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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 20, 2026 has been entered.
Election/Restrictions
The present Application was previously required to be elected/restricted. Applicant elected without traverse of Group I, claims 1-11 and 15-20 in the reply filed on February 18, 2025.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, 6-11, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hisamura (WO 20200070961 A1, hereinafter referring to US 2021/0214484 as the English language equivalent).
Regarding claim 1, Hisamura teaches a conjugated diene-based polymer with a branching number of 8 or more (Abstract), and teaches example products with Mooney viscosities at 100°C which fall within and therefore anticipate the claimed range (c.f. Tables 1-2, wherein example materials are shown to have Mooney viscosities at 100°C of 79, 80, 82, 83, 84, 87, 90, and 92). Hisamura is silent with regard to the required “Mooney Stress Relaxation” value, but teaches example synthesis procedures which are identical to those of the instant specification, containing the same materials, reaction procedure, masses, product, and materials properties (c.f. p. 23, Example 1 of Hisamura which is identical to Example 4 of the instant Specification at [0336], p. 150; also compare the physical properties of these two materials which are substantially identical, Table 1-1 of instant Specification on p. 181 and Table 1 of Hisamura on p.27). The examples of Hisamura therefore comprise polymers which are substantially identical in composition, production method, and physical properties. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “Mooney Stress Relaxation” values will therefore necessarily be present in Hisamura as applied above.
Regarding claim 2, Hisamura teaches that the branching number may preferably be 12 or more ([0112]), which anticipates the claimed “branch number (Bn) of 12 or more.”
Regarding claim 4, Hisamura teaches a modification ratio of 60% by mass or more ([0118]).
Regarding claim 6, Hisamura teaches the same polymeric structure ([0130]).
Regarding claim 7, Hisamura teaches an identical chemical structure ([0146]-[0155]).
Regarding claims 8-11, Hisamura teaches an identical species falling within the same chemical structure families ([0156], [0160], and [0162]).
Regarding claims 16-18, Hisamura teaches a modification ratio of 60% by mass or more ([0118]).
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.
Claims 1-2, 4, 6-7, and 16-18 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Sekikawa (WO 2018/034194 A1, hereinafter referring to US Patent No. 11,414,503 B2 as the English language equivalent) in view of Nishioka (JP 2011089086 A, hereinafter referring to the ESPACENET Translation).
Regarding claim 1, Sekikawa teaches a modified conjugated diene-based polymer (Abstract), wherein:
The polymer has a Mooney viscosity measured at 100°C ranging from 30 to 150 (col. 6, lines 39-41), which overlaps the claimed range of “ 40 or more and 170 or less,” establishing a prima facie case of obviousness.
The polymer is branched and has a branch number which is preferably 8 or more (col. 9, lines 50-55), which is identical to the claimed range of “8 or more,” establishing a prima facie case of obviousness.
The polymer has a nitrogen atom (col. 50, claim 2).
Sekikawa is silent with regard to the claimed “Mooney stress relaxation measured at 100°C of 0.35 or less.” However, as described above, Sekikawa teaches a polymer which has the same branching number and Mooney Viscosity characteristics as claimed. Furthermore, the instant specification states that the Mooney Stress Relaxation value is obtained as a result of simultaneously controlling the Mooney Viscosity and Branching Number of the purportedly inventive polymer (see instant Specification at [0029] and [0030]). Therefore, Sekikawa teaches a modified conjugated diene-based polymer which meets all of the claimed compositional limitations required by claim 1. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “Mooney Stress Relaxation” value will therefore necessarily be present in Sekikawa as applied above.
Sekikawa differs from claim 1 because it is silent with regard to the incorporation of a vinyl-based monomer containing an alkoxysilyl group or a halosilyl group.
