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 .
Status of Claims
Claims 1-20 are pending in the current application.
Claim 12 is amended in the current application.
Response to Arguments
Applicant's remarks and amendments filed on November 11, 2025 have been fully considered.
Applicant argues that Ono teaches a tan delta versus temperature curve of a rubber polymer composition that can comprise a variety of additives, where this is different from the tan delta versus temperature curve of a polymer as claimed.
This is not persuasive for the following reasons. Ono recites a “rubber composition” that is formed of conjugated diene-based rubber polymer and oil contained in oil extended rubbers (Ono, Abstract, [0028]-[0040], [0110]-[0112], [0205], Fig 3). Although Ono discusses including additional components such as resins, fillers, carbon black, silica, and silane coupling agents, Ono specifically states that such components are preferably included and Ono does not identify these as critical components (Ono, [0053], [0058], [0063], [0068], [0115], [0124], [0128], [0134], [0140]). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123, II. Ono’s broader disclosure provides the “rubber composition” where preferable components are not required. Therefore, Ono’s “rubber composition” is effectively a conjugated diene-based rubber polymer having a half width (i.e., full width at half maximum value, FWHM) of a tan δ peak shown in an about -100oC to 100oC range is equal to or less than 50oC measured at a frequency of 10 Hz, an initial strain of 10%, and a temperature rise of 2oC/min (Ono, Abstract, [0028]-[0040], [0205], Fig 3).
Moreover, present claims 1-9 pertaining to the “oil-extended conjugated diene-based polymer” all utilize the transitional phrase “comprising.” The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). See MPEP 2111.03, I. Therefore, the “oil-extended conjugated diene-based polymer” of claims 1-9 is open-ended and allows for the inclusion of additional unrecited elements such as sins, fillers, carbon black, silica, and silane coupling agents, so long as the recited claim limitations are met by the prior art. In this case, Ono teaches the “rubber composition” that is considered to establish a prima facie case of obviousness over the claimed “oil-extended conjugated diene-based polymer” as set forth in the grounds of rejection below.
Applicant argues that nothing in Ono teaches a full width at half maximum value of a tan delta peak shown in a temperature range of -100oC to 100oC as claimed.
This is not persuasive for the following reason. Ono teaches a conjugated diene-based rubber polymer having a half width (i.e., full width at half maximum value, FWHM) of a tan δ peak shown in an about -100oC to 100oC range is equal to or less than 50oC measured at a frequency of 10 Hz, an initial strain of 10%, and a temperature rise of 2oC/min (Ono, Abstract, [0028]-[0040], [0205], Fig 3). Ono’s FWHM range of less than 50oC overlaps the claimed range of 20oC or higher, and therefore, renders obvious the claimed range (MPEP 2144.05, I). Although Ono does not specifically measure using an ARES dynamic mechanical analyzer at a frequency of 10 Hz, a strain of 0.5%, and a temperature rise of 5oC/min, one of ordinary skill in the art would readily understand that the full width at half maximum and tan δ peak properties of Ono and the claimed invention are substantially similar, because both pertain to oil-extended conjugated-based diene polymers. If Ono’s rubber polymer embodiments were measured at the claimed ARES dynamic mechanical analyzer conditions, one of ordinary skill in the art would expect Ono’s results to be substantially similar to the claimed ranges where any differences would be minor and obvious. Therefore, Ono’s properties are considered to render obvious the claimed properties with a predictable and reasonable expectation of success absent any objective evidence showing to the contrary (MPEP 2143, MPEP 2144.05).
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 8, 10-13, 15, 16, 19, and 20 of copending Application No. 17/799820 in view of Ono et al. (WO 2020/179582 A1, herein US 2023/0202235 A1 utilized as English language equivalent for all citations).
Regarding Claim 1, 17/799820 claims a conjugated diene-based polymer comprising a polymer unit comprising a repeating unit derived from a conjugated diene-based monomer, where in a tan δ peak graph in accordance with temperature, derived from dynamic viscoelasticity analysis by ARES, a full width at half maximum value of a tan δ peak shown in a -100oC to 100oC range is 20oC or higher (17/799820, Claim 1). 17/799820’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
17/799820 remains silent regarding an oil-extended conjugated diene-based polymer comprising a vegetable oil.
