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 .
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, 4, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Qiu (CN107722396, herein Qiu, a machine translation is being used for citation purpose) in the view of Sunada (JP4342801, herein Sunada, a machine translation is being used for citation purpose).
Regarding claims 1, 2, 4, Qiu teaches a preparation method for a modified lignin reinforced rubber, as “mixing nitrile rubber, lignin and carbon black, coordinating vulcanizing agent vulcanizing aid and vulcanization molding to obtain the lignin/carbon black/nitrile rubber composite material.” [0020]; “The mixing temperature may range from 25 to 120°C.” [0021]; “The mixing can be carried out in an internal mixer” [0022] “The sheeting can be carried out in a two-roll mill.” [0023] and “The vulcanization molding conditions are preferably 160-210° C.” [0025] which collectively reads on the formation of the molded article via hot-pressing and molding by vulcanizing press.
Qiu teaches “The lignin can be alkali lignin” [0014].
Qiu does not explicitly teach the lignin modification by three compounds containing a carbon-carbon double bond, a compound containing a sulfur element and a compound capable of blocking a hydroxyl. However, Sunada teaches the claimed three modification compounds system as “vinyltris(β-methoxyethoxy)silane” [P19; L2] matches “compound containing carbon-carbon double bond: Vinyltris(2-methoxyethoxy) silane” [Table 1, line 10, instant application-spec. P16], in the range of “The content of silica in the rubber composition of the present invention is not particularly limited, but is preferably 2 parts by mass or more and 100 parts by mass or less per 100 parts by mass of the chloroprene polymer” [P17; L2] overlaps the claimed range.
“tetramethyl thiuram monosulfide” [P23; L18], matches the “compound containing a sulfur element: “tetramethyl thiuram monosulfide” [Table 1, line 1, instant application-spec. P16], in the range of “0.05 to 20 parts by mass, of the chloroprene rubber” [P23; L19].
“vinyltriacetoxysilane” [P19; L2] matches the “compound capable of blocking a hydroxyl: vinyltriacetoxysilane” [Table 1, line 1, instant application-spec. P16], in the range of “The content of silica in the rubber composition of the present invention is not particularly limited, but is preferably 2 parts by mass or more and 100 parts by mass or less per 100 parts by mass of the chloroprene polymer” [P17; L2] overlaps the claimed range.
Hence, the sum of the compound containing carbon-carbon double bond and compound containing a sulfur element is (2+0.05)%=2.05% to (100+20)%=120%; therefore the ratio between the sum of the compound containing carbon-carbon double bond and compound containing a sulfur element to the compound capable of blocking a hydroxyl range is 2.05/100 to 120/2, hence overlaps the claimed the ratio range of the dosages of the compound containing the carbon-carbon double bond and the compound containing the sulfur element to dosage of the compound capable of blocking the hydroxyl, which is 4/0.5=8 to ¼. Qiu and Sunada are both considered to be analogous to the claimed invention because they are in the same field of carbon black reinforcing rubber composite manufacturing via the reinforcing agent development. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Qiu to add the teachings of Sunada and provide wherein said “vinyltris(β-methoxyethoxy)silane” [P19; L2]; “tetramethyl thiuram monosulfide” [P23; L18] and “vinyltriacetoxysilane” [P19; L2] as modification system into the reinforcing agent modification and further apply the modified reinforcing agent into the rubber composition development. Doing so would further achieve the desired property of “novel silica-composite polychloroprene rubber composition having excellent mechanical properties and a vulcanized molded product” [P1; L4] as taught by Sunada.
Qiu and Sunada do not teach the specific steps of rubber composition formation; however, they teach all ingredients of the process for preparing the login modification as claimed in claim 1, therefore, it will lead to the claimed product via the order of mixing. The selection of mixing order is prima facie obvious. [MPEP 2144.4C]
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 and amounts, 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., tensile strength, elongation at break, stress at definite elongation, would necessarily arise from a composition with all the claimed ingredients and the 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.
