DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-15, and the species of a comonomer of formula (5) in the reply filed on 4/20/26 is acknowledged.
Claims 11, 13, and 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (claims 11, 13) or a nonelected invention (claims 16-19), there being no allowable generic or linking claim.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 4/6/2020. It is noted, however, that applicant has not filed a certified copy of the 2020-068479 application as required by 37 CFR 1.55.
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, 3, 6, 7, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of copending Application No. 18/266,016 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Copending claim 1 recites an invention which is a hydrogenated diene polymer (for claim 1) having a branching number of 1.5 or more, overlapping the claimed range (for claims 1, 7), a hydrogenation rate of 40 to 85% (for claims 1, 15). Further note that the copending claim recites the same structural elements (1)-(4) having content (mol%) (a)-(d) (for claim 3), wherein the polymer of the copending claim satisfies the formula 10 ≤ [(a + b)/(a + b +c +d)] × 100 ≤ 70, overlapping the claimed expression (S) (for claim 3).
Regarding claim 6: Copending claim 8 states that the modification ratio is 65% by mass or more, overlapping the claimed range.
The copending claims do not specifically recite a polymer having the claimed branching number of 2.5 or more.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
The copending claims recite a hydrogenated polymer wherein the branching number overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a hydrogenated polymer having the required number of branches in view of the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of copending Application No. 18/266016 (reference application) in view of Kyo et al, CN109563180.
The examiner notes that Kyo et al, US2019/0203021, has been utilized as an equivalent English translation of CN109563180 for the preparation of this Action.
The contents of copending claim 1 are discussed earlier in this Action.
Copending claim 1 does not state that the vinyl unit is hydrogenated to a degree of 90 to 100% as required.
Kyo discloses the production of hydrogenated conjugated diene-based polymers. Kyo discloses that teaches that 1) the hydrogenation rate is not especially limited, and can be any value in accordance with the final purpose of the polymer and 2) that selective hydrogenation of the vinyl group (i.e., the 1-,2 -butadiene unit), corresponding to recited formula (2), improves the heat resistance and dynamic performance of the final product (¶0134). It was therefore known in the art that the hydrogenation rate of the vinyl group was a result effective variable, wherein increasing the hydrogenation rate results in increased heat resistance and improved dynamic performance. It therefore would have been obvious to vary the hydrogenation ratio of the vinyl bond through routine experimentation in order to optimize these properties.
Claims 1, 4, 6-10, 12 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6-8, and 10 of copending Application No. 17/640906 (reference application) in view of Kyo et al, CN109563180.
Copending claim 1 recites a conjugated diene-based polymer (for claim 1) having a branching number of 8 or more (for claims 1, 7) and a main branch structure comprising a vinyl monomer having an alkoxysilyl group (for claim 8).
Regarding claims 6, 8-10, and 12: Copending claims 4, 6-8, and 10 recite limitations that overlap the scope of the instant claims.
The patented claims are silent regarding hydrogenation to a rate of 30 to less than 99%.
Kyo teaches the production of a conjugated diene-based polymer used in the production of tires (abstract; ¶0001). As taught by Kyo, it was known in the art that hydrogenation of the double bond of the conjugated diene unit(s) of such (co)polymers results in a final product having improved properties of heat resistance, weather resistance, and dynamic performance, with a hydrogenation rate of 3 to 70%, overlapping the claimed range (for claims 1, 15), being disclosed (¶0134).
Regarding claim 4: As noted earlier in this Action, Kyo teaches that 1) the hydrogenation rate is not especially limited, and can be any value in accordance with the final purpose of the polymer and 2) that selective hydrogenation of the vinyl group (i.e., the 1-,2 -butadiene unit), corresponding to recited formula (2), improves the heat resistance and dynamic performance of the final product (¶0134). It was therefore known in the art that the hydrogenation rate of the vinyl group was a result effective variable, wherein increasing the hydrogenation rate results in increased heat resistance and improved dynamic performance. It therefore would have been obvious to vary the hydrogenation ratio of the vinyl bond through routine experimentation in order to optimize these properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-10, 12 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-10, and 12 of copending Application No. 17/916109 (reference application) in view of Kyo et al, CN109563180.
Copending claim 1 recites a conjugated diene-based polymer (for claim 1) having a branching number of 7 or more (for claims 1, 7), an aromatic vinyl content of 1 to 32 % (for claim 5), a content of vinyl bond content of the conjugated diene content- corresponding to the combination of units of formulae (1) and (2)- of 11 to35 mol% (for claim 3), and modification ratio of 75% or more (for claim 6).
