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
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 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.
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 1-4, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Westenberg (US20230407042, herein Westenberg), in the view of Rush (US2378246, herein Rush).
Regarding Claim 1, Westenberg teaches composition [0003], comprising: “(a) an elastomeric polymer material; and (b) a carbon black material obtained from a carbon black feedstock comprising a renewable carbon black feedstock” [0005], wherein the ““carbon black” is produced by thermal oxidative pyrolysis or thermal cleavage of a carbon feedstock.” [0022], Westenberg does not teach the coal-derived component comprising the specific coal char produced by pyrolysis, however, Rush teaches carbonaceous char, derived from geological formations associated with coal [P1; Left Column; Line 1] which reads on the coal-derived component coal char produced by pyrolysis. Rush further teaches the incorporation of carbonaceous char that may supplant carbon blacks in rubber utilization, which further improve the strength and the ageing qualities of rubber and the carbonaceous char that may supplant carbon blacks in rubber utilization [P1; Left Column; Lines 45-55]. Because both carbon black as taught by Westenberg and the pyrolysis coal char taught by Rush are known in the art to be useful for rubber composite formation, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the carbon black taught by Westenberg with the pyrolysis coal char taught by Rush, and would have been motivated to do so because both compounds individually are known to be effective functional filler for rubber composition. (see MPEP 2144.06).
Regarding Claim 2, Westenberg teaches “the present invention may comprise the carbon black material (b) in an amount 50 phr or more. As used herein, the term “phr” refers to parts by weight of the recited respective material per 100 parts by weight of rubber” [0045], hence the ratio between carbon black and rubber is 50/100=0.5, which lie in the claimed range, wherein the “ the carbon black feedstock (b-i) can be a mixture made of renewable carbon black feedstock and conventional carbon black feedstock, such as coal tar distillates” [0025], which indicates the carbon black as taught by Westenberg is the coal-derived component.
Regarding Claim 3, Westenberg teaches “the carbon black (b-i) has a BET surface area, in a range from 15 to 500 m2/g” [0094], overlaps the claimed range, wherein the “the carbon black feedstock (b-i) can be a mixture made of renewable carbon black feedstock and conventional carbon black feedstock, such as coal tar distillates” [0025], which indicates the carbon black as taught by Westenberg is the coal-derived component.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 4, Westenberg teaches “The rubber according to the invention can also be partially cross-linked” [0014]
Regarding Claim 6, Westenberg teaches “oils” [0105]; “fatty acid” [0047].
Regarding Claim 7, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein the composition has been taught by Westenberg and Rush, as well as the incorporation of carbonaceous char into rubber [P1; Left Column; Lines 45-55], as taught by Rush.
Therefore, the claimed effects and physical properties, i.e. hardness; tensile modulus; tensile strength; elongation at break, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 8, Westenberg teaches “synthetic rubber preferably comprises emulsion-styrene-butadiene rubber (ESBR)” [0056] which is styrene-based rubber.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Westenberg (US20230407042, herein Westenberg) and Rush (US2378246, herein Rush) as applied in claim 1, in the further view of Zhang (US20240034846, herein Zhang).
Regarding Claim 5, Westenberg and Rush collectively teach the composition as set forth above, Westenberg is silent on wherein the elastomer component is not crosslinked, however, Zhang teaches “The rubber may be a non-cross linked polymer” [0046]. Westenberg and Zhang are considered analogous art because they are in the same field of endeavor, that of the rubber and coal derived carbon-based filler functional composites formation via the different rubber selection. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Westenberg to add the teachings of Zhang and provide wherein the “The rubber may be a non-cross linked polymer” [0046] and apply them into composition formation. Doing so would further fulfill the product develop via suitability with the selection of specified rubber.
Claims 9-10, 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Westenberg (US20230407042, herein Westenberg), in the view of Rush (US2378246, herein Rush).
Regarding Claims 9, 13, Westenberg teaches composition [0003], comprising: “(a) an elastomeric polymer material; and (b) a carbon black material obtained from a carbon black feedstock comprising a renewable carbon black feedstock” [0005], wherein, “The elastomeric polymer material (a) of the composition according to the present invention can comprise natural and/or synthetic rubber.” [0011], and “Synthetic rubber can comprise chlorinated polyethylene” [0013] which is thermoplastic polymer; wherein the ““carbon black” is produced by thermal oxidative pyrolysis or thermal cleavage of a carbon feedstock.” [0022], Westenberg further teaches “the present invention may comprise the carbon black material (b) in an amount 50 phr or more. As used herein, the term “phr” refers to parts by weight of the recited respective material per 100 parts by weight of rubber” [0045], hence the ratio between carbon black and rubber is 50/100=0.5, which lie in the claimed range, wherein the “ the carbon black feedstock (b-i) can be a mixture made of renewable carbon black feedstock and conventional carbon black feedstock, such as coal tar distillates” [0025], which indicates the carbon black as taught by Westenberg is the coal-derived component. Westenberg does not teach the coal-derived component comprising the specific coal char produced by pyrolysis, however, Rush teaches carbonaceous char, derived from geological formations associated with coal [P1; Left Column; Line 1] which reads on the coal-derived component coal char produced by pyrolysis. Rush further teaches the incorporation of carbonaceous char that may supplant carbon blacks in rubber utilization, which further improve the strength and the ageing qualities of rubber and the carbonaceous char that may supplant carbon blacks in rubber utilization [P1; Left Column; Lines 45-55]. Because both carbon black as taught by Westenberg and the pyrolysis coal char taught by Rush are known in the art to be useful for rubber composite formation, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the carbon black taught by Westenberg with the pyrolysis coal char taught by Rush, and would have been motivated to do so because both compounds individually are known to be effective functional filler for rubber composition. (see MPEP 2144.06).
