DETAILED ACTION
Applicant’s response of October 30, 2025 has been fully considered. Claims 1, 3, 11, and 13 are amended, claims 2, 4, 5, 7, 9, 10, 12, 14, and 15 are cancelled, and claims 16-21 are added. Claims 1, 3, 6, 8, 11, 13, and 16-21 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 16 is objected to because of the following informalities:
Regarding claim 16, this claim ends with “(See [0045].)” and this should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 6, 8, and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsufuku (JP 2008-163125). For convenience, the citations below are taken from an English language machine translation included herewith.
Tsufuku teaches a rubber composition, and a pneumatic tire comprising the rubber composition (¶6), wherein the rubber composition comprises 100 parts by mass of a styrene-butadiene rubber (diene rubber) (¶10, 11, Table 1, Example 3), from 10 to 90 parts by mass of an inorganic filler that is silica (¶17), from 1 to 20% by mass with respect to the inorganic filler of a first organosilicon compound (D) (nitrogen-containing alkoxysilane) (¶19, 22), and from 1 to 20% by mass with respect to the inorganic filler of a second organosilicon compound (F) (alkylalkoxysilane) (¶32). Compound (D) can be N-(triethoxysilylpropyl)-4-phenyliminomethylaniline-N-oxide (¶30), which is an aminoalkoxysilane. Compound (F) can be n-octyltriethoxysilane (¶32), which is a compound of Formula (1) where R1 is an alkyl group having 8 carbon atoms. Inventive Example 3 in Table 1 teaches a composition comprising 27 parts by mass of silica, 1.4 parts by mass of compound (D), and 1.8 parts by mass of compound (F). These amounts provide for an amount of compound (D) of 5.2% by mass with respect to the amount of the silica (1.4/27*100), an amount of compound (F) of 6.7% by mass with respect to the amount of the silica (1.8/27*100), a combined amount of compounds (D) and (F) of about 12% by mass (5.2+6.7), and an amount of compound (D) in the total amount of compounds (D) and (F) of about 44% (1.4/[1.4+1/8]*100) (all values calculated by Examiner).
Tsufuku does not teach that the rubber composition has a Dm/Rg value of 0.20 nm-1 or more. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. It appears from the examples in the instant specification that this property arises from the molar ratio of the nitrogen-containing alkoxysilane being between the claimed 10 mol% and 80 mol%. This limitation is taught above by the reference. Therefore, the claimed effects and physical properties, i.e., a Dm/Rg value of 0.20 nm-1 or more, 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 11, 13, 20, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsufuku (JP 2008-163125). For convenience, the citations below are taken from an English language machine translation included herewith.
Tsufuku teaches a rubber composition, and a pneumatic tire comprising the rubber composition (¶6), wherein the rubber composition comprises 100 parts by mass of a styrene-butadiene rubber (diene rubber) (¶10, 11, Table 1, Example 3), from 10 to 90 parts by mass of an inorganic filler that is silica (¶17), from 1 to 20% by mass with respect to the inorganic filler of a first organosilicon compound (D) (nitrogen-containing alkoxysilane) (¶19, 22), and from 1 to 20% by mass with respect to the inorganic filler of a second organosilicon compound (F) (alkylalkoxysilane) (¶32). Compound (D) can be N-(triethoxysilylpropyl)-4-phenyliminomethylaniline-N-oxide (¶30), which is an aminoalkoxysilane. Compound (F) can be n-octyltriethoxysilane (¶32), which is a compound of Formula (1) where R1 is an alkyl group having 8 carbon atoms. Inventive Example 3 in Table 1 teaches a composition comprising 27 parts by mass of silica, 1.4 parts by mass of compound (D), and 1.8 parts by mass of compound (F). These amounts provide for an amount of compound (D) of 5.2% by mass with respect to the amount of the silica (1.4/27*100), an amount of compound (F) of 6.7% by mass with respect to the amount of the silica (1.8/27*100), a combined amount of compounds (D) and (F) of about 12% by mass (5.2+6.7), and an amount of compound (D) in the total amount of compounds (D) and (F) of about 44% (1.4/[1.4+1/8]*100) (all values calculated by Examiner). The rubber composition further comprises sulfur as a vulcanizing agent and various vulcanization promoters (¶34, Table 1, Example 3), which will produce a vulcanized rubber.
Tsufuku does not teach that the rubber composition has a Dm/Rg value of 0.20 nm-1 or more. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. It appears from the examples in the instant specification that this property arises from the molar ratio of the nitrogen-containing alkoxysilane being between the claimed 10 mol% and 80 mol%. This limitation is taught above by the reference. Therefore, the claimed effects and physical properties, i.e., a Dm/Rg value of 0.20 nm-1 or more, 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3, 6, 8, 11, 13, and 16-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Further, applicant argues that the instant invention has achieved unexpected results. This is unpersuasive. First, the new rejection of record is based on anticipation and any showing of unexpected results cannot overcome an anticipation rejection. Second, the examples shown in Tables 1 to 3 of the instant invention are not commensurate in scope with the claims as only one example of a C3-20ethoxysilane, an aminoalkoxysilane, an ureidoalkoxysilane, and an isocyanatoalkoxysilane are shown whereas the claims are much broader than this, i.e., ANY compound which fits into the description of an aminoalkoxysilane, for example, may be used in the composition; and the examples do not represent the full amount claimed for this component, i.e., 5% to 15% by mass of the total of the two compounds with respect to the amount of the silica and further the claimed ratio of nitrogen-containing alkoxysilane to the total amount of the two compounds. Further, the independent claims are much broader than what is referenced above, as the above limitations are taken from dependent claims 16, 17, 20, and 21. Therefore, even assuming arguendo that this argument could overcome the current rejection of record, this argument is unpersuasive.
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 ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767