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 .
Rejections
Double Patenting
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3. Claims 1-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12247114, Kutsovsky et al. in view of US Pat. Application Publication No. 2019/0144640 Koyama.
The patented claims recite limitations falling within the scope of the instant claims except for the use of the instantly claimed linking agents. Note patented claim 1, particularly noting the mixing methods, wet filler, and liquid amounts, patented claim 2, noting the carbon black and coated or treated materials thereof.
Koyama discloses using their compound of paragraph [0011], which falls within the scope of the instantly claimed linking agents. Koyama, paragraph [0012], teaches that the compound reacts with the surface of the carbon black which requires that it coated the surface of the carbon black. Koyama, paragraph [0018], teaches that their compound of Formula (I) couples the rubber and carbon black.
Kutsovsky’s claim 29 requires addition of dry filler to the mixer. This necessitates that the coatings or treatments of claim 2 be added later which gives the particulars of the instant claim 7.
Kutsovsky’s claim 21 implies the particulars of the instant claims 8 and 10.
Kutsovsky’s claim 22 gives the instant claim 9 particulars.
Kutsovsky’s claim 4 gives the limitation of the instant claim 14.
Kutsovsky’s claim 12 gives the limitations of the instant claim 15.
Kutsovsky’s claim 5 gives the limitation of the instant claim 16.
Kutsovsky’s claim 2, which encompasses using both carbon black and the other ingredients of the instant claim 17, including silica of the instant claim 18, gives the limitation of the instant claims 17-18.
Kutsovsky’s claim 10 gives the limitation of the instant claims 21-22.
Kutsovsky’s claim 22 gives the limitation of the instant claim 23.
Kutsovsky’s claim 23 gives the limitation of the instant claim 24.
Kutsovsky’s claimed mixers are not described as having rams which makes them ram-less which falls within the scope of the instant claim 30.
The compositions mixed according to Kutsovsky’s claims necessarily age to some degree because some time will necessarily pass between mixing and emptying of the mixer container which falls within the scope of the instant claim 32.
It would have been obvious to one of ordinary skill in the art to add the linking agent of the instant claims to the combinations of ingredients of the instant claims which are formed in the method of the patented claims of Kutsovsky because they fall within the scope of the coatings or treatments of Kutsovsky’s claims, they are known for use in rubber/carbon black compositions, as taught by Koyama, and they would have been expected to give the linking between rubber and carbon black taught by Koyama. This makes obvious the instant claims 1-10, 14-19, 21-24, 30, and 32.
It would have been obvious to one of ordinary skill in the art to add the ingredients of the above discussed method of Kutsovsky in view of Koyama in the order of the instant claims 11-12 and 26-27 because such ordering of ingredient addition is encompassed by Kutsovsky’s claims 21 and 29 and would have been expected to give only predictable results to the ordinary skilled artisan. See MPEP 2144.04 Legal Precedent as Source of Supporting Rationale [R-07.2022], paragraph IV. C.
It would have been obvious to one of ordinary skill in the art to add the wet filler and linking agent of the above discussed method of Kutsovsky in view of Koyama in the form of co-pellets of the instant claims 13 and 20 because Kutsovsky’s claims do not limit the form of these additives and Kutsovsky’s enabling disclosure, which is also prior art based on its priority date, Kutsovsky, column 5, lines 49-50, noting the pellet form, describes the addition of the wet filler in the form of pellets which fall within the scope of co-pellets. It would be necessary that coated or treated fillers of Kutsovsky’s claims already contain the linking agent of the above discussed methods of Kutsovsky in view of Koyama.
It would have been obvious to one of ordinary skill in the art to use one mixer or multiple mixers to perform the two or more mixings of Kutsovsky’s claim 21, which gives the particulars of the instant claims 25 and 28-29 when coupled with the above discussed method of Kutsovsky’s claims in view of Koyama.
The enabling specification of Kutsovsky, column 62, lines 44-49, states that any method in their disclosure can include a drying step. In drying rubbers large amounts of time and higher temperatures would increase drying amounts. The temperatures would need to be kept low enough not to degrade the rubber and the drying time would have to be short enough that it was cost effective.
