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 .
Election/Restrictions
Claims 18-21 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 depends from canceled claim 2. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 8-12 and 14-17 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Cruse et al. (USPN 6,635,700).
In Col. 17, lines 65-67, Cruse et al. teaches a rubber composition comprising:
about 100 parts of rubber, where the weight of the rubber is the sum of the weights of each diene based polymer used in the formulation at least one diene based polymer, wherein styrene/butadiene/acrylonitrile terpolymer is contemplated as the diene based rubber for use in the invention, which contains a nitrile functional group. (col. 13, lines 33-36);
about 5 to about 140 parts by weight per 100 parts rubber (i) of precipitated silica (col. 19, lines 43-65, 80 parts Zeosil 1165MP; col. 14, lines 1 -44);
about 1 to about 20 parts by weight per 100 parts rubber (col. 24, lines 13-14, For Compound 20AB 9.7 phr Silane A+ 0.16 phr Silane C) (i) a coupling agent package comprising a mercapto-functional alkylalkoxysilane (col. 20, line 10, Silane C 3-mercapto-1- propyltrimethoxysilane) and a blocked mercapto-functional alkylalkoxysilane (col. 19, lines 43-65, silane; col. 20, line 8, Silane A 3-octanoylthio-1 -propyltriethoxysilane; col. 24, lines 13-14, For Compound 20AB 9.7 phr Silane A+ 0.16 phr Silane C + 2.0 phr DPG); wherein the weight ratio of the latent (blocked) mercapto-functional alkylalkoxysilane to the mercapto-functional alkylalkoxysilane is 50:50 to 99.1:0.1 or about 1:1 to about 999:1, more preferably about 90:10 or 9:1, which reads on about 1:1 to about 10:1 (see Col. 10, lines 58-67).
about 0.1 to about 20 parts by weight per 100 parts rubber (i) a deblocking agent ((col. 19, lines 43-65, 2.0 parts DPG; col. 12, lines 46-53, latent-mercaptosilane activators); and
about 0.1 to about 10 parts by weight per 100 parts rubber (i) a vulcanization package comprising sulfur and at least one accelerator (col. 19, lines 43-65, 1.4 parts sulfur and 1.7 parts CBS; col. 17, lines 6-21, N-cyclohexyl-2-benzo thiazole sulfenamide).
In col. 17, lines 29-45, Cruse et al. teach that combinations of a primary and a secondary accelerator are used in the rubber composition, wherein the secondary accelerator includes tetramethyl thiuram disulfide (col. 17, lines 6-11), which is a suitable scorch modifier according to ¶ 19 of the instant specification.
In col. 19, lines 43-65, Cruse et al. teach carbon black filler.
Regarding claim 8, the teaching in Cruse et al. includes wherein the weight ratio of the blocked mercaptofunctional alkylalkoxysilane to the mercapto-functional alkylalkoxysilane is about 1:1.
Regarding claim 9, Cruse et al. teaches wherein the at least one deblocking agent is a compound of formula (XII): wherein: R26 is a polyvalent organic radical containing from 1 to 30 carbon atoms, each occurrence of A3 is an oxygen and d is an integer of from 1 to 100, preferably from 1 to 3 (col. 12, lines 46-51, latent-mercaptosilane activators selected from ... trimethylolpropane and ethylene glycol.).
Regarding claim 10, Cruse et al. teaches wherein the sulfur in the vulcanizing agent is selected from the group consisting of elemental sulfur, sulfur-donating compounds, and combinations thereof (col. 16, lines 61-67).
Regarding claim 11, Cruse et al. teaches wherein the at least one accelerator is selected from the group consisting of benzothiazoles, guanidine derivatives, thiocarbamates, and combinations thereof (col. 17, lines 6-21).
Regarding claim 12, Cruse et al. teaches wherein the at least one scorch modifier is a compound of formula (XIII), wherein R28 is independently a straight chain alkyl group of 1 carbon atom (col. 17, lines 6-11, tetramethyl thiuram disulfide).
Regarding claims 14-16, in the tables in col. 36-39, Cruse et al. teach their compositions have a Mooney viscosities from 53-62 MU, Mooney scorch, 3 pt rise, of from about 5.9-8.4 minutes as measured using the ASTM D-1646 method, and tensile strengths from about 3110 psi (21 MPa) to about 3630 psi (25 MPa).
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met.
