DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Preliminary Claim Amendment filed 06/28/2023
2. New claims 16-20 were added, which are supported by original languages of claims 1-6, and paragraphs [0012] and [0022] of applicants’ published application, i.e., US PG PUB 2024/0084097.
Thus, no new matter is present at this time.
Claim Objections
3. Claims 1-6, 13 and 16-20 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to delete the semicolon (;) after the phrase “milled with” recited in claim 1.
As to Claims 2-6 and 17-20: The applicants are advised to replace the claimed g.mol-1” with “g/mol-1”.
As to Claim 13: The applicants are advised to replace the claimed “6PPD” with “6PPD (n-(1,3-dimethylbutyl)-n′-phenyl-p-phenylenediamine)” consistent with paragraph [0030] of applicants’ published application, i.e., US PG PUB 2024/0084097.
As to Claim 16: The applicants are advised to delete the semicolon (;) after the phrase “in the absence of oxygen with” recited in claim 16.
Appropriate corrections are required.
Specification-Objections
4. The disclosure is objected to because of the following informalities:
At page 5, Table 1, of the present specification: The applicants are advised to replace “g.mol-1” with “g/mol-1”.
At page 6, paragraph [0027] of the present specification: The applicants are advised to replace the disclosed term “6PPD (n-(1,3-dimethylbtityI)-n′-phenyl-p-phenylenediamine)” with “6PPD (n-(1,3-dimethylbutyl)-n′-phenyl-p-phenylenediamine)”.
Appropriate corrections are required.
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.
5. Claims 1-9 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/1334421 (hereinafter referred to as “WO ‘442”) in view of Tsukada et al. (US 2007/0197688).
The broadest claim is directed to a reduced graphene oxide reinforced rubber composition comprising a milled material comprising a reduced graphene oxide milled with a liquid rubber, an uncured rubber elastomer, an anti-degradant package, and a curing package. The claimed reduced graphene oxide is clearly defined at paragraph [0011] of applicants’ published application, i.e., US PG PUB 2024/00840972.
As to Claims 1-9 and 12-20: WO ‘442 discloses a rubber composition having reduced graphene oxide particles distributed therein to provide it with satisfactory rigidity and reinforcement (Paragraph [0012]), corresponding to the claimed reduced graphene oxide reinforced rubber composition, useful for tire components (Paragraph [0005]), wherein the rubber composition comprises a milled material comprising a reduced graphene oxide (Paragraphs [0019]-[0020], [0031] and [0034]) that undergo milling, e.g., ball-milling, with an uncured rubber elastomer, e.g. styrene butadiene (Paragraphs [0035]-[0045]), additives such as anti-degradant package, e.g., 6PPD (Paragraph [0051]), and a curing package including sulfur and an accelerator (Paragraphs [0048]-[0050]), wherein the milling in a ball mill occurs with an oxygen content of <1 % (Paragraphs [0019]-[0020] and [0030]-[0031]), which is inclusive of the claimed zero amount of oxygen, i.e., absence of oxygen. WO ‘442 also discloses that such milling also occurs in nitrogen (Paragraphs [0019]-[0020] and [0033]). Moreover, WO ‘442 discloses that the rubber composition is molded and heated to form useful articles including tires and tire components (Paragraphs [0058]-[0059] and [0071]-[0072]).
While WO ‘442 discloses that a mixture of elastomers or rubbers may be used in its rubber composition (Paragraph [0045]), it does not specify them as including the claimed liquid rubber. It also does not mention using liquid rubber having particular molecular weights as required by claims 2-6 and 17-20.
Nevertheless, Tsukada et al. disclose the use of liquid rubbers having a molecular weight of 100-50,000 g/mol (which overlaps with the molecular weights recited in claims 2-6 and 17-20, i.e., 1,500-54,000 g/mol-1, 1,500-34,000 g/mol-1, 1,500-28,000 g/mol-1, 1,500-10,000 g/mol-1, and 1,500-2,000 g/mol-1) for the purposes of providing rubber compositions with desired viscosity suitable for tire applications (Paragraphs [00082]-[0085] and [0114]). See MPEP section 2144.05 (“The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.”).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the liquid rubbers, including those having the claimed molecular weights, taught by Tsukada et al. as the additional elastomer or rubbers in the rubber composition discussed in WO ‘442, with a reasonable expectation of successfully providing the same with desired viscosity suitable for tires.
6. Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/133442 (hereinafter referred to as “WO ‘442”) in view of Tsukada et al. (US 2007/0197688) as applied to claims 1-9 and 12-20 above, and further in view of Durairaj et al. (US 2007/020539).
The disclosures with respect to WO ‘442 and Tsukada et al. in paragraph 5 are incorporated here by reference. However, they do not specifically mention milling using a stainless steel media, much less one that has a particular diameter, as required by present claims 10 and 11.
Nevertheless, Durairaj et al. disclose the use of media, i.e., stainless steel beads having a diameter of, for example, of 3 mm (i.e., encompassed by the claimed diameter of 3-5 mm), for milling purposes to prepare a rubber compositions having improved adhesion properties suitable for tires (Paragraphs [0011], [0117], [0121], and [0155]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the milled material prepared from milling using stainless steel media having the claimed diameter taught by Durairaj et al. in the rubber composition suggested by WO ‘442 and Tsukada et al., with a reasonable expectation of successfully obtaining improved adhesion properties useful for tires.
Double Patenting
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.
7. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of co-pending U.S. Application No. 18/259,725 (hereinafter referred to as “US Appl. ‘725”; corresponding to US PG PUB 2024/0076457).
The claims of the present application and US Appl. ‘725 recite reduced graphene oxide reinforced rubber compositions comprising milled material comprising a reduced graphene oxide that is milled with a liquid rubber; an uncured rubber elastomer; an anti-degradant package; and a curing package, wherein the reduced graphene oxide has been milled in a ball mill in the absence of oxygen but occurs in nitrogen. The claims of the present application and US Appl. ‘725 also recite that the uncured rubber elastomer comprises styrene butadiene, anti-degradant package comprises 6PPD, and the curing package includes sulfur and an accelerator. The claims of the present application and the US Appl. ‘725 further recite that the molecular weight of the liquid rubber is 1,500-54,000 g/mol-1, 1,500-34,000 g/mol-1, 1,500-28,000 g/mol-1, 1,500-10,000 g/mol-1, and 1,500-2,000 g/mol-1. Moreover, the claims of the present application and US Appl. ‘725 recite the composition is placed into a mold and heated to form a cured rubber product and the milling of the reduced graphene oxide and liquid rubber uses stainless steel media having a diameter in the range of 3-5 mm.
However, the claims of the present application are directed to a product, whereas the claims of US Appl. ‘725 further recite particular steps in a method of manufacturing the same. Nevertheless, it would have been obvious to one of ordinary skill in the art that the steps recited in the claims of the US Appl. ‘725 produce the same product recited in the claims of the present application, i.e., reduced graphene oxide reinforced rubber composition, for the same purposes of using the same for forming a cured rubber product.
This is a provisional nonstatutory double patenting rejection.
Correspondence
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 08/16/2024.
2 “Reduced Graphene Oxide (RGO) is milled in liquid rubber leads to a size reduction and a grafting of pendant elastomer chains without using a solvent-based process. The pendant chains help at improving the dispersion of the platelets, and if they have sufficient length, can bond covalently with the rubber matrix during vulcanization. Also, the process is an efficient compounding method that sharply decreases the tap density of the RGO powder and makes it compatible with industrial practices. It was also found that using liquid rubber during milling leads to better dispersion and mechanical properties compared to dry milling.”