It would have been obvious to one of ordinary skill in the art to dry the compositions resulting from the above discussed methods of Kutsovsky in view of Koyama using the limitations of the instant claims 33 and 34 because such drying is included in Kutsovsky’s methods, which includes any drying times, i.e. aging times, and drying temperatures because these variables are not limited, and the time and temperature limitations of the instant claims would have been expected to give only predictable degrees of drying because these are result effective variables which require only routine experimentation to optimize desired results, such as degree of dryness and the cost of the added time, regarding drying wet polymer compositions. See MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], paragraph II.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to add vulcanizing agent and to vulcanize the product according to the instant claim 31 to form an article of the instant claim 37 with the product resulting from the above discussed methods of Kutsovsky in view of Koyama because Koyama exemplifies vulcanizing such rubber compositions at paragraphs [0033], noting the vulcanizing agent of the table, and [0040], noting the vulcanized product and the tires of Koyama’s claims 9-10.
These products of Kutsovsky in view of Koyama will necessarily inherently have the particulars of the instant claims 35-36 where the compositions of Kutsovsky in view of Koyama are used relatively soon after they are made because such a small degree of aging is not expected to change the properties significantly compared to the non-aged products. This necessarily falls within the scope of the instant claims 35-36, which do not specify any particular aging time and temperature. See MPEP 2112.
Claim Rejections - 35 USC § 102
4. 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.
5. Claims 1-7, 10, 17, 19-22, 24, 31-32, and 35-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. Application Publication No. 2019/0144640 Koyama with US Pat. Application Publication No. 2012/0152540 Patil et al. being cited as evidence.
Patil, paragraph [0039], states “Latex is a slurry consisting of solid rubber particles as the dispersed phase and a liquid as the continuous phase.” It is therefore clear that the rubber latexes of Koyama contain a solid elastomer, i.e. rubber. The instant claims do not exclude the solid elastomer from being dispersed in a liquid continuous phase. The rubber latexes of Koyama are therefore encompassed by the instantly claimed solid elastomer.
Regarding claims 1-7, 10, 17, 19-22, 24, 31-32, and 35-37:
Koyama discloses a method of making a composite by charging a mixer with a solid elastomer, a wet filler comprising carbon black and a liquid present in an amount of at least 20% by weight based on the total weight of wet filler and a linking agent which falls within the scope of that of the instant claims. See Koyama, the abstract and paragraph [0011], noting Formula (I), which falls within the scope of the instantly claimed linking agent. See Koyama, paragraphs [0012]-[0016], which encompasses the instantly claimed mixing steps of the instantly claimed steps (a) and (b). The carbon black slurry of Koyama, paragraph [0016] contains the instantly claimed amounts of liquid, noting that the remainder of the composition containing the carbon black amounts discussed therein is liquid and these remaining amounts fall within the scope of the instantly claimed amounts of liquid of the instant claims 1 and 19. The vulcinaizing-type compounding ingredients of Koyama, paragraph [0014], fall within the scope of the instant claim 31. The vulcanized, molded article made therefrom falls within the scope of the instant claim 37.
Note, from the discussion of Patil above, that Koyama’s latex of rubber particles contains solid rubber particles, i.e. solid elastomer. Particularly considering the unlimited amount of liquid of the instant claims, it is not seen that the instantly claimed “solid elastomer” excludes the latex of Koyama.
See Koyama, paragraphs [0017]-[0018], which falls within the scope of the linking agents of the instant claims 1-6.
Koyama, paragraphs [0034] and [0035] disclose mixing the linking agent and the wet filler from separate charges which falls within the scope of the instant claim 7.
Koyama’s mixing of their paragraph [0034]-[0037] uses multiple mixing steps to make their product which falls within the scope of the instant claim 10.
Koyama, paragraph [0019], describes their rubber latex ad being rubber particles dispersed in water and describes their solids contents.
Koyama, paragraph [0020], discloses removing water by evaporation which falls within the scope of the removal of a portion of water by evaporation of the instantly claimed step (b).
Koyama, paragraph [0021], discloses amounts of natural rubber to carbon black which fall within the scope of the instanty claimed loading, particularly noting the preferred and more preferred amounts of carbon black of Koyama.
See Koyama, paragraphs [0022] and [0023].
