DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per response dated 7/6/26, claims 1-13 are currently pending in the application, with claims 7-13 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The disclosure is objected to because of the following:
Claim 1 should be amended to recite cold flow is 0.3 or more and 1.00 or less.
Appropriate correction is required.
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), in view of Lee et al. (US 2016/0046750 A1, referred to herein as Lee '750, of record).
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.
Additionally, in the disclosed Examples 2-4, 6-10, Lee ‘238 relies on modifiers having less than 5 alkoxy silyl groups.
Lee ‘238 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 2-4 rely on tris(trimethoxysilyl) (C1-C3alkyl) amine and tris(triethoxysilyl) (C1-C3alkyl) 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 the modifiers referred to in Examples 2-4 include an obvious omission of an R3 group (i.e., C1-C3alkyl group) linked to Si atom, evident from the disclosed generic Formula 2 presented above.
In view of the advantages disclosed in Lee ‘750, and given the teaching in Lee ‘238 on suitable modifiers for the 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) (C1-C3alkyl) 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, i.e., 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) (C1-C3alkyl) 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) (C1-C3alkyl) 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
Upon further consideration of the Lee ]238 reference, and Applicant’s argument and the Affidavit dated 7/6/26, the rejections of record based on Lee ‘238 alone are withdrawn. However, the combination of Lee 238 and Lee 750 would be applicable for reasons presented in the rejections of record (dt. 3/6/26) and in the rejections presented herein above.
As an initial matter, it is noted that the modifiers in Examples 2-4 of Lee ‘750 (i.e. tris(trimethoxysilyl) amine and tris(triethoxysilyl) amine) include an obvious omission of an R3 group (i.e., C1-C3alkyl group) linked to Si atom, evident from the disclosed generic Formula 2 presented in the rejections. Although Examiner inadvertently missed pointing out to this omission in the prior office action, the rejections herein above are rewritten to correct for this obvious and inadvertent omission, without introducing any new factual basis in the rejections above.
Applicant’s arguments dated 7/6/26 have been duly considered. The arguments therein focus on the rejections based on Lee ‘238 alone, which are now deemed moot in view of the withdrawal of the rejections. The data in the Supplemental Declaration has been considered and demonstrates that Polymer A (based on N-(3-(1H-imidazol-l-yl)propyl)-3-(triethoxysilyl)-N-(3-(triethoxysilyl)propyl)propan-l-amine and N-(3,6,9,12-tetraoxahexadecyl)-N-(3- (triethoxysilyl)propyl)-3,6,9,12-tetraoxahexadecan-l-amine as modifiers) in a 1:1 eq. ratio as modifiers), despite having wt. average a molecular weight (Mw), a number-average molecular weight (Mn), a polydispersity index (PDI), and a silicon content within the ranges broadly disclosed by Lee ‘238 does not exhibit a cold flow value within the claimed range.
However, Examiner has relied in the combination of Lee ‘238 and ‘Lee 750 in the rejections, wherein the latter reference teaches that modifying a rubber with tris(trimethoxysilyl) (C1-C3 alkyl)amine or tris(triethoxysilyl) (C1-C3 alkyl)amine (having 6 functional groups) as being advantageous for improvements in resistance on wet roads and 300% modulus. Thus, noting that Lee ‘238 does not teach away from using a combination of modifiers, a skilled artisan would have found it obvious to modify Examples 2-4, 6-10 in Lee ‘238 by further including a tris(trimethoxysilyl)(C1-C3 alkyl)amine as a modifier in appropriately effective amounts to provide for the desired level of improvements in resistance on wet roads and 300% modulus, including in amounts capable of providing for the claimed cold flow, absent evidence to the contrary.
Regarding arguments concerning hindsight in selecting Applicant’s particular combination, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). To that end, Examiner has only used knowledge which was within the level of ordinary skill at the time the claimed invention was made has been used.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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
Prosecution Insights