Regarding claims 8-10, and 12: Copending claims 8-10 and 12 recite limitations that overlap the scope of the instant claims.
The patented claims are silent regarding hydrogenation to a rate of 30 to less than 99%.
Kyo teaches the production of a conjugated diene-based polymer used in the production of tires (abstract; ¶0001). As taught by Kyo, it was known in the art that hydrogenation of the double bond of the conjugated diene unit(s) of such (co)polymers results in a final product having improved properties of heat resistance, weather resistance, and dynamic performance, with a hydrogenation rate of 3 to 70%, overlapping the claimed range (for claims 1, 15), being disclosed (¶0134).
Regarding claim 4: As noted earlier in this Action, Kyo teaches that 1) the hydrogenation rate is not especially limited, and can be any value in accordance with the final purpose of the polymer and 2) that selective hydrogenation of the vinyl group (i.e., the 1-,2 -butadiene unit), corresponding to recited formula (2), improves the heat resistance and dynamic performance of the final product (¶0134). It was therefore known in the art that the hydrogenation rate of the vinyl group was a result effective variable, wherein increasing the hydrogenation rate results in increased heat resistance and improved dynamic performance. It therefore would have been obvious to vary the hydrogenation ratio of the vinyl bond through routine experimentation in order to optimize these properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 6-10, 12 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11339240 in view of Kyo et al, CN109563180.
Patented claim 1 recites a conjugated diene-based polymer (for claim 1) having a branching number of 8 or more (for claims 1, 7).
Regarding claims 6, 8-10, 12: Patented claims 2-5 and 7recite limitations which overlap the scope of the instant claims.
The patented claims are silent regarding hydrogenation to a rate of 30 to less than 99%.
Kyo teaches the production of a conjugated diene-based polymer used in the production of tires (abstract; ¶0001). As taught by Kyo, it was known in the art that hydrogenation of the double bond of the conjugated diene unit(s) of such (co)polymers results in a final product having improved properties of heat resistance, weather resistance, and dynamic performance, with a hydrogenation rate of 3 to 70%, overlapping the claimed range (for claims 1, 15), being disclosed (¶0134).
As taught by Kyo, it was known in the art to hydrogenate conjugated diene-based polymers in order to improve the final product’s heat resistance, weather resistance, and dynamic performance. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the invention of the patented claims by hydrogenating it in order to obtain the improved properties taught by Kyo.
Regarding claim 4: As noted earlier in this Action, Kyo teaches that 1) the hydrogenation rate is not especially limited, and can be any value in accordance with the final purpose of the polymer and 2) that selective hydrogenation of the vinyl group (i.e., the 1-,2 -butadiene unit), corresponding to recited formula (2), improves the heat resistance and dynamic performance of the final product (¶0134). It was therefore known in the art that the hydrogenation rate of the vinyl group was a result effective variable, wherein increasing the hydrogenation rate results in increased heat resistance and improved dynamic performance. It therefore would have been obvious to vary the hydrogenation ratio of the vinyl bond through routine experimentation in order to optimize these properties.
Claims 1, 2, 4, 6, 7, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 11091609 in view of Kyo et al, CN109563180.
Patented claim 1 recites a modified conjugated diene-based polymer having a weight average molecular weight of 200000 to 3000000 (for claim 2) and a branching degree of 8 or more (for claims 1, 7).
Regarding claim 6: Patented claim 3 states that the modification ratio is 75% or more.
The patented claims are silent regarding hydrogenation to a rate of 30 to less than 99%.
Kyo teaches the production of a conjugated diene-based polymer used in the production of tires (abstract; ¶0001). As taught by Kyo, it was known in the art that hydrogenation of the double bond of the conjugated diene unit(s) of such (co)polymers results in a final product having improved properties of heat resistance, weather resistance, and dynamic performance, with a hydrogenation rate of 3 to 70%, overlapping the claimed range (for claims 1, 15), being disclosed (¶0134).
As taught by Kyo, it was known in the art to hydrogenate conjugated diene-based polymers in order to improve the final product’s heat resistance, weather resistance, and dynamic performance. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the invention of the patented claims by hydrogenating it in order to obtain the improved properties taught by Kyo.
Regarding claim 4: As noted earlier in this Action, Kyo teaches that 1) the hydrogenation rate is not especially limited, and can be any value in accordance with the final purpose of the polymer and 2) that selective hydrogenation of the vinyl group (i.e., the 1-,2 -butadiene unit), corresponding to recited formula (2), improves the heat resistance and dynamic performance of the final product (¶0134). It was therefore known in the art that the hydrogenation rate of the vinyl group was a result effective variable, wherein increasing the hydrogenation rate results in increased heat resistance and improved dynamic performance. It therefore would have been obvious to vary the hydrogenation ratio of the vinyl bond through routine experimentation in order to optimize these properties.