In the same field of endeavor, Nishioka teaches a modified copolymer produced by copolymerizing styrene and/or 1,3 butadiene with an alkoxysilylated styrene (abstract), and teaches that the resulting inventive material has well-balanced fuel consumption properties and wet grip performance in tire applications ([0006]). Alkoxysilylated styrene reads on the claimed “vinyl-based monomer containing an alkoxysilyl group” because alkoxysilylated styrene contains both a vinyl group and an alkoxysilyl group. Nishioka likewise teaches the post-polymerization modification of the copolymer with a modifying agent, analogous to the teachings of Sekikawa ([0013]), and Sekikawa teaches that the inventive material is useful in tires (col. 32, line 6), analogous to the teachings of Nishioka. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the vinylaromatic alkoxysilyl group-containing monomer taught by Nishioka within the modified conjugated diene-based copolymer of Sekikawa for the purpose of improving the fuel consumption and wet grip performance of tires formed from the inventive composition.
Regarding claim 2, Sekikawa teaches that the upper limit of the branching degree is 18 (col. 9, lines 50-55), which reads on the claimed range of “12 or more.”
Regarding claim 4, Sekikawa teaches a modification ratio ranging from 30% to 70% by mass (col. 50, claim 11), which reads on the claimed range of “60% by mass or more.”
Regarding claim 6, as described above, Sekikawa teaches that the branching number of the inventive polymer may range from preferably 8 or more (col. 9, lines 50-55). According to the instant Specification, the claimed “branching number” can be used to determine the number of arms of the required “star polymer structure,” by designating any two arms from the central structure of a crosslinking agent as the “main chain,” and designating all other arms as branches (c.f. instant Specification at [0053], and at [0054] and [0055], where a 4-branched star polymer is designated as having a branching number of two, and where an 8-branched star polymer is designated as having a branching number of 6). Sekikawa teaches that the branching number of its inventive polymer may range from 8 to up to 18 (col. 9, lines 50-55), and also teaches the incorporation of coupling agents with functionalities including 6-functional, 8-functional, or higher (col. 14, lines 12-18). Therefore, Sekikawa teaches modified conjugated diene-based crosslinked copolymers with the required structural limitation of a “star polymer structure having 3 or more branches.”
Furthermore, as described in the rejection of claim 5, above, Sekikawa as modified by Nishioka teaches a modified conjugated diene-based copolymer containing an alkoxysilylated styrene, which reads on the limitation of “comprising a portion derived from a vinyl-based monomer containing an alkoxysilyl group.”
Regarding claim 7, Nishioka teaches that the alkoxysilylated styrene-based monomer has the following structure ([0007]):
PNG
media_image1.png
289
158
media_image1.png
Greyscale
Formula 1 of Nishioka (JP 2011089086 A)
Nishioka teaches that, within this formula, R1, R2, and R3 are each independently C1-C10 hydrocarbon groups ([0009]).
The structure of Formula 1 taught by Nishioka therefore reads on the claimed “formula (1)” because it is identical to the claimed “formula (1)” when, within the claimed “formula (1),”
R1 is hydrogen
l is zero
X1 is undefined because l is zero
n is 1
m is 2
R2 and R3 are each independently C1-C10 alkyl or aryl groups
Regarding claims 16-18, Sekikawa teaches a modification ratio ranging from 30% to 70% by mass (col. 50, claim 11), which reads on the claimed ranges of “60% by mass or more.”
Claim 8 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Sekikawa (WO 2018/034194 A1, hereinafter referring to US Patent No. 11,414,503 B2 as the English language equivalent) in view of Nishioka (JP 2011089086 A, hereinafter referring to the ESPACENET Translation) and further in view of Lee (US 2005/0182191 A1).
Regarding claim 8, Sekikawa as modified by Nishioka teaches all of the limitations of claim 7 as described above. Sekikawa as modified differs from claim 9 because it is silent with regard to the incorporation of the required class of silylated styrene derivatives.
