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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 8/12/2025.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 8/12/2025. In particular, claim 1 has been amended to limit the total content of C1 and C2, and claim 21 is new. Thus, the following action is properly made final.
Claim Objection Warning
Applicant is advised that should claims 3, 4, 5, 14, and 17 be found allowable, claims 12, 13, 16, 15, and 19, respectively, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 103
Claims 1 and 3-21 are rejected under 35 U.S.C. 103(a) as being unpatentable over Schnell (US 10,364,335) in view of Hattori (US 5,017,660).
With respect to claims 1 and 21, Schnell discloses a highly saturated (hydrogenated) diene elastomer for rubber compositions, wherein the diene elastomer includes (A)
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30
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(reads on half of claimed formula (4)), (B)
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where R1, R2, R3, and R4 can be hydrogen (reads on claimed formula (3)), (C)
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where R1, R2, R3, and R4 can be hydrogen (reads on claimed formula (1)), and (D)
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where R1, R2, R3, and R4 can be hydrogen (reads on claimed formula (2)) (abstract). An exemplified elastomer Q1 in Table 1 includes 14 mol % styrene, 0 mol % vinyl butadiene, 3 mol % hydrogenated vinyl, 29 mol % 1,4-bond, and 54 mol % ethylene which is 27 mol % hydrogenated 1,4-butadiene. The amounts in mass % of C1, C2, C3, and C4 are calculated from total mole amount of 59 mol % (excluding styrene, also moles = mass because the same butadiene monomer with same molecular weight) to be 0 mass %, 5 mass %, 49 mass %, and 45 mass %, respectively. Each of these are within the claimed ranges of C1, C2, C3, and C4.
C1+C2 for exemplified elastomer Q1 is 5 mass % which does not overlap with claimed amount of 8.1-20 mass % (or 15.3-20 mass % for claim 21).
While Schnell’s exemplified elastomer Q1 does not include at least 8.1 mass % of C1+C2, Schnell teaches other amounts. Specifically, that its amount of C (o mol %) and D (p mol %) (corresponds to claimed C1 and C2) is 0-100 but also states that o+p≤15 mol % based on total of all monomers including styrene. The elastomer also includes at least 50 mol % of ethylene (m mol %), however, claimed monomer is butylene which is therefore only up to 25 mol % (corresponds to claimed C4). Also, the amount of corresponding C3 monomer is at least 10 mol % (see Schnell’s monomer B with at least n mol % of 10). Therefore, the total amount of C1+C2 can be theoretically up to 30 mol % (25 mol % C4, 15 mol % C1+C2, and 10 mol % C3). Case law holds that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Therefore, it would have been obvious to one of ordinary skill in the art to suitably adjust the amount of C1 and C2 to overlap with claimed C1+C2 amounts of at least 8.1 mass % or 15.3 mass %--absent unexpected or surprising results.
Schnell teaches that the elastomer can be used with randomizing agents which are within the scope of those skilled in the art (col. 5, lines 26-33) but fails to disclose the amount of randomization (i.e., indirectly related to the amount of chained aromatic vinyl).
Hattori discloses a partially hydrogenated butadiene polymer comprising 0-40 wt % styrene (abstract). Hattori discloses that the styrene (aromatic vinyl monomer) is bound “at random” (col. 3, lines 49-50). Also, Hattori’s exemplified copolymers are prepared in tetrahydrofuran (col. 13, “*3 and *4” footnote) which is the same randomizer used by Applicant.
Given that Schnell teaches using randomizing agents and further given that Hattori’s partially hydrogenated butadiene-styrene copolymer is bound “at random” and uses a randomizer, it would have been obvious to one of ordinary skill in the art to prepare the Schnell’s hydrogenated diene elastomer with the amount of chained aromatic vinyl of 8 or more limits to 5 mass % or less.
With respect to claims 3 and 12, from Schnell’s Q1, the converted amount of styrene mol % to mass % is calculated from molecular weight for styrene of 104 g/mol and for butadiene of 54 g/mol. Exemplified elastomer Q1 includes 14 mol % styrene which converts to 24 mass %.
With respect to claims 4 and 13-15, Schnell fails to disclose the cis or trans content of the vinyl butadiene portion, however, it teaches that an organolithium compound is preferably added to the polymerization mixture (col. 5, lines 54-56).
Hattori discloses that an organic lithium compound is used to polymerize polybutadiene to provide low cis bonds (col. 1, lines 62-64). The styrene-butadiene copolymer of Example 5 is prepared with organic lithium catalysts (col. 12, lines 24-27).
