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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 3, 4, 5, 6, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Beaulieu (WO2018119168, herein Beaulieu).
Regarding claims 1, 4, Beaulieu teaches “functionalized copolymer produced by copolymerization of at least one conjugated diolefin monomer and at least one vinyl monomer, the functionalized copolymer comprising at least one functional group having silica reactive moieties, wherein the functionalized copolymer has a degree of hydrogenation of 75% to 98 mol% as measured using proton nuclear magnetic resonance spectroscopy (1H NMR).” [00117], which is specified as “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane] functionalized styrene-butadiene copolymer (SBR)” [0085], which reads on the a polymer comprising: a functional polymer produced by polymerization of at least one conjugated diolefin monomer and optionally one or more aromatic vinyl monomers, the functional polymer comprising at least one functional group having silica reactive moieties, with the degree of hydrogenation lies in the claimed range. Furthermore, “the functionalized copolymer has a vinyl content from 10 to 60%” [00121] overlaps the claimed range. 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). See MPEP § 2144.05. At the time of filing, it would have been obvious for a person having ordinary skill in the art to have selected the vinyl content and degree of hydrogenation ranges as taught by Beaulieu, since Beaulieu suggests that these features promote adequate mechanical strengths for a rubber used for tires.
Beaulieu also teaches: “Example 5, 6, Mn=224,413 and 250,993” [P8; Table 3] which lie in the claimed range.
Beaulieu teaches copolymer manufactured from styrene and 1,3-butadiene monomers. [0017], with about 10 to about 50 % by weight of vinyl aromatic monomers; the vinyl aromatic monomer is styrene [0028], which overlaps the claimed range.
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). See MPEP § 2144.05.
Regard to the Tg of the functional polymer, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Beaulieu teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. 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. the Tg of the functional polymer would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot 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.
Regarding claims 2, 5, Beaulieu teaches “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane]” [0085], structure see below, as evidenced by CAS Registry Number: 3388-04-3 [Scifinder], matches the claimed silica reactive moieties structural spec. including: alkoxysilyl, epoxy groups.
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Regarding claims 3, 6, Beaulieu teaches the functional polymer set forth in claim 1, Beaulieu teaches “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane]” [0085], structure see below, as evidenced by CAS Registry Number: 3388-04-3 [Scifinder], matches the claimed formula (II) wherein A1 represents a monovalent group having at least one functional group selected from epoxy; Rc represents a divalent hydrocarbon group having 2 carbon atoms; b=0, Re represents a monovalent aliphatic hydrocarbon group having 1 carbon atom;
Beaulieu teaches “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane]” [0081] copolymerized with “styrene, 1,3-butadiene” [0085].
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Claims 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Beaulieu (WO2018119168, herein Beaulieu).
Regarding claims 7, 12, Beaulieu teaches a) “functionalized copolymer produced by copolymerization of at least one conjugated diolefin monomer and at least one vinyl monomer, the functionalized copolymer comprising at least one functional group having silica reactive moieties, wherein the functionalized copolymer has a degree of hydrogenation of 75% to 98 mol% as measured using proton nuclear magnetic resonance spectroscopy (1H NMR).” [00117] as the claimed elastomer component, which is specified as “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane] functionalized styrene-butadiene copolymer (SBR)” [0085], which reads on the a polymer comprising: a functional polymer produced by polymerization of at least one conjugated diolefin monomer and optionally one or more aromatic vinyl monomers, the functional polymer comprising at least one functional group having silica reactive moieties, with the degree of hydrogenation lies in the claimed range. Beaulieu further teaches the range “the functionalized copolymer has a vinyl content from 10 to 60%” [00121] overlaps the claimed range. At the time of filing, it would have been obvious for a person having ordinary skill in the art to have selected the vinyl content and degree of hydrogenation ranges as taught by Beaulieu, since Beaulieu suggests that these features promote adequate mechanical strengths for a rubber used for tires. 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). See MPEP § 2144.05.
Beaulieu also teaches: “Example 5, 6, Mn=224,413 and 250,993” [P8; Table 3] lie in the claimed range.
