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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/13/2026 has been entered.
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.
Claims 1-5, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yasuda (EP 3862387).
Regarding claims 1-3, Yasuda discloses a tire rubber composition ([0001]), comprising:
a rubber component including an epoxidized diene-based rubber ([0025-0030]);
a divalent or higher carboxylic acid compound ([0032-0040]); and
sulfur ([0062])
a filler including silica and carbon black (composition contains silica and/or carbon black as reinforcing material, [0048]).
Regarding the sulfur and total filler content, while not anticipatory, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the composition with fillers as claimed since Yasuda discloses sulfur content of 5 to 150 parts, preferably 45 to 80 parts per 100 rubber ([0050]) and carbon black at 5 to 70 parts, preferably 15 to 30 parts per 100 rubber ([0058]), said ranges overlapping the claimed ranges. Examiner notes the total reinforcing filler amount ranges from 50-110 phr, which overlaps the claimed range of 50 to 85 phr.
While Yasuda does not expressly disclose a working example within the claimed sulfur range, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the sulfur content in an amount of 1.0 parts by mass or more per 100 parts rubber since Yasuda discloses sulfur is present at 1 parts by mass or less ([0062]), said range overlapping the claimed range.
As to the ratio K (amount of divalent or higher carboxylic acid compound/amount of sulfur) of an amount (parts by mass) of the divalent or higher carboxylic acid compound to an amount (parts by mass) of the sulfur of 0.10 or higher and 10.00 or lower, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the ratio K as claimed since Yasuda discloses the polycarboxylic acid content of 1-30 parts, preferably 7 to 12 parts ([0040]) and the sulfur content as 1 part or less ([0062]), said ranges suggesting a K ratio of 1 to 30 for sulfur content of 1 phr.
Regarding claim 4, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the ratio as claimed since Yasuda discloses epoxidized rubber at 100% by mass ([0030]) and polycarboxylic acid at 1-30 parts, preferably 7-12 parts ([0040])--this equates to a ratio of 0.001-0.30, preferably 0.07-0.12.
Regarding claim 5, Yasuda discloses epoxidized rubber at 100% by mass ([0030]).
Regarding claims 7 and 12, Yasuda discloses the composition in a tire tread ([0010]).
Claims 8, 9, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yasuda (EP 3862387) in view of Kogure (US 5355922).
Regarding claims 8 and 9, Yasuda discloses the rubber component as a tire tread ([0010]). While Yasuda does not expressly disclose the tread thickness, Examiner notes that a tread thickness is conventionally on the order of several millimeters. For example, Kogure discloses a tire tread for passenger cars having groove depths of 6.0 to 8.5 mm and a thickness of rubber under the grooves as 0.5 to 2.5 mm (col 1, lines 52-60), which equates to a tread thickness of 6.5 to 11 mm. Given a K value of 1-30, the K x T values are greater than 3.0 and 5.0. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tread with thickness and KxT values as claimed since Kogure discloses tire treads with groove depths of 6.0 to 8.5 mm and under groove thickness of 0.5 to 2.5 mm (col 1, lines 52-60). One would have been motivated to provide thickness that is known to be suitable for tire treads wherein the thickness and groove depth provide for water drainage properties and wear life (col 4, lines 1-9). Kogure also discloses the tread thickness as providing cornering power (col 3, lines 1-10; col 3, lines 64-col 4, line 22).
Regarding claims 14 and 15, Yasuda discloses the rubber component as a tire tread ([0010]). While Yasuda does not expressly disclose the tread as having circumferential grooves, Examiner notes that it is very well known and conventional to provide tread grooves with depths on the order of several millimeters. For example, Kogure discloses a tire tread for passenger cars having groove depths of 6.0 to 8.5 mm (col 1, lines 52-60). Given a K value of 1-30, the K x D values are greater than 6. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tread with groove having depth of 4.5 mm or more and KxD of 3.5 or more as claimed since Kogure discloses tire treads having grooves with depths of 6.0 to 8.5 mm (col 1, lines 52-60). One would have been motivated to configure grooves with sufficient depth to provide wear life and water drainage properties (col 4, lines 1-9). Kogure also discloses the depth of grooves as determinants of cornering power (col 3, lines 1-10; col 3, lines 64-col 4, line 22).
Claims 1-5, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Terakawa (US 5569690) in view of Mizuno (US 20020037950) or Tadaki (US 6191234).
