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 Interpretation
Instant claim 1 discloses a composition which comprises a modified conjugated diene rubber. While claim 4 discloses in generic manner the modifying compounds and while examiner can utilize the specification to learn the meaning of the two components (modifier and rubber), under broadest reasonable interpretation the rubber can be any rubber comprising one or more compounds wherein only 1 compound needs to be a diene. For example, claims read on polybutadiene or styrene butadiene. Furthermore, term “comprising” allows presence of other components including non-functionalized rubbers. Modified rubber does not even have to be the majority of the rubber, which is reflective of applicant’s definition in instant specification [0102] wherein term “modified conjugated diene based polymer” is a collective term for a modified diene based polymer and an unmodified conjugated based polymer. As such the actual content of modified rubber is not really claimed due to lack of distinction between the two.
Claim 1 also comprises surfactant having HLB or less. While claim 2 defines the surfactant, under broadest reasonable interpretation, the surfactant can be ionic or non-ionic as long as its HLB value is 9.0 or less and it comprises at least one propoxy unit.
Claim 1 does not specify content for each of the components other than the sum of rubber, surfactant and optional extender oil being 95% or more. Based on the remaining components of the composition as defined in the dependent claims and article the examiner assumes that the remaining components are fillers and vulcanizing package.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant specification teaches following:
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In [0057] the applicants provide examples of controlling the content rate of the specific modified rubber, which includes controlling molecular weight before modification or before polymerization termination, controlling coupling rate, amount of initiator, monomer feed rate and the like. The examples provided in [0057] are typical methods to control molecular weight of the polymer as well as its modification, that have been well established in the art. Examples disclose a continuous feed of monomer and initiator [0100] at specific rates per minute and temperature of 75oC. However, instant claim 6 when reciting the content rate of modified rubber, uses 0.5-30 mass %.
When claiming content rate, the claim should be reciting which content is claim (monomer rubber or modifier) based on time which is implied by the term “rate”.
In summary, since claim recites content of 0.5-30 mass %, the claim will be interpreted as reciting the amount of rubber in the composition, not a rate. Clarification and amendment to claim 6 is required.
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.
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)(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.
Claims 1, 3, 5, 6, 9-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Miyazaki (CN 105324252 translation provided) in view of evidence disclosed in Sanyo Product Sheet.
With respect to claim 1, Miyazaki discloses composition for tire tread. The composition comprises tin modified butadiene rubber BR 1250H having Mw/Mn of 1.5 [0237], SPB VCR 617 [0230] SBR [0228] NR [0227], wherein rubbers are utilized in mixtures not all of them at the same time. Reinforcing fillers are carbon black [0231-0232], silica [0233], silane coupling agent [0234]. A non-ionic surfactant Newpol-PE 64 which is PEG/PPG copolymer (PPG has propoxy repeat unit) and based on Sanyo website its HLB value is 8.1. Structure of the surfactant is:
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Based on Table 1 [0182] the content of rubber and surfactant alone is 100%. The aromatic oil is utilized in additional 14 parts.
With respect to claim 3, surfactant in table 1 is utilized in amount of 1 and 1.5 parts. Specification further teaches other non-ionic surfactants such as Pluronic L and F series which also have low HLB values [0106]. The amount of surfactant is in a range of 0.1-5 parts.
With respect to claim 5, molecular weight of the rubber is measured using GPC calibrated with styrene standards [0150]. Modifier rubber BR-1250H by Rheon is also known as Nipol- BR 1250H (current company is Zeon corporation) has weight average molecular weight of 3.2x105.
With respect to claim 6, based on the 112 rejection above, claim 6 is interpreted as claiming content of the modified rubber. Table 1 of Miyazaki teaches content of modified butadiene rubber BR 1250H to be up to 30 parts.
With respect to claims 9 and 10, rubber formulation for making tire includes reinforcing fillers such as silica and carbon black.
With respect to claims 11 and 12, the formulation of Miyazaki is crosslinking (vulcanized) to make tire tread.
Claims 1, 3-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hayata (JP 2019-829996 supplied by the applicants).
With respect to claims 1, 3, Hayata in his claims 1 and 2 discloses conjugated diene polymer composition comprising 100 parts of diene rubber and 0.1-10 parts of non-ionic surfactant wherein the content of surfactant meets instant claim 3. Per claim 2, the diene rubber is modified. Rubber of Hayata has Mw/Mn in most preferred range of 1.07-3. From the perspective of wear resistance and strength of the bale the molecular weight in a range of 1x106 or more [0022-0023] as measured using GPC polystyrene standard. Non-ionic surfactants are those having formula 7-9 where in formula 9 comprises propoxy unit.
