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 Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Nosaka ‘211 (US Patent No. 10,125,211 B2) in view of Nosaka ‘931 (WO 2009/060931 A1, hereinafter referring to the attached ESPACENET translation) and Sato (US 2014/0329930 A1).
Regarding claim 1, Nosaka ‘211 teaches a tire member obtained by crosslinking a hydrogenated conjugated diene polymer with a crosslinking agent (Abstract). The diene polymer may be a homopolymer of 1,3 butadiene (col. 2, lines 28-29), and contains a 1,2 vinyl content of 5 to 70 mass % (col. 5, lines 50-51), which encompasses and therefore anticipates the claimed ratio range within the claimed expression “(S).” Nosaka ‘211 further teaches that the hydrogenation rate is preferably 70% or more (col. 10, lines 61-64), which overlaps and therefore anticipates the claimed range of “40 to 85%.”
Nosaka ’211 teaches that the preferred amount of the aromatic vinyl compound within the inventive copolymer ranges from 10 to 50% by weight (col. 3, lines 7-9), and therefore differs from claim 1 because it is silent with regard to the claimed range of aromatic vinyl content. However, Nosaka’211 does not disparage the incorporation of lower amounts of said aromatic vinyl.
In the same field of endeavor, Nosaka ‘931 teaches a tire composition for tires containing a hydrogenated conjugated diene copolymer (p. 1), containing silica as a filler (p. 7, Claim 14), and another rubber component (p. 7, Claim 15), wherein the hydrogenated conjugated diene copolymer may include the aromatic vinyl unit in amounts ranging from 0 to 40% by mass (p. 4, [5]), which overlaps the claimed range, establishing a prima facie case of obviousness. Furthermore, it is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the styrene content of Nosaka ‘931 within the teachings of Nosaka ‘211, as Nosaka ‘931 teaches said range as suitable for substantially similar copolymers with tire-based end-uses. In so doing, the composition of Nosaka ‘211 as modified would meet the claimed compositional range.
Nosaka ‘211 does not explicitly disclose some elements of the diene polymer as claimed, including the presence of structural units resulting from 1,4- additions of butadiene within the polymer and the branching number of 1.5 or more. However, the polymerization process resulting in the diene polymer of Nosaka ‘211 is highly similar to that as claimed, for the following reasons:
Both processes may involve butadiene homopolymerization (c.f. col. 2, lines 28-29 of Nosaka ‘211 and claim 1 of the instant Application, which requires structural units resulting from polymerization of 1,3 butadiene but no other structural units)
Both polymerization processes may be initiated by the same classes of initiators, e.g. n-butyllithium (c.f. col. 4, lines 11-17 of Nosaka ‘211 and [0048] of instant Specification)
Both polymerization processes may be conducted as solution polymerization within the same solvent, e.g. cyclohexane (c.f. col. 5, lines 8-23)
Both polymerization processes may include tetrahydrofuran (c.f. col. 5, line 1 of Nosaka ‘211 and [0050] of instant Specification), which is known to “randomize” the structural units within the resulting polymer (c.f. col. 4, lines 65-67 of Nosaka ‘211). Furthermore, the instant Specification states that the class of compounds in this context are preferably included in amounts of 0.05-500 molar equivalents or less with respect to the organolithium polymerization catalyst ([0052]). Meanwhile, Nosaka ‘211 teaches example production methods wherein tetrahydrofuran is included at about 90 molar equivalents (c.f. Example 1 of Nosaka ‘211, col. 13, lines 50-53).
The polymerization processes share overlapping temperature ranges (-10°C to 100°C within the instant Specification at [0053] is encompassed by the range of -20 to 150°C taught by Nosaka ‘211 at col. 5, lines 29-31).
