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 Objections
Claim 16 is objected to because of the following informalities:
Claim 12, lines 1-2 recites “the reaction product”. The claim should instead read “the product of a reaction”
Claim 16, line 1 recites “the reaction product”. The claim should instead read “the product of a reaction”
Claim 16, line 2 recites “the least one of mineral oxide filler”. The claim should instead read “the at least one of mineral oxide filler”.
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 11, 14, and 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.
Regarding claim 11, the recitation of “at least one of: a mineral oxide filler; and an unsaturated polymer.” causes confusion. Are all of the components required? The examiner invites the Applicant to clarify. For purposes of examination, the claim is interpreted as only one component is required.
Regarding claim 14, the recitation of “comprises at least one of polyisoprene; polybutadiene; styrene-butadiene copolymer; and mixtures and copolymers thereof.” causes confusion. Are all of the components required? The examiner invites the Applicant to clarify. For purposes of examination, the claim is interpreted as only one component is required.
Regarding claim 15, the recitation of “further comprising at least one of: carbon black; at least one processing aid; and a cure package comprising a vulcanizing agent.” causes confusion. Are all of the components required to be present? The examiner invites the Applicant to clarify. For purposes of examination, the claim is interpreted as only one component is required.
Claim Analysis
Summary of Claim 1:
A silane coupling agent comprising:
a first coupling unit comprising a silicon atom directly linked to a hydrolyzable group;
a second coupling unit comprising a sulfoxide group linked to a leaving group; and
a linking group which connects the silicon atom of the first coupling unit to the sulfoxide group of the second coupling unit.
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 1-10 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 linking group which connected the silicon atom of the first coupling unit to the sulfoxide of the second coupling unit.
Regarding claim 2, Gerster et al. disclose a first and second coupling unit as rejected above.
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).)
Regarding claim 3 and 4, Gerster et al. disclose Compound 180 as shown above, thereby reading on general formula (I) wherein X is an ethoxy group, thereby reading on hydrolysable, L is an C3 group, q is 0, and n is 3.
Regarding claims 5, 6, and 7, Gerster et al. disclose the leaving group R wherein R1 is a methyl group, R2 is an ethyl group, and R3 is H, thereby reading on the hydrocarbyl of instant claim 5, alkyl of instant claim 6, and methyl of instant claim 7.
Regarding claim 8, Gerster et al. disclose the hydrolysable group X is an alkoxy group, thereby reading on the instant claim.
Regarding claim 9 and 10, Gerster et al. disclose the linking group is a C3 alkyl group, thereby reading on the instant 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.
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable Rauleder et al. (US 5107009) in view of Gerster et al. (US 20100317778).
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Regarding claim 18, Rauleder et al. teach a method of preparing a coupling agent comprising reacting a compound of the formula shown below:
Wherein X is chlorine, 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, and p is a whole number from 0 to 3, inclusive, with an alkali metal hydrogen sulfide (claim 1), thereby reading on reacting a chlorinated silane with a hydrocarbyl thiol.
Rauleder et al. is silent on oxidizing the sulfide group.
Gerster et al. teach a silane coupling agent. Gerster et al. teach sulfoxides can be accomplished by oxidiation with an oxidizing reagent such as a peroxide [0153]. Therefore, it would have been obvious to oxidize the product as taught by Gerster et al. since it is well known in the industry to do so.
Conclusion
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.
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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
Prosecution Insights