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
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, 10-11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma (US 2015/0148479) in view of Wideman et al. (EP 279766) or Washizu et al. (EP 3070120).
In ¶’s 8-15, Ma teaches 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 3,7,10-trimethyl-1-(3-(oxiran-2-ylmethoxy)propyl)-2,8,9-trioxa-5-aza-1-silabicyclo[3.3.3]undecane or 1-(3-(oxiran-2-ylmethoxy)propyl)- 3,7,10-trimethylsilatrane (Table 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 (¶ 35).
Ma differs 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, such 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 improve the resistance of such polymers to ozonolysis.
In ¶’s 56 to 59, Washizu et al. teach 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 Ma, in order to obtain the improvement in properties 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 Mazumdar et al. (USPN 9,090,730) in view of Wideman et al. (EP 279766) or Washizu et al. (EP 3070120).
In Col. 2, line 37 to Col. 4, line 12, Mazumdar 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 3,7,10-trimethyl-1-(3-(oxiran-2-ylmethoxy)propyl)-2,8,9-trioxa-5-aza-1-silabicyclo[3.3.3]undecane or 1-(3-(oxiran-2-ylmethoxy)propyl)- 3,7,10-trimethylsilatrane (Table 1), wherein the functionalized elastomer comprises repeat units of a diene monomer, such as butadiene, and optionally a vinyl aromatic monomer (Col. 7, lines 21-44), 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 (Col. 13, lines 4-8).
Mazumdar 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, such 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 improve the resistance of such polymers to ozonolysis.
In ¶’s 56 to 59, Washizu et al. teach 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 Mazumdar et al., in order to obtain the improvement in properties 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 Ma et al. (USPN 9,790,289) in view of Wideman et al. (EP 279766) or Washizu et al. (EP 3070120).
In Col. 2, line 1 to Col. 3, line 43, Ma 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 3,7,10-trimethyl-1-(3-(oxiran-2-ylmethoxy)propyl)-2,8,9-trioxa-5-aza-1-silabicyclo[3.3.3]undecane or 1-(3-(oxiran-2-ylmethoxy)propyl)- 3,7,10-trimethylsilatrane (Table 1), wherein the functionalized elastomer comprises repeat units of a diene monomer, such as butadiene, and optionally a vinyl aromatic monomer (Col. 7, lines 44-61), and the functionalized elastomer comprises at least 92 percent by weight of cis 1,4 microstructure content based on the weight of the polydiene content of the functionalized elastomer.
Ma 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, such 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 improve the resistance of such polymers to ozonolysis.
In ¶’s 56 to 59, Washizu et al. teach 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 Ma et al., in order to obtain the improvement in properties taught by Wideman et al. and/or Washizu et al., motivated by a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding the argument that Ma does not disclose use of a lanthanide-based polymerization catalyst, this process is not required in the independent rejected claim. Even where the process involving the lanthanide-based polymerization catalyst is recited in dependent claims, Ma still teaches the functionalized elastomer comprising at least 90 percent by weight of cis 1,4 microstructure content based on the weight of the polydiene content of the functionalized elastomer (¶ 35). It is noted that the claims are to the product, and not to the process of its production.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Wideman et al. teach the selective hydrogenation of the synthetic rubbers to improve the tensile strength and resistance of the rubber to various solvents as well as improve the resistance of such polymers to ozonolysis, and Washizu et al. teach calculated hydrogenation of the 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. (See above).
It still 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 Ma, in order to obtain the advantages taught by Wideman et al. and/or Washizu et al., motivated by a reasonable expectation of success.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 to improve the resistance of such polymers to ozonolysis and in ¶’s 56 to 59, Washizu et al. teach 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 still 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 Mazumdar 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.
Regarding the argument that Mazumdar et al. does not disclose use of a lanthanide-based polymerization catalyst, this process is not required in the rejected independent claim. Even where the process involving the lanthanide-based polymerization catalyst is recited in dependent claims, Mazumdar et al. still teaches the functionalized elastomer comprising at least 90 percent by weight of cis 1,4 microstructure content based on the weight of polydiene content of the functionalized elastomer (Col. 13, lines 4-8). ). It is noted that the claims are to the product, and not to the process of its production.
In response to applicant's argument that the present hydrogenated functionalized polymer is not contemplated by the prior art, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding Ma et al. in view of Wideman et al. or Washizu et al., Ma et al. teach that the functionalized elastomer comprises at least 92 percent by weight of cis 1,4 microstructure content based on the weight of the polydiene content of the functionalized elastomer, and Wideman et al. and Washizu et al. teach hydrogenating rubber polymers for the purpose of improving resistance of the polymers to ozonolysis and solvents, as well as achieving improved properties of the polymer in applications such as pneumatic tires.
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 improve the resistance of such polymers to ozonolysis.
In ¶’s 56 to 59, Washizu et al. teach 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 still 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 Ma 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.
THIS ACTION IS MADE FINAL. 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 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
