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 .
Response to Amendment
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on August 3, 2025. In particular, claim 1 has been amended with the previously presented claims 3-4. The new grounds of rejection set forth below simply move the arguments from the previous claim 3-4 into the presently claim 1; thus, the following action is properly made final.
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.
Claim(s) 1-2 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Honma et al (EP 3 031 867).
Regarding claims 1-2 and 5-6, Honma teaches a carbon black which has an oil absorption amount from 100 to 600 cm3/100 g ([0036]) and an iron content of 0.1 to 150 ppm by mass ([0041]) which is equivalent to 100 to 150,000 ppb ([0041]) which is measured by coupled plasma mass spectroscopy ([0095]). Honma teaches that the BET surface area ranges from 50 to 1600 m2/g ([0038]). Honma teaches a carbon black which has an oil absorption amount from 100 to 600 cm3/100 g ([0036]). Given these amounts, the ratio of S/A overlaps the claimed ranges. An example would be BET is 200 and the absorption is also 200, therefore, the ratio of S/A is 1.
Honma fails to specifically exemplify the exact carbon black. However, Honma discloses each of the properties of the carbon black and teaches that they are all suitable for use in a single carbon black. It is within the ordinary level of skill in the art to make any of the carbon blacks suggested by a reference. Therefore, a person of ordinary skill would have been motivated to prepare any of the carbon black suggested by Honma, including that of the claimed invention. In view of this, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to use the teachings of Honma to arrive at the presently claimed invention. It would have been nothing more than using known properties in a typical combination to arrive at predicable results. KSR v. Teleflex, 550 U.S. 418, 82 USPQ2d 1385 (2007).
Regarding claim 7, Honma teaches that the carbon black is an acetylene black ([0043]).
Response to Arguments
Applicants’ arguments filed August 3, 2026 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: Honma fails to disclose or suggest to those of ordinary skill in the art a carbon black that satisfies all the requirements, particularly the extremely low iron content of 500 ppb or less with the specific physical properties.
Examiner’s response: Honma teaches all the properties as noted in the above reference.
Applicant’s argument: There is no motivation to those of ordinary skill to reduce the iron content to 500 ppb or less. Honma actually teaches away from the claimed invention.
Examiner’s response: Honma teaches that the lower limit of iron is 0.1 ppm (100 ppb) and the upper limit is 150 ppm (150000 ppb). There is no teaching away from the lower amount of the iron as it is clearly stated as a preferred lower limit.
Applicant’s argument: The iron content of all carbon blacks disclosed in the Examples and Comparative Examples have iron contents of 1000 ppb or more.
Examiner’s response: The fact that the presently claimed invention is not exemplified in the prior art does not obviate the general teachings within the specification of Honma. As Honma teaches all the limitations of the claimed invention, it is still an appropriate rejection and, therefore, is maintained above.
Applicant’s argument: Applicant’s citation of paragraph [0041] of Honma teaches that there is no motivation to for the carbon black to have an iron content of less than 5 ppm.
Examiner’s response: Paragraph [0041] clearly states that the lower limit of amount of iron in the carbon black can be 0.1 ppm (100 ppb). This is within the scope of the claimed invention.
Applicant’s argument: Honma teaches that the iron content is reduced by “heat treatment”, however, the examples show that while higher temperatures tend to reduce the iron content, it also significantly decreases the BET surface area and the DBP absorption amount.
Examiner’s argument: It is noted that the claims are compositional claims, and therefore, the method of making the carbon black does not carry much patentable weight. As Honma teaches all the limitations of the claimed invention, the rejection is maintained.
Applicant’s argument: Honma teaches that the heat treatment is from 900 to 1500 C and warns that if heating temperature exceeds the upper limit, the carbon black with graphitize and undergo “firing and tightening” leading to a decrease in dispersibility. Thus, this teaches away from the claimed invention.
Examiner’s response: The teaching of all the parameters of the carbon black is taught in the generalized teaching of Honma as cited in the above rejection. There are no limitations regarding processing of the carbon black in the presently claimed invention.
Applicant’s argument: It is physically impossible to achieve the claimed invention with the recited parameters starting from the teachings of the cited reference. This is clearly demonstrated by comparing Comparative Examples 2 and Comparative Example 3. The trends of processing of decreasing the iron content would inevitably cause the DPB absorption amount and the BET surface area to fall below the lower limits of the claim.
Examiner’s response: The fact that the presently claimed invention is not exemplified in the prior art does not obviate the general teachings within the specification of Honma. As Honma teaches all the limitations of the claimed invention, it is still an appropriate rejection and, therefore, is maintained above.
Conclusion
THIS ACTION IS MADE FINAL. 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 DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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