DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on October 9, 2025 has been fully considered. The amendment to instant claims 1, 5, 13 is acknowledged. In light of the amendment, the previous rejections not cited below are withdrawn. The previous rejections cited below are maintained for the reasons set forth in section “Response to Arguments” section below. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claims 5 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
4. As currently amended, claim 5 recites a limitation of the rubber composition comprising a total of from 0.2 phr to 10 phr of the at least one fatty acid or fatty acid amide. However, there is a lack of antecedent basis for said limitation since claim 1 is silent with respect to fatty acid.
5. As currently amended, claim 13 recites a limitation of the ratio of hydrocarbon resin to oil is 20:1 to 2:1. However, since there are no prepositions “the” or “said” in front of “hydrocarbon resin” and “oil”, it is not clear if said “hydrocarbon resin” and “oil” of claim 13 are the same or different from those cited in claims 1 and 12.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. Claim 5 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
7. As currently amended, instant claim 5 recites the limitation of the composition comprising from 0.2-10 phr of the at least one fatty acid. However, instant specification does not provide a support for said limitation. Thus, instant specification recites
a limitation of the composition comprising a total of from 0.2 phr to 10 phr of said one or more of amino fatty acids and fatty acid amides (original claim 5 and [0018] of the original specification), but not at least one fatty acid.
Claim Objections
8. Claim 1 is objected to because of the following: claim 1 recites a Markush type listing fatty acids and amino acids. When materials recited in a claim are so related as to constitute a proper Markush group, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper (see MPEP 2173.05(h)). Appropriate correction is required.
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.
9. Claims 1-8, 10-16, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Isitman et al (US 2017/0334244) in view of Akabori (JP 2013-112743, based on machine translation), Sharma, Journal of Biochemistry International, 5(2), 28-56, 2018; Koshti et al (US 2015/0141682), as evidenced by Arigo et al (US 2018/0284085), Schimmel et al (US 6,096,813), Tamareselvy et al (US 2013/0101543) and by Amphoteric Surfactants flyer cited in
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10. The rejection is adequately set forth on pages 6-15 of an Office action mailed on July 10, 2025 and is incorporated here by reference.
11. Claims 1-8, 10-16, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Isitman et al (US 2017/0334244) in view of Bertrand et al (DE102004005132, based on machine translation), Sharma, Journal of Biochemistry International, 5(2), 28-56, 2018; Koshti et al (US 2015/0141682), as evidenced by Arigo et al (US 2018/0284085).
12. The rejection is adequately set forth on pages 15-22 of an Office action mailed on July 10, 2025 and is incorporated here by reference.
Response to Arguments
13. Applicant's arguments filed on October 9, 2025 have been fully considered.
14. With respect to Applicant’s arguments regarding the rejections of Claims 1-8, 10-16, 19-21 under 35 U.S.C. 103 as being unpatentable over Isitman et al (US 2017/0334244) in view of Akabori (JP 2013-112743, based on machine translation), Sharma, Journal of Biochemistry International, 5(2), 28-56, 2018; Koshti et al (US 2015/0141682), as evidenced by Arigo et al (US 2018/0284085), Schimmel et al (US 6,096,813), Tamareselvy et al (US 2013/0101543) and by Amphoteric Surfactants flyer cited in
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and of Claims 1-8, 10-16, 19-21 under 35 U.S.C. 103 as being unpatentable over Isitman et al (US 2017/0334244) in view of Bertrand et al (DE102004005132, based on machine translation), Sharma, Journal of Biochemistry International, 5(2), 28-56, 2018; Koshti et al (US 2015/0141682), as evidenced by Arigo et al (US 2018/0284085), it noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Each of the secondary references was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
2) Thus, though Isitman et al does not recite the composition comprising amino fatty acid produced by a reaction of valine and optionally alanine with palmitic acid and/or stearic acid, the secondary references of Akabori, Sharma, Koshti et al were applied for the teachings of that.
3) Akabori as a secondary reference was applied for the teachings of the use of amino acids type surfactants to improve dispersibility of silica in rubber compositions for tires, specifically pneumatic tires.
Sharma as a secondary reference was applied for the teachings of amino acid-based surfactants produced from a reaction of amino acids and fatty acids (Fig. 9, page 35), wherein said surfactants are safe and environment friendly (Abstract); specifically cited surfactants are based on palmitic acid and include N-(C14-C18) valine salts (p. 30, 4.1.1.1), i.e. including C16 acyl from palmitic acid.
Koshti et al as a secondary reference was applied for the teachings of a method for producing N-acyl amino acid - based surfactants, which are a reaction product of a fatty acid and an amino acid (Abstract), wherein the specifically cited fatty acids are stearic acid (C18) ([0025]) and palmitic acid (C16) ([0068]), and the specifically cited amino acid is valine ([0027]).
Based on the teachings of Koshti et al, it would have been obvious to a one of ordinary skill in the art to choose and use stearic acid or palmitic acid as the fatty acid and valine as the amino acid to produce the N-acyl amino acid surfactant by using the process of Koshti et al as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
4) Thus, both Sharma and Koshti et al disclose the use of valine as the amino acid for the reaction with stearic or palmitic acids to form N-acyl amino acids/amino fatty acids.