Claims 1, 4-10, 12, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-7, and 9 and of U.S. Patent No. 12215179 in view of Kyo et al, CN109563180.
Patented claim 1 recites a conjugated diene-based polymer (for claim 1) having a branching number of 8 or more (for claims 1, 7).
Regarding claims 5, 6, 8-10, and 12: Patented claims 3-7 and 9 recite limitations that overlap the scope of the instant claims.
The patented claims are silent regarding hydrogenation to a rate of 30 to less than 99%.
Kyo teaches the production of a conjugated diene-based polymer used in the production of tires (abstract; ¶0001). As taught by Kyo, it was known in the art that hydrogenation of the double bond of the conjugated diene unit(s) of such (co)polymers results in a final product having improved properties of heat resistance, weather resistance, and dynamic performance, with a hydrogenation rate of 3 to 70%, overlapping the claimed range (for claims 1, 15), being disclosed (¶0134).
As taught by Kyo, it was known in the art to hydrogenate conjugated diene-based polymers in order to improve the final product’s heat resistance, weather resistance, and dynamic performance. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the invention of the patented claims by hydrogenating it in order to obtain the improved properties taught by Kyo.
Regarding claim 4: As noted earlier in this Action, Kyo teaches that 1) the hydrogenation rate is not especially limited, and can be any value in accordance with the final purpose of the polymer and 2) that selective hydrogenation of the vinyl group (i.e., the 1-,2 -butadiene unit), corresponding to recited formula (2), improves the heat resistance and dynamic performance of the final product (¶0134). It was therefore known in the art that the hydrogenation rate of the vinyl group was a result effective variable, wherein increasing the hydrogenation rate results in increased heat resistance and improved dynamic performance. It therefore would have been obvious to vary the hydrogenation ratio of the vinyl bond through routine experimentation in order to optimize these properties.
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.
Claim 14 is 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.
Claim 14 depends from claim 1 and states that a ratio of a component having a molecular weight of 300000 or less is 20 to 80%; however, the claim does not specify what type of ratio it is intended to refer to (i.e., weight percent, mole percent, etc.). The scope of the claim is therefore unclear.
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 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cavallo et al, WO2012/055802.
Cavallo discloses a hydrogenated styrene/butadiene copolymer comprising 3 to 25 % styrene and 75 to 97% butadiene, wherein said copolymer has a hydrogenation degree of at least 95% (abstract). Example B-1 (Table 1) discloses a hydrogenated star copolymer of 7.6 wt% styrene (for claim 5) and (deduced) 92.4 wt% butadiene, corresponding to the claimed hydrogenated conjugated diene-based polymer (for claim 1). The star copolymer of Example B-1 is reported to have a hydrogenation degree of 98% (for claim 1), a structure comprising 18 arms, corresponding to the claimed branching number (for claims 1, 7), and a weight average molecular weight (Mw) of 346000 (for claim 2).
Regarding claim 3: Note that claimed formulae (1) and (2) represent the hydrogenated (formula 1) and non-hydrogenated (formula 2) repeating units obtained by 1, 2- addition of butadiene during polymerization. The polymer of Example B-1 is reported to have a content of 1, 2 vinyl addition units of 51% (Table 1) and therefore satisfies the claimed invention.
Regarding claim 4: As noted above, the polymer of Example B-1 has a hydrogenation degree of 98%. It is therefore reasonably expected that content of hydrogenated 1, 2-units, corresponding to formula (1), will be in the required range.
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 nonobviousness.
Claim(s) 1-7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kyo et al, CN109563180.
Kyo discloses a modified conjugated diene-based polymer (for claim 1) (¶0020) having a branching degree of 8 or more (for claims 1, 7) (¶0029); a hydrogenation rate of the conjugated diene portion in the range of 3.0 to 70% (for claims 1, 15) (¶0134), overlapping the claimed range (for claim 1); a weight average molecular weight (Mw) of 200,000 to 3,000,000 (¶0023), overlapping the claimed range (for claim 2); a vinyl aromatic monomer content of 0 to 60 mass% (for claim 5) (¶0219); and a modification ratio of 75% or more (for claim 6) (¶0025).
Regarding claim 3: Kyo teaches that the vinyl content (i.e., the 1,2-butadiene content) of the prior art polymer is in the range of 10 to 75 mol% (¶0221)-i.e., the ratio of the combination of 1,2-butadiene unit, corresponding to claimed formula (2), and hydrogenated 1, 2-butadiene unit, corresponding to claimed formula (1), will be 10 to 75 to all butadiene-derived units in the prior art polymer will be in the range of 10 to 75 mol%, overlapping the claimed range.