See Koyama, paragraphs [0035] and [0036], both of which describe the dewatering of the rubber/carbon black mixtures until they are dry. The recitation of “dried” by Koyama is taken as requiring amounts of liquid of no more than 10% by weight. The further mixing and discharging of the mixed rubber of paragraph [0037] of Koyama falls within the scope of step (c) of the instant claims. Koyama thereby anticipates the instant claim 1.
The zinc oxide added in Koyama, paragraph [0037], noting the zinc oxide of Table 1, falls within the scope of the instant claim 17.
The aqueous carbon black slurries of Koyama’s examples fall within the scope of “paste” of the instant claim 20.
The exemplified natural rubber of Koyama’s examples falls within the scope of the instant claims 21-22.
The exemplified mixing steps of Koyama are a batch process of the instant claim 24.
The compositions of Koyama resulting from the above discussed method of Koyama are necessarily aged to some degree between the completion of mixing and their final use. This aging falls within the scope of the instant claim 32, which recites no aging time or conditions. The resulting aged products of Koyama will necessarily inherently have the particulars of the instant claims 35-36 because the small degree of aging which occurs between Koyama’s mixing and molding and vulcanizing is not expected to change the properties significantly compared to the non-aged products. This necessarily falls within the scope of the instant claims 35-36, which do not specify any particular aging time and temperature. See MPEP 2112.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-37 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 12247114, Kutsovsky et al. in view of US Pat. Application Publication No. 2019/0144640 Koyama.
Regarding claims 1-10, 14-19, 21-24, 30, and 32:
Kutsovsky discloses limitations falling within the scope of the instant claims except for the use of the instantly claimed linking agents. Note Kutsovsky, the abstract, column 1, lines 65-67, column 2, lines 1-35, of which the natural rubber falls within the scope of the solid elastomers of the instant claims 21-22. Note Kutsovsky, column 62, lines 30-43, noting the liquid contents which fall within the scope of those of the instant claims, including the instant claims 1 and 19. Note Kutsovsky’s claim 1, particularly noting the mixing methods, wet filler, and liquid amounts, and claim 2, noting the carbon black and coated or treated materials thereof.
Koyama discloses using their compound of paragraph [0011], which falls within the scope of the instantly claimed linking agents of the instant claims 1-6 and 25. Koyama, paragraph [0012], teaches that the compound reacts with the surface of the carbon black which requires that it coated the surface of the carbon black. Koyama, paragraph [0018], teaches that their compound of Formula (I) couples the rubber and carbon black.
Kutsovsky’s claim 29 requires addition of dry filler to the mixer. This necessitates that the coatings or treatments of claim 2 be added later which gives the particulars of the instant claim 7.
Kutsovsky’s claim 21 implies the particulars of the instant claims 8 and 10.
Kutsovsky’s claim 22 gives the instant claim 9 particulars.
Kutsovsky’s claim 4 gives the limitation of the instant claim 14.
Kutsovsky’s claim 12 gives the limitations of the instant claim 15.
Kutsovsky’s claim 5 gives the limitation of the instant claim 16.
Kutsovsky’s claim 2, which encompasses using both carbon black and the other ingredients of the instant claim 17, including silica of the instant claim 18, gives the limitation of the instant claims 17-18.
Kutsovsky’s claim 22 gives the limitation of the instant claim 23.
Kutsovsky’s claim 23 gives the limitation of the instant claim 24.
Kutsovsky’s claimed mixers may have rams according to the instant claim 30. See Kutsovsky, column 20, lines 54-67. The mixers of Kutsovsky’s claims are not described as having rams which makes them ram-less which falls within the scope of the instant claim 30.
The compositions mixed according to Kutsovsky’s claims necessarily age to some degree because some time will necessarily pass between mixing and emptying of the mixer container which falls within the scope of the instant claim 32.
It would have been obvious to one of ordinary skill in the art to add the linking agent of the instant claims to the combinations of ingredients of the instant claims which are formed in the methods of Kutsovsky which otherwise fall within the scope of the methods of the instant claims because they fall within the scope of the coatings or treatments of Kutsovsky’s claims, they are known for use in rubber/carbon black compositions, as taught by Koyama, and they would have been expected to give the linking between rubber and carbon black taught by Koyama. This makes obvious the instant claims 1-10, 14-19, 21-24, 30, and 32.
