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
Applicant's election with traverse of Group I in the reply filed on 3/3/2026 is acknowledged. The traversal is on the ground(s) that the Examiner has not adequately demonstrated that US 2003/0162881 truly anticipates or renders obvious the claimed modified silica. This is not found persuasive because as presented below US 2003/0162881 discloses a modified silica comprising identical chemical composition of precipitated silica modified with a dimethylpolysiloxane as well as produced in a process that also comprises mixing the precipitated silica with the dimethylpolysiloxane prior to spin-flash drying as in Examples 22-23 and 28-29 of the Instant Specification.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/3/2026.
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.
Claim(s) 1-2 and 4-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Panz et al (US 2003/0162881 which was submitted in the IDS filed 1/3/2023 corresponding to DE 101 83 492 A1 which was cited by the International Search Authority).
Regarding claim 1, It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Here, Panz discloses a heat-treated hydrophobic precipitated silica where a master batch is prepared by distributing on the silica surface a polyorganosiloxane, and subsequently subjecting to short-term drying in a spin-flash drier (see [0074]). Panz further teaches where organopolysiloxane is DOW CORNING ® 200 fluid 50 CS (50 mPas dimethylpolysiloxane terminated with trimethylsilyl groups) and where the resultant powder is conditioned at a temperature of more than 100°C and for more than half an hour then conveyed to a spin-flash dryer in which they are mixed and dried (see Example 2). Panz does not disclose the modified silica comprising the claimed properties of CTABmod, BETMP, CTABmod – BETMP, carbon content, Modemod, d75mod, Rmin and sulfur content.
Compare Panz to Examples 22-23 and 28-29 of the present invention each of which comprises a modified silica prepared by adding silicone oil, Dow Xiameter ™ PMX-200 Silicon Fluid polydimethylsiloxane having a viscosity of 50 cSt to a base silica in the conveying unit to a spin-flash dryer.
Panz, Example 2
Examples 22-23 and 28-29 of the application
Additive
Dimethylpolysiloxane
Dimethylpolysiloxane
Base silica
Precipitated silica prepared by precipitation of silicate
Precipitated silica
Time of adding additive
Before conveying into Spin-Flash Drier
Before conveying into Spin-Flash Drier
How additive is added
Formed as a master-batch in a mixer then conditioned for an hour at 105°C
Distributed in the intake upstream of the dryer in the conveying screw.
Type of Drying
Spin-Flash Drier
Spin-Flash Drier
How the modified silica is used
For adding into silicone rubber
For adding into a rubber mixture (see Page 4, Ln
Panz and the invention therefore differ only where the invention mixes the additive in the conveying screw and where it is conveyed to the spin-flash drier without conditioning. The Instant Specification also suggests that the improved feature of the present invention is that preliminary mixing already takes place in the intake compared to where additive is directly added to the dryer and a subsequent conditioning step is unnecessary (see Specification as filed at Page 3, 4-7).
Therefore, Applicant’s disclosure suggests that the critical feature of the invention is mixing before adding to the spin-flash drier which also occurs in Panz. Furthermore, Applicant’s disclosure suggests that conditioning is unnecessary but does not suggest that conditioning affects the claimed properties. Also, Panz suggests that conditioning only improves the distribution of the polysiloxane with the silica surface (see [0075]). Therefore, absent the showing of convincing evidence to the contrary the skilled artisan would have been motivated to reasonably expect the composition disclosed by the reference to exhibit the properties (CTABmod, BETMP, CTABmod – BETMP, carbon content, Modemod, d75mod, Rmin and sulfur content) in values comparable to Examples 22-23 and 28-29 and therefore comparable to that instantly claimed because Panz discloses a substantially identical modified silica (precipitated silica modified with substantially identical polyorganosiloxane) where the method of preparing are nearly identical (pre-mixing the base silica and polyorganosiloxane prior to spin-flash drying) and the intended use of the modified are identical (dispersible into rubber mixtures).
Regarding claim 2, Panz discloses a precipitated silica.
Regarding claim 4, absent the showing of convincing evidence to the contrary the skilled artisan would have been motivated to reasonably expect the composition disclosed by the reference to exhibit the properties (Ro-Tap) in values comparable Examples 22-23 and 28-29 and therefore comparable to that instantly claimed because Panz discloses a substantially identical modified silica (precipitated silica modified with substantially identical polyorganosiloxane) where the method of preparing are nearly identical (pre-mixing the base silica and polyorganosiloxane prior to spin-flash drying) and the intended use of the modified are identical (dispersible into rubber mixtures).
