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 § 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.
Claims 1-7, 9, 10, 14, 15, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018/034217.
To further advance the prosecution of this invention, KYO et al. (U.S. Publication No. 2019/0203021, hereinafter KYO), which is an English equivalent of WO 2018/034217 will be used in the rejection.
Regarding claims 1-3, KYO teaches a modified conjugated diene-based polymer and a production method thereof [0001].The modified conjugated diene-based polymer is produced wherein a plurality of conjugated diene-based polymer chains are bonded to a modifier and the modified conjugated diene-based polymer has a nitrogen atom in at least one of the conjugated diene-based polymer chains and has a silicon atom in a modifier residue [0026-0036]. A method for producing the modified conjugated diene-based polymer comprises a polymerization step of polymerizing at least a conjugated diene compound in the presence of an organolithium compound and having at least one nitrogen atom in a molecule, or copolymerizing at least a conjugated diene compound and copolymerizable monomer having at least one nitrogen atom in a molecule in the presence of an organolithium compound to give a nitrogen-compounding conjugated diene-based polymer, and a modification step of modifying the nitrogen-containing conjugated diene-based polymer with a modifier having at least three silicon atoms and at least one nitrogen atom in one molecule and 8 or more reaction active sites [0037-0053 and 0151].
In the modification step, the octa- or higher-functional reactive compound (known as modifier) is reacted with the active ends of the nitrogen-containing conjugated diene-based polymer obtained by polymerization step, thus, the modified conjugated diene-based polymer in which a modifier residue and 8 or more molecules of the conjugated diene-based polymers are bonded is obtained [0226-0253]. The modified conjugated diene-based polymer has a glass transition temperature of -45oC or more and
-15oC or less [0223] (which is within the claimed range).
With regard to the claim limitations, “wherein, if measured by differential scanning calorimetry (DSC), a difference between a glass transition onset temperature (Tg-on) and a glass transition offset temperature (Tg-off), which arise glass transition is 10oC to 30oC (claim 1) and wherein the difference between a glass transition onset temperature (Tg-on) and a glass transition offset temperature (Tg-off), which arise glass transition is 15oC to 30oC (claim 2),” the examiner takes the position “if” the modified conjugated diene-based polymer of KYO is measured by DSC, the polymer would inherently possess the claimed property. More specifically, KYO teaches the same modified conjugated diene-based polymer as claimed, therefore would inherently possess the same properties as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. 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,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 4-6, KYO teaches the present invention as discussed above in paragraphs 4-7. Given KYO teaches the same modified conjugated diene-based polymer as the present invention, the position is taken that the modified conjugated diene-based polymer would inherently possess the same properties as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. 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,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 7, KYO teaches the conjugated diene-based polymer has a molecular weight distribution (Mw/Mn) is 1.1 or more and 3.0 or less [0140]. With regard to the claim limitation, “wherein the molecular weight distribution curve by gel permeation chromatography is unimodal,” KYO teaches the peak top molecular weights [0305-0306] which is a single peak which reads on the molecular weight distribution cure being unimodal.
Regarding claim 9, KYO teaches the conjugated diene-based polymer comprises copolymerizable monomer is a vinyl aromatic compound including styrene [0097 and 0100].
Regarding claim 10, KYO teaches the conjugated diene-based polymer having a nitrogen atom derived from an amino group at a polymerization starting end can be obtained [0166-0172] and in the modification step, the nitrogen-containing conjugated diene-based polymer is reacted with alkoxysilane group (trialkoxysilane) [0234-0235].
Regarding claims 14 and 15, KYO teaches the conjugated diene-based polymer modified by a reaction at its terminating end with a nitrogen-containing modifier [0068]. A method for producing the modified conjugated diene-based polymer comprises a polymerization step of polymerizing at least a conjugated diene compound in the presence of an organolithium compound having at least one nitrogen atom in a molecule, or copolymerizing at least a conjugated diene-based compound and a copolymerizable monomer having at least one nitrogen atom in a molecule in the presence of an organolithium compound to give a nitrogen-containing conjugated diene-based polymer [0037-0039].
Regarding 17, KYO teaches the modified conjugated diene-based copolymer has a Mooney viscosity measured at 100oC is 20 or more and 100 or less [0138] (which is within the claimed range).
Claims 1, 2, 4-10, and 14-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/216636.
To further advance the prosecution of this invention, LEE et al. (U.S. Publication No. 2021/0079124, hereinafter LEE), which is an English equivalent of WO 2019/216636 will be used in the rejection.
