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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/6/2025, has been entered.
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). 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).
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. 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). 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] 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). 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).
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).
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). 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 8/20/2025, with respect to the rejection(s) of claim(s) 1 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 Beaulieu (WO2018119168, herein Beaulieu).
In this case, Beaulieu teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process as set forth in new rejection above, which can lead to the Tg of the claimed functional polymer.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767