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Specific tradenames include Pluronic series with HLB having value between 1-8, adecapronic F series has HLB values 1.5-9 [0075], Sanyo Newpol OE-64 has HLB of 8.1 (see attached product data sheet).
With respect to claim 4, modifier if Hayata has following structure:
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This formula meets the limitation of instant formula (7), instant specification page 21.
With respect to claims 5 and 6, the overall molecular weight of the rubber of Hayata is no less than 1 million [0023] with weight average molecular weight of at most 130 million fully encompassing the claimed range [0022]. The content of the rubber in the formulation. Hayata teaches in [0023] that content of rubber having molecular weight of 1 million is 10-99 %, preferably 5-70%, balance being other molecular weights. Please note that preferred embodiment by no means limits or excludes content above or below preferred range. If it comes to the rubber content the process that is claimed in instant claims 14-16 below results in modified rubber content of 15%.
Additional reason why the rubber of Hayata will have the same molecular weight as that of the instant invention, is because Mooney viscosities are within the same range. Mooney viscosity of the polymer formulation of instant invention are in a range of 72-120 (Table 1), while the viscosity of the formulation of Hayata is in a range of 73-78 (Table 1)
With respect to claim 7 and 8, extender oils are utilized in amount of 5-50 parts per 100 parts of rubber [0078]. Table 1 discloses oil content as 23 parts.
With respect to claims 9-12, the modified rubber of Hayata is used in a formulation to make tire treads further comprise vulcanization system and reinforcing fillers such as silica [0034] carbon black [0101]. Other fillers include clays, minerals, and the like [0103]. Vulcanization system is sulfur or peroxide based [0113].
Claims 13-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hayata (JP 2019-829996 supplied by the applicants).
With respect to claim 13, the process of obtaining the polymer composition included following steps:
Step A) dissolve diene rubber and surfactant to make solution A [0088]
Step B) add extender oil to adjust the rubber solution [0090].
Step C) the rubber composition is subject to solvent removal,
Wherein, Hayata in his claims 1 and 2 discloses conjugated diene polymer composition comprising 100 parts of diene rubber and 0.1-10 parts of non-ionic surfactant wherein the content of surfactant meets instant claim 3. Per claim 2, the diene rubber is modified. Rubber of Hayata has Mw/Mn in most preferred range of 1.07-3. From the perspective of wear resistance and strength of the bale the molecular weight in a range of 1x106 or more [0022-0023] as measured using GPC polystyrene standard. Non-ionic surfactants are those having formula 7-9 where in formula 9 comprises propoxy unit.
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Specific tradenames include Pluronic series with HLB having value between 1-8, adecapronic F series has HLB values 1.5-9 [0075], Sanyo Newpol OE-64 has HLB of 8.1 (see attached product data sheet).
With respect to claim 14, removal of solvent is conducted by using steam as the stripping agent, wherein steam reads on generic description of water [0092]. Hayata further discloses the steam stripping step as contact with water.
With respect to claim 15, the process include solution polymerization of a monomer which includes both continuous or batch process, monomers include styrene and butadiene in a solvent such as n-hexane initiator (butyl lithium was added and polymerization was conducted at 80oC [0121]. The modifying compound was added to the mixture of monomers and butyl lithium. Hayata’s statement that the process is continuous process inherently means that the components are added more than once. It should be noted that the rate of addition of the reactants is also varied [0121]. Please note other alkali metal compounds that can be utilized in modification of the diene rubber are listed in [0030-0031] of Hayata.
With respect to claim 16, the process disclosed in claim 15 resulted in a solution of modified rubber having rubber content of 15%. The oil S-RAE at 23 parts and nonionic surfactant at 1 part were added to the solution followed by solvent removal.
Claims 1, 3-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Suzuki (JP2020-045449 submitted by the applicants. Name Suzuki is utilized to distinguish from the first Hayata reference).
With respect to claims 1 and 3, Suzuki discloses composition comprising modified diene rubber and 0.1-10 parts of non-ionic surfactant wherein extender oil is optional. Rubber of Suzuki has Mw/Mn in a range of 1.6-3 [0062] and non-ionic surfactant [0129] include surfactants having formula 23:
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Specific tradenames include Pluronic L and F series having HLB values of 1-8 [0152].
