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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendments filed on February 25, 2026 have been entered. Claims 1-6 and 8-11 are pending in the application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Aoshima (JP 2018/172548 A, using US 2020/0031976 A1 as English equivalent for citations below) in view of Kitai (JP 2018/002902 A, using the machine translation for the citations below).
Regarding Claims 1 and 3: Aoshima discloses a composition containing a filler (para. 0190, reinforcing material) and a conjugated diene-based polymer comprising conjugated diene monomer units (para. 0015), wherein the polymer includes high molecular weight molecules and medium molecular weight molecules (para. 0022). Aoshima further teaches that the aromatic vinyl content of the monomers is from 5-40 mass%, which improves fuel efficiency (para. 0033). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a conjugated diene-based polymer with an overlapping aromatic content in order to improve fuel efficiency.
Aoshima teaches that polymers other than the conjugated diene-based polymer may be added, but they are not necessary components (para. 0195-0197). Therefore, the polymer component of the composition comprising 100% of the conjugated diene-based polymer is envisioned.
Aoshima teaches tri- or higher functional coupling agents (para. 0184-0185), but is silent to the coupling agent being selected from the group consisting of bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, and 1,6-bis(trichlorosilyl)hexane.
Kitai teaches a conjugated diene rubber comprising a coupling agent selected from bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, and 1,6-bis(trichlorosilyl)hexane (para. 0047). Kitai further teaches that the use of coupling agents with at least 5 silicon-halogen bonds, such as those listed above, result in a conjugated diene rubber with excellent driving stability (para. 0047). Kitai and Aoshima are analogous art because they are directed toward the same field of endeavor, namely conjugated diene rubbers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, or 1,6-bis(trichlorosilyl)hexane as the coupling agent in the composition taught by Aoshima in order to produce a rubber with good driving stability.
Aoshima does not disclose the degree of adsorption of high molecular weight molecules and medium molecular weight molecules onto silica. However, Aoshima teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The instant specification cites that the degree of adsorption of a molecule onto silica may be controlled by the incorporation of a particular type of a vinyl compound having a functional group interactive with silica (para. 0082-0083). Aoshima discloses that the polymer contains modifying agents (para. 0019), such as vinyl silanes (para. 0112). Therefore, the claimed degree of adsorption onto silica would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. 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 as to how to obtain the claimed properties with only the claimed ingredients.
Not disclosed is the shrinkage factor of high molecular weight molecules. However, Aoshima and Kitai teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The instant specification discloses that the shrinkage factor of high molecular weight molecules may be controlled within the claimed range by the use of a tri- or higher functional coupling agent in the polymerization process, such as bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, or 1,6-bis(trichlorosilyl)hexane (para. 0072). Kitai teaches these coupling agents, as set forth above. Therefore, the claimed shrinkage factor of high molecular weight molecules would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01.
Regarding Claim 2: Aoshima teaches the conjugated diene-based polymer as set forth above. Aoshima does not disclose the shrinkage factor of medium molecular weight molecules. However, Aoshima teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed shrinkage factor of medium molecular weight molecules would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. 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 as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 4: Aoshima teaches that the conjugated diene-based polymer has at least three molecular weight peak values (para. 0022).
Regarding Claim 5: Aoshima discloses aromatic vinyl compounds (para. 0032).
Regarding Claim 6: Aoshima discloses the conjugated diene-based polymer composition of claim 1, as set forth above. Aoshima further teaches that the polymer contains a low molecular weight molecule (para. 0022), which has a molecular weight of from 30,000 to 100,000 (para. 0023). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a low molecular weight molecule with an overlapping molecular weight and would have been motivated to do so since Aoshima teaches that this low molecular weight improves the processability of the polymer (para. 0023).
Regarding Claims 8-9: Aoshima discloses a tire (para. 0206) made from a crosslinked rubber prepared by crosslinking the composition as set forth above (para. 0205, vulcanization).
Claims 1 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hamann et al (US 2020/0131358 A1) in view of Kitai (JP 2018/002902 A, using the machine translation for the citations below) and Aoshima (JP 2018/172548 A, using US 2020/0031976 A1 as English equivalent for citations below).
Regarding Claim 1: Hamann teaches a polymer composition containing a filler (para. 0076) and a conjugated diene-based polymer containing aromatic vinyl monomer units (para. 0004).
Hamann is silent to the aromatic vinyl content of the polymer.
Aoshima teaches conjugated diene-based polymers containing 5-50 mass% of aromatic vinyl units, wherein said range increases fuel efficiency (para. 0033). Aoshima and Hamann are analogous art because they are directed toward the same field of endeavor, namely conjugated diene-based polymers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the vinyl aromatic monomers to the conjugated diene-based polymer of Hamann in an amount of 5-50 mass% in order to increase the fuel efficiency of the composition.
Hamann teaches silicon halide coupling agents (para. 0048) but is silent to the coupling agent being selected from the group consisting of bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, and 1,6-bis(trichlorosilyl)hexane.
