DETAILED ACTION
Response to Amendment
This office action is in response to the Amendment filed on 9/02/2025. Claims 1-10 are pending in the application.
In view of the amendment, a new ground of rejections of the claims under 103 were made.
This office action is made final.
Claim Analysis
Summary of Claim 1:
A modified conjugated diene-based polymer comprising:
a derived unit from a modification initiator;
a repeating unit derived from a conjugated diene-based monomer; and
a derived unit from a modifier,
the modified conjugated diene-based polymer satisfying the following conditions i) to v):
i)
a weight average molecular weight: 1,000,000 g/mol or more,
ii)
a glass transition temperature: -830C or more and -46°C or less,
iii)
N content: 70 ppm or more based on a total weight of the polymer,
iv)
Si content: 70 ppm or more based on a total weight of the polymer, and
v)
a coupling number: greater than 2.5 and less than 5.0.
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 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.
Claims 1-3, 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kyo et al. ( WO 2018/034217 and/or US PG Pub 2019/0203021 A1, wherein US 2019/0203021 is being used as English Translation herewith).
Regarding claim 1, Kyo et al. disclose a modified conjugated diene based polymer (abstract, [0017 and examples) comprising: 1,3 butadiene ([0098], [0334]), thereby reading on the repeating unit derived from a conjugated diene-base monomer, a polymerization initiator prepared of a mixed solution of piperidino lithium and n-butyl lithium [0335], thereby reading on the derived unit from a modification initiator and tetrakis(3-trimethoxysilylpropyl)-1,3-propanediamine [0337], thereby reading on the derived unit from a modifier. Kyo et al. further disclose the modified conjugated diene based polymer having a weight average molecular weight of 2000,000 to 3,000,000 (claim 1), a glass transition temperature between -45°C to -15°C ([0223] and table 1), a content of nitrogen atom of 25 mass ppm or more (claim 1, table 1, physical property 8), a content of silicon atom of 15 ppm or more [0103], which overlap the claimed ranges of the weight average molecular weight, the N and Si contents. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the ranges taught by Kyo et al.
In view of the instant specification, the coupling number is defined by the ratio of Mp2/Mp1 (peak molecular weight of the modified polymer/ peak molecular weight of the polymer before modification) ([0039],[0040]). Kyo et al. teach a ratio of the peak molecular weight (Mp1) of the modified conjugated diene based polymer and a peak top molecular weight (Mp2) of the conjugated diene of 2.94-4.36 (table 1, physical property 3), thereby reading on the claimed coupling number.
Kyo et al. do not particularly teach the claimed range for the glass transition temperature.
However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (See MPEP 2144.05 (I) (citing Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%)". Thus, absent any showing of unexpected results or criticality, the slight difference in the glass transition temperature of the modified conjugated diene-based polymer of Kyo et al. (-45°C) and the glass transition temperature of the claimed polymer (-46 °C) is negligible.
Regarding claim 2, Kyo et al. teach a coupling number between 2.94-4.36 (table 1, physical property 3), which overlaps with the claimed range (1-3), thereby a prima facie case of obviousness being established. MPEP 2144.05.
Regarding claim 3, Kyo et al. teach as a polymerization initiator a organolithium compound [0166]-[0167], providing examples such as the reaction product of 1 mol of butyl lithium and 2 mol of 4-N,N-dimethylaminostyrene, a reaction product of 1 mol of piperidino lithium and 2 mol of 4-N,N-dimethylaminostyrene, and a reaction product of 3-N,N-bistrimethylsilylaminopropyl lithium and 2 mol of 4-N,N-dimethylaminostyrene, among others [0194], thereby reading on the claimed modification initiator as recited by the instant claim.
Regarding claim 7, Kyo et al. teach that conjugated diene compound such as 1,3- butadiene and isoprene are preferred. These compounds can be used individually or in combination , wherein the copolymerizable monomer is a vinyl aromatic compound, with styrene being preferred ([0098],[0100],[0163]-[0164],[0334]), thereby reading on the aromatic vinyl-based monomer.
Regarding claims 8-9, Kyo et al. teach a rubber composition comprising the polymer and a filler such as a silica based filler or a carbon black filler ([0001], [0006], claim 14, [0272], [0287], as required by the instant claims.
Regarding claim 10, Kyo et al teach a rubber composition comprising the modified conjugated diene-based polymer and a filler in an amount of 5-150 parts by mass based on 100 parts by mass of the rubber component (claim 14), wherein the rubber component can be 100 parts of the modified conjugated diene-based polymer ([0271]-[0276] and examples), as required by the instant claim.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kyo et al. ( WO 2018/034217 and/or US PG Pub 2019/0203021 A1, wherein US 2019/0203021 is being used as English Translation herewith) in view of Yoshida et al. ( JP 2009-227858 as listed on the IDS dated 6/24/2022, full English Machine translation incorporated herewith).
Kyo et al. teach the modified conjugated diene- based polymer of claim 1 as set forth above and incorporated herein by reference.
Regarding claim 4-6, Kyo et al. teach a modifier having 4 or more alkoxy groups bonded to silicon atoms, having a tertiary amino group, and having 8 or more reaction active sites ([0227]- [0228]), as required by the instant claims.
Kyo et al. is silent on the modified conjugated diene-based polymer having at least two modifiers including an aminoalkoxysilane compound and an aminoepoxy compound.
In the same field of endeavor, Yoshida et al teach a modified conjugated diene polymer, comprising a conjugated diene compound, or a conjugated diene compound and an aromatic vinyl compound, an alkali metal compound or an alkaline earth metal compound as an initiator, a compound (A) having two or more epoxy groups at its terminal such as tetraglycidyl-1,3bisaminomethylcyclohexane ([0022], claims 1 and 2, chemical formula 1, chemical formula 4), and a compound B having a primary or secondary amino group and one or more alkoxysilyl group including bis(trimethoxysilylpropyl)amine, bis[(3-trimethoxysilyl)propyl]-ethylenediamine, among others [0026]. Yoshida et al. offer the motivation of using a combination of an aminoepoxy-based compound with an aminoalkoxysilane-based compound due to its ability to enhance the affinity with inorganic fillers such as silica and carbon black, thereby improving properties such as rolling resistance, wet skid resistance, hysteresis loss and abrasion resistance, when used as a tire tread material (abstract, [0005]). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the aminoepoxy based-compound taught by Yoshida et al. in combination with the aminoalkoxysilane-based compound of Kyo et al., thereby arriving at the claimed invention.
Response to Arguments
Applicant's arguments, see p.7-10, filed 9/02/2025, with respect to the rejection of the claims over Kyo et al. and Kyo et al. in view of Yoshida et al. have been fully considered but they are not persuasive.
Applicant states that Kyo et al. do not disclose or render obvious the claimed range of the glass transition temperature of the modified conjugated diene-based polymer. In response, Examiner acknowledges that Kyo et al. disclose the glass transition temperature of the polymer is preferably -45°C to -15°C . However, attention is drawn to the rejection as set forth above, where a prima facie case of obviousness exist where the claimed ranges do not overlap with the prior art but are merely close. It is for these reasons that Applicant's arguments are not found to be persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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 OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763