In the same field of endeavor, Lee teaches a multi-branched block terpolymer containing a vinyl aromatic monomer and a conjugated diene (Abstract), and further containing a condensing agent as the termonomer (Abstract). Lee teaches that the condensing agent may include p-silyl styrenes (p. 5, claim 1), and specifically teaches the use of p-trichlorosilylstyrene (p. 5, claim 6). Finally, Lee teaches that the inventive polymers have enhanced tensile strength and elongation compared to typical block copolymers ([0080]). Therefore, it would have been obvious to one of ordinary skill in the art to incorporate p-trichlorosilylstyrene into the formulation of Sekikawa as taught by Lee for the purpose of crafting a modified conjugated diene-based terpolymer with improved mechanical properties. P-trichlorosilylstryrene reads on the claimed “compound represented by the formula (1) wherein R1 is a hydrogen atom, and m is 0,” because p-trichlorosilylstyrene is identical to the claimed “formula (1)” when R1 is a hydrogen atom, m is zero, n is zero, l is 3, and X1 is a chlorine atom.
Claim 10 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Sekikawa (WO 2018/034194 A1, hereinafter referring to US Patent No. 11,414,503 B2 as the English language equivalent) in view of Nishioka (JP 2011089086 A, hereinafter referring to the ESPACENET Translation) and further in view of Nukaga (US Patent No. 8,222,337 B2).
Regarding claim 10, Sekikawa as modified by Nishioka teaches all of the limitations of claim 7 as described above. Sekikawa as modified differs from claim 10 because it is silent with regard to the incorporation of the required class of silylated styrene derivatives.
In the same field of endeavor, Nukaga teaches a rubber composition capable of improving fracture properties and wear resistance of a tire (abstract), wherein the rubber may comprise styrene (col. 8, lines 41-42), 1,3 butadiene (col. 8, line 38), and an alkoxysilane monomer including p-trimethoxysilyl styrene (col. 7, line 11). It is prima facie obvious to substitute equivalents known in the prior art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art to incorporate p-trimethoxysilyl styrene within the terpolymer of Sekikawa as taught by Nukaga because Nukaga recognizes p-trimethoxysilyl styrene as suitable for the formation of a tire. p-trimethoxysilyl styrene reads on the claimed “monomer unit based on a compound represented by the formula (1)” because it is identical to the claimed “formula (1)” when R1 is hydrogen, m is 0, l is 0, n is 3, and all R3 groups are methyl groups.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed January 20, 2026, with respect to the rejections of claims 1-11 and 15-20 under 35 USC 102(a)(1) in view of Hisamura have been fully considered but are not persuasive because the certified translation of the foreign priority application (which the Applicant indicates as having been submitted with the Applicant’s response filed January 20, 2026; see Applicant’s remarks p. 6, second-to-last paragraph) has not been received.
Applicant’s arguments with respect to the rejections of claims 1-4 and 15 under 35 USC 102(a)(1) in view of Sekikawa have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Sekikawa and further in view of Nishioka, as described above.
Applicant argues that the production method of the instant disclosure imparts structural limitations to the claimed polymer which would rebut the previously applied rejection which was based on the inherency of the claimed Mooney Stress Relaxation characteristic. Applicant points to Examples 1, 2, 11, 14, 17, 20, and 30b of the application, and more specifically points to a comparison between Example 4 and Comparative Example 2. Comparative Example 2 is indicated as failing to satisfy the said Stress Relaxation characteristic because the branching step contemplated within the instant application was not conducted. Applicant submits that Sekikawa fails to disclose the claimed coupling step after the polymerization and branching steps.
As described above and in the previous Office Actions, Sekikawa as modified teaches a polymer which contains the same branching number and viscosity as claimed, and furthermore contains the same branching agent as claimed (c.f. Nishioka [0007] and rejection of claim 7, above, and instant claim 7). Furthermore, while Comparative Example 2 does not include the branching step as asserted by the applicant, Comparative Example 2 also does not contain the branching agent in any form (see applicant’s remarks p. 8, Table 1, wherein Comparative Example 2 is shown to have no branching agent at all). Applicant’s arguments towards these examples are therefore tantamount to asserting that compositions falling within the claimed composition possess the claimed characteristics, while those which do not fall within the claimed composition do not. This argument is unpersuasive with regard to the inherency analysis applied previously and applied above, because the argument shows criticality of composition as opposed to criticality of the synthetic process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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, Robert Jones can be reached at 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762