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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 11, 2026 has been entered.
Claims 1, 11, 18, and 19 are amended and claims 3, 8, 13, 16, 17, 20, and 21 are cancelled. Claims 1, 6, 11, 18, and 19 are pending.
Warning
Applicant is advised that should claim 6 be found allowable, claim 18 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1, 6, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Murase et al. (JP 2018105707). The citations below are taken from an English language machine translation included herewith.
Regarding claim 1, Murase et al. teaches a rubber composition comprising 100 parts by mass of diene rubber, 80 to 100 parts by mass of silica, and 5 to 18% by mass of a silane coupling agent relative to the amount of silica (¶6). Rubber composition 6 of Table 3 teaches as rubber composition comprising 100 parts by mass of styrene butadiene rubber as the diene rubber, 100 parts by mass of silica, 10 parts by mass of a silane coupling agent, and 1 part by mass of octyltriethoxysilane (an alkylalkoxysilane) (Table 3, Example 6). Murase broadly teaches that the silane coupling agent can be an amino group-containing silane coupling agent, such as 3-aminopropyltrimethoxysilane (nitrogen-containing alkoxysilane) (¶27), and used in preferably 6 to 15% by mass relative to the mass of silica (¶42). Further, the alkyltriethoxysilane is preferably used in 2 to 6% by mass relative to the mass of silica (¶66). The silane coupling agent and the alkyltriethoxysilane are present in the composition in a total content of from 8 to 21% by mass relative to the amount of silica (calculated by Examiner by adding the disclosed ranges).
As an example, assuming that the rubber composition contained 10 parts by mass of 3-aminopropyltrimethoxysilane as the coupling agent (would be 10% by mass relative to 100 parts by mass of the silica used in the examples) and 5 parts by mass of octyltriethoxysilane (would be 5% by mass relative to 100 parts by mass of the silica used in the examples; 15% by mass for both together), the content of 3-aminopropyltrimethoxysilane in the total content of the silane coupling agent and the alkyltriethoxysilane would be 76 mol% (calculated by Examiner)1.
Murase et al. does not teach one example comprising each of the claimed components in amounts which are disclosed with sufficient specificity for an anticipation rejection. However, Murase et al. teaches that each of the claimed components is suitable for use together in a rubber composition, and in amounts which overlap those claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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). See MPEP 2144.05. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to form a rubber composition comprising each of the claimed components and in amounts overlapping those claimed, and would have been motivated to do so because Murase et al. teaches that these components and amounts are suitable for use together in forming a rubber composition to be used in a tire.
Murase et al. 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.
Regarding claims 6 and 18, Murase et al. teaches tires made of the rubber composition (¶69).
Claims 11 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Murase et al. (JP 2018105707). The citations below are taken from an English language machine translation included herewith.
Regarding claim 11, Murase et al. teaches a rubber composition comprising 100 parts by mass of diene rubber, 80 to 100 parts by mass of silica, and 5 to 18% by mass of a silane coupling agent relative to the amount of silica (¶6). Rubber composition 6 of Table 3 teaches as rubber composition comprising 100 parts by mass of styrene butadiene rubber as the diene rubber, 100 parts by mass of silica, 10 parts by mass of a silane coupling agent, and 1 part by mass of octyltriethoxysilane (an alkylalkoxysilane) (Table 3, Example 6). Murase broadly teaches that the silane coupling agent can be an amino group-containing silane coupling agent, such as 3-aminopropyltrimethoxysilane (nitrogen-containing alkoxysilane) (¶27), and used in preferably 6 to 15% by mass relative to the mass of silica (¶42). Further, the alkyltriethoxysilane is preferably used in 2 to 6% by mass relative to the mass of silica (¶66). The silane coupling agent and the alkyltriethoxysilane are present in the composition in a total content of from 8 to 21% by mass relative to the amount of silica (calculated by Examiner by adding the disclosed ranges). Murase et al. further teaches vulcanizing the rubber composition (¶67, 71).
As an example, assuming that the rubber composition contained 10 parts by mass of 3-aminopropyltrimethoxysilane as the coupling agent (would be 10% by mass relative to 100 parts by mass of the silica used in the examples) and 5 parts by mass of octyltriethoxysilane (would be 5% by mass relative to 100 parts by mass of the silica used in the examples; 15% by mass for both together), the content of 3-aminopropyltrimethoxysilane in the total content of the silane coupling agent and the alkyltriethoxysilane would be 76 mol% (calculated by Examiner)2.
Murase et al. does not teach one example comprising each of the claimed components in amounts which are disclosed with sufficient specificity for an anticipation rejection. However, Murase et al. teaches that each of the claimed components is suitable for use together in a rubber composition, and in amounts which overlap those claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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). See MPEP 2144.05. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to form a rubber composition comprising each of the claimed components and in amounts overlapping those claimed, and would have been motivated to do so because Murase et al. teaches that these components and amounts are suitable for use together in forming a rubber composition to be used in a tire.
Murase et al. 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.
Regarding claim 19, Murase et al. teaches tires made of the rubber composition (¶69).
Response to Arguments
Applicant’s arguments, see pages 8-10, filed May 11, 2026, with respect to the rejection of claims 1, 3, 6, 8, 11, 13, and 16-21 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made under 35 U.S.C. 103 over Murase et al. (JP 2018105707).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
1 10 grams of 3-aminopropyltrimethoxysilane (MW=179g/mol) is 0.0559 mol; 5 grams of octyltriethoxysilane (MW=276g/mol) is 0.0181 mol; [0.0559/(0.0559+0.0181)]*100 = 76 mol%.
2 10 grams of 3-aminopropyltrimethoxysilane (MW=179g/mol) is 0.0559 mol; 5 grams of octyltriethoxysilane (MW=276g/mol) is 0.0181 mol; [0.0559/(0.0559+0.0181)]*100 = 76 mol%.
Prosecution Insights