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.
Claim(s) 3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruse et al. as applied above, and further in view of Tsukimawashi et al. (USPN 7,342,070).
Regarding claims 3, while Cruse et al. does not teach the diene based polymer to contain the functional group of formula (I), in a similar invention, Tsukimawashi et al. teaches a rubber composition comprising a diene based polymer containing at least one functional group (col. 6, lines 6-46) wherein the diene based polymer containing at least one functional group is a compound of formula (I), wherein P is a (co)polymer chain of a conjugated diolefin or a conjugated diolefin and an aromatic vinyl compound; R1 is an alkylene group having 1 to 12 carbon atoms; each R2 and R3 is independently an alkyl group having 1 to 20 carbon atoms, an allyl group or an aryl group; and k, m and n are each an integer, wherein n is 1 or 2, m is 1 or 2, and k is 1 or 2, with the proviso that n+m+k is an integer of 3 or 4 (col. 6, lines 16-35, formula (1 )); or is a compound of formula (II), wherein P is a (co)polymer chain of a conjugated diolefin or a conjugated diolefin and an aromatic vinyl compound; R1 is an alkylene group having 1 to 12 carbon atoms; each R2 and R3 is independently an alkyl group having 1 to 20 carbon atoms, an allyl group or an aryl group having 6 to 12 carbon atoms; and j and h are each an integer, wherein j is an integer of 1 to 3, and h is an integer of 1 to 3, with the proviso that j+h is an integer of 2 to 4 (col. 6, lines 36-46, formula (2)).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Cruse et al. and Tsukimawashi et al., as both are directed to rubber compositions containing conjugated diene polymers and include the diene based polymer containing at least one functional group represented by formula (1) or (2) as disclosed in Tsukimawashi et al. in the composition of Cruse et al., in order to produce an automotive tire tread having good processability and a balance among wear resistance, failure characteristics, low hysteresis loss and wet-skid characteristics (Tsukimawashi et al., col. 1, lines 8-17).
Regarding claim 5, while Cruse et al. does not teach a diene based polymer containing at least one functional group of the present formula (III), Tsukimawashi et al. teaches the rubber composition comprising a diene based polymer containing at least one functional group (col. 6, lines 6-46) wherein the diene based polymer containing at least one functional group further comprises a terminating agent, wherein the terminating agent is of formula (Ill), wherein n is 1; R1 is an alkylene group having 1 to 12 carbon atoms; each R2 and R3 is independently an alkyl group having 1 to 20 carbon atoms, an allyl group or an aryl group; each occurrence of R4, R5, and R6 is independently an alkyl group having 1 to 12 carbon atoms or an aryl group of from 6 to 12 carbon atoms, with the proviso that R4 and R5 may combine through a covalent bond with each other to form a ring together with silicon atoms to which they are bonded; and k, m and n are each an integer, wherein n is 1 or 2, m is 1 or 2, and k is 1 or 2, with the proviso that n+m+k is an integer of 3 or 4 (col. 8, lines 4-32, formula (3), wherein f is 1; g is 1 and R1, R2 and R3 have the same definitions as given for the abovementioned formula (1 ); col. 6, In 16-35); or is of formula (IV): wherein R1 is an alkylene group having 1 to 12 carbon atoms; each R2 and R3 is independently an alkyl group having 1 to 20 carbon atoms, an allyl group or an aryl group; each occurrence of R4, R5, and R6 is independently an alkyl group having 1 to 12 carbon atoms or aryl group of from 6 to 12 carbon atoms, with the proviso that R4 and R5 may combine through a covalent bond with each other to form a ring together with silicon atoms to which they are bonded; and m is an integer of 1 or 2 (col. 8, lines 6-45, formula (4); col. 6, lines 16-35).
Therefore , it would have been obvious to one of ordinary skill in the art to combine the teachings of Cruse et al. and Tsukimawashi et al., as both are directed to rubber compositions containing conjugated diene polymers and include the diene based polymer containing at least one functional group represented by formula (3) or (4) as disclosed in Tsukimawashi et al. in the composition of Cruse et al., in order to produce an automotive tire tread having good processability and a balance among wear resistance, failure characteristics, low hysteresis loss and wet-skid characteristics (Tsukimawashi et al., col. 1, lines 8-17).
Claim(s) 4 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruse et al. as applied above, and further in view of Thiele et al. (US 2008/0287601).