With respect to claim 4, the diene rubber is modified with a compound having both nitrogen and hydrocarbyloxysilyl groups. Example of modifier has following formula:
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With respect to claims 5 and 6, the molecular weight of the polymer of Suzuki is measured in each instance using GPC styrene standard. The diene polymer has a weight average molecular weight in a range of 2.0x105 to 3x106 [0037]. Where in content of a rubber having high molecular weight or 2x106 to 5x106 is in a range of 0.25-30 parts [0037].
With respect to claims 7 and 8, Suzuki discloses use of extender oil [0057] in amount of 5-50 parts [0157].
With respect to claims 9-12, Suzuki teaches use of fillers such as carbon black [0185], silica [0178-0184] and other fillers [0186] with the inventive rubber along with vulcanization system [0190] to formed crosslinked article [0178]. The molded article includes tires [0179]. The resulting molded article is tire tread [0235].
Claims 13-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Suzuki (JP2020-045449 submitted by the applicants. Name Suzuki is utilized to distinguish from the first Hayata reference).
With respect to claim 13 and 16, Suzuki discloses process where rubber and surfactant are dissolved in a solution. As disclosed above, Suzuki also teaches using extender oils. Once solution having proper viscosity is made, the solvent is removed [0161] wherein solvents include toluene or xylene as well as other hydrocarbons [0163] wherein characteristics of rubber and surfactant were disclosed above. Extender oil is utilized to stabilize the rubber [0164]. Solvent is removed in step B [0165-0166].
Wherein Suzuki discloses composition comprising modified diene rubber and 0.1-10 parts of non-ionic surfactant wherein extender oil is optional. Rubber of Suzuki has Mw/Mn in a range of 1.6-3 [0062] and non-ionic surfactant [0129] include surfactants having formula 23:
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Specific tradenames include Pluronic L and F series having HLB values of 1-8 [0152].
With respect to claim 14, Suzuki teaches that water content is present in rubber solution in amount of 0.01-30 parts [0174] as such contact with water is inevitable which is introduced with surfactant, the removal of solvent and water is then devolatized.
With respect to claim 15, the rubber is solution polymerized in presence of alkali initiator in a continuous fashion wherein components are fed into the reactor at different rates per minute (Example 1) as such the components have to be introduced at least twice.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hayata (JP 2019-829996 supplied by the applicants).
The discussion of Hayata from paragraph 2 of this office action is incorporated here by reference. Hayata discloses 1-10 parts of non-ionic surfactant, and other than specific tradenames like Pluronic which comprise PPO block, claim 2 is being rejected under 103 rejection because selection of the amine containing surfactants would have to be made from an extensive list.
The non-ionic surfactants of Hayata can be amines, amides aminoalcohols [0059]. Examples of such surfactants with low HLB value because of their long hydrophobic chain include: lauric monoisopropanolamide, octanoic acid monoisopropanolamide.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the fatty acid ester amides surfactant in the composition of Hayata, because these compounds were clearly envisaged by Hayata as non-ionic surfactants which are suitable for use in his invention other than those exemplified and those with known tradename. Additionally, these amide non-ionic surfactants are soluble in the same solvent as the rubber such as toluene and benzene as such one of ordinary skill in the art would still be able to produce solution as required by Hayata.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (JP2020-045449 submitted by the applicants. Name Suzuki is utilized to distinguish from the first Hayata reference).
The discussion of Suzuki from paragraph 3 of this office action is incorporated here by reference.
Suzuki discloses 1-10 parts of non-ionic surfactant, and other than specific tradenames like Pluronic which comprise PPO block, claim 2 is being rejected under 103 rejection because selection of the amine containing surfactants would have to be made from an extensive list.
The non-ionic surfactants of Suzuki can be amines, amides aminoalcohols [0135]. Examples of such surfactants with low HLB value because of their long hydrophobic chain include: lauric monoisopropanolamide, octanoic acid monoisopropanolamide [0149].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the fatty acid ester amides surfactant in the composition of Suzuki, because these compounds were clearly envisaged by Suzuki as non-ionic surfactants which are suitable for use in his invention other than those exemplified and those with known tradename. Additionally, these amide non-ionic surfactants are soluble in the same solvent as the rubber such as toluene and benzene as such one of ordinary skill in the art would still be able to produce solution as required by Suzuki.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 November 6, 2025