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 Objections
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is objected to because it depends on a claim 0 that does not exist.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites the limitation "the method of claim 0" in the first line. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Xiong (US 2019/375902 A1) in view of Kutsovsky (WO 2020/247663 A1, attached to a prior Office action). All references have been cited in a prior Office action.
Regarding claims 1-18, Xiong teaches a method of producing a composite by providing a first dispersion of silica in a liquid, and combining it with a second dispersion of elastomer latex and carbon black, and mixing the dispersions (claim 70). The composition becomes solid when mixed (p. 1, [0008]). A combination of natural rubber, polybutadiene, and styrene-butadiene rubber (SBR) may be used (p. 13, [0093]). The carbon black and silica may be initially dry, and rewetted, or added as wet slurry, with no drying step, in water (claim 71; p. 3, [0036]). The combined filler slurry may have up to 90% by weight of aqueous fluid (p. 3, [0032]). The mixer may further be charged with a coupling agent in any of the steps (p. 13, [0116]; p. 14, [0121]). Filler may be combined with the solid product after the solid masterbatch is formed (p. 13, [0120]).
The ingredients may be mixed using a rotor-stator mill (p. 19, Ex. 4). This reads on the claimed mixer having one or more rotors.
The composite formed may contain at least 25 phr silica and at least 10 phr carbon black in elastomer such as natural rubber (p. 15, [0127]). The method may be modified to generate a material having below 2 wt% of moisture, which is equivalent to below 2 wt% total liquid content where water is used as the sole liquid (p. 16, [0140]). No further ingredients are required (e.g. rubber chemicals as defined by the instant specification at p. 27, [0083]). These prior art ranges overlap the claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
However, Xiong is silent as to the temperature at which the composite may be formed.
In the same field of endeavor, Kutsovsky teaches mixing under temperature control where the temperature control means is set to a temperature ranging from 5-150*C (p. 37, [0104]). This prior art range overlaps the claimed range. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Xiong and the temperature control means of Kutsovsky to arrive at the claimed invention, and to achieve improved filler dispersion, as taught by Kutsovsky (p. 36, [0098]).
Regarding claims 19-20, Xiong in view of Kutsovsky remains as applied to claim 1 above. Xiong further teaches that the composite may be combined with a curing agent (p. 13, [0120]). Kutsovsky further teaches curing the composition to form a vulcanizate (p. 69, [0204]).
Response to Arguments
Applicant's arguments filed 18 March 2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach mixing a liquid masterbatch in solid form with a wet filler. However, the masterbatch of Xiong may take solid form, as discussed above in reference to claim 1. Selecting Kutsovsky’s wet carbon black filler for mixing with Xiong’s solid masterbatch, as suggested by Xiong, is equivalent to the claimed method.
Applicant teaches that the combination of Xiong and Kutsovsky does not achieve the claimed invention because Kutsovsky teaches against use of a liquid masterbatch in solid form. However, Kutsovsky is not relied upon for its method. Rather, Kutsovsky’s filler is selected for use in the method of Xiong, which does not contain such teaching. The rejection is maintained, and is updated above for clarity. All of Applicant’s arguments are believed to have been addressed in full above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob 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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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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