DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/12/25 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-13 are currently pending in the application, with claims 7-13 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (WO 2018/128291 A1, of record).
At the outset, it is noted that the WIPO publication is relied upon for date purposes. US Pat. No. 11,339,238 B2 (referred to herein as Lee ’238) is relied upon as its English equivalent and cited in the body of this rejection.
Regarding claim 1, Lee ‘238 teaches a modified conjugated diene-based polymer having a unimodal molecular weight distribution (PDI/MWD) of less than 1.7, and a Si content of 100 ppm or more based on weight, and a rubber composition including the same (Ab., ref. claims, col. 4-5, bridging paragraph).
Lee ‘238 teaches a genus of modifiers for the diene polymer, such as alkoxysilane-based modifiers, wherein if a substitution reaction occurs between an anionic active part positioned at one terminal of an active polymer and an alkoxy group of the alkoxysilane-based modifier, one terminal of the active polymer may be modified in a bonding state with a silyl group. Lee is open to using one or more modifiers (col. 5, line 10-col. 10, line 54, Examples).
Lee ‘238 teaches modifiers which include, for e.g., tri-(3-(trimethoxysilyl)propyl)amine and N,N-bis-(3-(trimethoxysilyl)propyl)-methyl-1-amine. These modifiers have greater than five reactive functional groups and are relied upon as a first modifier in the inventive examples of the instant disclosure.
Lee ‘238’s genus of modifiers also includes, for e.g., N,N-bis(3-(dimethoxy(methyl)silyl)propyl)-methyl-1-amine, 3,3′-(1,1,3,3-tetramethoxydisiloxane-1,3-diyl)bis(N,N-diethylpropan-1-amine) and N-(3,6,9,12-tetraoxahexadecyl)-N-(3-(triethoxysilyl)propyl)-3,6,9,12-tetraoxahexadecan-1-amine. These modifiers have less than five reactive functional groups and are relied upon as a second modifier in inventive examples of the instant disclosure.
It is noted that the modification of the diene polymer in the instant disclosure is accomplished by using two modifiers, one having greater than five reactive functional groups (a first modifier), and having less than 5 reactive functional groups (a second modifier). To that end, Lee 238’s genus of modifiers includes those having greater than five reactive functional groups, and those having less than 5 reactive functional groups, in addition to Examples in instant disclosure relying on Lee’s modifiers as a first or a second modifier of a combination.
Lee ‘238 is silent on a modified conjugated diene-based polymer having a cold flow as in the claimed invention.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05.
Given the teaching in Lee ‘238 on suitable modifiers, on the lower limit of the Si content and a unimodal molecular weight distribution of less than 1.7, it would have been obvious have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize any of the disclosed modifiers, including a combination thereof, with a reasonable expectation of success. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06.
Furthermore, as for the amount of the modifiers in a combination of 2 modifiers, Lee ‘238 teaches a reaction between an anionic active part at one terminal of an active polymer and an alkoxy group of the alkoxysilane-based modifier. Thus, one skilled in the art would have found it obvious to choose the modifier amount for the combination based on the number of reactive alkoxy functional groups present in each one, i.e., a lower amount of a modifier having greater than 5 alkoxy groups and a higher amount of a modifier having less than 5 alkoxy groups, so as to provide for an equivalent number of reactive groups from two. Additionally, a skilled artisan reasonably expect the same to provide for polymers having the claimed cold flow, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claims 2 and 4, Lee ‘238 teaches butadiene and isoprene as diene monomers (also disclosed in the present disclosure), and does not teach aromatic vinyl monomer units as being essential to the polymer structure, and rubber compositions thereof (col. 3, lines 54-67, col. 14, line 28-col. 16, line 47). It is noted that the Tg of homopolymers of butadiene and isoprene are about -58oC and -63oC, respectively. A skilled artisan would reasonably expect such homopolymers modified with modifying agents of overlapping scope to have the claimed Tg, absent evidence to the contrary.
Regarding claim 3, Lee ‘238 teaches Mn as ranging from 1,000 to 2,000,000 g/mole (col. 4, lines 33-59).
Regarding claim 5, Lee ‘238 teaches a method (col. 11, line 25-col. 11, line 36), that is of substantially overlapping scope as that of the present invention. Thus, a skilled artisan would reasonably expect Lee 238’s modified polymers prepared from a combination of modifying agents of overlapping scope to have the claimed vinyl bond content, absent evidence to the contrary.
Regarding claim 6, Lee teaches alkoxysilane-based modifiers containing nitrogen as being advantageous from standpoint of increasing physical properties (col. 5-6, bridging paragraph). Thus, a skilled artisan would have found it obvious to utilize a combination of such modifiers in appropriate amounts to provide for the desired level of nitrogen content, including those within the scope of the present invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (WO 2018/128291 A1, of record), in view of Lee et al. (US 2016/0046750 A1, referred to herein as Lee ‘750).
Regarding claim 1, the discussion on Lee ‘238 from paragraphs 5 and 6 above in incorporated herein by reference. As stated therein, Lee ‘238 teaches a modified conjugated diene-based polymer having a unimodal molecular weight distribution (PDI/MWD) of less than 1.7, and a Si content of 100 ppm or more based on weight, and a rubber composition including the same (Ab., ref. claims, col. 4-5, bridging paragraph).
