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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5 and 7-8, in the reply filed on 3/24/2026 is acknowledged.
Claim 6 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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) 1-5, 7 and 8 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lee et al. (US 2021/0009722).
In ¶ 8, Lee et al. teach a modified conjugated diene-based polymer, wherein the Mooney viscosity is 100, the Mooney stress relaxation rate is 0.70 or less, the glass transition temperature Tg is -90°C to -50°C, , and each of a nitrogen content and a silicon content is 50 ppm or more based on a mass with respect to the total amount of the modified conjugated diene-based polymer (See ¶ 52);
wherein the modified conjugated diene-based polymer has a molecular weight distribution (Mw/Mn) of 1.5 or more and less than 3.5 and the vinyl bond content in the conjugated diene-based polymer is 30% or less.
In ¶ 111, Lee et al. teach adding 100 parts by weight or less, based on 100 parts by weight of the rubber component, of process oil as a softener in a rubber composition comprising the modified conjugated diene-based polymer.
In ¶ 105, Lee et al. teach the rubber composition to include 10 parts by weight to 120 parts by weight of a filler.
While Lee et al. do not expressly teach the claimed the phase difference index, it is reasonable that the modified conjugated diene-based polymer of Lee et al. would possess the presently claimed properties since the composition of the modified conjugated diene-based polymer in Lee et al. is essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Claim(s) 1-5, 7 and 8 is/are rejected under 35 U.S.C. 103 as obvious over Choi Jea Sun et al. (KR 20210037162 A) in view of Lee et al. (US 2021/0009722), above.
In the abstract, Choi Jea Sun et al. teach a modified conjugated diene-based polymer, wherein the Mooney viscosity is 100, the phase difference index is 0.65 or more, the Mooney stress relaxation rate is 0.5 or less, and each of a nitrogen content and a silicon content is 50 ppm or more based on a mass with respect to the total amount of the modified conjugated diene-based polymer;
wherein the modified conjugated diene-based polymer has a molecular weight distribution (Mw/Mn) of 1.5 or more and less than 3.5. (See ¶ 64)
In ¶ 209, Choi Jea Sun et al. teach the rubber composition to include 10 parts by weight to 120 parts by weight of a filler.
In ¶ 215, Choi Jea Sun et al. teach adding 100 parts by weight or less, based on 100 parts by weight of the rubber component, of process oil as a softener in a rubber composition comprising the modified conjugated diene-based polymer.
While Choi Jea Sun et al. differ from the claimed invention in that the glass transition temperature Tg of the modified conjugated diene-based polymer is not disclosed, it is known in the art that if the glass transition temperature of the modified conjugated diene-based polymer is higher than −50° C., tensile properties such as abrasion resistance may be degraded, and if the glass transition temperature is lower than −90° C., processability may be deteriorated, and it is apprehended that viscoelasticity properties such as rolling resistance and wet skid resistance may be degraded, such as taught by Lee et al., above. (see ¶ 41)
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, for the glass transition temperature of the modified conjugated diene-based polymer in Choi Jea Sun et al. to be from −50° C to−90° C, in order to obtain the advantages taught by Lee et al., motivated by a reasonable expectation of success.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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