Regarding claim 4: Note that Kyo teaches that 1) the hydrogenation rate is not especially limited, and can be any value in accordance with the final purpose of the polymer and 2) that selective hydrogenation of the vinyl group (i.e., the 1-,2 -butadiene unit), corresponding to recited formula (2), improves the heat resistance and dynamic performance of the final product (¶0134). It was therefore known in the art that the hydrogenation rate of the vinyl group was a result effective variable, wherein increasing the hydrogenation rate results in increased heat resistance and improved dynamic performance. It therefore would have been obvious to vary the hydrogenation ratio of the vinyl bond through routine experimentation in order to optimize these properties.
Kyo does not specifically disclose the production of a conjugated diene-based polymer having a hydrogenation rate of 30 to less than 99%.
As noted above, Kyo teaches that the prior art polymer may have a hydrogenation rate of the conjugated diene portion in the range of 3.0 to 70%, overlapping the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to prepare a polymer having the claimed hydrogenation rate in view of the teachings of Kyo; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action (for claims 1, 15).
Claim(s) 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kyo et al, CN109563180 as applied to claims 1-3, 5-7, 15 above, and further in view of Nishioka et al, JP2011089086.
A machine translation of Nishioka was used for the preparation of this Action.
As discussed earlier in this Action, Kyo discloses the production of a modified conjugated diene-based polymer having a branching degree of 8 or more and a hydrogenation rate of the conjugated diene portion in the range of 3.0 to 70%; note that the branching present in the structure of the prior art polymer corresponds to the claimed star polymer structure (for claim 8); see for instance Kyo’s formula (1) (¶0030). Kyo further teaches that the prior art polymer is used in silica-containing compositions (¶0274-0277) which are used in tire treads (¶0291-0292).
Kyo is silent regarding the incorporation of a vinyl monomer containing an alkoxysilyl group or a halosilyl group.
Nishioka discloses the production of conjugated diene-based polymers used in tires (¶0034), wherein said conjugated diene-based polymer is obtained by copolymerizing butadiene with a vinyl aromatic monomer having the structure shown below wherein R1, R2, and R3 each can be a C1 to C10 hydrocarbon group (abstract, ¶0007-0009).
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Note that this corresponds to the vinyl monomer of claimed formula (5) (for claims 8, 9) wherein R1 is hydrogen (for claim 9) R2 and R3 are C1 to C10 hydrocarbon groups (for claim 9), m is 2 (for claim 9), n is 1 (for claim 9) and l is 0 (for claim 9). Nishioka teaches that inclusion of this monomer in the polymer results in a final composition having improvements in low fuel consumption performance and wet grip (¶0014).
Kyo and Nishioka are directed towards the same field of endeavor-i.e., the production of modified conjugated diene-based polymers used in the production of tires. Further note that the polymer of Kyo may comprise an additional comonomers which are copolymerizable with the conjugated diene, with preference given to vinyl aromatic comonomers (¶0097, 0100). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the polymer of Kyo by including the vinylaromatic monomer having the structure shown above, with the reasonable expectation of obtaining a final polymer having improved fuel consumption performance and wet grip as taught by Nishioka (for claims 8, 9).
Claim(s) 8-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kyo et al, CN109563180, as applied to claims 1-3, 5-7, 15 above, and further in view of Hisamura et al, US11339240.
As discussed earlier in this Action, Kyo discloses the production of a modified conjugated diene-based polymer having a branching degree of 8 or more and a hydrogenation rate of the conjugated diene portion in the range of 3.0 to 70%; note that the branching present in the structure of the prior art polymer corresponds to the claimed star polymer structure (for claim 8); see for instance Kyo’s formula (1) (¶0030). Kyo further teaches that the prior art polymer is used in silica-containing compositions (¶0274-0277) which are used in tire treads (¶0291-0292).
Kyo is silent regarding the incorporation of a vinyl monomer containing an alkoxysilyl group or a halosilyl group.
Hisamura discloses the production of a modified conjugated diene-based polymer used in the production of tires (Column 1, lines 10-13), wherein a monomer having the structure shown below (for claim 8), corresponding to claimed formula (5) (for claim 9), is copolymerized with a conjugated diene monomer (Column 2: lines 60-67; Column 3: lines 4-63).
