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 .
Restriction/Election
In response to the Restriction requirement (Office Action dated 24 February 2026), the Applicant submits the following:
The Applicant elects Group I, encompassing claims 1-7, 19 & 20.
Claims 1, 8 & 14 have been amended. No new matter has been entered.
The Applicant challenges the Restriction requirement (Remarks, p. 5).
When claims are directed to more than one invention, such as a composition, a method of making said composition and/or an embodiment of said composition, a restriction between the claimed composition, the claimed method and the claimed embodiment is proper. See MPEP §§ 803 and 806.05.
The arguments provided by Applicant against the prior art are considered moot in view of the newly cited art herein.
Claim Rejections - 35 USC § 112
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 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 20, claim 20 establishes a limitation already established in the amended independent base claim 1, and therefore fails to further limit the claim from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1 – 7, 19 & 20 are rejected under 35 U.S.C. § 103 as being obvious over Dronet et al. (US 2018/0170106 A1) in view of Rodgers et al. (US 2009/0115108 A1).
Regarding claims 1 – 5, 19 & 20, Dronet teaches diene/propylene copolymers suitable for use in tires, wherein copolymers of the invention may be used as a material as is (Abstract). Dronet details a “diene elastomer B” which is functionalized (via grafting), which in turn becomes “diene elastomer A” (p. 2, [0025]-[0028]). Diene elastomer B is a polymer of a conjugated diene such as 1,3-butadiene, 2-methyl-1,3-butadiene, 2,3-dimethyl-1,3-butadiene or 1,3-pentadiene (p. 3, [0071]), with preference given to 2-methyl-1,3-butadiene.
Dronet discloses the diene elastomer A comprises functional groups capable of reacting with polypropylene, such as an epoxide, acid anhydride or carboxylic acid functional groups (p. 2, [0041]), with preference given to epoxide functional groups. Dronet teaches the inventive copolymer is obtained by reacting diene elastomer A comprising pendent epoxide groups with a functionalized polypropylene, the functional group on said polypropylene being able to react with the epoxide groups of the diene elastomer A (p. 2, [0032]-[0034]). Grafting with polypropylene makes it possible to impart thermoplastic properties upon the inventive copolymer (p. 2, [0035]). The functional groups of said functionalized polypropylene are either an anhydride, an epoxy, carboxylic acid or an alcohol, with preference given to maleic anhydride (p. 6, [0144]).
Thus, in view of the above, Dronet teaches the diene elastomer B (i.e., 2-methyl-1,3-butadiene) grafted with an epoxide group, resulting in the diene elastomer A comprising the functional epoxy group. Diene elastomer A is grafted onto polypropylene via the functional epoxy group as said epoxy group is capable of reacting with maleic anhydride-functionalized polypropylene. Diene elastomer A has a number average molar mass of 10-300 kg/mol (p. 2, [0040]). Both of the aforementioned functional groups are reactive towards carbanions.
Therefore, Dronet teaches almost all limitations established in the instant claims, however, Dronet does not teach EPDM in the same capacity as polypropylene.
In the same field of endeavor, Rodgers teaches an ethylene-propylene-diene terpolymer having polypropylene crystallinity compounded with a blend rubber. Rogers further teaches an elastomer composition wherein said terpolymer has 60 wt.% propylene-derived units, 6 wt.% ethylene-derived units and from 0.3 to 10 wt.% diene-derived units. The ethylene-propylene-diene terpolymer is present in effective amounts to improve tack, aged tensile strength retention, fatigue resistance and ozone cracking resistance in tires (Abstract).
The elastomeric composition may comprise at least one thermoplastic resin, such as maleic anhydride resins (p. 9, [0097]-[0098]).
As Rodgers teaches an elastomer comprising 60 wt.% propylene-derived units, it would have been obvious to one of ordinary skill in the art at the time of filing to substitute the maleic anhydride-functionalized polypropylene taught in Dronet, with this ethylene-propylene-diene terpolymer with polypropylene crystallinity taught by Rodgers, while ensuring said diene terpolymer still comprises the maleic anhydride-functionalized group of Dronet’s functionalized polypropylene, as Rodgers expressly discloses the suitability of such polymers in similar compositions with substantially identical end uses (i.e., tires). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Dronet in view of Rodgers in this way results in a diene elastomer B (i.e., 2-methyl-1,3-butadiene) grafted with an epoxide group, resulting in the diene elastomer A comprising the functional epoxy group. Diene elastomer A is grafted onto the ethylene-propylene-diene elastomer comprising 60 wt.% propylene-derived units via the functional epoxy group as said epoxy group is capable of reacting with the maleic anhydride-functionalized EPD terpolymer. The grafted chain (i.e., diene elastomer A) has a number average molar mass Mn of 10-300 kg/mol (p. 2, [0040]) and both of the aforementioned functional groups are reactive towards carbanions.
Modification of Dronet in view of Rodgers in this way reads on limitations established by claims 1-5, 19 & 20.
Claims 6 & 7 are rejected under 35 U.S.C. § 103 as being obvious over Dronet et al. (US 2018/0170106 A1) in view of Rodgers et al. (US 2009/0115108 A1) in further view of Yan et al. (US 9,926,400 B2).
Regarding claims 6 & 7, maintaining the modification of Dronet in view of Rodgers previously detailed, neither Dronet nor Rodgers teach the molecular weights as required by the claims.
In the same field of endeavor, Yan teaches radical polymerization techniques to provide polymers for polymeric compositions that exhibit desirable properties in tires (Abstract). Yan discloses resultant polymers of said techniques will generally have number average molecular weights (Mn) in ranges of up to 1,000,000 Daltons, or g/mol (col. 8, lines 4-42).
It would have been obvious for one of ordinary skill in the art at the time of filing to further modify teachings of Dronet & Rodgers, by employing the number average molecular weight of up to 1,000,000 g/mol taught by Yan as a guide for a target weight range when producing the grafted copolymer of the invention, as the prior art demonstrates this to be a suitable number average molecular weight in similar compositions for similar end uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Dronet in view of Rodgers in further view of Yan as detailed above results in a macromolecule reading on limitations established by claims 6 & 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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