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 Office Action is in response to Applicant’s response to a Nonfinal rejection filed January 20, 2026.
The previous objections of claims 12 and 16 are withdrawn due to Applicant’s amendments.
The previous 112(b) rejection of claims 11, 14, and 15 are withdrawn due to Applicant’s amendments.
Claims 1-20 are pending.
This Office Action is FINAL.
Claim Analysis
Summary of Claim 1:
A silane coupling agent comprising:
a first coupling unit comprising a silicon atom directly linked to at least one hydrolyzable group;
a second coupling unit comprising a sulfoxide group linked to a hydrocarbyl leaving group; and
a linking group connecting the silicon atom of the first coupling unit to the sulfoxide group, wherein the coupling agent contains only one silicon atom and the linking group is a hydrocarbylene group.
Claim Rejections - 35 USC § 102
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.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gerster et al. (US 20100317778).
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Regarding claim 1, Gerster et al. disclose a silane coupling agent Compound 180 shown below (page 16), thereby reading on the first coupling unit comprising a silicon atom directly linked to a hydrolysable group and a second coupling unit comprising a sulfoxide linked to a leaving group, and a -CH2CH2CH2- linking group which connected the silicon atom of the first coupling unit to the sulfoxide of the second coupling unit, thereby reading on the first coupling unit comprising a silicon atom and at least one hydrolysable group, a second coupling unit comprising a sulfoxide group linked to a hydrocarbyl
Regarding claim 2, Gerster et al. disclose a first and second coupling unit as rejected above, wherein the coupling agent is free of polysufidic linkages and oligomeric silane structures.
Gerster et al. is silent on the first and second coupling unit is capable of being hydrolyzed and capable of reacting with an unsaturated polymer as recited in the instant claims.
However, Gerster et al. teach the same coupling units as recited in the instant claim. 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).)
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 11-17 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerster et al. (US 20100317778).
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Regarding claims 11, 12, and 16, Gerster et al. disclose in Example 23 a composition comprising a synthetic styrene butadiene rubber, silica, and a silane coupling agent Compound 111 shown below [0312-0318]. Gerster et al. also disclose the coupling agents are used to enhance rubber reinforcements characteristics of silica by reacting with both the silica surface and the rubber elastomer molecules [0004], thereby reading on the product of a reaction of the silane coupling agent of instant claims 11, 12 and 16.
Gerster et al. does not teach in Example 23 the silane coupling agent of claim 1.
However, Gerster et al. teach Compound 180 as an example of the silane coupling agent as shown in the rejection for claim 1 above. Therefore, it would have been obvious to one of ordinary skill in the art to use Compound 180 as a silane coupling agent for the composition since Gerster et al. teach the compound can also be used.
Regarding claim 13, Gerster et al. disclose in Example 23 the composition comprises silica particles, thereby reading on the instant claim.
Regarding claim 14, Gerster et al. disclose the unsaturated polymer of Example 23 is a styrene butadiene copolymer and butadiene rubber, thereby reading on the instant claim.
Regarding claim 15, Gerster et al. disclose in Example 23 the composition comprises a plasticizer and a curing system, thereby reading on the instant claim.
Regarding claim 17, Gerster et al. is silent on a tire formed from the composition of Example 23.
However, Gerster et al. teach the rubber composition is useful for tires [0001]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the rubber composition of Example 23 to form a tire as taught by Gerster et al.
Regarding claim 19, Gerster et al. disclose in Example 23 a silane coupling agent Compound 122 shown below is mixed with a silica filler and a styrene butadiene rubber, thereby reading on a silane coupling agent comprising the first coupling unit a mineral filler and an unsaturated polymer of the instant claim.
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Gerster et al. do not teach in Example 23 a silane coupling agent comprising a second coupling unit including a sulfoxide group linked to a leaving group.
However, Gerster et al. teach Compound 180 as an example of the silane coupling agent as shown in the rejection for claim 1 above, thereby reading on the first and second coupling unit and the linking group as recited in the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to use Compound 180 as a silane coupling agent for the composition since Gerster et al. teach the compound can be used.
Gerster et al. is silent on the first and second coupling unit is hydrolysed to bond with a mineral filler and the second coupling unit is bonded an unsaturated polymer as recited in the instant claims.
However, Gerster et al. teach the same coupling units as recited in the instant claim. 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).)
Regarding claim 20, Gerster et al. teach a curing agent is added and heated [0314], thereby reading on the step recited in the instant claim.
Response to Arguments
Applicant's arguments filed January 20, 2026 have been fully considered but they are not persuasive.
Applicant states “Gerster’s genus encompasses numerous variations-multiple silicon atoms, oxygen-interrupted or aromatic linkers, and complex substituents- resulting in a vast number of possible compounds”.
The examiner disagrees. Gerster et al. disclose Compound 180 and even use compound 180 as an example in Example 11. Furthermore, the MPEP 2131.02 teaches: Il. A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). Therefore, the above claims are anticipated.
Regarding claim 19, the applicant states “Gerster does not disclose or suggest a coupling agent containing a sulfoxide functional group specifically configured to an alkenyl group of an unsaturated polymer, nor does it teach the claimed structural limitation of “only one silicon atom” combined with this unique sulfoxide functionality.”
