DETAILED ACTION
Response to Amendment
This communication responds to the Amendment filed September 18, 2025. Claim 2 has been cancelled. Claim 14 has been added. Claims 1 and 3-14 are currently pending and under examination.
In view of the amendment, a new ground of rejections of claims 1 and 3-14 are made.
This office action is made final.
Claim Analysis
Summary of Claim 1:
A masterbatch manufacturing method, comprising:
an operation in which only a carbon black slurry and a natural rubber latex are mixed to prepare a liquid mixture; and
an operation in which a coagulant is added to the liquid mixture so as to cause pH to be not less than 5.0 but less than 8.0.
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, 3-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kanda et al. (JP-2016-222765 A as listed in the IDS dated 7/05/2022; English Machine Translation provided by Applicant).
Regarding claim 1, Kanda et al. teach a method for producing a wet masterbatch comprising a step of mixing a natural rubber latex with a filler slurry, wherein the filler is carbon black, that is previously dispersed into a liquid ([0020], claims 1 and 3) , which correspond to the liquid mixture as required by instant claim 1. Kanda et al. further teach that after the mixing step, a coagulant is added to adjust the pH to 7 or less to complete the coagulation (claim 8), which overlaps with the claimed range of pH (5-8). Further, 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 before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Kanda et al.
Regarding claims 3-6, Kanda et al. teach the acid coagulation of the blended latex (liquid mixture) is preferably carried out by adjusting the pH to 7 or less (claim 8), which overlaps with the claimed range (pH to be no less than 5.1 of claim 3, pH to be less than 7.8 of claim 4, the pH to be less than 7.6 of claim 5 and the pH to be less than 7.4 of claim 6). Further, 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 before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Kanda et al.
Regarding claim 7, Kanda et al. teach a method wherein the coagulant is formic acid or sulfuric acid ([0053]-[0054], [0064]), as required by the instant claim.
Regarding claim 8-10, Kanda et al. teach a method as discussed in the rejection of claim 1, wherein the carbon black slurry and the natural rubber latex are mixed within a range of 20 to 80 parts by weight of the filler per 100 parts by weight of the rubber [0051]. Kanda et al. further teach the content of the carbon black in the slurry is 1-20 wt.% (i.e. 10 wt.% )(claim 2, [0065]-[0066]) and the concentration of carbon black was 40 parts by weight per 100 parts by weight of the rubber component [0067], thereby reading on the 10-100 parts by mass (pbm) of carbon black per 100 pbm of dry rubber content of instant claim 8, 20 -90 parts by mass (pbm) of filler per 100 pbm of dry rubber content of instant claim 9 and 30-80 parts by mass (pbm) of filler per 100 pbm of dry rubber content of instant claim 10.
Regarding claim 12, Kanda et al. teach a method for producing a wet masterbatch as discussed in the rejection of claim 1 and a rubber composition for vulcanization that is used to manufacture a rubber product such as a tire (abstract, [0003],[0055],[0062],[0078]),a s required by the instant claim.
Regarding claim 13, Kanda et al. teach the obtained wet masterbatch is used as a raw material for producing a rubber composition for vulcanization, wherein other compounding agents including oil, antioxidant, zinc oxide , stearic acid, vulcanizing agent (sulfur), vulcanizing accelerator are blended by conventional kneading ([0055], [0061],[0071]) as required by the instant claim.
Regarding claim 14, Kanda et al. teach the acid coagulation of the blended latex (liquid mixture) is preferably carried out by adjusting the pH to 7 or less (claim 8).
Kanda et al. are silent on the masterbatch manufacturing method, wherein the coagulant is added to the liquid mixture to adjust the pH to be not less than 7.2.
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 Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); n re 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%); "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). Thus, absent any showing of unexpected results or criticality, the slight difference in the obtained pH after the addition of the coagulant between the method of Kanda et al. and the claimed invention is negligible (7 vs 7.2).
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Yanagisawa et al. (US 2006/0205867 A1 as listed in the IDS dated 7/30/2025).
Regarding claim 1, Yanagisawa et al. teach a method for producing a masterbatch comprising a step of mixing a natural rubber latex with a slurry solution of at least one filler including carbon black, that is previously dispersed into a liquid (claims 1, 3 and 4, [0033]-[0034]). Yanagisawa et al. further teach a carbon black slurry and a natural rubber latex are mixed to form a liquid mixture and then formic acid is added with agitating to adjust the pH to about 5 to complete coagulation ([0033]-[0034]). It is noted that the use of the word “about” as disclosed by Yanagisawa et al. can be interpretated to encompass several additional values outside of the value being disclosed. For example, the “ about 5” as used by Yanagisawa et al. is interpreted to encompass variations of 10%, which implies the pH is adjusted within the range of 4.5- 5.5, which overlaps with the claimed range (pH of 5-8). Further, 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 before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Yanagisawa et al.
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kanda et al. (JP-2016-222765 A as listed in the IDS dated 7/05/2022) in view of Tanaka et al. JP 2019-112542 (A)).
The disclosure of Kanda et al. is adequately set forth in paragraph 7 and incorporated herein by reference.
Regarding claim 11, Kanda et al. teach the method of preparing a wet masterbatch by mixing the carbon black slurry with the natural rubber latex solution [0039], then adding a coagulant [0053] followed by a subsequent step of solid-liquid separation and drying to take out water from the coagulated product ([0018], [0054]).
Kanda et al. are silent on the dewatering of the coagulum via an extruder.
In the same field of endeavor, Tanaka et al. teach a method of producing a rubber composition for a tire, which contains a rubber wet master batch obtained by I) mixing the carbon black, the dispersion solvent, and the rubber latex solution to produce a carbon black-containing rubber latex solution; (II) of coagulating the obtained carbon black-containing rubber latex solution to produce a carbon black-containing rubber coagulum; and a step (III) of dehydrating/drying the obtained carbon black-containing rubber coagulum by using devices such as a single screw extruder, a double screw extruder, an oven, a conveyor type dryer, an air dryer, among others ([0039], abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the extruder of Tanaka et al. to dehydrate and dry the obtained carbon black containing rubber coagulum to obtain a wet masterbatch with desired dispersibility (abstract), thereby arriving at the claimed invention.
Response to Arguments
Applicant’s arguments with respect to the claims over Nagase et al. have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763