Regarding claims 11-12 and 26-27:
The prior art does not describe the order of ingredient addition of the instant claims 11-12 and 26-27.
It would have been obvious to one of ordinary skill in the art to add the ingredients of the above discussed method of Kutsovsky in view of Koyama in the order of the instant claims 11-12 and 26-27 because such ordering of ingredient addition is encompassed by Kutsovsky’s claims 21 and 29 and would have been expected to give only predictable results to the ordinary skilled artisan. See MPEP 2144.04 Legal Precedent as Source of Supporting Rationale [R-07.2022], paragraph IV. C.
Regarding claims 13 and 20:
Kutsovsky, column 5, lines 49-50, noting the pellet form, describes the addition of the wet filler in the form of pellets which fall within the scope of co-pellets of the instant claims 13 and 20.
It would have been obvious to one of ordinary skill in the art to add the wet filler and linking agent of the above discussed method of Kutsovsky in view of Koyama in the form of co-pellets of the instant claims 13 and 20 because Kutsovsky describes adding these additives in the form of pellets. It would be necessary that coated or treated fillers of Kutsovsky’s claims already contain the linking agent of the above discussed methods of Kutsovsky in view of Koyama.
Regarding claims 25 and 28-29:
Kusovsky’s claim 1 has the method steps of the instant claim 25 except for the material temperature of the instant claim 25.
Kutsovsky, column 38, lines 17-36, discloses multi-stage mixing and the material temperature of the instant claim 25, step (c). Kutsovsky, column 41, lines 52-60, discloses the material temperatures of the instant claim 25, step (c).
Kutsovsky does not disclose the particulars of the instant claims 25 and 28-29 with sufficient specificity to anticipate these claims.
It would have been obvious to one of ordinary skill in the art to mix the ingredients of the above discussed method of Kutsovsky in view of Koyama in the order of the instant claim 25 and 28-29 and with the instantly claimed material temperature of the instant claim 25, step (c) because such ordering of ingredient addition is encompassed by Kutsovsky’s claims 21 and 29, the material temperature is disclosed by Kutsovsky, and the instantly claimed method steps and material temperature would have been expected to give only predictable results to the ordinary skilled artisan. See MPEP 2144.04 Legal Precedent as Source of Supporting Rationale [R-07.2022], paragraph IV. C.
It would have been obvious to one of ordinary skill in the art to use one mixer or multiple mixers to perform the two or more mixings of Kutsovsky’s claim 21, which gives the particulars of the instant claims 25 and 28-29 when coupled with the above discussed method of Kutsovsky’s claims in view of Koyama.
Regarding claims 33 and 34:
Kutsovsky, column 62, lines 44-49, states that any method in their disclosure can include a drying step. In drying rubbers, large amounts of time and higher temperatures would increase drying amounts. The temperatures would need to be kept low enough not to degrade the rubber and the drying time would have to be short enough that it was cost effective.
It would have been obvious to one of ordinary skill in the art to dry the compositions resulting from the above discussed methods of Kutsovsky in view of Koyama using the limitations of the instant claims 33 and 34 because such drying is included in Kutsovsky’s methods, which includes any drying times, i.e. aging times, and drying temperatures because these variables are not limited, and the time and temperature limitations of the instant claims would have been expected to give only predictable degrees of drying because these are result effective variables which require only routine experimentation to optimize desired results, such as degree of dryness and the cost of the added time, regarding drying wet polymer compositions. See MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], paragraph II.
Regarding claims 31 and 37:
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to add vulcanizing agent and to vulcanize the product according to the instant claim 31 to form an article of the instant claim 37 with the product resulting from the above discussed methods of Kutsovsky in view of Koyama because Koyama exemplifies vulcanizing such rubber compositions at paragraphs [0033], noting the vulcanizing agent of the table, and [0040], noting the vulcanized product and the tires of Koyama’s claims 9-10.
These products of Kutsovsky in view of Koyama will necessarily inherently have the particulars of the instant claims 35-36 where the compositions of Kutsovsky in view of Koyama are used relatively soon after they are made because such a small degree of aging is not expected to change the properties significantly compared to the non-aged products. This necessarily falls within the scope of the instant claims 35-36, which do not specify any particular aging time and temperature. See MPEP 2112.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 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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/PATRICK D NILAND/Primary Examiner, Art Unit 1762