Regarding claim 1, Terakawa discloses a tire rubber composition (col 1, lines 6-11), comprising:
a rubber component including an epoxidized diene-based rubber (col 2, lines 53-63; Table 9, Examples 29-32);
a divalent or higher carboxylic acid compound (polycarboxylic acid, col 4, lines 31-61; see Table 9, Examples 29-32 disclose suberic acid, which is a divalent carboxylic acid); and
sulfur, the tire rubber composition containing the sulfur in an amount of 1.0 parts by mass or more per 100 parts by mass of the rubber component (see Table 8, sulfur at 1.75 parts per hundred rubber).
As to the ratio K (amount of divalent or higher carboxylic acid compound/amount of sulfur) of an amount (parts by mass) of the divalent or higher carboxylic acid compound to an amount (parts by mass) of the sulfur of 0.10 or higher and 10.00 or lower, Terakawa discloses the sulfur content as 1.75 per hundred rubber and the suberic acid at 0.75, 1.5, and 2.25 parts per hundred rubber (see Tables 8, 9, Examples 29-31), which equates to ratio K of 0.4, 0.9, and 1.3 respectively.
Terrakawa discloses carbon black content of preferably 20 to 150 parts per 100 rubber (col 4, lines 24-30). Terrakawa does not disclose the composition comprises silica in an amount of 50 parts to 85 parts per 100 rubber. In the same fields of endeavor of tire rubber compositions, Mizuno discloses providing a tread rubber composition with a combination of fillers including 5 to 100 parts silica per 100 rubber to improve hardness, cornering and braking characteristics of the composition ([0025,0026]) and Tadaki discloses providing a tread rubber composition with silica to reduce hysteresis loss of a vulcanizate to provide high rolling resistance and improve wet skid resistance, wherein silica is preferably provided at 20-120 phr (col 12, lines 25-45). Examiner notes that Mizuno discloses carbon black can be combined with silica for synergistic reinforcing effect ([0034]) and Tadaki discloses that a combination of silica and carbon black provides a good balance between abrasion resistance, hysteresis-loss characteristics, and wet grip performance (col 12, lines 40-45).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the rubber composition of Terrakawa with the 50-85 parts of silica and 50-85 parts of total filler in view of (1) Mizuno's disclosure of providing a tread rubber composition with a combination of fillers including 5 to 100 parts silica per 100 rubber to improve hardness, cornering and braking characteristics of the composition ([0025,0026]; carbon black is used in combination at 10-100phr which suggests a total of 15-200 phr) or (2) Tadaki's disclosure of providing a tread rubber composition with silica reduces hysteresis loss of a vulcanizate to provide high rolling resistance and improve wet skid resistance, wherein silica is preferably provided at 20-120 phr and the combination of carbon black and silica is in an amount of 20-120 phr (col 12, lines 25-45). Examiner further notes that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (MPEP 2144.05(II)(A)). Here, the prior art discloses ranges for reinforcing fillers to control the reinforcing effect in the tire rubber and one of ordinary skill in the art would have been motivated to adjust the filler content to achieve the desired balance in tire properties.
Regarding claim 2, Examples 30 and 31 have K values of 0.9 and 1.3, respectively.
Regarding claim 3, while the working examples of Table 9 lie outside the claimed K range of 2.00 to 6.00, Terakawa discloses a broader range for polycarboxylic acid content (col 4, lines 43-51). Terakawa discloses polycarboxylic acid is used in such an amount to give 0.2 to 200 mmol of the carboxylic acid group relative to 100 parts by weight of the rubber component, most preferably 2 to 80 mmol (col 4, lines 43-51). For the example suberic acid (col 4, line 41; Table 9), this equates to a content of 0.2 to 7 per hundred rubber (in Table 9, 2.25 phr yields 25.8 mmol, thus 0.0872 phr per mmol). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the ratio K as 2.00 to 6.00 since (1) Terakawa discloses the polycarboxylic content is most preferably 2 to 80 mmol per hundred rubber; which equates to 0.2 to 7 phr for suberic acid (detailed above) and (2) given the example sulfur content of 1.75 phr (Table 8), ratio K ranges from 0.11 to 4.00, said range overlapping the claimed range.
Regarding claim 4, Terakawa discloses the composition comprises 100 parts epoxidized natural rubber (Table 9). Examples 30 and 31 contain 1.5 and 2.25 parts suberic acid, which equates to an acid/ENR ratio of 0.015 to 0.0225, respectively.
Regarding claim 5, the epoxidized natural rubber is 100% of the rubber component (Table 9).
Regarding claims 7 and 12, Terakawa discloses a tire tread formed of the rubber composition (col 1, lines 6-11).