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Note that R1 can be hydrogen (for claims 9, 10, 12),R3 can be a C1 to C20 alkyl (for claim 9), m can be 0 (for claims 9, 10, 12), l can be 0 (for claims 9, 12) and n can be 3 (for claims 9, 12). Hisamura teaches that including the monomer shown above as a comonomer in the polymerization of the conjugated diene polymer improves branching, thereby improving abrasion resistance and processability of the final product Column 14: lines 61-67).
Kyo and Hisamura are directed towards the same field of endeavor-i.e., the production of modified conjugated diene-based polymers used in the production of tires. Further note that the polymer of Kyo may comprise an additional comonomers which are copolymerizable with the conjugated diene, with preference given to vinyl aromatic comonomers (¶0097, 0100). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the polymer of Kyo by including the vinylaromatic monomer having the structure shown above, with the reasonable expectation of obtaining a final polymer having improved abrasion resistance and processability as taught by Hisamura (for claims 8-10, 12).
Claim(s) 1-10, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hisamura et a, US11339240, in view of Kyo et al, CN109563180.
Hisamura discloses a modified conjugated diene-based polymer (for claim 1) having a branching number of 8 or more (for claims 1, 7) and a modification ratio of 60% mass or more (for claim 6) (abstract).
Regarding claim 2: The prior art copolymer has an absolute molecular weight of 40 × 104 to 5000 × 104 (abstract), overlapping the claimed range. Note that Hisamura equates the Mw to the absolute molecular weight (Column 43: lines 8-10).
Regarding claim 3: Hisamura teaches that the bound vinyl content of the conjugated diene unit is 10 to 75 mol% (Column 23: lines 21-25), overlapping the claimed range. Note that combination of claimed formula (1) and formula (2) represent the content of bound vinyl units in the conjugated diene component.
Regarding claim 5: The prior art copolymer may comprise 0 to 60 mass% vinyl aromatic monomer (Column 23: lines 4-8).
Regarding claims 8-10, 12: The prior art copolymer is a star polymer having 3 or more branches, wherein at least one branched chain comprises a vinyl monomer (for claim 8) of formula (1) shown below, corresponding to claimed formula (5) (for claim 9) (Column 2: lines 65 to Column 3: line 63).
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Note that in the above structure R1 can be hydrogen (for claims 9, 10, 12), R3 can be a C1 to C20 alkyl (for claim 9), l can be 0 (for claims 9, 12), m can be 0 (for claims 9, 10, 12) and n can be 3 (for claim 12).
Hisamura is silent regarding the claimed branching number (for claim 1) and component LM (for claim 14); however, it is reasonably expected that these properties are met.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
The prior art discloses a modified conjugated diene polymer which 1) comprises the same monomers in the same amounts as the claimed copolymer, 2) comprises the same branching agent as used in the claimed copolymer, 3) has the same overall molecular weight as the claimed copolymer, and 4) is prepared via similar process (see for instance Example 1-Column 43, line 30 to Column 44: line 25) as used to make the claimed copolymer (specification ¶0137). As the prior art copolymer appears to be the same as the claimed copolymer, it is reasonably expected that its properties would be the same as those used to define the claimed copolymer (for claims 1, 14). The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed copolymer would not be present in the copolymer disclosed by Hisamura.
Hisamura is silent regarding hydrogenation to a rate of 30 to less than 99%.
Kyo teaches the production of a conjugated diene-based polymer used in the production of tires (abstract; ¶0001). As taught by Kyo, it was known in the art that hydrogenation of the double bond of the conjugated diene unit(s) of such (co)polymers results in a final product having improved properties of heat resistance, weather resistance, and dynamic performance, with a hydrogenation rate of 3 to 70%, overlapping the claimed range (for claim 1), being disclosed (¶0134).
As taught by Kyo, it was known in the art to hydrogenate conjugated diene-based polymers in order to improve the final product’s heat resistance, weather resistance, and dynamic performance. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the copolymer of Hisamura by hydrogenating it in order to obtain the improved properties taught by Kyo (for claim 1).
Regarding claim 4: As noted earlier in this Action, Kyo teaches that 1) the hydrogenation rate is not especially limited, and can be any value in accordance with the final purpose of the polymer and 2) that selective hydrogenation of the vinyl group (i.e., the 1-,2 -butadiene unit), corresponding to recited formula (2), improves the heat resistance and dynamic performance of the final product (¶0134). It was therefore known in the art that the hydrogenation rate of the vinyl group was a result effective variable, wherein increasing the hydrogenation rate results in increased heat resistance and improved dynamic performance. It therefore would have been obvious to vary the hydrogenation ratio of the vinyl bond through routine experimentation in order to optimize these properties.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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