Beaulieu teaches the range of the elastomer component as “the functional copolymer may include from about 20 to about 100 parts of the 100 total” [0076] overlaps the claimed range.
b) “silica reinforcing filler” [0071]
c) “cure package” [0098]
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). See MPEP § 2144.05. At the time of filing, it would have been obvious for a person having ordinary skill in the art to have selected the functional copolymer amount as taught by Beaulieu, since Beaulieu suggests that these features promote adequate mechanical strengths for a rubber used for tires.
Beaulieu teaches copolymer manufactured from styrene and 1,3-butadiene monomers. [0017], with about 10 to about 50 % by weight of vinyl aromatic monomers; the vinyl aromatic monomer is styrene [0028], which overlaps the claimed range.
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). See MPEP § 2144.05.
Regard to the Tg of the functional polymer, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Beaulieu teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. 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. the Tg of the functional polymer would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot 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.
Regarding claims 8, 13, Beaulieu teaches “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane]” [0085], structure see below, as evidenced by CAS Registry Number: 3388-04-3 [Scifinder], matches the claimed formula (II)
wherein A1 represents a monovalent group having at least one functional group selected from epoxy; Rc represents a divalent hydrocarbon group having 2 carbon atoms; b=0, Re represents a monovalent aliphatic hydrocarbon group having 1 carbon atom;
Beaulieu teaches “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane]” [0085] copolymerized with “styrene, 1,3-butadiene” [0085].
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Regarding claim 9, Beaulieu teaches “wherein the functionalized copolymer has a degree of hydrogenation of 75% to 98 mol %” [0104] overlaps the claimed range.
“Example 5, 6, Mn=224,413 and 250,993” [Table 3, 0096] lie in the claimed range.
Regarding claim 10, Beaulieu teaches “the functional copolymer may include from about 20 to about 100 parts of the 100 total” [0076] overlaps the claimed range.
Beaulieu teaches “Synthesis of 2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane Functionalized SBR” [0084], with the “Example 5, Tg=-42.99” [Table 3, 0096] lies in the claimed range.
Regarding claim 11, Beaulieu teaches “the reinforcing silica filler or silica filler may be about 5 to about 175 phr” [0066], overlaps the claimed range; and “cure package includes sulfur” [0098].
Regarding claim 14, Beaulieu teaches the rubber composition as set forth above, Beaulieu further teaches cured rubber [00112]. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. 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. wear index would necessarily arise from a composition with all the claimed ingredients and amounts. "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.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Beaulieu (WO2018119168, herein Beaulieu).
Regarding claim 16, Beaulieu teaches “introducing an anionic polymerization initiator, at least one conjugated diolefin monomer, at least one vinyl monomer, and solvent to a reactor to produce a living copolymer via anionic polymerization” [00128], the copolymer is specified as “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane] functionalized styrene-butadiene copolymer (SBR)” [0084].
Beaulieu further teaches “hydrogenating the functionalized copolymer by mixing the functionalized copolymer with solvent and a hydrogenation catalyst in a hydrogen stream, wherein the hydrogenated functionalized copolymer has a degree of hydrogenation of 75% to 98 mol % as measured using 1H NMR.” [0128] lies in the claimed range, collectively read on the claimed method of making a hydrogenated functional polymer; “the functionalized copolymer has a vinyl content from 10 to 60%” [0121] overlaps the claimed range; “Example 5, 6, Mn=224,413 and 250,993” [Table 3, 0096] lie in the claimed range.
Beaulieu teaches copolymer manufactured from styrene and 1,3-butadiene monomers. [0017], with about 10 to about 50 % by weight of vinyl aromatic monomers; the vinyl aromatic monomer is styrene [0028], which overlaps the claimed range.
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). See MPEP § 2144.05.
Regard to the Tg of the functional polymer, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Beaulieu teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. 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. the Tg of the functional polymer would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot 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.
Regarding claims 17, 18, Beaulieu teaches “hydrogenation catalysts including nickel and aluminum; hydrogenation catalyst comprises an organic nickel compound such as nickel octoate” [0051] and “The anionic polymerization initiator may comprise a lithium catalyst” [0032].