Ono, however, teaches a conjugated diene-based rubber polymer having a full width at half maximum value of a tan δ peak shown in a -100oC to 100oC range is equal to or less than 50oC (Ono, Abstract, [0028]-[0040], [0205], Fig 3). Ono teaches the conjugated diene-based rubber polymer comprises a process oil, such as plant oils including soybean oil and rapeseed oil (vegetable oils), to yield an oil-extended rubber exhibiting improved wet grip performance and fuel economy (Ono, [0110]-[0113]).
Since 17/799820 and Ono both disclose substantially similar conjugated diene-based polymers exhibiting substantially similar full width at half maximum tan δ peaks, it would have been obvious to one of ordinary skill in the art to have added Ono’s plant (vegetable) oils into 17/799820’s conjugated diene-based polymer to yield an oil-extended conjugated diene-based polymer exhibiting improved wet grip performance and fuel economy as taught by Ono (Ono, [0110]-[0113]).
Regarding Claim 2, modified 17/799820 claims the full width at half maximum value of a tan δ peak is 20-80oC (17/799820, Claim 2). This range encompasses the claimed range of 30-80oC, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 3, modified 17/799820 claims the full width at half maximum value of a tan δ peak is 30-60oC (17/799820, Claim 3). This range encompasses the claimed range of 35-60oC, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 4, modified 17/799820 teaches the vegetable oil is soybean oil or rapeseed oil (Ono, [0113]).
Regarding Claim 5, modified 17/799820 teaches the vegetable oil is comprised in an amount of 1-10 parts by weight based on 100 parts by weight of total rubber polymer (Ono, [0110]-[0111]). This range overlaps the claimed range of 10-60 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 6, modified 17/799820 claims the tan δ peak is shown in a temperature range of -80 to 20oC (17/799820, Claim 4). This range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 7, modified 17/799820 claims the conjugated diene-based polymer further comprises a repeating unit derived from an aromatic vinyl-based monomer (17/799820, Claim 5).
Regarding Claim 8, modified 17/799820 claims a modified conjugated diene-based polymer comprising a modified polymer unit comprising a repeating unit derived from a conjugated diene-based monomer and a functional group derived from a modifier, where in a tan δ peak graph in accordance with temperature, derived from dynamic viscoelasticity analysis by ARES, a full width at half maximum value of a tan δ peak shown in a -100oC to 100oC range is 20oC or higher (17/799820, Claim 7). 17/799820’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
17/799820 remains silent regarding an oil-extended conjugated diene-based polymer comprising a vegetable oil.
Ono, however, teaches a conjugated diene-based rubber polymer having a full width at half maximum value of a tan δ peak shown in a -100oC to 100oC range is equal to or less than 50oC (Ono, Abstract, [0028]-[0040], [0205], Fig 3). Ono teaches the conjugated diene-based rubber polymer comprises a process oil, such as plant oils including soybean oil and rapeseed oil (vegetable oils), to yield an oil-extended rubber exhibiting improved wet grip performance and fuel economy (Ono, [0110]-[0113]).
Since 17/799820 and Ono both disclose substantially similar conjugated diene-based polymers exhibiting substantially similar full width at half maximum tan δ peaks, it would have been obvious to one of ordinary skill in the art to have added Ono’s plant (vegetable) oils into 17/799820’s conjugated diene-based polymer to yield an oil-extended conjugated diene-based polymer exhibiting improved wet grip performance and fuel economy as taught by Ono (Ono, [0110]-[0113]).
Regarding Claim 9, modified 17/799820 claims the modifier is an alkoxysilane-based modifier, and the modified conjugated diene-based polymer has a Si content and a N content of each 50 ppm or more (17/799820, Claim 8). 17/799820’s ranges are identical to the claimed ranges, and therefore, satisfy the claimed ranges (MPEP 2131.03).
Regarding Claim 10, modified 17/799820 claims a rubber composition comprising the conjugated diene-based polymer of claim 1 and a filler (17/799820, Claim 10).
Regarding Claim 11, modified 17/799820 claims the filler is comprised in an amount of 0.1-200 parts by weight based on 100 parts by weight of the polymer (17/799820, Claim 11). 17/799820’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 12, modified 17/799820 claims a rubber composition comprising the conjugated diene-based polymer of claim 1 and a filler (17/799820, Claims 1, 10). 17/799820’s peak range of 20oC or higher encompasses the claimed range of 40oC or higher and 80oC or less, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 13, modified 17/799820 claims a rubber composition comprising the conjugated diene-based polymer of claim 1 and a filler (17/799820, Claims 1, 10). 17/799820 does not recite or claim adding a modifier, and therefore, 17/799820’s conjugated diene-based polymer scope is reasonably considered to include unmodified polymers (MPEP 2143).