Claims 8, 9, 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Terakawa (US 5569690) in view of Mizuno (US 20020037950) or Tadaki (US 6191234) as applied to claim 1 above, and further in view of Kogure (US 5355922).
Regarding claims 8 and 9, Terakawa discloses the rubber component as a tire tread (col 1, lines 6-11). While Terakawa does not expressly disclose the tread thickness, Examiner notes that a tread thickness is conventionally on the order of several millimeters. For example, Kogure discloses a tire tread for passenger cars having groove depths of 6.0 to 8.5 mm and a thickness of rubber under the grooves as 0.5 to 2.5 mm (col 1, lines 52-60), which equates to a tread thickness of 6.5 to 11 mm. Given a K value of 0.9 or 1.3, the K x T values are above 3.0 and 5.0. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tread with thickness and KxT values as claimed since Kogure discloses tire treads with groove depths of 6.0 to 8.5 mm and under groove thickness of 0.5 to 2.5 mm (col 1, lines 52-60). One would have been motivated to provide thickness that is known to be suitable for tire treads wherein the thickness and groove depth provide for water drainage properties and wear life (col 4, lines 1-9). Kogure also discloses the tread thickness as providing cornering power (col 3, lines 1-10; col 3, lines 64-col 4, line 22).
Regarding claims 14 and 15, Terakawa discloses the rubber component as a tire tread (col 1, lines 6-11). While Terakawa does not expressly disclose the tread as having grooves, Examiner notes that it is very well known and conventional to provide tread grooves with depths on the order of several millimeters. For example, Kogure discloses a tire tread for passenger cars having groove depths of 6.0 to 8.5 mm (col 1, lines 52-60). Given a K value of 0.9 or 1.3, the K x D values are above 5.4 (0.9 x 6). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tread with groove having depth of 4.5 mm or more and KxD of 3.5 or more as claimed since Kogure discloses tire treads having grooves with depths of 6.0 to 8.5 mm (col 1, lines 52-60). One would have been motivated to configure grooves with sufficient depth to provide wear life and water drainage properties (col 4, lines 1-9). Kogure also discloses the depth of grooves as determinants of cornering power (col 3, lines 1-10; col 3, lines 64-col 4, line 22).
Claims 16, 19, 20, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Terakawa (US 5569690) in view of Mizuno (US 20020037950) or Tadaki (US 6191234), and further in view of Kogure (US 5355922).
Regarding claims 16, 22, and 23, Terakawa discloses a tire rubber composition (col 1, lines 6-11), comprising:
a rubber component including an epoxidized diene-based rubber (col 2, lines 53-63; Table 9, Examples 29-32);
a divalent or higher carboxylic acid compound (polycarboxylic acid, col 4, lines 31-61; see Table 9, Examples 29-32 disclose suberic acid, which is a divalent carboxylic acid); and
sulfur, the tire rubber composition containing the sulfur in an amount of 1.0 parts by mass or more per 100 parts by mass of the rubber component (see Table 8, sulfur at 1.75 parts per hundred rubber).
As to the ratio K (amount of divalent or higher carboxylic acid compound/amount of sulfur) of an amount (parts by mass) of the divalent or higher carboxylic acid compound to an amount (parts by mass) of the sulfur of 0.10 or higher and 0.64 or lower, Terakawa discloses the sulfur content as 1.75 per hundred rubber and the suberic acid at 0.75 parts per hundred rubber (see Tables 8, 9, Examples 29), which equates to a ratio K of 0.4.
Terrakawa discloses carbon black content of preferably 20 to 150 parts per 100 rubber (col 4, lines 24-30). Terrakawa does not disclose the composition comprises silica in an amount of 50 parts to 85 parts per 100 rubber. In the same fields of endeavor of tire rubber compositions, Mizuno discloses providing a tread rubber composition with a combination of fillers including 5 to 100 parts silica per 100 rubber to improve hardness, cornering and braking characteristics of the composition ([0025,0026]) and Tadaki discloses providing a tread rubber composition with silica to reduce hysteresis loss of a vulcanizate to provide high rolling resistance and improve wet skid resistance, wherein silica is preferably provided at 20-120 phr (col 12, lines 25-45). Examiner notes that Mizuno discloses carbon black can be combined with silica for synergistic reinforcing effect ([0034]) and Tadaki discloses that a combination of silica and carbon black provides a good balance between abrasion resistance, hysteresis-loss characteristics, and wet grip performance (col 12, lines 40-45).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the rubber composition of Terrakawa with the 50-85 parts of silica and 50-85 parts of total filler in view of (1) Mizuno's disclosure of providing a tread rubber composition with a combination of fillers including 5 to 100 parts silica per 100 rubber to improve hardness, cornering and braking characteristics of the composition ([0025,0026,0034]; carbon black is used in combination at 10-100phr which suggests a total of 15-200 phr) or (2) Tadaki's disclosure of providing a tread rubber composition with silica reduces hysteresis loss of a vulcanizate to provide high rolling resistance and improve wet skid resistance, wherein silica is preferably provided at 20-120 phr and the combination of carbon black and silica is in an amount of 20-120 phr (col 12, lines 25-45). Examiner further notes that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (MPEP 2144.05(II)(A)). Here, the prior art discloses ranges for reinforcing fillers to control the reinforcing effect in the tire rubber and one of ordinary skill in the art would have been motivated to adjust the filler content to achieve the desired balance in tire properties.
