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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/06/2026 has been entered.
Election/Restriction
Claims 8-12 and 16-19 remains withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 6, 7, 14 and 15 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as anticipated by Tanaka et al. (US 2012/0270997 or US 2013/0085228).
Tanaka et al. [('997 ¶ 27 and the examples) and ('228 ¶ 16 and the examples)] teach modified conjugated diene rubbers from styrene and butadiene, modified with heterocyclic group-containing silane-based modifiers, such as trimethylsilyl-1-piperazino)propyltriethoxysilane or 3-(4-Methyl-1-piperazino)propyitriethoxysilane; and then a 3-aminopropyltriethoxysilane, including those corresponding to the compound of chemical formula 1 of the present claim 4. [See (US ‘2012 Ex 5) and (US ‘2013 Ex 6 and 70)], wherein the Mooney viscosity of the modified conjugated diene rubbers (ML 1 +4, 100° C.) is from 30 to 150, and more preferably up to 120 [('997 ¶ 100) and ('228 ¶ 107)].
While Tanaka et al. doesn’t recite properties such as the Mooney large relaxation area of the modified conjugated diene-based polymer, as Tanaka et al. teaches the same modified conjugated diene-based polymer as in the present claims, including with trimethylsilyl-1-piperazino)propyltriethoxysilane or 3-(4-Methyl-1-piperazino)propyitriethoxysilane, heterocyclic group-containing silane-based modifiers; and then 3-aminopropyltriethoxysilane, corresponding to the compound of chemical formula 1 of the present claim 4, any such properties would be inherently taught in the modified conjugated diene-based polymer.
Thus, the requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al., as individually applied the claims above, and further in view of Kim et al. (WO 2015056898) or So Keun Soo et al. (KP 20170077517).
While Tanaka et al. does not recite the specific examples of the heterocyclic group-containing silane-based modifier recited in the present claim 5, each of Kim et al. and So Keun Soo et al. teach such heterocyclic group-containing silane-based modifiers for conjugated diene-based polymers.
In claims 11 and 21 and formula 8, Kim et al. teach the conjugated diene-based polymer modifier represented by the present chemical formula 2.
In claims 1 and 13 and formula 1, So Keun Soo et al. teach the conjugated diene-based polymer modifier represented by the present chemical formula 2.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to use a modifier consistent with the present chemical formula 2, as the conjugated diene-based polymer modifier in Tanaka et al., in order to obtain the modifications taught by Kim et al. or So Keun Soo et al., motivated by a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 1/6/2026 have been fully considered but they are not persuasive.
Regarding the Mooney viscosity taught in Tanaka et al. ('997 and '228), each reference in fact teaches the Mooney viscosity of the modified conjugated diene-based polymer to be from 30 to 150, and more preferably up to 120 (See above). 90 to 140 is fully encompassed in the 30 to 150 taught by Tanaka'997 and Tanaka'228.
Regarding the argument that in Ex. 5 of Tanaka'997, the Mooney viscosity is disclosed as being "64," while in Ex. 6-7 of Tanaka'228, the Mooney viscosity is disclosed as being "75" and "73," it is well settled that anticipatory teachings are not limited to any particular embodiment/example. In re Boe, 148 USPQ 507 (CCPA 1966). Disclosed examples and preferred embodiments (even if the embodiments tested by appellant were preferred) do not constitute a teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). The claimed modified conjugated diene-based polymer is still taught by in Tanaka et al. ('997 and '228). This is clear, even if it is not exemplified.
Even so, it is noted that Examples 11-13 in Table 2 of Tanaka et al. '228 are exemplified with Mooney viscosities from 92-101.
Regarding the argument against the 103 rejection of claim 5 that neither Tanaka'997 or Tanaka'228, expressly or inherently, teaches a modified Mooney large relaxation area (MLRA) and a Mooney viscosity as claimed and that the secondary references, Kim and Soo, do not cure the deficiencies, it is noted that the claimed Mooney viscosities are taught by the primary reference as shown above.
Regarding the Mooney large relaxation area, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However; the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. (Mooney large relaxation area) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties. " In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990}. A chemical composition and its properties are inseparable. Therefore, as the prior art teaches the identical chemical structure with a conjugated diene-based polymer modified with the modifier of the present chemical formula 2, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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/KELECHI C EGWIM/ Primary Examiner, Art Unit 1762 KCE