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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed March 20, 2026, with respect to the rejection(s) under 35 U.S.C. 102(a)(1) in view of Chikushima et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant argues that the claimed organic phosphoric acid compound having at least one alkyl chain that is a phosphoric acid ester having 15 to 20 carbon atoms (structure RO–P(=O)(OH)2, (RO)2–P(=O)(OH), or (RO)3–P(=O)(OH) and differs from the long-chain phosphate monoester structure described by Chikushima, which Applicant construes to be R–P(=O)(OH)(OR’). The Office disagrees with this interpretation. Chikushima discloses a hydrogen bond donating surfactant that may be a “long-chain alkyl phosphate monoester” ([0020]). The chemical structure of a “phosphate” is the deprotonated salt form derived from “phosphoric acid.” “Alkyl phosphates” denotes an ester of phosphoric acid and a corresponding alcohol and does not include a direct P–C bond (i.e., retaining four P–O bonds). Thus, the explicit disclosure of Chikushima regarding a “long-chain alkyl phosphate monoester” is construed to have the structure RO–P(=O)(OH)2, which reads on the claimed “phosphoric acid ester.”
Applicant further points to para. [0027] of Chikushima which discloses exemplary species of long-chain alkyl phosphate monoesters including phosphonic acid structures. However, none of the structures named exhibit a monoester. Likewise, wherein Chikushima discloses an exemplary group of “long chain alkyl phosphate diester,” the list only includes monoesters. It would therefore appear that the nomenclature of the chemical structures disclosed by Chikushima is merely erroneous in its selection of species names for the “long-chain alkyl phosphate monoesters” and the group disclosed at para. [0027] is intended to represent various alkyl chain lengths of “long-chain alkyl phosphate monoesters” rather than long-chain alkyl phosphonic acids, which do not fall within the genus of “phosphate monoesters” as they do not include an ester. Therefore, as noted above, the disclosure of Chikushima with regard to a “long-chain alkyl phosphate monoester” is construed to have the structure RO–P(=O)(OH)2, which reads on the claimed “phosphoric acid ester.” As the rejection under 35 U.S.C. 102 is maintained, Applicant’s arguments regarding unexpected results is not persuasive.
Applicant’s arguments and amendments have been considered and are fully addressed in the remarks above and rejections below.
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, 4-9 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chikushima et al. (JP2016183263, English translation provided for citations, hereinafter referred to as “Chikushima”).
As to Claim 1: Chikushima teaches a rubber composition comprising a diene rubber (i.e., a rubber component) ([0012]) and a hydrogen-bonding surfactant additive ([0007]) which may be a long-chain alkyl phosphate monoesters which may be, inter alia, octadecyl phosphonic acid (construed to represent a phosphate monoester having a C18 ester chain) ([0027] and exemplary compound 5 ([0055]) used in Example 6 of Table 1, pg. 24) (i.e., an organic phosphoric acid compound having at least one alkyl chain as construed from the definition and structure provided in the instant specification para. [0049]). Chikushima further teaches that the composition may comprise a vulcanizing agent and a vulcanizing accelerators ([0042]). Chikushima does not teach or require a cobalt compound or N,N-dicyclohexyl-2-benzothiazolylsulfenamide, which reads on the claimed 0.00 parts by mass of each compound.
As to Claim 4: Chikushima teaches the rubber composition of claim 1 (supra).
Chikushima further teaches that hydrogen-bonding surfactant additive ([0007]) which may be a long-chain alkyl phosphate monoesters which reads on the claimed organic phosphoric acid compound having at least one alkyl chain may be present in an amount of 1 to 100 parts by weight, which overlaps with the claimed range. Furthermore, Chikushima teaches exemplary compositions comprising a long-chain alkyl phosphate monoesters (e.g., compound 5 (octadecyl phosphonic acid, see para. [0055]) in an amount of 5 parts relative to 100 parts silica which is subsequently mixed in an amount of 73.5 parts with 130 parts rubber (110 parts SBR+ 20 parts BR) (Example 6 of Table 1, pg. 24). The amount of octadecyl phosphonic acid added into the rubber composition in Example 6 of Table 1 may be calculated via:
Mass fraction octadecyl phosphonic acid content within the silica composition:
5
p
a
r
t
s
o
c
t
a
d
e
c
y
l
p
h
o
s
p
h
o
n
i
c
a
c
i
d
105
p
a
r
t
s
t
o
t
a
l
s
i
l
i
c
a
c
o
m
p
o
s
i
t
i
o
n
=
5
105
Amount of silica composition blended with rubber in parts by weight:
73.5
p
a
r
t
s
s
i
l
i
c
a
c
o
m
p
o
s
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t
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n
×
5
105
=
3.5
p
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y
l
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t
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Calculating parts of octadecyl phosphonic acid in phr
3.5
p
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r
t
s
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t
a
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c
y
l
p
h
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p
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n
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c
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d
110
p
a
r
t
s
S
B
R
+
20
B
R
≈
2.7
p
h
r
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t
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d
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c
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l
p
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d
thus yielding an amount of octadecyl phosphonic acid (i.e., an organic phosphoric acid compound) that is within the claimed range.
