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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-6, 10-11 and 17-18) in the reply filed on October 23, 2025 is acknowledged. Claims 7-9, 12-16 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The requirement is deemed proper and is therefore made FINAL.
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(s) 1-5 and 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ida et al (US 4,745,150) with evidence provided by Kobayashi et al (US 2003/0109641).
Regarding claims 1-5, Ida teaches a styrene butadiene rubber which in a tan delta graph in accordance to temperature has a full width at half maximum value of 49 C (Table 1, Example 1 and Figure 1) with a peak (glass transition temperature, for evidence of the equivalence, please refer to Kobayashi, paragraph [0067])) of -48 C (Figure 1). While the method of measuring the tan delta value of Ida may be different than the type used by the applicant, the tan delta values are an inherent physical property to the material and, therefore, Ida teaches the claimed invention.
Regarding claim 10-11, Ida teaches a rubber composition comprising the polymer of claim 1 and a filler (carbon black, Example 1, and col. 3, lines 20-35). The filler is present in the amount of 90 parts per 100 parts of rubber (col. 3, lines 20-35).
Claim(s) 1-2 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LG Chem “Tan delta measurement of LG’s F1810 material, 2018” – cited on IDS dated 10/1/2025 with evidence provided by Martter et al (US 2021/0179822).
Regarding claims 1-2 and 4-5, LG Chem teaches a commercial product LG F1810 which, in a tan delta graph in accordance to temperature, has a full width at half maximum value of 21.6 with a peak at approximately -53 C (Figure 1). While the method of measuring the tan delta value of LG Chem may be different than the type used by the applicant, the tan delta values are an inherent physical property to the material and, therefore, LG Chem teaches the claimed invention.
Evidence is provided by Martter that LG 1810 is a SBR rubber (Table 1) and commercially available on Dec 16, 2019, which is prior to the effective filing date of the claimed invention.
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.
Claim(s) 1-6, 10-11 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Washizu (US2014/0200321) with evidence provided by Kobayashi et al (US 2003/0109641).
Regarding claims 1-6 and 17-18, Washizu teaches a branched conjugated diene copolymer (Abstract). The glass transition temperature is -23 to 35 C ([0048]) and this corresponds to the tan delta peak. For evidence of the equivalence, please refer to Kobayashi, paragraph [0067]. The weight average molecular weight of the copolymer ranges from 100,000 to 3,000,000 ([0065]). The Mooney viscosity of the copolymer ranges from 25 to 160 ([0068]). The polydispersity ranges from 1.0 to 10 ([0066]) and it is unimodal ([0058]). The number average molecular weight can be calculated by the taught values of the weight average molecular weight and the polydispersity index and falls within the recited range.
Washizu teaches that the vulcanized rubber made from the polymer has a half width half maximum of tan delta of 40 or less ([0057]).
However, it fails to teach the recited half width half maximum for the polymer itself.
Washizu teaches that the smaller the half width at half maximum of the tan delta/temperature graph is, the higher the uniformity of the curve ([0058]) and therefore, it follows that the wider the half width at half maximum, the lower the uniformity. Washizu also teaches that the half width at half maximum of the rubber composition can be controlled ([0058]), typically by controlling the uniformity of the polymer within the rubber composition. As such, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the full width at half maximum of tan delta of the recited polymer 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). In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate polymer with the desired FWHM, including those within the scope of the present claims, so as to produce desired end results.
While the method of measuring the tan delta value of Washizu may be different than the type used by the applicant, the tan delta values are an inherent physical property to the material and, therefore, LG Chem teaches the claimed invention.
Regarding claim 10-11, Washizu teaches a rubber composition comprising the polymer of claim 1 with a filler (carbon black). Washizu teaches that the amount of carbon black ranges from 2 to 200 parts by mass per 100 parts by mass of the rubber ([0097]).
Claim(s) 1-6, 10-11 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nicolini et al (US 2011/0130499) with evidence provided by Washizu (US 2014/0200321) and Kobayashi et al (US 2003/0109641).
Regarding claims 1-6 and 17-18, Nicolini teaches a diene polymer which has a first block of random styrene and butadiene monomers and then that is followed with a second block in which the structure is differentiated from the main chain – either as a homopolymer or copolymer of conjugated dienes and aromatic vinyl monomers ([0052]). The examples of Nicolini teaches that the glass transition temperatures are within the range of –92 to -1 C (tan delta peak, for evidence of the equivalence, please refer to Kobayashi, paragraph [0067]). the weight average molecular weight of the polymers 80,000 to 700,000, the Mooney viscosity ranges from 30-90 and the polydispersity ranges from 1.05 to 4 (Table 1, applicable range). The number average molecular weight can be calculated by the weight average molecular weight and the polydispersity index and falls within the recited range.
While Nicolini does not explicitly state the full width at half maximum of the tan delta/temperature graph, given that the second block of the diene polymer can be tightly controlled and is different from the main chain, the tan delta can be also tightly controlled. As evidenced by Washizu, the more uniform the polymer, the tighter the tan delta half width at half maximum – in essence, it becomes smaller ([0058]), so as the non-uniformity of the polymer of Nicolini increases, so does the tan delta width at half maximum.
As such, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the full width at half maximum of tan delta of the recited polymer is a result effective variable because changing is clearly affected by the changing microstructure of the polymer. 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). In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate polymer with the desired FWHM, including those within the scope of the present claims, so as to produce desired end results.
Regarding claim 10-11, Nicolini teaches a rubber composition made from the polymer of claim 1 and a filler (silica). The filler is present in the amount of 95 parts per 100 parts of the polymer (Examples).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-6 of copending Application No. 17/911,854 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because They both recite a conjugated diene polymer with the same tan delta peak and full width at half maximum property.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 10-11, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 17/917,097 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because They both recite a conjugated diene polymer with the same tan delta peak and full width at half maximum property as well as the rubber composition with filler made from the polymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764