Given that organic lithium compounds provide for low cis bonds as taught by Hattori, it would have been obvious to one of ordinary skill in the art to obtain relatively higher amounts of trans bonds, including those within the claimed range of 2-30 mass % more, in the Schnell’s copolymer.
With respect to claims 5 and 16-20, exemplified elastomer Q1 of Schell includes C2 of 5 mass % and C4 of 45 mass %, which provides for C2+C4 of 50 mass %.
With respect to claim 6, Schnell teaches that the number-average molecular weight is 90,000-1,500,000 g/mol with Mw/Mn of 1-3—which provides for weight-average molecular wight of 90,000-4,500,000.
With respect to claim 7, Schnell teaches that the elastomer can be used with modifying agents which are within the scope of those skilled in the art (col. 5, lines 26-33) but fails to modifying with a nitrogen-containing compound.
Hattori discloses that amine compounds to control the vinyl linkage content (col. 4, lines 40-43) and to control molecular weight (col. 4, lines 65-68).
Given that Schnell is open to the use of modifying agents that are well known to those in the art and further given that Hattori teaches that commonly known modifying agents include amines, it would have been obvious to one of ordinary skill in the art to modify the hydrogenated butadiene copolymers of Schnell with nitrogen-containing compounds.
With respect to claim 8, Schnell teaches that the elastomer can be used with modifying agents which are within the scope of those skilled in the art (col. 5, lines 26-33) but fails to disclose that the copolymer includes 30-200 ppm silicon.
Hattori discloses adding silicon compound such as silicon tetrachloride in order to form branched or radial copolymers (col. 4, lines 47-54). Hattori exemplifies a polybutadiene rubber prepared by adding 0.06 parts by weight of silicon tetrachloride to 100 parts by weight of polybutadiene, which provides for 99 ppm of silicon.
While Hattori fails to disclose the amount of silicon in a styrene-butadiene copolymer, Hattori discloses a suitable amount of silicon tetrachloride used to prepare polybutadiene
Therefore, it would have been obvious to one of ordinary skill in the art to utilize about the same amount in the styrene-copolymers taught by Hattori as a suitable amount.
With respect to claim 9, from exemplified elastomer Q1 of Schnell, (C2 + C4) / (C1 + C2 + C3 + C4) = 0.50.
With respect to claims 10 and 11, in Table 4 of Schnell (col. 15, lines 44-65), Example M3’ comprises 100 parts by mass elastomer Q1, 10 parts by mass oil (rubber softener), and 90 parts by mass silica (filler).
Response to Arguments
Applicant's arguments filed 8/12/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that Schnell does not disclose or suggest an amount of C1+C2 of 8.1-20 mass % (or 15.3-20 mass % for new claim 21).
While Schnell’s exemplified elastomer Q1 does not include at least 8.1 mass % of C1+C2, Schnell teaches other amounts. Specifically, that its amount of C (o mol %) and D (p mol %) (corresponds to claimed C1 and C2) is 0-100 but also states that o+p≤15 mol % based on total of all monomers including styrene. The elastomer also includes at least 50 mol % of ethylene (m mol %), however, claimed monomer is butylene which is therefore only up to 25 mol % (corresponds to claimed C4). Also, the amount of corresponding C3 monomer is at least 10 mol % (see Schnell’s monomer B with at least n mol % of 10). Therefore, the total amount of C1+C2 can be theoretically up to 30 mol % (25 mol % C4, 15 mol % C1+C2, and 10 mol % C3). Case law holds that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Therefore, it would have been obvious to one of ordinary skill in the art to suitably adjust the amount of C1 and C2 to overlap with claimed C1+C2 amounts of at least 8.1 mass % or 15.3 mass %.
Applicant also argues that the endpoint for the amount of C1+C2 of 15.3 mass % provides for unexpected processability improvements not taught or suggest by Schnell.
The data has been fully considered, however, the data is not found persuasive. Specifically Examples 1, 2, and 6 are compared, but they are not directly comparable. For instance, Examples 1 and 2 have 20 mass % styrene, but Example 6 has 40 mass %. Therefore, it is not clear whether the difference in processability is due to the amount of C1+C2 or due to the styrene content. Also, when comparing Examples 1 and 2, the differences in C3 and C4 are significantly greater than between C1+C2 Therefore, criticality for C1+C2 is clouded by the differences in C3 and C4, and a clear nexus between C1+C2 and processability cannot be observed.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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