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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 24, 2025 has been entered with the RCE submission of December 18, 2025.
Claim 1 is amended and claims 4 and 5 are cancelled. Claims 1, 2, 6, and 7 are pending.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyasaka et al. (US 2015/0133592)
Regarding claim 7, Miyasaka et al. teaches an elastomer composite comprising carbon black and a rubber latex such as natural rubber (¶19, 23). Miyasaka et al. additionally teaches a rubber composition (formulation) comprising the elastomer composite and optional agents such as a sulfur-containing vulcanizer, a vulcanization promoter, silica, a silane coupling agent, zinc oxide, stearic acid, a vulcanization promoting aid, a vulcanization retarder, an organic peroxide, an anti-aging agent, softening agents such as a wax and an oil, and a processing aid (¶46).
Miyasaka et al. does not teach that the elastomer composite is prepared by the process of instant claim 1. However, this limitation is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the rubber composition taught by Miyasaka et al. comprising natural rubber (from the natural rubber latex), carbon black, and another additive listed above is the same as the formulation as claimed, and the claim is unpatentable even though the prior art product was made by a different process.
Allowable Subject Matter
Claims 1, 2, and 6 are allowed.
The following is an examiner’s statement of reasons for allowance: Independent claim 1 is directed to a process for preparing an elastomer composite in an extruder, said process comprising (a) providing at least one dry solid particulate ingredient in powder or granular form, in a first mixing zone to obtain a first mix; (b) providing at least one elastomer in a second mixing zone to obtain a second mix; (c) contacting the first mix and the second mix to obtain a third mix; and (d) processing the third mix to obtain an elastomer composite, wherein the first mixing zone and the second mixing zone have a temperature in the range of 30° C – 50° C, the processing of the third mix is carried out at a temperature in the range of 120° C – 200° C and a mixing speed in the range of 450 - 1050 rpm, wherein the at least one dry solid particulate ingredient is selected from the group consisting of carbon black, silica, calcium carbonate, clay, and combinations thereof, wherein the at least one elastomer is selected from the group consisting of natural rubber latex, styrene butadiene rubber latex, butadiene rubber latex, acrylonitrile butadiene rubber latex, chloroprene rubber latex, neoprene rubber latex, and combinations thereof, and wherein the process is carried out in a single co-rotating twin screw extruder (CRTSE). The closest prior art of record, Wang et al. (US 2011/0021664), does not teach this process wherein the particulate component is added to the extruder dry, i.e., not as a slurry, and wherein the process is carried out in a single co-rotating twin screw extruder. None of the other prior art of record teaches this process or renders it obvious. Therefore, claims 1, 2, and 6 are allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see pages 4-9, filed November 24, 2025, with respect to the rejections of claims 1, 2, and 6 have been fully considered and are persuasive. The rejection of claims 1, 2, and 6 has been withdrawn.
However, these arguments are not found persuasive with respect to claim 7, which is directed to a formulation comprising a solid particulate ingredient, an elastomer, and an additional additive. This claim is not subject to the limitations of the process of claim 1. Therefore, it is rejected as set forth above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767