Regarding Claim 14, modified 17/799820 claims a rubber composition comprising the modified conjugated diene-based polymer of claim 8 and a filler (17/799820, Claims 7, 12).
Regarding Claim 15, modified 17/799820 claims a rubber composition comprising the modified conjugated diene-based polymer of claim 8 and a filler (17/799820, Claims 7, 12).
Regarding Claim 16, modified 17/799820 claims the filler is comprised in an amount of 0.1-200 parts by weight based on 100 parts by weight of the polymer (17/799820, Claim 13). 17/799820’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 17, modified 17/799820 claims the functional group derived from a modifier is at one terminal (17/799820, Claim 15).
Regarding Claim 18, modified 17/799820 claims the polymer further comprising a functional group derived from a modification initiator at the other terminal, and the modification initiator is a reaction product of an N-functional group containing compound and an organometallic compound (17/799820, Claim 16).
Regarding Claim 19, modified 17/799820 claims a method for preparing the oil-extended modified conjugated diene-based polymer of claim 7 (17/799820, Claim 19).
Regarding Claim 20, modified 17/799820 claims the method further comprising a step of additionally injecting a portion of conjugated diene-based monomer to the active polymer prior to modification (17/799820, Claim 20).
Claims 1-6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, and 6 of copending Application No. 17/911854 in view of Ono et al. (WO 2020/179582 A1, herein US 2023/0202235 A1 utilized as English language equivalent for all citations).
Regarding Claims 1 and 8, 17/911854 claims a modified conjugated diene-based polymer comprising a polymer unit comprising a repeating unit derived from a conjugated diene-based monomer and a functional group derived from a modifier, where in a tan δ peak graph in accordance with temperature, derived from dynamic viscoelasticity analysis by ARES, a full width at half maximum value of a tan δ peak shown in a -100oC to 100oC range is 20oC or higher (17/911854, Claims 1, 4). 17/911854’s range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
17/911854 remains silent regarding an oil-extended conjugated diene-based polymer comprising a vegetable oil.
Ono, however, teaches a conjugated diene-based rubber polymer having a full width at half maximum value of a tan δ peak shown in a -100oC to 100oC range is equal to or less than 50oC (Ono, Abstract, [0028]-[0040], [0205], Fig 3). Ono teaches the conjugated diene-based rubber polymer comprises a process oil, such as plant oils including soybean oil and rapeseed oil (vegetable oils), to yield an oil-extended rubber exhibiting improved wet grip performance and fuel economy (Ono, [0110]-[0113]).
Since 17/911854 and Ono both disclose substantially similar conjugated diene-based polymers exhibiting substantially similar full width at half maximum tan δ peaks, it would have been obvious to one of ordinary skill in the art to have added Ono’s plant (vegetable) oils into 17/911854’s conjugated diene-based polymer to yield an oil-extended conjugated diene-based polymer exhibiting improved wet grip performance and fuel economy as taught by Ono (Ono, [0110]-[0113]).
Regarding Claim 2, modified 17/911854 claims the full width at half maximum value of a tan δ peak is 30-80oC (17/911854, Claim 5). This range is identical to the claimed range of 30-80oC, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 3, modified 17/911854 claims the full width at half maximum value of a tan δ peak is 30-80oC (17/911854, Claim 5). This range encompasses the claimed range of 35-60oC, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 4, modified 17/911854 teaches the vegetable oil is soybean oil or rapeseed oil (Ono, [0113]).
Regarding Claim 5, modified 17/911854 teaches the vegetable oil is comprised in an amount of 1-10 parts by weight based on 100 parts by weight of total rubber polymer (Ono, [0110]-[0111]). This range overlaps the claimed range of 10-60 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 6, modified 17/911854 claims the tan δ peak is shown in a temperature range of -80 to 20oC (17/911854, Claim 6). This range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
These are provisional nonstatutory double patenting rejections.
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.
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.
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 1-8 and 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (WO 2020/179582 A1, herein US 2023/0202235 A1 utilized as English language equivalent for all citations).
