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 .
This communication is responsive to claim set dated 03/29/2023 and Response to Restriction filed on 11/06/2025. Claims 1-10 are pending. Elected claims 1-7 are under consideration in this Office Action.
Claims 8-10 are withdrawn.
Claims 1-7 are rejected for the reasons set forth below.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant's election with traverse of Claims 1-7 in the reply filed on 11/06/2025 is acknowledged. The traversal is on the ground(s) that the references cited in the Requirements for Restriction dated 09/10/2025 do not disclose that the conjugated diene polymer has an ionic strength index of 75% or less . This is not found persuasive because the references including JP2020033546 A disclose the limitation. See the discussions below.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-7 are 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 recites “ionic strength index.” Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). According to instant Specification, The term “ionic strength index” in claim 1 is obtained by the calculation {1-(ACX/BCX) x (Bsty/Asty)}x 100; wherein ACX is the peak area of the molecular weight distribution curve of the conjugated diene polymer obtained by GPC measurement using a cation exchange column, BCX) is peak area of the peak of the internal standard polystyrene obtained by GPC measurement using a cation exchange column; Bsty is the peak area of the peak of the internal standard polystyrene obtained by GPC measurement using a styrene-based column; Asty is the peak area of the molecular weight distribution curve of the conjugated diene polymer obtained by GPC measurement using a styrene-based column. While the accepted ionic strength index calculation is ½ x (ΣCi × Zi2), wherein Ci is concentration of ions i, Zi represents the charge of the ion i. (For example, JPH10197976 A, p4 right column top paragraph discloses the calculation). Because the calculation of Expression (I) is significantly contrary to the ordinary calculation of ionic strength index, it is not clear what the Expression (I) is really referred to.
Claims 6-7 are rejected under 35 U.S.C. 112(b) for being dependent on Claim 1.
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 1and 3-7 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Sakurai et al. (WO2019189204 A1, citing US11,873,364 B2 as English translation).
Regarding Claims 1 and 4-5, Sakurai teaches a method of producing a modified conjugated diene polymer by polymerization a conjugated diene monomer with a vinyl compound having a functional group interactive with silica, following reacting the conjugated diene polymer chain with a siloxane compound and hydrocarbyloxysilane compound (the two compounds are also called modifiers), successively. Attention is drawn to Example 1, the modified conjugated diene polymer is obtained from 1791 g monomers, 8.41 mmol bis(diethylamino)methylvinylsilane, polyorganosiloxane having the below formula was added so as to be 25.2 mmol in terms of the number of the repeating unit of-Si-O-, and 16.8 mmol of 3-(2-aminoethylamino) propyltrimethoxysilane.
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The silicon amount from bis(diethylamino)methylvinylsilane is 28.09*8.41/1000=0.24 g. The silicon amount from polyorganosiloxane is 28.09*25.2/100=0.71 g. the silicon amount from 3-(2-aminoethylamino) propyltrimethoxysilane is 28.09*16.8/100=0.47 g. The content of silicon by weight of the modified conjugated diene polymer is (0.24+0.71+0.47)/1791 * 106=793 ppm, which is more than the claimed 95 or 150 weight ppm.
Sakurai is silent on the value of Instant Expression (I) if the modified conjugated diene polymer being measured according to the method of instant application; however, according to instant para. [0119], the Expression (I) value is related to ionically interacting polymer chains contained in the conjugated diene polymer and the content of ionically interacting polymer chains is determined by the vinyl compound and modifiers introduced into the conjugated diene polymer. Of the modified conjugated diene polymer of Example 1, the weight content of the vinyl compound
bis(diethylamino) methylvinylsilane to the total weight of monomers is
8.41/1000* 172/1791*100=0.08 wt.%, falling within the instant application disclosed 0.001 to 3 wt.%. The total amount of modifiers is 42mmol relative to 16.8 mmol initiator butyllithium. If calculate the mmol amount of polyorganosiloxane in term of epoxy groups, the total amount of modifiers is 33.6 mmol. Therefore, the ratio of modifiers to initiator is 2 or 2.5 mol to 1 mol organic alkali metal compound initiator, the ratio is within the instant application disclosed 0.01 to 10 : 1. Thus, it can be reasonably inferred that the Expression (I) value of the modified conjugated diene polymer falling within the claimed range.