Regarding claim 19, Beaulieu teaches “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane]” [0084], structure see below, as evidenced by CAS Registry Number: 3388-04-3 [Scifinder], matches the claimed formula (II), wherein A1 represents a monovalent group having at least one functional group selected from epoxy; Rc represents a divalent hydrocarbon group having 2 carbon atoms; b=0, Re represents a monovalent aliphatic hydrocarbon group having 1 carbon atom.
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Regarding claim 20, Beaulieu teaches “the functionalized copolymer has a vinyl content from 10 to 60%” [0121] overlaps the claimed range.
Beaulieu further teaches “the hydrogenated functionalized copolymer has a degree of hydrogenation of 75% to 98 mol %” [0128] overlaps the claimed range.
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). See MPEP § 2144.05. At the time of filing, it would have been obvious for a person having ordinary skill in the art to have selected the vinyl content and degree of hydrogenation ranges as taught by Beaulieu, since Beaulieu suggests that these features promote adequate mechanical strengths for a rubber used for tires.
Response to Arguments
Applicant's arguments filed 3/23/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that “the Office has failed to provide specific, concrete evidence to show that the functionalized copolymer of Beaulieu would have, “a Tg of the functional polymer is from about -100° C to less than -50° C" as recited in claim 1 and thus, has failed to establish inherency”, the argument is not persuasive.
In fact, Beaulieu teaches “functionalized copolymer produced by copolymerization of at least one conjugated diolefin monomer and at least one vinyl monomer, the functionalized copolymer comprising at least one functional group having silica reactive moieties, wherein the functionalized copolymer has a degree of hydrogenation of 75% to 98 mol% as measured using proton nuclear magnetic resonance spectroscopy (1H NMR).” [00117], which is specified as “[2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane] functionalized styrene-butadiene copolymer (SBR)” [0085], which reads on the a polymer comprising: a functional polymer produced by polymerization of at least one conjugated diolefin monomer and optionally one or more aromatic vinyl monomers, the functional polymer comprising at least one functional group having silica reactive moieties, with the degree of hydrogenation lies in the claimed range. Furthermore, “the functionalized copolymer has a vinyl content from 10 to 60%” [00121] overlaps the claimed range. Beaulieu also teaches: “Example 5, 6, Mn=224,413 and 250,993” [P8; Table 3] which lie in the claimed range. Beaulieu teaches copolymer manufactured from styrene and 1,3-butadiene monomers. [0017], with about 10 to about 50 % by weight of vinyl aromatic monomers; the vinyl aromatic monomer is styrene [0028], which overlaps the claimed range.
Therefore, Beaulieu explicitly teaches all required limitation of the functional polymer formation as set forth above, hence, can lead to the Tg range as instantly claimed. The Tg would be necessarily present (ie. necessarily arise) to the same degree as instantly claimed by applicant since Tg arises from the structural configuration of the polymer of which has been rendered obvious by the above rejection.
In response to applicant's argument that “Examples 5 and 6 in Table 3 of Beaulieu, relied on by the Office as teaching the claimed Mn of the functional polymer, have a Tg of -42.99° C and -42.30° C, respectively, which are outside the claimed Tg of from about -100° C to less than -50° C”, the argument is not persuasive.
In this case, first, Beaulieu explicitly teaches all required limitation of the functional polymer formation which can lead to the claimed Tg range as set forth in the rejection above. The claimed glass transition temperature would result from selecting an amount of styrene in the overlapping portion of the claimed range.
Second, the applicant’s argument is further not commensurate in scope with the claim 1, hence, insufficient to establish non-obviousness. The claim 1 is open to wherein the functional polymer is produced by polymerization of 1,3-butadiene monomer and from 0 to about 20% by weight styrene monomer. However, Examples 5, 6, which applicant relied on, both use 24.2% styrene, which fell out of the claimed range. Therefore, these examples fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Third, Beaulieu explicitly teaches copolymer manufactured from styrene and 1,3-butadiene monomers. [0017], with about 10 to about 50 % by weight of vinyl aromatic monomers; the vinyl aromatic monomer is styrene [0028], which overlaps the claimed range, meet the required limitation of the functional polymer formation, hence, can lead to the Tg range as claimed.
Hence, Beaulieu does not teach away the instant application.
Conclusion
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.
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
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