The examiner disagrees. Gerster teaches compound 180 which has a S=O group attached to two carbons, thereby reading on sulfoxide, and has only one silicon atom. Furthermore, Gerster teaches in Example 23 the rubber compositions comprises butadiene rubber, which is an unsaturated polymer that is known to have vinyl groups, and thereby reading on an alkenyl group of an unsaturated polymer recited in the instant claim.
Allowable Subject Matter
Claim 3-10 and 18 is allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 3-10 are allowed over closest prior art, Gerster et al. (US 20100317778).
Gerster et al. discloses a coupling agent of the formula shown below:
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wherein, when n is 1,
R1 is hydrogen, C1-C25alkyl, C1-C25alkyl substituted with furyl, morpholine, C1-C4dialkylamino, C1-C4trialkylammonium or M+ −O3S—; C2-C25alkyl interrupted by oxygen; C5-C12cycloalkyl, C2-C25alkenyl, unsubstituted or C1-C4alkyl-substituted phenyl; C7-C12-phenoxyalkyl, unsubstituted or C1-C4alkyl substituted C7-C9bicycloalkyl;
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or when R7 is a direct bond, R1 is —CN, —SOR8, —SO2R8, —NO2 or —COR8; or when R6 and R7 are both a direct bond, R1 is
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when n is 2,
R1 is C1-C25alkylene, C1-C25alkylene substituted with C1-C4alkyl; C2-C25alkylene substituted with C1-C4alkyl and interrupted by oxygen; C2-C25alkylene interrupted by oxygen, sulfur, phenylene or cyclohexylene;
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or when R6 and R7 are a direct bond, R1 is
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R2, R3 and R4 are each independently of the others C1-C25alkyl, C2-C25alkyl interrupted by oxygen; C5-C12cycloalkyl, C2-C25alkenyl, unsubstituted or C1-C4alkyl-substituted phenyl, C7-C9phenylalkyl, C1-C25alkoxy, C3-C25alkoxy interrupted by oxygen; C5-C12cycloalkoxy, C2-C25alkenyloxy, unsubstituted or C1-C4alkyl-substituted phenoxy, C7-C9phenylalkoxy, halogen, C2-C25alkanoyloxy or unsubstituted or C1-C4alkyl substituted benzoyloxy; or at least two of R2, R3 and R4 are —O—R15—O—; or R2 is additionally
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or R3 is additionally
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or R4 is additionally
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with the proviso that at least one of R2, R3 or R4 is C1-C25alkoxy, C3-C25alkoxy interrupted by oxygen; C5-C12cycloalkoxy, C2-C25alkenyloxy, unsubstituted or C1-C4alkyl-substituted phenoxy, C7-C9phenylalkoxy, halogen, C2-C25alkanoyloxy or unsubstituted or C1-C4alkyl substituted benzoyloxy;
R5 is C1-C25alkylene, C5-C12cycloalkylene, unsubstituted or C1-C4alkyl substituted phenylene;
R6 is a direct bond, C1-C25alkylene; or C1-C25alkylene substituted with C1-C25alkyl, C2-C25alkoxycarbonyl, C3-C25alkoxycarbonylalkyl or phenyl;
R7 is a direct bond or
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with the proviso that, when R7 is a direct bond and
n is 1, R6 is not a direct bond; and with the proviso that, when R7 is
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R6 is not a direct bond;
R8 is C1-C25alkyl, C2-C25alkyl interrupted by oxygen; C5-C12cycloalkyl, C2-C25alkenyl, C2-C25alkinyl, C7-C9phenylalkyl, unsubstituted or C1-C4alkyl-substituted phenyl,
R9 is C1-C5alkyl,
R10 is hydrogen or C1-C4alkyl,
R11 and R12 are each independently of the other hydrogen, CF3, C1-C12alkyl or phenyl, or R11 and R12, together with the carbon atom to which they are bonded, form a C5-C8cycloalkylidene ring that is unsubstituted or substituted by from 1 to 3 C1-C4alkyl groups,
R13 is oxygen or —N(R14)—,
R14 is hydrogen or C1-C12alkyl,
R15 is C1-C25alkylene or C1-C25alkylene substituted with C1-C25alkyl;
R16 is C1-C25alkylene or C1-C25alkylene substituted with C1-C25alkyl;
M is sodium, potassium or ammonium,
m is 0, 1 or 2, and
n is 1 or 2; or an oligomeric hydrolysis product of the compound of the formula I (claim 1).
Gerster et al. do not teach or fairly suggest a silane coupling agent having the specific structure of general Formula (I) of instant claim 3 wherein R specifically represents the leaving group, wherein at least one of which is methyl.
Claim 18 is allowable over the closest prior art, Rauleder et al. (US 5107009 A).
Rauelder disclose a method for preparing a mercaptosilane of the formula shown below
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wherein R is alkylene of 1 to 8 carbon atoms, alkarylene, arylalkylene, or aryl,
R1 is alkyl of 1 to 6 carbon atoms which may be interrupted by oxygen atoms, or aryl,
R2 is alkyl of 1 to 8 carbon atoms, aryl, alkaryl, or aralkyl, p is a whole number from 0 to 3, inclusive,
a is a whole number from 1 to 3, inclusive, b is 2 or 3, and q is 0, 1 or 2, provided the sum of b+q is equal to or less than 4 (claim 1).
Rauleder et al. do not teach or fairly suggest a method of forming a silane coupling agent comprising the specific step of reacting a chlorinated silane compound with a hydrocarbyl thiol and the specific step of oxidizing the sulfide group recited in the instant claim.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/ Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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