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 .
Applicant’s election of species b, claims 1-8, 11, 13 and 14 in the reply filed on 11/05/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, 4-7, 11, 13 and 14 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Nakafutami et al. (USPN 5,804,644).
In col. 3, lines 20-39, Nakafutami et al. teach a rubber composition for tires, further comprising fillers such as silica and/or carbon black, comprising an at least partially hydrogenated functionalized polymer, the polymer being up to 70% hydrogenated (Col. 4, lines 27-37); wherein the elastomeric polymer is reacted/functionalized with a coupling agent consistent with the present formula (I), particularly where the organo-silane coupling agent is represented by the general formula (RO)3 SiCnH2nX, where X more preferably represents a mercapto group from the viewpoint of reactivity with the partially hydrogenated rubber. (See Col. 6, lines 35-57).
While Nakafutami et al. does not expressly produce the partially hydrogenated functionalized polymer from a living polymer with hydrogenation as recited in the claims, the product is the same as the presently claimed product. Even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Marosi, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met.
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.
Claim(s) 1-8, 11, 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Du et al. (US 2015/0025184) in view of Wideman et al. (EP 279766) or Washizu et al. (EP 3070120).
In ¶’s 6-8, Du et al. teach a rubber composition with a fillers such as silica, comprising a functionalized polymer product of a living elastomeric polymer and the polymerization terminator of formula I, exemplified by S-benzyl-S'-triethoxysilylpropyltrithiocarbonate (¶ 25), wherein the functionalized elastomer comprises repeat units of a diene monomer, such as butadiene, and optionally a vinyl aromatic monomer (¶ 22), and the functionalized elastomer comprises at least 90 percent by weight of cis 1,4 microstructure content based on the weight of the polydiene content of the functionalized elastomer (¶ 39).
Du et al. differ from the claimed invention in that they do not disclosed the hydrogenation of the functionalized rubber polymers. However, it is known in the art to hydrogenate rubber polymers, for the purpose of improving resistance of the polymers to ozonolysis and solvents such as taught by Wideman et al., as well as achieving improved properties of the polymer in applications such as pneumatic tires, as taught by Washizu et al.
In page 2, lines 5-20, Wideman et al. teach the selective hydrogenation of synthetic rubbers to improve the tensile strength and resistance of a rubber to various solvents as well as improving the resistance of such polymers to ozonolysis.
In ¶’s 56 to 59, Washizu et al. teach the calculated hydrogenation of rubber polymers to improve the properties of pneumatic tires such as dry-grip performance, wherein the rate of hydrogenation is preferably 50 mol% or more.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to hydrogenate the functionalized rubber polymers of Du et al., in order to obtain the advantages taught by Wideman et al. and/or Washizu et al., motivated by a reasonable expectation of success.
Claim(s) 1-8, 10-11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nebhani et al. (US 2013/0131263) in view of Wideman et al. (EP 279766) or Washizu et al. (EP 3070120).
In ¶’s 6-8, Nebhani et al. teach a rubber composition with a fillers such as silica, comprising a functionalized polymer product of a living elastomeric polymer and the polymerization terminator of formula I, exemplified by S-benzyl-S'-triethoxysilylpropyltrithiocarbonate (See Ex. 1), wherein the functionalized elastomer comprises repeat units of a diene monomer, such as butadiene, and optionally a vinyl aromatic monomer (¶ 21), and the functionalized elastomer comprises at least 90 percent by weight of cis 1,4 microstructure content based on the weight of the polydiene content of the functionalized elastomer (¶ 34).
Nebhani et al. differ from the claimed invention in that they do not disclosed the hydrogenation of the functionalized rubber polymers. However, it is known in the art to hydrogenate rubber polymers, for the purpose of improving resistance of the polymers to ozonolysis and solvents such as taught by Wideman et al., as well as achieving improved properties of the polymer in applications such as pneumatic tires, as taught by Washizu et al.
In page 2, lines 5-20, Wideman et al. teach the selective hydrogenation of synthetic rubbers to improve the tensile strength and resistance of a rubber to various solvents as well as improving the resistance of such polymers to ozonolysis.
In ¶’s 56 to 59, Washizu et al. teach the calculated hydrogenation of rubber polymers to improve the properties of pneumatic tires such as dry-grip performance, wherein the rate of hydrogenation is preferably 50 mol% or more.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to hydrogenate the functionalized rubber polymers of Nebhani et al., in order to obtain the advantages taught by Wideman et al. and/or Washizu 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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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE