DETAILED ACTION
Claim Objections
Claims 10-15 are objected to because of the following informalities: Claims 10-15 each recite “functionalized diene polymer obtainable by the process of claim 1”. The term “obtainable” limits a polymer to what polymers could possibly be formed by the process of claim 1 (obtainable). This is contrasted with “obtained by” which limits the polymer formed by the process of claim 1 (obtained by). It is suggested that the term ‘obtainable by’ be amended to recite “obtained by”.
Appropriate correction is required.
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 1-15 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 “the reaction mixture”. There is insufficient antecedent basis for this limitation. Therefore, claim 1 and all dependent claims are indefinite.
Claim 5 recites “the first functionalisation reagent”. There is insufficient antecedent basis for this limitation.
It is also suggested to maintain consistent spelling of functionalization throughout the claims.
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) 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yan (US 2018/0215844) in view of Yan (US 2012/0232223).
Yan ‘844 teaches a functionalized polymer and a process of making the functionalized polymer (abstract) where a polymer having a terminal radical reacts with a cyclic siloxane compound (¶ 10) such as hexamethylcyclotrisiloxane (¶ 88). Yan ‘844 teaches the polymerization is living anionic polymerization (¶ 42) which produces anionic chain ends. Yan ‘844 teaches that after reaction with the siloxane, the polymer includes siloxane groups at its terminus (¶ 57) which can participate in reactions with silanes including thiol containing silanes (¶ 57). Yan ‘844 teaches an example where a butadiene/styrene polymer is formed having about 20 mol% styrene content (¶ 114) which corresponds to about 32 wt% styrene and about 68 wt% butadiene. This meets the range of butadiene present in claim 1. Yan ‘844 teaches the number average molecular weight of the polymer is 5,000-250,000 (¶ 50) which overlaps the range in claim 8. Yan ‘844 teaches the Mooney viscosity is from about 2 to about 150 (¶ 50).
Yan ‘844 teaches the polymer includes butadiene based polymers (¶ 36-40) having anionic end groups (¶ 41-51) are dried (¶69) which corresponds to the claimed isolating the polymer from the reaction mixture. Yan ‘844 teaches the polymer can be processed into sheets (¶ 86) and molded into articles such as tires and treads (¶ 86, 89). Yan ‘844 teaches the functionalized polymer is blended with 5-99 wt% of the total rubber (¶ 70) and that a filler can be present (¶ 71). Yan ‘844 teaches an example where 80 phr of the synthetic polymer is blended with 20 phr natural rubber, 52.5 phr silica in addition to sulfur (Table 2b) where sulfur is a curative and silica is a filler. Yan ‘844 teaches curing the compositions (¶ 116) and that the cured products include tires and treads (¶ 70).
Hexamethylcyclotrisiloxane meets claimed formula (III) when R1 and R2 are both methyl groups and n is 3.
Yan ‘844 teaches an example where the functionalized polymer is the only component present (¶ 113-114) and thus is a composition having 100wt% functionalized polymer meeting the limitations of claim 11. Yan ‘844 teaches an example where 80 phr synthetic polymer, 20 phr natural rubber, 52.5 phr silica are mixed and cured and where the total amount of components is 183.05 (Table 2b) which gives an amount of functionalized polymer of 43 wt%, an amount of other rubber of 11 wt% which meets the limitations of claims 12-16.
Yan ‘844 does not explicitly recite reaction with a compound of claimed formula (IV).
Yan ‘223 teaches a method for providing a polymer having terminal functionality that includes at least one sulfur atom and at least one silicon atom (abstract) which is done by reacting a polymer having reactive terminals with a cyclic compound (¶ 76-77) having the formula (I)
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106
72
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(¶ 80) and gives a specific example using 2,2-dimethoxy-1-thia-2-silacyclopentane (¶105-107). 2,2-dimethoxy-1-thia-2-silacyclopentane meets claimed formula (III) when R3 and R4 are methoxy groups and R5 is -(CH2)3-.
It would have been obvious to one of ordinary skill in the art to use the Si-S compounds of Yan ‘223 because it provides improved cold flow performance (¶ 116) and can enhance the interaction between the polymer and particulate fillers in rubber compounds, thereby improving the mechanical and dynamic properties of the resulting vulcanizates (¶ 76).
The reaction of an anionic polymer with the hexamethylcyclotrisiloxane as taught by Yan ‘844 followed by reaction with a cyclic compound such as 2,2-dimethoxy-1-thia-2-silacyclopentane produces the same product as the claimed process, notably, a diene polymer having a ring opened siloxane groups followed by a terminal thiol(ate) group. This meets the structures of claim 16.
Yan ‘844 does not explicitly recite when the article is shaped. However, the genus present in claim 15 is prior to, after, or during the curing. This describes each possibility, and it would have been obvious to one of ordinary skill in the art any article is formed before, during or after curing because these are the only possibilities. Alternatively, a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. See MPEP 2105, In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962). In this case, the genus of prior to, after, or during the curing is small enough that one of ordinary skill in the art would have instantly envisaged each species.
Yan ‘844 teaches molecular weights which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Yan ‘844 suggests the molecular weights. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Yan ‘844. See MPEP 2123.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764