Terakawa discloses the rubber component as a tire tread (col 1, lines 6-11) but does not expressly disclose a circumferential groove depth D or tread thickness Tt. In the same field of endeavor of tire treads, Kogure discloses a tire tread for passenger cars having groove depths of 6.0 to 8.5 mm and a thickness of rubber under the grooves as 0.5 to 2.5 mm (col 1, lines 52-60), which equates to a tread thickness of 6.5 to 11 mm. Given a K value of 0.4 and D of 6.0-8.5 mm, the K x D values are 2.4 to 3.4. Given a K value of 0.4 and Tt of 6.5-11 mm, the K x Tt values are 2.6 to 4.4. Both ranges falling within the claimed ranges of claim 16 and overlapping the KxD range of claim 23.
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tread with KxD and KxTt values as claimed since Kogure discloses tire treads with groove depths of 6.0 to 8.5 mm and under groove thickness of 0.5 to 2.5 mm (col 1, lines 52-60). One would have been motivated to provide thickness that is known to be suitable for tire treads wherein the thickness and groove depth provide for water drainage properties and wear life (col 4, lines 1-9). Kogure also discloses the tread thickness as providing cornering power (col 3, lines 1-10; col 3, lines 64-col 4, line 22).
Regarding claim 19, working example 29 of Terakawa discloses 0.75 phr of suberic acid and 100 phr of epoxidized natural rubber (Table 9) for a ratio of 0.0075. While the specific example is below the claimed range of 0.015 to 0.080, Terakawa's broader disclosure teaches that the epoxidized diene rubber content is not limited to 100 phr and discloses the proportion as generally 40% by weight or more (col 3, lines 19-34). Terakawa also discloses the amount of polycarboxylic acid to be blended is based on the kind and content of the epoxidized diene rubber used control tan delta properties (col 4, lines 44-61). For example, employing ENR at 40-50% with 0.75 parts suberic acid yields a ratio of 0.015 to 0.019. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the ratio of polycarboxylic acid to epoxidized diene rubber as 0.015 to 0.080 since Terakawa discloses adjusting the amount of polycarboxylic acid relative to the epoxidized rubber content and that the epoxidized rubber content is generally 40% or greater (col 3, lines 19-34; col 4, lines 44-61). One would have been motivated to adjust the ENR content based on the desired tan delta properties of the rubber.
Regarding claim 20, the epoxidized natural rubber is 100% of the rubber component (Table 9).
Response to Arguments
Applicant's arguments filed 8/13/2026 have been fully considered but they are not persuasive. Applicant argues that the references do not disclose the rubber composition comprising a silica amount and total filler amount in the range of 50 parts to 85 parts per 100 rubber. Applicant notes that while ranges for carbon black and silica content are provided in some of the references, the references do not include any examples with specific formulation amounts of the rubber composition that read on the claim.
Applicant's arguments are unpersuasive. While Yasuda does not provide an anticipatory example of carbon black and silica content, the ranges are considered obvious in view of Yasuda's disclosed content ranges that overlap the claimed range. Obviousness does not require that a reference provide an anticipatory working example of the silica and carbon black content. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05(I). Applicant has not provided evidence of criticality of the claimed range or unexpected results to rebut the prima facie case of obviousness. The disclosures of Terakawa, Mizuno, and Tadaki similarly disclose carbon black and silica contents that overlap the claimed ranges.
While Applicant points to working examples in the references that lie outside the range, Examiner notes that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (MPEP2123). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123).
In response to applicant's argument that the references do not contemplate improved abrasion resistance and crack growth resistance, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
