hardness of about 60). Again, an exemplary hardness of 70 is extremely similar to an upper end of the claimed range and provides improved mechanical properties.
Applicant further states that the experimental data in the application demonstrate that the claimed TPU hardness range of 30-60 Shore A is critical and yields unexpected results. The Examiner respectfully disagrees. Looking at Tables 3 and 4, it appears that the general inclusion of TPU produces tires with a better balance between wear and dry grip performance. However, the tire compositions of Tahara similarly include a thermoplastic polyurethane (TPU) and as such, it reasons that similar benefits would be realized. Again, there is nothing in the experimental data that specifically attributes the aforementioned benefits to a TPU having a hardness between about 30 and about 60- all that can be extrapolated from the experimental data is that the general inclusion of a thermoplastic polyurethane, independent of the hardness, produces a tire with a better balance between wear and dry grip performance. Thus, contrary to Applicant’s argument, the experimental data does not demonstrate that the claimed TPU hardness range yields unexpected results. It is suggested that Applicant provide comparative examples including non-inventive TPU materials (would be required to establish a criticality for the claimed hardness range).
Conclusion
7. All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 June 30, 2026
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