As to Claims 5: Chikushima teaches the rubber composition of claim 1 (supra).
Chikushima further teaches that the composition may comprise a rubber component composed of a diene rubber which may be isoprene rubber ([0039]).
As to Claims 6: Chikushima teaches the rubber composition of claim 5 (supra).
Chikushima further teaches that the composition may comprise a rubber component composed of a diene rubber which may be natural rubber ([0039]).
As to Claims 7: Chikushima teaches the rubber composition of claim 5 (supra).
Chikushima further teaches that the composition may comprise a rubber component composed of a diene rubber which may be isoprene rubber or natural rubber which may be used alone ([0039]), which reads on the claimed 100% by mass rubber having an isoprene structure.
As to Claims 8: Chikushima teaches the rubber composition of claim 1 (supra).
Chikushima further teaches that the composition may comprise fillers including carbon black ([0043]) and further teaches exemplary embodiments comprising carbon black ([0056]).
As to Claims 9: Chikushima teaches the rubber composition of claim 1 (supra).
Chikushima further teaches that the composition may comprise fillers including carbon black ([0043]) in an amount of 5 parts by weight of the rubber composition (Table 4, pg 25) wherein the rubber composition is based on 100 parts by weight of diene rubber ([0012]).
As to Claim 17: Chikushima teaches the rubber composition of claim 2 (supra).
Chikushima teaches a rubber composition comprising a diene rubber (i.e., a rubber component) ([0012]), a long-chain alkyl phosphate monoesters including octadecyl phosphonic acid ([0027]) (i.e., an organic phosphoric acid compound having an alkyl chain of 18), which is within the claimed range for an alkyl chain length.
As to Claims 18: Chikushima teaches the rubber composition of claim 2 (supra).
Chikushima further teaches that hydrogen-bonding surfactant additive ([0007]) which may be a long-chain alkyl phosphate monoesters which reads on the claimed organic phosphoric acid compound having at least one alkyl chain may be present in an amount of 1 to 100 parts by weight, which overlaps with the claimed range. Furthermore, Chikushima teaches exemplary compositions comprising a long-chain alkyl phosphate monoesters (e.g., compound 5 (octadecyl phosphonic acid, see para. [0055]) in an amount of 5 parts relative to 100 parts silica which is subsequently mixed in an amount of 73.5 parts with 130 parts rubber (110 parts SBR+ 20 parts BR) (Example 6 of Table 1, pg. 24). The amount of octadecyl phosphonic acid added into the rubber composition in Example 6 of Table 1 may be calculated via:
Mass fraction octadecyl phosphonic acid content within the silica composition:
5
p
a
r
t
s
o
c
t
a
d
e
c
y
l
p
h
o
s
p
h
o
n
i
c
a
c
i
d
105
p
a
r
t
s
t
o
t
a
l
s
i
l
i
c
a
c
o
m
p
o
s
i
t
i
o
n
=
5
105
Amount of silica composition blended with rubber in parts by weight:
73.5
p
a
r
t
s
s
i
l
i
c
a
c
o
m
p
o
s
i
t
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×
5
105
=
3.5
p
a
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t
s
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t
a
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y
l
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t
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Calculating parts of octadecyl phosphonic acid in phr
3.5
p
a
r
t
s
o
c
t
a
d
e
c
y
l
p
h
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s
p
h
o
n
i
c
a
c
i
d
110
p
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s
S
B
R
+
20
B
R
≈
2.7
p
h
r
o
c
t
a
d
e
c
y
l
p
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thus yielding an amount of octadecyl phosphonic acid (i.e., an organic phosphoric acid compound) that is within the claimed range.
As to Claims 19: Chikushima teaches the rubber composition of claim 2 (supra).
Chikushima further teaches that the composition may comprise a rubber component composed of a diene rubber which may be isoprene rubber ([0039]).
As to Claims 20: Chikushima teaches the rubber composition of claim 2 (supra).
Chikushima further teaches that the composition may comprise fillers including carbon black ([0043]) and further teaches exemplary embodiments comprising carbon black ([0056]).
Conclusion
THIS ACTION IS MADE FINAL. 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 CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.L.G.D./ Examiner, Art Unit 1767
/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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