Regarding Claim 1, Ono teaches a conjugated diene-based rubber polymer having a half width (i.e., full width at half maximum value, FWHM) of a tan δ peak shown in an about -100oC to 100oC range is equal to or less than 50oC measured at a frequency of 10 Hz, an initial strain of 10%, and a temperature rise of 2oC/min (Ono, Abstract, [0028]-[0040], [0205], Fig 3). Although Ono does not specifically measure using an ARES dynamic mechanical analyzer at a frequency of 10 Hz, a strain of 0.5%, and a temperature rise of 5oC/min, one of ordinary skill in the art would readily understand that the full width at half maximum and tan δ peak properties of Ono and the claimed invention are substantially similar, because both pertain to oil-extended conjugated-based diene polymers. If Ono’s rubber polymer embodiments were measured at the claimed ARES dynamic mechanical analyzer conditions, one of ordinary skill in the art would expect Ono’s results to be substantially similar to the claimed ranges where any differences would be minor and obvious. Therefore, Ono’s properties are considered to render obvious the claimed properties with a predictable and reasonable expectation of success (MPEP 2143, MPEP 2144.05). Ono’s FWHM range of less than 50oC overlaps the claimed range of 20oC or higher, and therefore, renders obvious the claimed range (MPEP 2144.05, I). Ono teaches the conjugated diene-based rubber polymer comprises a process oil, such as plant oils including soybean oil and rapeseed oil (vegetable oils), to yield an oil-extended rubber polymer exhibiting improved wet grip performance and fuel economy (Ono, [0110]-[0113]).
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Ono – Figure 3
Regarding Claim 2, Ono teaches the FWHM of a tan δ peak shown in an about -100oC to 100oC range is equal to or less than 50oC measured at a frequency of 10 Hz, an initial strain of 10%, and a temperature rise of 2oC/min (Ono, Abstract, [0028]-[0040], [0205], Fig 3). Ono’s FWHM range of less than 50oC overlaps the claimed range of 30oC to 80oC, and therefore, renders obvious the claimed range (MPEP 2144.05, I).
Regarding Claim 3, Ono teaches the FWHM of a tan δ peak shown in an about -100oC to 100oC range is equal to or less than 50oC measured at a frequency of 10 Hz, an initial strain of 10%, and a temperature rise of 2oC/min (Ono, Abstract, [0028]-[0040], [0205], Fig 3). Ono’s FWHM range of less than 50oC overlaps the claimed range of 35oC to 60oC, and therefore, renders obvious the claimed range (MPEP 2144.05, I).
Regarding Claim 4, Ono teaches the vegetable oil is soybean oil or rapeseed oil (Ono, [0113]).
Regarding Claim 5, Ono teaches the vegetable oil is comprised in an amount of 1-10 parts by weight based on 100 parts by weight of total rubber polymer (Ono, [0110]-[0111]). This range overlaps the claimed range of 10-60 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 6, Ono teaches the tan δ peak is shown between about -50oC to about 15oC (Ono, Abstract, [0028]-[0040], [0205], Fig 3). This range falls within the claimed range of -80oC to 20oC parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 7, Ono teaches oil extended conjugated diene-based rubber polymer comprises a styrene repeating unit (i.e., an aromatic vinyl-based monomer) (Ono, [0035], [0038]-[0040]).
Regarding Claim 8, Ono teaches the teaches the oil extended conjugated diene-based rubber polymer as discussed above for claim 1. Ono teaches the oil extended conjugated diene-based rubber polymer can be a non-modified or a modified styrene-butadiene rubber polymer (SBR), where the modified SBR has a functional group derived from a modifier compound (Ono, [0039]-[0051]).
Regarding Claim 10, Ono teaches a rubber composition comprising the oil extended conjugated diene-based rubber polymer as discussed above for claim 1 and a filler (Ono, Abstract, [0019], [0032]-[0040], [0058]-[0067], [0144]).