Additionally, in the disclosed Examples 2-4, 6-10, Lee ‘238 relies on modifiers having less than 5 alkoxy silyl groups.
Lee is silent on a modified conjugated diene-based polymer having a cold flow as in the claimed invention.
As stated in paragraph 8 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
The secondary reference to Lee ‘750 teaches a modified conjugated diene polymer having superior compatibility with an inorganic filler, heat generation, tensile strength and abrasion resistance, low fuel consumption and excellent resistance on wet roads (Ab., [0015]). Disclosed modifiers are of the formula (2) shown below [0010]-[0011]:
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Additionally, disclosed Examples 1-4 rely on tris(trimethoxysilyl) amine and tris(triethoxysilyl) amine as the modifier, wherein compositions comprising the modified polymers have a great increase in 300% modulus, and tires comprising such compositions exhibit a great improvement of resistance on wet roads (Tables 1-3 [0106]-[0107]). It is noted that tris(trimethoxysilyl) amine and tris(triethoxysilyl) amine correspond to modifiers having greater than five reactive functional groups.
In view of the advantages disclosed in Lee ‘750, and given the teaching in Lee ‘238 on modifiers for diene polymer, the teaching on the lower limit of the Si content in the modified polymer and its unimodal molecular weight distribution of less than 1.7, it would have been obvious have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize any of the disclosed modifiers, in combination with Lee ‘750’s modifiers. For instance, a skilled artisan would have found it obvious to include Lee 750’s tris(trimethoxysilyl) amine in Examples of 2-4, 6-10 of Lee ‘238, so as to provide for modified polymers having advantages as taught in Lee ‘750 to provide for improvements in resistance on wet roads and 300% modulus.
Furthermore, Examples of 2-4, 6-10 in Lee ‘238 may be modified with tris(trimethoxysilyl) amine of Lee ‘750 in any amount depending on the degree of improvements desired. It is the examiner' s position that the amount of Lee 750’s modifier is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). A skilled artisan would reasonably expect a combination of N,N-bis(3-(dimethoxy(methyl)silyl)propyl)-methyl-1-amine, 3,3′-(1,1,3,3-tetramethoxydisiloxane-1,3-diyl)bis(N,N-diethylpropan-1-amine) or N-(3,6,9,12-tetraoxahexadecyl)-N-(3-(triethoxysilyl)propyl)-3,6,9,12-tetraoxahexadecan-1-amine (Lee ‘238 modifiers having fewer than 5 alkoxy groups), with tris(trimethoxysilyl) amine in overlapping amounts, i.e., as in the present invention, to be capable of providing for the claimed cold flow, absent evidence to the contrary.
Regarding claims 2-6, the discussion from paragraphs 9-13 above is incorporated herein by reference.
Response to arguments
Applicant’s arguments dated 12/12/25 and the Affidavit dated 12/24/25 have been duly considered.
Applicant argues that Lee does not disclose the relationship between the shape of the molecular weight distribution curve, molecular weight distribution, and cold flow and a skilled person in the art would not have considered applying the cold flow to the teachings of Lee, that Lee fails to recognize the ratio of two types of modifiers and the effect thereof, with Lee's Examples using one type of modifier, Lee does not suggest selecting two modifiers having greater than five and five or fewer reactive functional groups, in addition to adjusting the ratio between the two modifiers. Referring to the Example on Polymer A in the Declaration prepared with two modifiers at an equivalent ratio of 0.5:0.5 ratio, Applicant argues that Polymer (A) did not meet feature c) recited in claim 1.
As an initial matter, the data in the Declaration lacks clarity and is not being considered. Specifically, Polymer A in the table has a Mw (X103) of 456, a Mn (X103) of 330, and PDI of 1.52. However, the calculated PDI, i.e., ratio of Mw/Mn, is 1.38.
Additionally, a mixture solution of 20 wt.% of the two modifiers “in an equivalent ratio of 1:1” is used for preparing Polymer A (Declaration). Although this ration appears to suggest a mass ratio of the two modifiers, the Examples in the instant disclosure rely on two modifiers “in an equivalent ratio of 0.3:0.7”. It is not clear how a 1:1 ratio and a 0.3:0.7 ratio, both ratios can be “equivalent ratios”. Applicant is requested to provide clarification.
Lee ‘238 teaches a reaction between an anionic active part of the active polymer terminal and an alkoxy group of the alkoxysilane-based modifier for one terminal of the active polymer to be modified in a bonding state with a silyl group. Additionally, Lee is open to using more or more modifiers (col. 5, line 10-col. 10, line 54, Examples). In selecting a modifier from Lee 238’s genus, a skilled artisan would recognize the modifiers therein to be equivalent and useable as a combination. Based on the teaching on the reaction between an alkoxy group and an active polymer terminal, a skilled artisan would have found it obvious to utilize the modifiers in amounts such that each modifier can provide for the same number of reactive alkoxy group. Thus, given the teaching in Lee ‘238 on modifiers having greater than five and five or fewer reactive functional groups in the preferred embodiments (i.e., Examples), a skilled artisan would have found it obvious to utilize any combination of such equivalent modifiers, including combinations thereof in amounts consistent for each one to provide for the same number of reactive groups, and reasonably expect the same to be capable of providing for claimed cold flow absent evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. 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.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762