DETAILED ACTION
Applicant’s response of November 7, 2025 has been fully considered. Claims 1 and 7 are amended, claims 3-6 and 20 are cancelled, and claim 21 is added. Claims 1, 2, 7-19, and 21 are pending.
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 § 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, 2, 7-19, and 21 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.
Regarding claim 1, claim 1 contains the limitation of the functional group being derived from a compound containing a triazine ring represented by general formula (1). However, general formula (1) depicts a tetrazine ring instead of a triazine ring. Therefore, it is unclear if applicant intends for the functional group to be derived from a compound containing a triazine ring, or a compound represented by general formula (1). For the purpose of further examination, the claim will be interpreted in that the functional group is derived from a compound represented by general formula (1).
Regarding claims 2, 7-19, and 21, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
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.
Claims 1, 2, 7-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Mruk et al. (US 2013/0160911) in view of Kulkarni et al. (US 2013/0253120).
Regarding claims 1 and 7-9, Mruk et al. teaches a rubber composition comprising a functionalized elastomer (complex polymer) comprising a polymeric backbone chain derived from a monomer comprising at least one conjugated diene monomer and at least one vinyl aromatic monomer; and a functional group bonded to the backbone chain, the functional group comprising a multidentate ligand capable of complexing with a metal ion; and a metal ion (¶2). The functional group is derived from a heterocyclic aromatic nitrogen containing compound which results in the functional group being a pyrrolyl group, an imidazolyl group, a pyrazolyl group, a pyridyl group, a pyrazinyl group, a pyrimidinyl group, a pyridazinyl group, an indolizinyl group, an isoindolyl group, a 3-H-indolyl group, a cinnolinyl group, a pteridinyl group, a .beta.-carbolinyl group, a perimidinyl group, a phenanthrolinyl group or the like (¶1). Mruk et al. discusses adding a pyridinayl or pyrazinyl group in more detail. Suitable metal ions include those known to complex with ligands, such as iron ions, nickel ions, and ruthenium ions (from groups 8 and 10 of the periodic table) (¶37).
Mruk et al. does not teach that the functional group is derived from a compound containing a tetrazine ring represented by general formula (1):
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380
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wherein in the general formula (1), each of X1 and X2 independently represents a pyridyl/pyrimidinyl group, and each of Y1 and Y2 independently represents a single bond or a divalent hydrocarbon group. However, Kulkarni et al. teaches a functionalized polymer that comprises one or more pyridazine moieties (¶7). The functional group is
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wherein R1 is the attachment point to the polymer through an aliphatic linkage, and wherein R2-R9 each independently comprise H, one or more functional groups comprising atoms from Groups 13, 14, 15, 16, and 17 of the Periodic Table of Elements, or a combination thereof (¶69). This functional group reads on the structure defined by claim 1 in that it is derived from a tetrazine ring (¶70), Y1 and Y2 are single bonds, and X1 and X2 are each a pyridyl group. Kulkarni et al. additionally teaches that the functional group may be complexed with metal atoms such as Fe to produce supramolecular chemical structures (¶90-91). Mruk et al. and Kulkarni et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polymers functionalized with heterocyclic aromatic nitrogen containing compounds used as dispersants and/or viscosity modifiers in compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use the functional group, as taught by Kulkarni et al., as the functional group of the functionalized polymer, as taught by Mruk et al., and would have been motivated to do so in order to produce a functionalized polymer with good dispersant and viscosity modifier properties (¶98-100).
Mruk et al. and Kulkarni et al. do not teach that the bond dissociation energy for dissociation of the metal ion and the functional group is 200 kJ/mol or more. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a bond dissociation energy of 200 kJ/mol or more, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 2, since Mruk et al. and Kulkarni et al. teach a similar polymer, functional group, and metal ion as that claimed, the bond between the functional group and the metal ion will be a coordinate bond.
Regarding claims 10-12, Mruk et al. teaches that the metal ion is added to the rubber composition as a metal salt, such as iron chloride (¶46).