Regarding claim 4, while Cruse does not teach a composition comprising a diene based polymer containing the functional group of formula (V), in a similar invention, Thiele et al. teaches a rubber composition comprising a diene based polymer containing at least one functional group (¶’s 8-27), wherein the diene based polymer containing at least one functional group is analogous in structure to the compound of formula (V), wherein the SH group is capped with -S-SiR3, wherein each R is C1-C16 alkyl; P is a (co)polymer chain of a conjugated diolefin or a conjugated diolefin and an aromatic vinyl compound, Formula 5, wherein D is an elastomeric polymer;(See ¶ 53), living anionic elastomeric polymer is selected from ... copolymers of butadiene and styrene (See ¶ 53)); R1 is an alkylene group having 1 to 12 carbon atoms; each R2 and R3 is independently an alkyl group having 1 to 20 carbon atoms, an allyl group or an aryl group; and k, m and n are each an integer, wherein n is 1 or 2, m is 1 or 2, and k is 1 or 2, with the proviso that n+m+k is an integer of 3 or 4 (Formula 5, wherein x, y and k are each 1; ¶’s 86-87, R is preferably, C1 -C5 alkyl; R' is equivalent to the "A" group;, A group, when an alkyl, contains three to five carbon atoms (¶ 5)).
Thiele et al. teaches that the -S-SiR3 end cap is cleaved under vulcanization conditions to leave free SH group that is reactive toward fillers such as silica resulting in a homogeneous distribution of filler within the rubber composition (¶’s 97-98).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Cruse et al. and Thiele et al., as both are directed to rubber compositions containing conjugated diene polymers, to design through routine experimentation, a diene based polymer of formula (V) for use in the rubber composition of Cruse et al., in order to produce a homogeneous distribution of filler within the rubber composition (Thiele et al., ¶’s 97-98) and thereby provide an automotive tire tread having improved properties (Thiele et al., ¶ 167).
Regarding claim 13, while Cruse et al. does not teach a composition wherein the at least one diene based polymer is reactive with the precipitated silica, Thiele et al. teaches the rubber composition wherein the diene based polymer containing at least one functional group is reactive, under vulcanization conditions, toward silica present in the rubber composition, resulting in uniform distribution of silica in the composition (¶’s 75, 86, 87 and97-98).
It would have been obvious to one of ordinary skill in the art to combine the teachings of Cruse et al. and Thiele et al., as both are directed to rubber compositions containing conjugated diene polymers, and include the functionalized diene based polymer disclosed in Thiele et al. in the composition of Cruse et al., in order to produce a homogeneous distribution of filler within the rubber composition (Thiele et al., ¶’s 97-98) and thereby provide an automotive tire tread having improved properties (Thiele et al., ¶ 167).
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruse et al. as applied above, and further in view of Vecere et al. (US 2020/0347084).
Regarding claim 6, Cruse et al. teaches the rubber composition of claim 1, wherein the mercapto-functional alkylalkoxysilane is a mercaptosilane of formula (X), wherein a is O; R17 is a linear C3-alkylene group; X1 is OR20, wherein R20 is C1-alkyl and wherein X2 and X3 are each X1 (col. 20, line 10, Silane C3-mercapto-1-propyltrimethoxysilane).
Cruse et al. does not teach a mercaptosilane that meets the proviso that (iii) when X1 and X2 are -OR20, then the two -OR20 may be bonded together through a covalent bond to form a -OR20-R20O - group bonded to the same silicon atom which forms a ring structure containing 2 to 8 carbon atoms, two oxygen atoms and a silicon atom. However, Vecere et al. teaches a mercaptosilane of formula (X) useful in rubber compositions (¶’s 146-147), wherein the mercaptofunctional alkylalkoxysilane is a mercaptosilane of formula (X), wherein a is O; R17 is C1-alkylene; X1 and X2 are each OR20, wherein the two -OR20 may be bonded together through a covalent bond to form a -OR20-R20O- group bonded to the same silicon atom which forms a ring structure containing 2 to 8 carbon atoms, two oxygen atoms and a silicon atom; and X3 is methyl (¶ 46, 2- methyl[1,3,2]dioxasilinan-2-ylmethyl mercaptan).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Cruse et al. and Vecere et al., as both are directed to rubber compositions containing mercapto-functional alkoxysilanes and include the mercaptosilane disclosed in Vecere et al. in the composition of Cruse et al., in order to enhance the properties of the resulting composition (Cruse et al., Col 28, line 62 to col. 29, line 50).