Qiu does not explicitly teach the rubber selection; however, Sunada teaches “natural rubber” [P24; L19]. Qiu and Sunada are both considered to be analogous to the claimed invention because they are in the same field of carbon black reinforcing rubber composite manufacturing via rubber selection. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Qiu to add the teachings of Sunada and provide wherein said “natural rubber” [P24; L19] into the composition development. Doing so would further achieve the desired property of “novel silica-composite polychloroprene rubber composition having excellent mechanical properties and a vulcanized molded product” [P1; L4] as taught by Sunada.
Regarding claim 10, Qiu teaches the composition: “20 parts of dry alkali lignin powder” [0035]; “100 parts of dry nitrile rubber NBR” [0035]; “20 parts of dry carbon black” [0035]; “vulcanizing agent is 2 parts” [0065]; “The vulcanization accelerator can be a conventional vulcanization accelerator, such as ZnO, stearic acid, preferably 5 parts by mass of ZnO, 2 parts by mass of stearic acid” [0018] reads on the vulcanizing aid, further matches “2 g of zinc oxide and 0.8 g of stearic acid” [Instant App. P5; 0076] all lie in the claimed ranges.
Response to Arguments
Applicant's arguments filed 11/5/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that “Sunada does not provide a person skilled in the art with the motivation to modify lignin using three compounds”, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Qiu teaches a preparation method for a modified lignin reinforced rubber as set forth above, which lead to the lignin/carbon black/nitrile rubber composite material has excellent comprehensive mechanical properties [0019], where lignin and carbon black serve as reinforcing agent [0019]. As analogous art, Sunada teaches the carbon black reinforcing rubber composite, with the reinforcing agents are carbon black and silica. Sunada further explicitly teaches the inclusion of three compounds match the instant application specification, and the claimed ranges into the rubber-carbon black based composition formation, which lead to the excellent mechanical properties [P1; L4] as taught by Sunada. Hence, Sunada does not teach away the instant application.
In response to applicant's argument that “unexpected results”, the argument is not commensurate in scope with the claims, hence, insufficient to establish non-obviousness.
In fact, the claim 1 is open to the wherein dosages of the compound containing the carbon-carbon double bond and the com-pound containing the sulfur element are both 1 wt % to 4 wt% of the lignin; a dosage of the compound capable of blocking the hydroxyl is 0.5 wt % to 4 wt % of the lignin. However, Examples 1-17 only includes 3 individual values of the three compounds concentrations, namely the dosage of the compound containing the carbon-carbon double bond and the compound containing the sulfur element were both 2 wt %; the dosage of the compound capable of blocking the hydroxyl was 4 wt % of that of the enzymatic hydrolysis lignin [Instant App. US20230135725; 0068-69 and Table 1]. Therefore, these examples are not commensurate in scope with the claims and cannot be relied upon to establish non-obviousness.
Whether 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. See MPEP 716.02(d).
The applicant's argument that “the controlling the order of mixing lead to different mechanical performance” which also within the declaration under 37 CFR 1.132 filed 11/10/2025, is further not commensurate in scope with the claim 1, hence, insufficient to establish non-obviousness.
In this case, the claim 1 is open to the wherein dosages of the compound containing the carbon-carbon double bond and the com-pound containing the sulfur element are both 1 wt % to 4 wt% of the lignin; a dosage of the compound capable of blocking the hydroxyl is 0.5 wt % to 4 wt % of the lignin. However, lignin9, lignin91, lignin92 still based upon the two individual single values of the two compounds concentrations, namely the dosage of the compound containing the carbon-carbon double bond and the compound containing the sulfur element were both 2 wt % [0068-69 and Table 1], wherein, the lingin91 is based on the different sequence of the first solution and the second solution, and the lingin92 is based on the first solution and the second solution were mixed, but the same first and second solutions only have single concentration values, namely the dosage of the compound containing the carbon-carbon double bond and the compound containing the sulfur element were both 2 wt % [Instant App. US20230135725; 0068-69 and Table 1]. Therefore, these examples are not commensurate in scope with the claims and cannot be relied upon to establish non-obviousness.
Whether 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. See MPEP 716.02(d).
Conclusion
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 extension fee 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.
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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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767
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