Kitai teaches a conjugated diene rubber comprising a coupling agent selected from bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, and 1,6-bis(trichlorosilyl)hexane (para. 0047). Kitai further teaches that the use of coupling agents with at least 5 silicon-halogen bonds, such as those listed above, result in a conjugated diene rubber with excellent driving stability (para. 0047). Kitai and Hamann are analogous art because they are directed toward the same field of endeavor, namely conjugated diene rubbers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, or 1,6-bis(trichlorosilyl)hexane as the coupling agent in the composition taught by Hamann in order to produce a rubber with good driving stability.
Hamann does not disclose the degree of adsorption of high molecular weight molecules and medium molecular weight molecules onto silica. However, Hamann teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The instant specification cites that the degree of adsorption of a molecule onto silica may be controlled by the incorporation of a particular type of a vinyl compound having a functional group interactive with silica (para. 0082-0083). Hamann discloses that the polymer contains vinyl silanes (para. 0004). Therefore, the claimed degree of adsorption onto silica would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. 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 as to how to obtain the claimed properties with only the claimed ingredients.
Not disclosed is the shrinkage factor of high molecular weight molecules. However, Hamann, Aoshima and Kitai teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The instant specification discloses that the shrinkage factor of high molecular weight molecules may be controlled within the claimed range by the use of a tri- or higher functional coupling agent in the polymerization process, such as bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, or 1,6-bis(trichlorosilyl)hexane (para. 0072). Kitai teaches these coupling agents, as set forth above. Therefore, the claimed shrinkage factor of high molecular weight molecules would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01.
Regarding Claims 10-11: Hamann discloses a method of preparing a conjugated diene-based polymer composition comprising: a first step of polymerizing a conjugated diene monomer in the presence of a polymerization initiator (para. 0004) in an inert solvent (para. 0047, hexane) to prepare a solution containing polymer chains having an active terminal (para. 0004, living polymer); a second step of partially converting the polymer chains with an active terminal into coupled polymer chains by a coupling reaction (para. 0004); and a third step of further polymerizing the polymer chains having an active terminal (para. 0004). Hamann further discloses that a vinyl monomer containing a functional group interactive with silane is added in the first or third step of the polymerization (para. 0004, vinyl silane), and that the polymerization initiator is further added in the third step (para. 0004).
Hamann is silent to the coupling agent being selected from the group consisting of bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, and 1,6-bis(trichlorosilyl)hexane.
Kitai teaches a method of producing a conjugated diene rubber using a coupling agent selected from bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, and 1,6-bis(trichlorosilyl)hexane (para. 0047). Kitai further teaches that the use of coupling agents with at least 5 silicon-halogen bonds, such as those listed above, result in a conjugated diene rubber with excellent driving stability (para. 0047).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use bis(trichlorosilyl)methane, 1,2-bis(trichlorosilyl)ethane, 1,3-bis(trichlorosilyl)propane, 1,4-bis(trichlorosilyl)butane, 1,5-bis(trichlorosilyl)pentane, or 1,6-bis(trichlorosilyl)hexane as the coupling agent in the method taught by Hamann in order to produce a rubber with good driving stability.
Hamann teaches adding modifying compounds that may comprise alkoxysilane compounds containing an amino group (para. 0040) at the end of the polymerization process (para. 0005). However, Hamann is silent to the specific examples cited in instant claim 10.
Aoshima teaches a conjugated diene-based polymer comprising a modifying agent (para. 0009), such as [3-(dimethylamino)propyl]trimethoxysilane, [3-(diethylamino)propyl]trimethoxysilane, [3-(dimethylamino)propyl]triethoxysilane or [3-(diethylamino)propyl]triethoxysilane, which improve the fuel efficiency of tires containing said conjugated diene-based polymer (para. 0137).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the modifying agent of Hamann with [3-(dimethylamino)propyl]trimethoxysilane, [3-(diethylamino)propyl]trimethoxysilane, [3-(dimethylamino)propyl]triethoxysilane or [3-(diethylamino)propyl]triethoxysilane, as taught by Aoshima, and they would have been motivated to do so in order to optimize the fuel efficiency.
Response to Arguments
Applicant's arguments filed on February 25, 2026 have been fully considered but they are not persuasive.
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). In this case, although Kitai does not include specific examples of polymers utilizing the claimed coupling agents, examples and preferred embodiments do not teach away from the broader disclosure. Patents are relevant as prior art for all they contain. See MPEP 2123. Kitai further provides a clear rationale for utilizing the claimed coupling agents: “A tire obtained by using a highly branched conjugated diene rubber obtained by using, in combination with a halogenated silicon compound having five or more silicon-halogen atom bonds in one molecule as a coupling agent, has excellent driving stability” (para. 0047).
Regarding applicant’s allegations of unexpected results: The use of coupling agents with higher functionalities is known to induce higher amounts of branching in a polymer (see quote from Kitai, above). Highly branched polymers tend to have a lower shrinkage factor g’, as set forth in LCGC International (Additional Art, below). Therefore, the lower shrinkage factor of a polymer obtained using a 1,6-bis(trichlorosilyl)hexane coupling agent as compared to a silicon tetrachloride coupling agent is a predictable and expected result.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
LCGC International (Principles of Detection and Characterization of Branching in Synthetic and Natural Polymers by MALS, 2014, The Column, Vol. 10, Issue 10) is drawn toward measurements of polymer branching.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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