DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/9/2026 has been entered.
Claim(s) 3 were cancelled.
Claim(s) 1-2 and 17, are now pending in the application.
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 1-2 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US2018/0009919 to Dickstein in view of EP3351570 to Kang et al. (herein after Kang 70’).
Regarding Claim 1 and 17, Dickstein teaches a method for preparing a modified conjugated diene-based polymer, such as modified cis-1,4-Polybutadiene (Example 4) [0145]. In this example, Dickstein discloses polymerizing butadiene, i.e. a conjugated diene-based monomer 1,3-butadiene, in the presence of a catalyst composition in hexane, i.e. a hydrocarbon solvent. The catalyst composition comprises neodymium versatate (i.e., neodymium compound), methylaluminoxane (i.e., first alkylating agent), diisobutylaluminum hydride (i.e., second alkylating agent), and diethylaluminum chloride (i.e., halide). This mixture is further reacted/modified with boron trifluoride dibutyl etherate. Dickstein’s method is performed with 2.16mL of a 0.093 M of a neodymium compound and 3.89mL of a 1.09 M second alkylating agent, which can be calculated to yield a roughly 1:21.1 molar ratio of the neodymium compound to the second alkylating agent. Furthermore, this polymerization is performed at 50°C [0145].
Dickstein does not expressly teach standing the mixture at -30°C to -20°C for 24 to 36 hours to prepare the catalyst composition in the preferred example.
However, Dickstein teach in the disclosure that the catalyst composition can be prepared at a temperature of -20°C [0075] (i.e., -20°C to -30°C to obtain mixture) and may be aged at -20°C [0077] (i.e., -20°C to -30°C) for 24 hours to 12 days [0078] (i.e., standing the mixture for 24 to 36 hours).
Though the prior art temperature range and standing time is not identical to the claimed range (-20°C to -30°C) and (24-36 hours), it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Dickstein does not particularly teach the neodymium compound to the second alkylating agent is 1:20 in the preferred example.
However, Dickstein teaches in the disclosure that the ratio of the organoaluminum compound to the lanthanide containing compound can be varied from about 1:1 to about 150:1 [0063] reading on the claimed ratio of 20:1.
Though the prior art molar ratio range is not identical to the claimed range, it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Dickstein does not particularly teach the polymerization is performed at a temperature of 40°C in Example 4.
However, in the general disclosure, Dickstein does teach polymerization may occur at any temperature in the range 20°C to 100°C [0087]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to carry out polymerization in Example 4 of Dickstein at a temperature of 40°C, as such temperatures fall within the range expressly disclosed by the reference. Moreover, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also In Re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”).
Dickstein does not particularly teach the modifier to include ethyl 1-(trimethylsilyl)piperidine-4-carboxylate.
However, Kang 70’ also teaches a modifier, modified and conjugated diene-based polymer [title] wherein the modifier ethyl 1-(trimethylsilyl) piperidine-4-carboxylate is synthesized [0104] and used in the modification reaction [0107]. Kang and Dickstein are analogous art as they are both from the same field of endeavor, namely modified dienes.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to substitute Dickstein’s modifier with Kang 70’ modifier thereby arriving at the claimed invention.
The motivation would have been that Kang 70’ modifier has excellent affinity with filler and is capable of improving mixing properties of a conjugated diene-based polymer that has been modified with Kang’s modifier [0014].
Dickstein additionally does not expressly characterize polymerizing prepares an active polymer. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01). As the claimed polymer and the polymer of Dickstein are produced by substantially identical processes, the polymer of Dickstein must also necessarily be an active polymer.
Regarding Claim 2, Dickstein and Kang 70’ teaches the polymerization method of claim 1, wherein the polymerization is performed for 30 minutes [0145].
Response to Arguments
Applicant's arguments filed 1/7/2026 have been fully considered but they are not persuasive.
Applicant states one of ordinary skill in the art would not have had a reason to substitute Dickstein’s modifier (which is a Lewis acid) with Kangs modifier (which is a Lewis base) since the two alleged modifiers have different fundamental characteristics. Applicant states this substitution appears to rely on impermissible hindsight, states there is no motivation to make this substitution, and states the alleged modification would have produced a polymer that is unsatisfactory for Dickstein’s purposes.
In response, it is noted the reason to substitute and the motivation to make this substitution is set forth in the rejection of claim 1 wherein Kang 70’ modifier has excellent affinity with filler and is capable of improving mixing properties of a conjugated diene-based polymer that has been modified with Kang’s modifier [0014].
It is noted that Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). As such, the rejection is not of improper highlight reasoning as it is based on motivation found in Kang 70’, rather than instant specification.
Regarding the arguments suggesting it would not be obvious to add a Lewis base, as Dickstein’s modifier is a Lewis acid, it is noted that Dickstein also teaches a lewis acid may be a lewis acid-Lewis base complex [0108] and further mentions Lewis bases in his composition multiple times [0014], [0015], [0029], [0099], and claim 16.
Applicant states that the one of ordinary skill in the art would not have looked to Kang ’96s aging time to be suitable for Disckstein’s catalyst.
In response, attention is drawn to the updated rejection of claim 1 wherein Dickstein teaches in the disclosure that the catalyst composition can be prepared at a temperature of -20°C [0075] (i.e., -20°C to -30°C to obtain mixture) and may be aged at -20°C [0077] (i.e., -20°C to -30°C) for 24 hours to 12 days [0078] (i.e., standing the mixture for 24 to 36 hours).
For these reasons, Applicant's arguments are not persuasive.
Conclusion
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764