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 .
Priority
No English translation of the foreign priority (effective date 9/28/20) is found in the file, thus the claims currently have an effective date of the PCT: 9/24/21
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/4/23, 4/21/23 have been considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, and its dependents, is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has the limitation “wherein a total of an amount of monosulfide crosslinks and an amount of carbon-carbon crosslinks…”, herein “an amount” doesn’t have to be the total amount of monosulfide (or c-c) crosslinks, it merely has to be some fraction of some amount of the composition. It is unclear what fraction of crosslinks this total includes.
The Examiner suggests “wherein a total of
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.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuo (WO 2019054290, wherein US 2020/0207969 is used as an equivalent document for citations below).
Matsuo discloses rubber compositions (title). Said rubber compositions comprise a rubber, a vulcanization accelerator, silica and a compound of formula I of the abstract (abstract).
The rubber may be styrene-butadiene rubber combined with polybutadiene rubber [0030], the vulcanization accelerator may be CBS [0174] and/or DPG [0176], wherein using both in the same composition is exemplified (table 6). They are added in amounts ranging 0.5-10.5 [0038] (embracing the exemplified amount of these in the instant examples). These 2 vulcanization accelerators are what Applicant uses in the instant Inventive examples. The compound of formula 1 embraces the compound of formula I of the instant specification, and, is the same as Compound 1 of the instant examples. It is added in amounts ranging 0.2-10 parts [0016].
Elements above embrace the instant exemplified embodiments 1-3 (e.g. embrace the same vulcanizing accelerators/amounts and pyrimidyldisulfide compound/amounts, as well as the SBR/BR rubbers/amounts and use of silica/amounts). Thus, the total amount of monosulfide and carbon-carbon crosslinks required by claim 1 must be embraced by the reference.
"Products of identical chemical composition can not have mutually exclusive properties." 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(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Elements above meet claim 2. Claim 3 is drawn to the amount of cis bond, [0167] discloses that the butadiene polymer is preferably 95% or higher cis-content, thus when mixed with the SBR 10/90-40/60 (BR/SBR) [0035] even if there is no cis-content of the SBR rubber at least 10% cis-content is embraced therein, meeting claim 3.
The composition can further comprise carbon black in amounts of 1-40 parts per 100 parts rubber [0061], wherein the silica is from 10-120 parts per 100 parts rubber [0052], thus embracing claim 4 (e.g. 30 parts carbon black and 100 parts silica converts to 30%, within the claimed range). Claim 5 is a property/result of the additives/reaction and since the above composition embraces that of the instant examples the disulfide crosslinks of claim 5 are expected to be embraced by the reference. Tires made from the composition are disclosed in [0074] as further required by claim 6.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759