Regarding claim 13, Mruk et al. does not teach that the functional group is bonded to the polymer main chain by an amount of the functional group in the range of 0.1 to 10 mol% with respect to the monomer units of the polymer main chain. However, Mruk et al. teaches in Example 2, that when looking at 1H-NMR data for the unfunctionalized elastomer, the functionalized elastomer, and the ligand itself, that only a small amount of ligand reacted with the vinyl groups of the elastomer (¶105). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the amount of the functional group bonded to the polymer backbone, through routine experimentation, to an amount of 0.1 to 10 mol%, and would have been motivated to do so because Mruk et al. suggests that only a small amount of functionalization is necessary to achieve the desired results.
Regarding claim 14, Mruk et al. teaches that the amount of sulfur in the rubber composition is from 0.5 to 8 phr (¶75). Mruk et al. does not teach that the rubber composition has a content of sulfur equal to or less than 0.3 parts by mass with respect to 100 parts by mass of a rubber component. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). MPEP 2144.05. At the time of the invention, a person of ordinary skill in the art would have found it obvious to used 0.3 phr of sulfur in the rubber composition, and would have been motivated to do so by a reasonable expectation of success in that a rubber composition containing 0.3 phr of sulfur would possess similar properties to the very same rubber composition but containing 0.5 phr of sulfur.
Regarding claim 15, Mruk et al. does not teach that peroxide is a required component of the composition. Therefore, the amount is zero.
Regarding claims 16 and 17, Mruk et al. teaches reacting the polymer with the functionalizing agent to form the functionalized elastomer (¶41). Then the metal ion is added to the functionalized elastomer through the addition of a metal salt (¶43-46). Once a functionalized polymer complex is formed, it is added to other components of the rubber composition and mixed through methods known to those of skill in the art (¶52, 77). Even though Mruk et al. does not explicitly teach “mixing and kneading” the polymer and the functional group, and then subsequently the functionalized polymer and the metal salt, it is well known that these steps must happen in order for the disclosed reactions to take place.
Regarding claims 18 and 19, Mruk et al. teaches a pneumatic tire comprising the rubber composition (¶3).
Regarding claim 21, Mruk et al. does not require the functional group to include a sulfur atom as Y in Formula (I) can be an oxygen and is not required contain sulfur (¶35).
Response to Arguments
Applicant’s arguments, see pages 6-8, filed November 7, 2025, with respect to the rejections of claims 1-5, 8-12, 15-17, and 20 over Mruk et al. and claims 1-9 over Kulkarni et al. have been fully considered and are persuasive. The rejections of claims 1-12, 15-17, and 20 under 35 U.S.C. 102 have been withdrawn.
However, applicant's arguments filed November 7, 2025 with respect to the combination of references have been fully considered but they are not persuasive.
Applicant argues that one of ordinary skill in the art would not use the functionalization of Kulkarni et al. on the polymer backbone of Mruk et al. because the claim requires the inclusion of an aromatic vinyl unit in the polymer backbone. Applicant argues that Kulkarni et al. teaches in ¶36 that "the pyridazine moiety is attached to the polymer backbone subject to the proviso that the pyridazine moiety is not attached to the polymer backbone through a chain comprising an aromatic bond in the linkage connecting the pyridazine ring to the polymer backbone,” and therefore a skilled artisan would appreciate that an aromatic vinyl unit as a structural unit in the polymer backbone structure would result in an unacceptable functionalized polymer structure. However, this argument is unpersuasive. While ¶36 of Kulkarni et al. does state the above, this paragraph further states that it is polymers comprising divinyl benzene or other divinyl aromatic monomers which are excluded. The monomer must be divinyl in order for it to be part of the polymer backbone and for it to also be an attachment point for the functionalization. A monovinyl aromatic monomer, such as styrene, would not have this issue. Mruk et al. teaches that one of the preferred elastomers for functionalization is a styrene butadiene rubber (¶22). Therefore, since Mruk et al. does not require the use of a divinyl aromatic monomer, not does the instant claim, this argument is unpersuasive.
Applicant also argues with regard to new claim 21, which requires the functional group to contain no sulfur atom, that Mruk et al. teaches reacting a functionalizing agent with the polymer through a thiol-ene reaction and thus includes a thiol group. This argument is unpersuasive. The reference to this teaching in Mruk et al. pertains to one embodiment of the invention. The broader teaching of Mruk et al. is that the functionalized elastomer may be produced by various methods and the Y variable, which is the link between the functional group and the polymer, may be an oxygen atom (¶35). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123. Therefore, the functionalized polymer of Mruk et al. is not required to contain a sulfur atom and this argument is unpersuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767