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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 8 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites “the composition having a physical property of the following Formula (2)” in line 12. However, immediately following the limitation is a chemical structure with a “(1)” rather than a mathematical formula directed to a physical property. Presumably, the “(1)” appears to be intended as some type of identifier, but there is no label providing an explanation. Paragraph 8 of the original written description refers to this as “Chemical Formula 1”.
It is also noted that there appears to be a limitation at the line of the claim defining a mathematical range for a value derived from the product of storage modulus and elongation at break immediately followed with a “(2)”. Paragraph 33 of the original written description refers to this as “Formula 2”. Similar as before, the “(2)” appears to be intended as some type of identifier, but there is no label providing an explanation. It is further noted that this mathematical range, presumably Formula 2, itself is indefinite as there are no units recited whereas a product of E’ x EB would not readily be unitless. The written description does not appear to clarify or define the units for this mathematical range and actually further adds to the indefiniteness as “elongation at break” is conventionally recited as a percentage (ie. elongation at break = (change in length / original length) x 100%) whereas paragraph 34 recites a unit of MPa which would be “strain at break” not “elongation at break”.
Claim Rejections - 35 USC § 103
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 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 7, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ryo (US20200207955, herein Ryo), in the view of Yasuo (WO2013115403, herein Yasuo, a machine translation is being used for citation purpose).
Regarding claims 7, 8, Ryo teaches a method of “Preparation of Rubber Composition” [0179] comprising: mixes “N′-(1,3-dimethylbutylidene)- 3-Hydroxy-2-naphthohydrazide; 1.5 parts by mass” [P14; Table 3], lies in the claimed range; matches the claimed Formula (1), evidenced by the CAS Registry Number: 214417-91-1 [Scifinder], structure see below, wherein the R1 represented an alkyl group having 1 carbon; R2 represented an alkyl group having 4 carbons, both lie in the claimed range.
PNG
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610
900
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Ryo teaches “zinc oxide, 3.5 parts by mass” [P14; Table 3], lies in the claimed range;
“The filler contains a carbon black; nitrogen adsorption specific surface area (N2SA) of 40 to 95 m2/g” [0015] overlaps the claimed range, in the concentration range of “40 to 60 parts by mass per 100 parts by mass of the rubber component” [0108] lies in the claimed range.
Ryo teaches “The rubber composition for tire tread of the present invention contains a rubber component containing 60 to 80% by mass of a natural rubber and 20 to 40% by mass of a modified conjugated dienic polymer” [0021] overlaps the claimed range, as of “when the entire diene rubber is 100 parts by mass, the blended amount of NR and/or IR is preferably 80 parts by mass or more.” [Instant app. P2; 0016].
Ryo is silent on the maximum temperature during the mixture in step (a) being from 140 to 170° C; and the specific steps of mixing. However, Yasuo teaches the method of rubber composition formation via: step 1A, rubber component and filler are kneaded [P4; Para. 3], wherein, the filler is carbon black [P22; Para. 2], with addition of 3-hydroxy-N'-(1,3-dimethylbutylidene)-2-naphthoic acid hydrazide [P19; Para. 1] in step 1A [P17; Para. 2], at 110 to 180°C [P4; Para. 3] overlaps the claimed range of the temperature of the step (a). Yasuo further explicitly teaches In Step 1A, it is preferable not to add zinc oxide [P4; Para. 3], and added zinc oxide in step 2A [P4; Para. 3], which collectively match the step (a) and step (b). Ryo and Yasuo are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of hydrazide compound, carbon black, zinc oxide-based rubber composition formation toward tire application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ryo to add the teachings of Yasuo and provide wherein said the method of rubber composition formation via: step 1A, rubber component and filler are kneaded [P4; Para. 3], wherein, the filler is carbon black [P22; Para. 2], with addition of 3-hydroxy-N'-(1,3-dimethylbutylidene)-2-naphthoic acid hydrazide [P19; Para. 1] in step 1A [P17; Para. 2], at 110 to 180°C [P4; Para. 3]; In Step 1A, it is preferable not to add zinc oxide [P4; Para. 3], and added zinc oxide in step 2A [P4; Para. 3] in composition formation. Doing so would lead to the improvement of the viscoelastic properties of the obtained vulcanized rubber [P4; Para. 2] as taught by Yasuo.
In the case 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 USPQ 90 (CCPA 1976). MPEP 2144.05
Regard to the storage modulus, elongation at break, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Ryo teaches all of the claimed ingredients, in the claimed amounts, and Yasuo further teaches the composition as being made by a substantially similar process including the specific mixing process as set forth above and the specific temperature of 110 to 180°C [P4; Para. 3]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. storage modulus, elongation at break would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not 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, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Response to Arguments
Applicant’s arguments, filed 2/6/2026, with respect to the rejection(s) of claim(s) 7 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ryo (US20200207955, herein Ryo) and Yasuo (WO2013115403, herein Yasuo, a machine translation is being used for citation purpose), as applied in the new rejection set forth above.
In this case, Ryo teaches all of the claimed ingredients, in the claimed amounts, and the newly added reference_Yasuo explicitly teaches the composition as being made by a substantially similar process including the specific mixing process/order as set forth in the rejection above and the specific temperature of 110 to 180°C [P4; Para. 3], which can collectively lead to the claimed properties according to the instant application specification.
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 extension fee 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.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shinya (US20150018449, herein Shinya) teaches the rubber master batch producing method, at the time of blending and kneading the individual components, radicals originating from the peptizing agent promote the generation of polymer radicals in the diene rubber [0017], the master batch formation step indicates the zinc oxide is been added in different step. Shiya further teaches the polymer radicals react rapidly with the dihydrazide compound. When the carbon black is present in this reaction, bonds between the polymer in the diene rubber and the carbon black are efficiently produced through the dihydrazide compound as a medium, so that the carbon black becomes very good in dispersibility [0017], which specify the mixing of the carbon black, diene rubber and dihydrazide as mater batch that lead to the good dispersion of carbon black.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767