Regarding claims 1, 2, 8, and 10, LEE teaches a modified conjugated diene-based polymer includes a functional group derived from a monomer represented by Formula I and a functional group derived from a modifier (i.e., aminoalkoxysilane) (Abstract; [0009-0011 and 0032-0035]). The modified conjugated diene-based polymer may include a repeating unit derived from a conjugated diene based monomer and a functional group derived from a modifier [0036]. The modified conjugated diene-based polymer may have a Si (silicon) content of 50 ppm to 5,000 ppm [0049] and N (nitrogen) content of a 50 ppm to 5,000 ppm [0050].
With regard to the claim limitations, “wherein, if measured by differential scanning calorimetry (DSC), a difference between a glass transition onset temperature (Tg-on) and a glass transition offset temperature (Tg-off), which arise glass transition is 10oC to 30oC (claim 1) and wherein the difference between a glass transition onset temperature (Tg-on) and a glass transition offset temperature (Tg-off), which arise glass transition is 15oC to 30oC (claim 2),” the examiner takes the position “if” the modified conjugated diene-based polymer of LEE is measured by DSC, the polymer would inherently possess the claimed property. More specifically, LEE teaches the same modified conjugated diene-based polymer as claimed therefore would inherently possess the same properties as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. 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,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 4-6, LEE teaches the present invention as discussed above in paragraphs 15-17. Given LEE teaches the same modified conjugated diene-based polymer as the present invention, the position is taken that the modified conjugated diene-based polymer would inherently possess the same properties as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. 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,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 7, LEE teaches the modified conjugated diene-based polymer having a polydispersity index (also known as molecular weight distribution Mw/Mn) of 1.0 to less than 1.7 [0043]. The modified conjugated diene-based polymer has a unimodal molecular weight distribution, as indicated by a unimodal shape molecular weight distribution curve obtained by gel permeation chromatography (GPC) [0043].
Regarding claim 9, LEE teaches the modified conjugated diene-based polymer may be a copolymer including a repeating unit derived from a conjugated diene-based monomer, a repeating unit derived from an aromatic vinyl-based monomer, a functional group derived from a modification monomer and a functional group derived from a modifier [0038 and 0040].
Regarding claim 14, LEE teaches the modified conjugated diene-based polymer includes a functional group derived from a modification monomer represented by Formula I and a functional group derived from an aminoalkoxysilane-based modifier in at least one terminal [0032 and 0037].
Regarding claim 15, LEE teaches the modified conjugated diene-based polymer includes the steps of polymerizing a modification monomer represented by Formula 1 with a conjugated diene-based monomer and an aromatic vinyl-based monomer in the presence of a polymerization initiator to prepare an active polymer which introduces a functional group derived from the modification monomer (S1) [0095 and 0101]. The polymerization initiation includes methyllithium, ethyllithium, propyllithium, and etc. [0098-0099] (which are well-known organometallic compounds).
Regarding claim 16, LEE teaches the modified conjugated diene-based polymer has a number average molecular weight (Mn) of 1,000 g/mol to 2,000,000 g/mol and a weight average molecular weight (Mw) of 1,000 g/mol to 3,000,000 g/mol [0043].
Regarding claim 17, LEE teaches the modified conjugated diene-based polymer has a Mooney viscosity at 100oC of 30 or more, more specifically 40 to 140 [0063].
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/034217 in view of WO 2018/128291.
To further advance the prosecution of this invention, KYO et al. (U.S. Publication No. 2019/0203021, hereinafter KYO), which is an English equivalent of WO 2018/034217 and LEE et al. (U.S. Publication No. 2020/0002454, hereinafter LEE ‘454), which is an English equivalent of WO 2018/128291 will be used in the rejection.
Regarding claim 8, KYO substantially teaches the present invention, see paragraphs 5 and 6 above. More specifically, KYO teaches the modified conjugated diene-based polymer having a silicon atom in the amount of 15 ppm or more [0101-0103]. The modified conjugated diene-based polymer is used in a rubber composition (Title; [0001 and 0262]).
However, KYO does not specifically teach a preferred embodiment of the modified conjugated-diene based polymer having a Si (silicon) content of 50 ppm or more.
In the same field of endeavor of a modified conjugated diene-based polymer, LEE ‘454 teaches the polymer may have a Si content of 100 ppm to 10,000 ppm. The rubber composition comprising the modified conjugated diene-based polymer shows excellent mechanical properties such as tensile strength properties and viscoelasticity properties [0027].
Given KYO teaches the conjugated diene-based polymer for rubber compositions having a silicone atom in the amount of 15 ppm or more, it would have been obvious to a person of ordinary skill to have provided a Si content of 100 ppm to 10,000 ppm in the modified conjugated diene-based polymer of LEE ‘454 with the rubber composition of KYO for the benefit of obtaining excellent mechanical properties such as tensile strength properties and viscoelasticity properties as taught by LEE ‘454. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/034217.