Regarding Claim 10, Westenberg teaches “BUNA CB 24 50 phr” [P12; Table 2], which is “Polybutadiene rubber”, [P12; Table 2-contunied], which is an elastomer with the concentration of (50/(50x3+3+3+2+1+1.5+3+1.6+1.3))=30%, which lies in the claimed range.
Regarding Claim 14, Westenberg teaches “the carbon black (b-i) has a BET surface area, in a range from 15 to 500 m2/g” [0094], overlaps the claimed range, wherein the “the carbon black feedstock (b-i) can be a mixture made of renewable carbon black feedstock and conventional carbon black feedstock, such as coal tar distillates” [0025], which indicates the carbon black as taught by Westenberg is the coal-derived component.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Westenberg (US20230407042, herein Westenberg) and Rush (US2378246, herein Rush) as applied in claim 9 set forth above, in the view of Trembly (US20210102071, herein Trembly).
Regarding Claims 11, 12, Westenberg and Rush collectively teach the composition as set forth above. Westenberg teaches “Synthetic rubber can comprise chlorinated polyethylene” [0013] which is thermoplastic polymer; but does not explicitly teach wherein the thermoplastic component comprises a polyethylene or a polypropylene, however, Trembly teaches low density polyethylene [0038]. Westenberg and Trembly are considered analogous art because they are in the same field of endeavor, that of the rubber, thermoplastic and coal particle-based functional composites formation via the different thermoplastic selection. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the low density polyethylene [0038] and apply into the composition formation. Doing so would further fulfill the product develop toward suitable for use outdoors [0038] owing to the selection of the low density polyethylene as taught by Trembly.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Westenberg (US20230407042, herein Westenberg), in the view of Rush (US2378246, herein Rush).
Regarding Claims 15, 17, 18, Westenberg teaches the method producing the vulcanizable rubber composition [0015], comprising: “(a) an elastomeric polymer material; and (b) a carbon black material obtained from a carbon black feedstock comprising a renewable carbon black feedstock” [0005]; wherein, “The elastomeric polymer material (a) of the composition according to the present invention can comprise natural and/or synthetic rubber.” [0011], and “synthetic rubber comprises styrene-butadiene rubber” [0069; wherein the ““carbon black” is produced by thermal oxidative pyrolysis or thermal cleavage of a carbon feedstock.” [0022], Westenberg further teaches “additives selected from vulcanization agents, curing aids such as: metal oxides” [0105] introduced into chamber [0151] reads on vulcanizing the mixture in the reactor.
Westenberg does not explicitly teach the pyrolysis char; however, Rush teaches carbonaceous char, derived from geological formations associated with coal [P1; Left Column; Line 1] which reads on the coal-derived component coal char produced by pyrolysis. Rush further teaches the incorporation of carbonaceous char that may supplant carbon blacks in rubber utilization, which further improve the strength and the ageing qualities of rubber and the carbonaceous char that may supplant carbon blacks in rubber utilization [P1; Left Column; Lines 45-55]. Because both carbon black as taught by Westenberg and the pyrolysis coal char taught by Rush are known in the art to be useful for rubber composite formation, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the carbon black taught by Westenberg with the pyrolysis coal char taught by Rush, and would have been motivated to do so because both compounds individually are known to be effective functional filler for rubber composition. (see MPEP 2144.06).
Regarding Claim 16, Westenberg teaches “The process can comprise further steps such as extrusion” [0051].
Regarding Claims 19, 20, Westenberg and Rush collectively teach the composition as set forth above in claim 15. Westenberg further teaches processing additives such as oils [0105]. Westenberg does not teach the specific process steps of the oil injection before or after the vulcanizing the mixture. However, such limitations are product-by-process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113]. In the present case, the product, rubber composite, appears to be the same as that produced by the product-by-process limitations.
Response to Arguments
Applicant’s arguments, filed 12/18/2025, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Westenberg (US20230407042, herein Westenberg) and Rush (US2378246, herein Rush) as set forth above.
In this case, the newly added reference_ Rush teaches carbonaceous char, derived from geological formations associated with coal [P1; Left Column; Line 1] which reads on the coal-derived component coal char produced by pyrolysis. Rush further teaches the incorporation of carbonaceous char that may supplant carbon blacks in rubber utilization, which further improve the strength and the ageing qualities of rubber and the carbonaceous char that may supplant carbon blacks in rubber utilization [P1; Left Column; Lines 45-55]. Because both carbon black as taught by Westenberg and the pyrolysis coal char taught by Rush are known in the art to be useful for rubber composite formation, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the carbon black taught by Westenberg with the pyrolysis coal char taught by Rush, and would have been motivated to do so because both compounds individually are known to be effective functional filler for rubber composition. (see MPEP 2144.06).
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 extension fee 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 Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767