Regarding Claim 3, the modified conjugated diene polymer of Example 1 a weight average molecular weight 431, 000.
Regarding Claim 6, Sakurai discloses the modified conjugated diene polymer obtained by the method has a coupling ratio of 10 wt. % to 80 wt. % (31:62-67), therefore, at least peaks are present on the modified molecular weight distribution curve.
Regarding Claim 7, the polyorganosiloxane of Example 1 is the same one of the instant Examples. Polyorganosiloxane is one of the modifiers providing terminal modifying group.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurai, as applied to Claim 1 at paragraph 8.
The disclosure of Sakurai on Claim 1 is incorporated herein by reference. Sakurai further discloses that the modified conjugated diene polymer has a molecular weight distribution of 1.1 to 3, overlapping the claimed more than 1.5.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Koichi et al. (JP2020033546 A).
Regarding Claims 1 and 5, Koichi teaches that a modified conjugated diene polymer obtained by introducing a functional group into a conjugated diene polymer ([0009]); wherein the conjugated diene polymer is obtained by polymerizing at least a conjugated diene compound ([0036]). Koichi further teaches the modified conjugated diene polymer has a silicon content of 7 ppm or more ([0045]). Attention is drawn to Production Example 9 and Production Example 12, wherein each of the modified conjugated diene polymer has silicon 111 or 139 ppm (Table 1 and Table 2).
Although Koichi is silent on the value of instant Expression (I) if the modified conjugated diene polymer being measured according to the method of instant application; however, according to instant para. [0119], the Expression (I) vale is related to ionically interacting polymer chains contained in the conjugated diene polymer. In the case of Koichi, the modified conjugated diene polymer is obtained by introducing a conjugated diene polymer with nitrogen atom and/or silicon atom containing functional groups ([0035]), and these groups render ion interaction between the modified conjugated diene polymer and a cation exchange column. Thus, the Expression (I) value is related to the content of the functional groups of the modified conjugated diene polymer. Koichi discloses that the functional groups have binding reactivity with a filler ([0009]), contributing to good dispersibility of filler in a composition containing the modified conjugated diene polymer ([0011]), however, if content of functional groups is too high, binding between filler-filler will be stronger than filler-resins, destructing filler dispersibility. Thus, content of functional groups of a modified conjugated diene polymer would be considered a result effective variable by one ordinary skilled artisan in the field before the effective filing date of instant application. As such, without showing unexpected results, the content of functional groups, aequivalere, the Expression (I) value, cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of instant application would have optimized, by routine experimentation, the Expression (I) value falling within or overlapping the claimed range, to reach a desired filler dispersibility for obtaining good properties of a composition containing the modified conjugated diene polymer. It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (See MPEP 2144.05(b).).
Regarding Claim 2, Koichi teaches the modified conjugated diene-based polymer has a molecular weight distribution of 1.6 to 4.0 (claim 1).
Regarding Claim 3, Koichi teaches the modified conjugated diene-based polymer has a weight average molecular weight of 200, 000 to 3,000, 000 (claim 1).
Regarding Claim 4, as discussed in Claim 1, Koichi teaches the modified conjugated diene polymer has a silicon content of 7 ppm or more and a preferred modified conjugated diene polymer has silicon content of 139 ppm. Although Koichi does not expressly teach that the silicon content can be 150 ppm or more, as discussed in Claim 1, one ordinary skilled artisan would have optimized the content of functional groups to achieve a desired filler dispersibility. The functional groups include silicon atom containing group, consequently, without showing unexpected results, the content of silicon would have been optimized falling within or overlapping the claimed range, by routine experimentation, before the effective filing date of instant application. It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (See MPEP 2144.05(b).).
Regarding Claim 6, Koichi teaches there are multiple peaks of the GPC curve (claim 1).
Regarding Claim 7, Koichi teaches at least one terminal of the modified conjugated diene polymer bonding to a modifying agent which contains functional group ([0033]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763