Regarding claim 5, absent the showing of convincing evidence to the contrary the skilled artisan would have been motivated to reasonably expect the composition disclosed by the reference to exhibit the properties (drying loss) in values comparable Examples 22-23 and 28-29 and therefore comparable to that instantly claimed because Panz discloses a substantially identical modified silica (precipitated silica modified with substantially identical polyorganosiloxane) where the method of preparing are nearly identical (pre-mixing the base silica and polyorganosiloxane prior to spin-flash drying) and the intended use of the modified are identical (dispersible into rubber mixtures).
Regarding claim 6, absent the showing of convincing evidence to the contrary the skilled artisan would have been motivated to reasonably expect the composition disclosed by the reference to exhibit the properties (pH) in values comparable Examples 22-23 and 28-29 and therefore comparable to that instantly claimed because Panz discloses a substantially identical modified silica (precipitated silica modified with substantially identical polyorganosiloxane) where the method of preparing are nearly identical (pre-mixing the base silica and polyorganosiloxane prior to spin-flash drying) and the intended use of the modified are identical (dispersible into rubber mixtures).
Regarding claim 7, absent the showing of convincing evidence to the contrary the skilled artisan would have been motivated to reasonably expect the composition disclosed by the reference to exhibit the properties (TARmod value) in values comparable Examples 22-23 and 28-29 and therefore comparable to that instantly claimed because Panz discloses a substantially identical modified silica (precipitated silica modified with substantially identical polyorganosiloxane) where the method of preparing are nearly identical (pre-mixing the base silica and polyorganosiloxane prior to spin-flash drying) and the intended use of the modified are identical (dispersible into rubber mixtures).
Regarding claim 8, absent the showing of convincing evidence to the contrary the skilled artisan would have been motivated to reasonably expect the composition disclosed by the reference to exhibit the properties (ignition residue) in values comparable Examples 22-23 and 28-29 and therefore comparable to that instantly claimed because Panz discloses a substantially identical modified silica (precipitated silica modified with substantially identical polyorganosiloxane) where the method of preparing are nearly identical (pre-mixing the base silica and polyorganosiloxane prior to spin-flash drying) and the intended use of the modified are identical (dispersible into rubber mixtures).
Regarding claim 9, absent the showing of convincing evidence to the contrary the skilled artisan would have been motivated to reasonably expect the composition disclosed by the reference to exhibit the properties (IF value) in values comparable Examples 22-23 and 28-29 and therefore comparable to that instantly claimed because Panz discloses a substantially identical modified silica (precipitated silica modified with substantially identical polyorganosiloxane) where the method of preparing are nearly identical (pre-mixing the base silica and polyorganosiloxane prior to spin-flash drying) and the intended use of the modified are identical (dispersible into rubber mixtures).
Regarding claim 10, absent the showing of convincing evidence to the contrary the skilled artisan would have been motivated to reasonably expect the composition disclosed by the reference to exhibit the properties (IS value) in values comparable Examples 22-23 and 28-29 and therefore comparable to that instantly claimed because Panz discloses a substantially identical modified silica (precipitated silica modified with substantially identical polyorganosiloxane) where the method of preparing are nearly identical (pre-mixing the base silica and polyorganosiloxane prior to spin-flash drying) and the intended use of the modified are identical (dispersible into rubber mixtures).
Regarding claim 11, absent the showing of convincing evidence to the contrary the skilled artisan would have been motivated to reasonably expect the composition disclosed by the reference to exhibit the properties (PV value) in values comparable Examples 22-23 and 28-29 and therefore comparable to that instantly claimed because Panz discloses a substantially identical modified silica (precipitated silica modified with substantially identical polyorganosiloxane) where the method of preparing are nearly identical (pre-mixing the base silica and polyorganosiloxane prior to spin-flash drying) and the intended use of the modified are identical (dispersible into rubber mixtures).
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 is rejected under 35 U.S.C. 103 as being unpatentable over Panz as applied to claim 1, and in further view of Okel (BR 0013332 where citations are from the machine translation provided by the Office).
As applied to claim 1, Panz teaches a modified silica comprising all of the properties (CTABmod, BETMP, CTABmod – BETMP, carbon content, Modemod, d75mod, Rmin and sulfur content) in values comparable to Examples 22-23 and 28-29.
Regarding claim 4, Panz does not suggest a modified silica comprising a sulfur content in the range of 0.40% to 1.50%.
Okel teaches chemically treated precipitated silica fillers to be used in rubber and polymeric compositions (see Page 3, Middle). Okel further discloses that the chemical modification produces a sulfur content greater than 0.1% by weight and more preferably 0.6 wt% (see Page 3, Bottom). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the modified silica as taught by Panz where the sulfur content is 0.6% by weight or higher as taught by Okel in order to set it in a preferable range for mixing into rubber or polymeric compositions in the uses disclosed by Okel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738