To further advance the prosecution of this invention, KYO et al. (U.S. Publication No. 2019/0203021, hereinafter KYO), which is an English equivalent of WO 2018/034217 will be used in the rejection.
Regarding claim 16, KYO substantially teaches the present invention, see paragraphs 5-6 above. More specifically, KYO teaches the modified conjugated diene-based polymer having a nitrogen atom has a weight average molecular weight of 200,000 or more and 3,000,000 or less [0020 and 0023]. The molecular weight distribution (Mw/Mn) is 1.1 or more and 3.0 or less [0140].
The number average molecular weight (Mn) is between 220,000 (when Mw is 200,000 and Mw/Mn is 1.1) and 3,300,000 (when Mw is 3,000,000 and Mw/Mn is 1.1).
The number average molecular weight (Mn) is between 600,000 (when Mw is 200,000 and Mw/Mn is 3.0) and 9,000,000 (when Mw is 3,000,000 and Mw/Mn is 3.0).
However, KYO does not specifically teach a preferred embodiment of the modified conjugated-diene based polymer wherein a number average molecular weight (Mn) is 1,000 g/mol and to 2,000,000.
Given KYO teaches the number average molecular weight (Mn) is within the claimed range as calculated in paragraph 35 above and the amounts of Mw and molecular weight distribution (Mw/Mn) can be varied/adjusted in order to arrive at the claimed number average molecular weight (Mn), it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
The response is insufficient to rebut the anticipation and obviousness rejection. Despite the applicant’s arguments in view of the teachings of the prior art, the position is maintained.
Firstly, the applicant argues the difference between a glass transition onset temperature (Tg-on) and a glass transition offset temperature (Tg-off) as claimed for a modified conjugated diene-based polymer is achieved by a specific method controlling the microstructure of the polymer, i.e., polymerizing a conjugated diene-based monomer in the presence of a hydrocarbon solvent, a polymerization initiator and a polar additive to prepare an active polymer (S1); and reacting the active polymer with a modifier (S2), wherein step (S1) is performed in two or more polymerization reactors, a polymer is transported to a second reactor at a point where a polymerization conversion ratio in a first reactor is 70% to 85% and a polar additive, or a polar additive and a conjugated diene-based monomer are additionally added to the second reactor as discussed in the present specification [(0167]; Claims 18-19; Table 1).
To the contrary, KYO’s process does not involve adding a polar additive and/or conjugated diene-based monomer additionally at a point where the polymerization conversion ratio is 70% to 85%, similar to Comparative Examples 1-4 in the present application, which provide a difference in the glass transition temperature onset temperature and offset temperature less than 10oC . Therefore, KYO does not disclose, expressly or inherently, a modified conjugated diene-based polymer as claimed.
The examiner has considered the applicant’s arguments, however, the examiner disagrees. The arguments are based on method/process steps to obtain a modified conjugated diene-based polymer. The claims are being examined as a product claim, therefore, the process to obtain the modified conjugated diene-based polymer is not required.
Although KYO does not disclose the process steps (S1) and (S2), it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed (process) and given that the modified conjugated diene-based polymer is produced wherein a plurality of conjugated diene-based polymer chains are bonded to a modifier and the modified conjugated diene-based polymer has a nitrogen atom in at least one of the conjugated diene-based polymer chains and has a silicon atom in a modifier residue meets the requirements of the claimed composition, KYO clearly meet the requirements of present claims.
Secondly, the applicant argues Examples 1 to 8 by the claimed method all have difference in the glass transition temperature onset temperature and offset temperature in the claimed range of 10oC to 30oC, but Comparative Examples 1 to 6 prepared by a different process have the differences in the glass transition temperature onset temperature and offset temperature of less than 10oC, where the Comparative Examples 1 and 2 were prepared by a method where the polar additive and the conjugated diene-based monomer are not additionally added at a point where the polymerization conversion ratio is 70-85%. Comparative Examples 3 and 4 were prepared by a method where the polar additive is not additionally added at a point where the polymerization conversion ratio is 70-85%, and Comparative Examples 3 and 4 were prepared by a method where the polar additive and the conjugated diene-based monomer are additionally added at a point where the polymerization conversion ratio is less than 70% (65%) or more than 85% (87%).
The examiner has considered the working Examples and Comparative Examples, however, the examples are not commensurate in scope with the claims. More specifically, the conjugated diene-based monomer and functional group derived from a modifier is broadly claimed, but the components in the Examples are specific, amounts of the components are specific, and other components are used that are not claimed. Furthermore, as indicated above, the claims are product by process limitations, therefore,
the method can be different as long as the same/similar product is produced.
THIS ACTION IS MADE FINAL. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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