Regarding Claim 11, Ono teaches the filler is comprised in an amount of 30-120 parts by mass per 100 parts by mass of the rubber polymer (Ono, [0067]). Ono’s range falls within the claimed range of 0.1-200 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 12, Ono teaches a rubber composition comprising the oil extended conjugated diene-based rubber polymer as discussed above for claim 1 and a filler (Ono, Abstract, [0019], [0032]-[0040], [0058]-[0067], [0144]). Ono teaches the FWHM of a tan δ peak shown in an about -100oC to 100oC range is equal to or less than 50oC measured at a frequency of 10 Hz, an initial strain of 10%, and a temperature rise of 2oC/min (Ono, Abstract, [0028]-[0040], [0205], Fig 3). Ono’s FWHM range of less than 50oC overlaps the claimed range of 40oC or higher and 80oC or less, and therefore, renders obvious the claimed range (MPEP 2144.05, I).
Regarding Claims 13 and 14, Ono teaches the oil extended conjugated diene-based rubber polymer can be a non-modified or a modified styrene-butadiene rubber polymer (SBR), where the modified SBR has a functional group derived from a modifier compound (Ono, [0039]-[0051]).
Regarding Claim 15, Ono teaches a rubber composition comprising the oil extended modified conjugated diene-based rubber polymer as discussed above for claim 1 and a filler (Ono, Abstract, [0019], [0032]-[0051], [0058]-[0067], [0144]).
Regarding Claim 16, Ono teaches the filler is comprised in an amount of 30-120 parts by mass per 100 parts by mass of the rubber polymer (Ono, [0067]). Ono’s range falls within the claimed range of 0.1-200 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 17, Ono teaches the modified styrene-butadiene rubber polymer (SBR) has a functional group derived from a modifier compound at one terminal (Ono, [0043]-[0051]).
Claims 9 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (WO 2020/179582 A1, herein US 2023/0202235 A1 utilized as English language equivalent for all citations) as applied to claim 8 above, and further in view of Lee et al. (WO 2020/013638 A1, herein US 2021/0009722 A1 utilized as English language equivalent for all citations).
Regarding Claims 9 and 17, Ono teaches the teaches the oil extended modified conjugated diene-based rubber polymer as discussed above for claim 8. Ono teaches the modifier compound can be an alkoxysilane-based modifier (Ono, [0041]-[0052]). Ono teaches the modified conjugated diene-based rubber polymer has a functional group derived from the modifier compound at one terminal (Ono, [0043]-[0051]).
Ono remains silent regarding a Si content and a N content of each 50 ppm or more based on total weight of the polymer (required by claim 9) and has a functional group derived from a modifier compound at one terminal (required by claim 17).
Lee, however, teaches a modified conjugated diene-based polymer for a rubber composition, where the modifier compound is an alkoxysilane-based modifier, the modifier compound yields a functional group at one terminal, and the modified conjugated diene-based polymer has a Si content and a N content of each preferably 50 ppm or more based on total weight of the polymer (Lee, Abstract, [0007]-[0010], [0034]-[0037], [0052]-[0085]). Lee’s Si and N content ranges are identical to the claimed ranges, and therefore, satisfy the claimed ranges (MPEP 2131.03).
Since Ono and Lee both disclose modified conjugated diene-based polymer for a rubber composition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Lee’s alkoxysilane-based modifier and modified Ono’s oil extended conjugated diene-based rubber polymer according to Lee’s guidance to yield a modified conjugated diene-based polymer exhibiting abrasion resistance, rolling resistance, improved processability, an excellent affinity for fillers, and improved mechanical properties as taught by Lee (Lee, [0056]-[0085]).
Regarding Claim 18, modified Ono teaches a functional group derived from a modification initiator at one terminal, where the modification initiator is a reaction product of an N-functional group containing compound and an organometallic compound (Lee, [0086]-[0100]).
Regarding Claims 19 and 20, modified Ono teaches the teaches the oil extended modified conjugated diene-based rubber polymer as discussed above for claims 8, 9, and 17. Modified Ono teaches a method for preparing the oil-extended modified conjugated diene-based rubber polymer comprising polymerizing the conjugated diene-based monomers in the presence of a hydrocarbon solvent, a polymerization initiator, and a first polar additive in a first reactor to yield a conversion ratio of less than 90% while continuously injecting the monomer solution; continuously supplying the polymer of the first reactor to a second reactor with a second polar additive; then continuously supplying to a third reactor to perform modification; then kneading in vegetable oils and fillers (Lee, [0086]-[0100], [0118]; Ono, [0144]-[0155], [0170]-[0208], Tables 1-2). Modified Ono’s conversion range encompasses the claimed range of 70-85%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782