5) Each of the secondary references cited above was applied for the specific teachings.
Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
6) In response to Applicant’s argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). Each is the cited references were applied for the specific reasons.
7) The secondary reference of Bertrand et al was applied for the teachings of addition of N-acylamino acids into polymer compositions comprising styrene-butadiene and polybutadiene rubbers, used in production of a tread in a tire ([0025]). Bertrand et al explicitly teaches the use of N-acyl amino acids, produced from an amino acid and stearic acid or palmitic acid, as process aids in silica-filled styrene-butadiene rubber compositions used for making tires. Though the cited amino acid was sarcosine, but not valine, and the N-acyl amino acid was stearoyl sarcosinate, said secondary reference of Bertrand et al was applied for the teachings of the use of N-acylamino acids based on stearic acid or palmitic acid in rubber compositions for production of tires.
Sharma and Koshti et al disclose the use of valine as the amino acid for the reaction with stearic or palmitic acids to form N-acyl amino acids/amino fatty acids.
It would have been obvious to a one of ordinary skill in the art to choose and use valine as the amino acid for reaction with stearic acid or palmitic acid as the fatty acid to produce the N-acyl amino acid surfactant by using the process of Koshti et al as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
8) It is further noted that instant specification does not provide any evidence of criticality in using valine as the amino acid for reaction with palmitic acid or stearic acid to produce N-palmitoyl-valine or N-stearoyl-valine and of criticality in using specifically N-palmitoyl-valine or N-stearoyl-valine as the amino fatty acid plasticizer in the claimed composition. Thus, instant specification recites a single inventive example showing the use of a commercial amino fatty acid HT 257. It is not clear what is the structure of said commercial amino fatty acid HT 257, since there is no citation of which fatty acid and which amino acid were used for making said commercial amino fatty acid HT 257. On the other hand, instant specification clearly recites that a wide variety of amino acids can be used, and further a variety of fatty acids can be used in the practice of instant invention ([0032], [0033] of instant specification):
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9) It is further noted, that instant specification does not state that the claimed amino fatty acid of the formula A:
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Formula A
is a non-ionic surfactant, as argued by Applicant in arguments filed on October 9, 2025, June 25, 2025 and May 2, 2025. The structure comprises free -COOH group, and the amide bond (-NH-CO-) as argued by Applicant on pp. 3-4 of the Arguments filed on October 9, 2025 (paragraphs 1.-3.).
Rather, as cited by Amphoteric surfactants
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Amphoteric surfactants
Amphoteric surfactant refers to a surfactant simultaneously carrying the anionic and cationic hydrophilic group with its structure containing simultaneously hermaphroditic ions which are able to form cation or anion according to the (such as pH changes) ambient conditions. From the practical perspective, the usually adopted cationic part is amine salt or quaternary ammonium hydrophilic group while the anionic moiety is a carboxylate, sulfonate, phosphate hydrophilic group, especially the amino acid type amphoteric surfactants that contains both amino and carboxy group or the intramolecular ammonium salt type amphoteric surfactants consisting of carboxyl group and a quaternary ammonium group.
Thus, the amino acid type surfactants, that contain both amino and carboxyl group, appear to belong to amphoteric surfactants.
Further, as evidenced by Schimmel et al (US 6,096,813, Abstract), the compounds of the formula B below (which corresponds to the claimed structure of formula A):
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Formula B
wherein “n” is zero, are called N-acyl amino acids (see Abstract, col. 1, lines 50-64).
Furthermore, as evidenced by Tamareselvy et al (US 2013/0101543), N-acyl amino acids produced from valine as amino acid and stearic acid as fatty acid, are amphoteric surfactants ([0095]-[0097]).
Therefore, it is not clear how a) the N-acyl amino acid - based surfactants, which are a reaction product of a fatty acid and an amino acid, of instant claims can be non-ionic surfactants and b) the same N-acyl amino acid - based surfactants, which are a reaction product of a fatty acid and an amino acid, of Sharma and Koshti et al can be amphoteric surfactants, given those surfactants are having the same structure and produced by the same process. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
10) The surfactants/Nacyl amino acids taught by Sharma and Koshti et al are having the same structure and produced by the same process as the N-acyl amino acids/amino fatty acids as claimed in instant invention, no matter how they are called “amphoteric surfactants” or “non-ionic surfactants”. “Products of identical chemical composition can not have mutually exclusive properties” (See MPEP 2112.01).
15. In response to Applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
16. In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
17. With respect to Applicant’s argument regarding unexpected results of instant invention, specifically “enhanced tensile strength, reduced hysteresis, improved wet traction” see p.4 of the Arguments; as cited above, said evidence is provided by a single very specific example based on the use a commercial product HT257, wherein the composition of said commercial product is not specified, and further the provided single example is based on the very specific amounts of all used components, wherein the claimed ranges for those components are significantly broader. Whether the 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764