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 .
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 non-obviousness.
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.
Claims 1, 2, 4, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over YALVAC et al. (U.S. Publication No. 2008/0167421, hereinafter YALVAC).
Regarding claims 1 and 5, YALVAC teaches compositions comprising silane-grafted ethylene/α-olefin polymers are formed from ethylene/α-olefin polymers [0026]. The preparation of the silane-grafted polymers, by reacting an ethylene/α-olefin polymer with at least one silane compound and at least one initiator (Abstract; [0032]; Table 1 and 2 [0163-0164]). Any silane graft and crosslink the ethylene polymers which includes vinyltrimethoxysilane, vinyltriethoxysilane, 3-(trimethoxysilyl)propyl methacrylate ((γ-meth)acryloxypropyl trimethoxysilane), and mixtures thereof [0044]. As indicated in the present specification [0031], vinyl trimethoxysilane and vinyl triethoxysilane have one or more unsaturated groups having 2 to 20 carbon atoms.
The silane-grafted ethylene/α-olefin polymers have a weight average molecular weight (Mw) from 10,000 to 50,000 [0029] (which is within 1,800 to 13,000), a number average molecular weight (Mn) from 5,000 to 25,000 [0028] (which is within 1,500 to 6,500), and a molecular weight distribution (Mw/Mn) from 1 to 5 [0030] (which is within 1.4 to 2.1).
Given the silane-grafted ethylene/α-olefin polymers of YALVAC are within the claimed ranges for the weight average molecular weight (Mw), the number average molecular weight (Mn), and molecular weight distribution (Mw/Mn) as discussed in paragraph 6, it would have been obvious to one of ordinary skill in the art to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MFEP 2131.03 and MPEP 2144.05I.
Regarding claim 2, as discussed above in paragraph 6 above, YALVAC teaches compositions comprising silane-grafted ethylene/α-olefin polymers are formed from ethylene/α-olefin polymers [0026]. The preparation of the silane-grafted polymers, by reacting an ethylene/α-olefin polymer with at least one silane compound and at least one initiator (Abstract; [0032]; Table 1 and 2 [0163-0164]).
The ethylene/α-olefin polymers used in the preparation of the silane-grafted polymer are interpolymers of ethylene and at least one suitable monomer [0055]. The ethylene/α-olefin polymers have a weight average molecular weight (Mw)from 8,000 to 60,000 [0061](which is within 2,000 to 14,000), a number average molecular weight (Mn) from 4,000 to 30,000 [0060] (which is within 1,600 to 7,000), and a molecular weight distribution (Mw / Mn) less than or equal to 5, preferably from 1 to 3 [0056] (which is within 1.4 to 2.1).
Given the ethylene/α-olefin polymers used to prepare the silane-grafted ethylene/α-olefin polymers of YALVAC are within the claimed ranges for the weight average molecular weight (Mw), the number average molecular weight (Mn), and a molecular weight distribution (Mw/Mn) as discussed in paragraph 6, it would have been obvious to one of ordinary skill in the art to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MFEP 2131.03 and MPEP 2144.05I.
Regarding 4, YALVAC teaches the silane-grafted ethylene/ α-olefin polymer has an amount of silane greater than 0.5 weight percent [0034]. In Table 2, the amount of silane is 10.5 weight percent [0163].
Regarding claim 7, given YALVAC teaches vinyl trimethoxysilane (VTMS) and vinyl triethoxysilane (VTES) grafted ethylene-octene copolymer (POE) which reads on the claim limitations, the position is taken that the grafted ethylene-octene copolymer would inherently having a content of 0 to 0.3% by mass of a polymer component having a peak of molecular weight M determine by GPC in the range of 5≤ Log M ≤ 6. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot 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,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Allowable Subject Matter
Claims 3 and 8-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. YALVAC et al., the closest prior art of record, fails to teach a rubber composition comprising 1 to 30 parts by mass of the organosilicon compound graft copolymer (X) according to claim 1 based on 100 parts by mass of a diene rubber comprising an aromatic vinyl-conjugated diene copolymerized rubber.
Pertinent Art
GOPALAN et al. (U.S. Publication No. 2018/0163024) teaches an elastomeric article having a silane-crosslinked polyolefin elastomer including an ethylene/α-olefin copolymer.
Response to Arguments
Applicant’s arguments, filed 03/23/2026, with respect to the rejection(s) of claims 1, 2, 4, 5, and 7 under 102 (a)(1) have been fully considered and are persuasive. Therefore, the 102(a)(1) rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of YALVAC et al. as discussed above.
The applicant argues YALVAC states, “In one embodiment, the ethylene/α-olefin polymers used in preparation of the silane-grafted polymers have a number average molecular weight of 4,000 to 30,000. Applicant respectfully submits that YALVAC does not disclose an organosilicon compound graft copolymer(X) having a weight-average molecular weight (Mw) of 1,800 to 13,000, a number0average molecular weight (Mn) of 1,500 to 6,500 and a molecular weight distribution (Mw/Mn) of 1.4 to 2.1. The molecular weights of YALVAC quoted on the Office Action are not the molecular weights of an organosilicon compound graft copolymer (X), they are the molecular weights of polymers used in the preparation of silane-grafted polymers. Further, paragraph 0029 of YALVAC states that Mw is “more preferably 14,000 to 32,000,” which is outside the molecular weight range recited in claim 1, and paragraph [0028] states that Mn is “more preferably from 7,000 to 16,000.”
The examiner has considered the applicant’s argument and has modified the Office Action mailed 12/23/2025 to address the recited claims. As discussed above, YALVAC teaches the silane-grafted ethylene/α-olefin polymers have a weight average molecular weight from 10,000 to 50,000 [0029] (which is within 1,800 to 13,000), a number average molecular weight from 5,000 to 25,000 [0028] (which is within 1,500 to 6,500), and a molecular weight distribution from 1 to 5 [0030] (which is within 1.4 to 2.1). Moreover, YALVAC is not limited to the Examples and preferable amounts of Mw, Mn, and weight distribution (Mw/Mn) of the silane grafted polymers and ethylene/α-olefin polymers.
A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,220 USPQ 303 (Fed. Cir. 1 983), cert. Denied, 469 U.S. 851 (1984). All disclosures of the prior art, including non-preferred embodiment, must be considered. See In re Lamberti and Konort, 192 USPQ 278 (CCPA 1967); In re Snow 176 USPQ, 328, 329 (CCPA 1973). Non-preferred embodiments can be indicative of obviousness, see Merck & Co. v. Biocraft Laboratories Inc. 10 USPQ 2d 1843 (Fed. Cir. 1989); In re Lamberti, 192 USPQ 278(CCPA 1976); In re Kohler, 177 USPQ 399.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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