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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 25 and 32 are objected to because of the following informalities: “metacryl” should be “methacryl”. Appropriate correction is required.
Claim 34 is objected to because of the following informalities: “lanthanidesCu2+,” should be ““lanthanides, Cu2+,”. Appropriate correction is required.
Claim 42 is objected to because of the following informalities: “compound,, to” should be “compound, to”. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 34-35 and 42-43 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 34 recites the broad recitation alkaline earth metals, and the claim also recites Ca2+ and Mg2+ which is the narrower statement of the range/limitation. In the present instance, claim 34 recites the broad recitation transition metals, and the claim also recites Cu2+, Fe2+, Zn2+, and Ru3+ which is the narrower statement of the range/limitation. In the present instance, claim 34 recites the broad recitation lanthanides, and the claim also recites Tb3+ and Eu3+ which is the narrower statement of the range/limitation. In the present instance, claim 35 recites the broad recitation weakly coordinating anion, and the claim also recites tosylate, bistriflimidate or a triflate which is the narrower statement of the range/limitation. In the present instance, claim 42 recites the broad recitation weakly coordinating anion, and the claim also recites tosylate, bistriflimidate or a triflate which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Accordingly, dependent claim 43 is indefinite. For the purpose of examination, claim 34 will be interpreted as the metal cation is selected from the group consisting Cu2+, Fe2+, Zn2+, Mg2+ Ca2+, Ru3+, Tb3+, and Eu3+. For the purpose of examination, claims 35 and 42 will be interpreted as the weakly coordinating anion is selected from the group consisting of tosylate, bistriflimidate and triflate.
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.
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(s) 22-32, 34, 37-41, and 44-46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mruk et al. (US 2014/0148555).
Regarding claims 22-26, 28-32, 34, and 40: Mruk et al. (US ‘555) discloses rubber compositions for tires [abstract], wherein Example 4 [Ex. 4; 0121-0137] prepares 4'-(4-mercaptomethylphenyl)-2,2':6,2''-terpyridine (VIII) (355.46 g/mol) for functionalization of a styrene-butadiene rubber. Mruk et al. (US ‘555) discloses 1 g of rubber was functionalized with 1.40 g 4'-(4-mercaptomethylphenyl)-2,2':6,2''-terpyridine (VIII) (corresponding to 140 phr of VIII) [Ex. 4; 0096-0098; 0136]. Mruk et al. (US ‘555) discloses Example 6 [Ex. 6; 0140-0141] prepares a mixture comprising 0.03 g of the functionalized rubber of Ex. 4 and 0.02 g of RuCl3 (207.42 g/mol) (corresponding to 67 phr of RuCl3) [Ex. 6; 0140-0141]. Mruk et al. (US ‘555) discloses the rubber composition can contain about 10 to about 150 phr silica [0071; 0073]. Mruk et al. (US ‘555) discloses the rubber composition can contain 0.5 to 8 phr sulfur vulcanizing agent [0085].
Mruk et al. (US ‘555) does not specifically disclose Examples 4 and 6 containing about 10 to about 150 phr silica and 0.5 to 8 phr sulfur vulcanizing agent. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included about 10 to about 150 phr silica and 0.5 to 8 phr sulfur vulcanizing agent based on the invention of Mruk et al. (US ‘555), and would have been motivated to do so since Mruk et al. (US ‘555) suggests that the composition can contain about 10 to about 150 phr silica, and 0.5 to 8 phr sulfur vulcanizing agent [0073; 0085]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Note 4'-(4-mercaptomethylphenyl)-2,2':6,2''-terpyridine (VIII):
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240
290
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[Ex. 4; 0121-0135].
Regarding claim 27: Mruk et al. (US ‘555) discloses Ex. 2 prepares 6-(2,2';6',2''-terpyridin-4'-ylsulfanyl)hexane-1-thiol (VI) [Ex. 2; 0106-0113]; i.e. substitute (VIII) with (VI) in Examples 4&6.
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). [see MPEP 2144.06].
Note 6-(2,2';6',2''-terpyridin-4'-ylsulfanyl)hexane-1-thiol (VI):
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180
340
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[Ex. 2; 0106-0113].
Regarding claims 37-38: Mruk et al. (US ‘555) discloses the rubber composition can contain a metal ion in an amount sufficient to complex with the functionalized elastomer, as well as an excess of, or less than the metal ion depending on the desired effect [0060-0062].
Mruk et al. (US ‘555) does not specifically disclose 0.5 phr to 20 phr of (VIII); does not specifically disclose 0.2 to 7 phr of metal ion. However, differences in concentration will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 39: Mruk et al. (US ‘555) discloses a molar ratio of (VIII):RuCl3 of 0.51:1 {as calculated by examiner} [Ex. 6; 0140-0141].
Regarding claim 41 and 44-46: Mruk et al. (US ‘555) discloses the rubber composition is mixed in two stages and vulcanized to afford a tire [0087-0090], wherein the tire rubber component is a tread and/or sidewall [0088].
Allowable Subject Matter
Claims 33 and 36 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 35 and 42-43 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Mruk et al. (US 2014/0148555) does not disclose a crosslinking agent having B as -O-(CH2)1-11- and C as 2,6-bis(1-methylbenzimidazol-2-yl)-pyridin-4-yl [instant claim 33]. Mruk et al. (US ‘555) does not disclose zinc triflate as the metal ion [instant claim 36]. While Mruk et al. (US ‘555) discloses the rubber composition is mixed in two stages, including a non-productive stage followed by a productive stage [0087], wherein the final curatives including vulcanizing agents are mixed in the final stage (productive stage) [0087], Mruk et al. (US ‘555) does not disclose the metal ion [0061-0062] including a tosylate, bistriflimidate or triflate as the anion [instant claims 35, 42].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767