Regarding claim 7, Cruse et al. teaches the rubber composition of claim 1, wherein the blocked mercapto-functional alkylalkoxysilane is a mercaptosilane of formula (XI), wherein a is O; R17 is a linear C3-alkylene group; X1 is OR20, wherein R20 is C2-alkyl and wherein X2 and X3 are each X1 and Y1 is -C(=O)R25, where R25 is a straight chain alkylene group of 8 carbon atoms (col. 20, line 8, Silane A 3-octanoylthio -1-propyltriethoxysilane).
Cruse et al. does not teach a mercaptosilane that meets the proviso that (iii) when X1 and X2 are -OR20, then the two -OR20 may be bonded together through a covalent bond to form a -OR20-R20O- group bonded to the same silicon atom which forms a ring structure containing 2 to 8 carbon atoms, two oxygen atoms and a silicon atom. However, Vecere et al. teaches a blocked mercaptosilane of formula (XI) useful in rubber compositions (¶ 146-147), wherein a is O; R17 is C1-alkylene; X1 and X2 are each OR20, wherein the two -OR20 may be bonded together through a covalent bond to form a -OR20-R20O- group bonded to the same silicon atom which forms a ring structure containing 2 to 8 carbon atoms, two oxygen atoms and a silicon atom; X3 is methyl, and Y1 is -C(=O)R25, where R25 is a straight chain alkylene group of 1 carbon atom (¶ 44), thioacetic acid S-(2- methyl-[1,3,2]dioxasilinan-2-ylmethyf ester).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Cruse and Vecere et al., as both are directed to rubber compositions containing blocked mercapto-functional alkoxysilanes and include the blocked mercaptosilane disclosed in Vecere et al. in the composition of Cruse et al., in order to enhance the properties of the resulting composition (Cruse et al., Col 26, line 56 to col. 27, line 25).
Response to Arguments
Applicant's arguments filed 5/05/2026 have been fully considered but they are not persuasive.
While applicant argues that Cruse et al. does not disclose a rubber composition "wherein the weight ratio of the blocked mercapto-functional alkylalkoxysilane to the mercapto-functional alkylalkoxysilane is about 1:1 to about 10:1", as demonstrated above, Cruse et al. teach wherein the weight ratio of the latent (blocked) mercapto-functional alkylalkoxysilane to the mercapto-functional alkylalkoxysilane is more preferably about 9:1, which reads on the claimed about 1:1 to about 10:1 (see Col. 10, lines 58-67).
Regarding the argument that Cruse et al. exemplifies different ratios for the blocked mercapto alkylalkoxysilane to the functional mercapto alkylalkoxysilane, it is well settled that anticipatory teachings are not limited to any particular embodiment/example. In re Boe, 148 USPQ 507 (CCPA 1966). Disclosed examples and preferred embodiments (even if the embodiments tested by appellant were preferred) do not constitute a teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). The claimed latent (blocked) mercapto-functional alkylalkoxysilane to the mercapto-functional alkylalkoxysilane is still taught by Cruse et al. This is clear, even if it is not exemplified.
Regarding the argument that Tsukimawashi does not cure the deficiency in Cruse et al. to teach "the weight ratio of the blocked mercapto-functional alkylalkoxysilane to the mercapto-functional alkylalkoxysilane is about 1:1 to about 10:1", as Cruse et al. does in fact teach the ratio and no deficiency exists, this argument is not persuasive.
Regarding the argument that Thiele does not cure the deficiency in Cruse et al. to teach "the weight ratio of the blocked mercapto-functional alkylalkoxysilane to the mercapto-functional alkylalkoxysilane is about 1:1 to about 10:1", as Cruse et al. does in fact teach the ratio and no deficiency exists, this argument is not persuasive.
Regarding the argument that Vecere does not cure the deficiency in Cruse et al. to teach "the weight ratio of the blocked mercapto-functional alkylalkoxysilane to the mercapto-functional alkylalkoxysilane is about 1:1 to about 10:1", as Cruse et al. does in fact teach the ratio and no deficiency exists, this argument is not persuasive.
In response to applicant's argument of improved data/properties of the claimed rubber compositions, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would be inherent or otherwise obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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