Both polymers are modified via a modification step after polymerization (c.f. col. 6, lines 1-10 and instant Specification at [0054]; in both, the modification steps are situated immediately after the polymerization steps, and before the hydrogenation steps)
Both polymers are modified by the same class of modifying compounds; nitrogen group-containing alkoxysilane compounds (c.f. Instant Specification at [0058] and col. 7, lines 35-41). These modifiers are included in the same amounts, between 0.1 and 0.3 mole equivalents with respect to the metal within the polymerization initiator (c.f. col. 9, lines 32-36 of Nosaka ‘211 and [0060] of instant Specification)
The modification steps are conducted within an identical, most-preferred temperature range of 20 to 100°C (col. 9, lines 42-46 of Nosaka ‘211 and [0061] of instant Specification)
Hydrogenation processes, enacted on the modified polymers, are conducted with the same type of catalyst (c.f. col. 9, lines 60-65 of Nosaka ‘211 and [0065] of instant Specification) at overlapping pressures (c.f. Example 1 of Nosaka ‘211, col. 13, where Hydrogen pressure is maintained at 1.0 MPa and [0065] of instant Specification which states that 0.1 – 10 MPa is suitable) and overlapping temperature (c.f. Example 1 of Nosaka ‘211, col. 13, where hydrogenation is conducted at 80°C or higher, and [0065] of instant Specification which states that hydrogenation is conducted at a temperature in the range of 20°C to 150°C)
Despite these similarities, Nosaka ‘211, alone, fails to teach the claimed structural unit and branching characteristics because Nosaka ‘211 fails to contemplate the usage of a modifying agent which would be capable of producing the claimed branching number, as argued by the Applicant in the reply filed May 7, 2026.
In the same field of endeavor, however, Sato teaches a rubber composition achieving balanced improvements in fuel economy, wet-grip performance, abrasion resistance, and handling stability, and a pneumatic tire including said composition (Abstract). The composition contains a rubber component containing conjugated diene polymers (Abstract), and is taught as additionally including a modifying agent for reacting with the termination terminal of the rubber component, wherein said modifying agent contains a nitrogen atom and/or a silicon atom ([0043]). Sato specifically states that this structure enables the rubber to disperse silica well to achieve the aforementioned balance of properties ([0043]). This mirrors the teachings within Nosaka ‘211 of a modification step (c.f. col. 6), wherein the modifying agent is taught as preferably (i.e., optionally) having a nitrogen group for the benefit of having a high affinity to silica (c.f. col. 7, lines 29-31), and wherein an example of the modifying agent is N,N-bis(trimethylsilyl)aminopropylmethyldiethoxysilane (col. 7, lines 43-44).
Sato likewise teaches that the modifying compound may be N,N-bis(trimethylsilyl)aminopropylmethyldiethoxysilane ([0145]), and additionally teaches the alternative use of tetraethoxysilane ([0146]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art to utilize tetraethoxysilane as the modifying agent within the composition of Nosaka ‘211, as taught by Sato, as Sato teaches that tetraethoxysilane is a suitable alternative to N,N-bis(trimethylsilyl)aminopropylmethyldiethoxysilane in improving the dispersion of silica within the tire composition, a desire specifically mentioned by Nosaka ‘211. In so doing, the synthetic process of Nosaka ‘211 as modified would be substantially identical to the claimed process, including utilizing the same branching agent which the Applicant contends is responsible for developing the claimed branching number.
Nosaka ‘211 as modified therefore teaches a hydrogenated, modified diene polymer which contains all of the claimed components, which is produced by a substantially identical process, and which is shown to share overlapping characteristics such as hydrogenation rate and vinyl structural unit content. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed presence of structural units resulting from 1,4- additions of butadiene within the polymer and the branching number of 1.5 or more will therefore both inherently be present in the polymer of Nosaka ‘211 as applied above.
Regarding claim 2, the claimed branching number will inherently be present in Nosaka ‘211 as described in the rejection of claim 1, above. Furthermore, the diene polymer of Nosaka ‘211 may contain a 1,2 vinyl content of 5 to 70 mass % (col. 5, lines 50-51), which encompasses and therefore anticipates the claimed ratio range within the claimed expression “(S).” Nosaka ‘211 further teaches that the hydrogenation rate is preferably 70% or more (col. 10, lines 61-64), which overlaps and therefore anticipates the claimed range of “40 to 80%.”
Regarding claims 3 and 4, Nosaka ‘211 is silent with regard to the ratio described within the claimed expression “(X).” Nevertheless, as described in the rejection of claim 1, above, Nosaka ‘211 teaches a hydrogenated, modified diene polymer which contains all of the claimed components, which is produced by a substantially identical process, and which is shown to share overlapping characteristics such as hydrogenation rate and vinyl structural unit content.
Furthermore, the instant Specification explicitly states that the claimed expression “(X)” can be controlled to fall within the claimed range by adjusting the type and amount of a polar compound to be added, in addition to the polymerization temperature ([0034]). As described above, Nosaka ‘211 teaches overlapping types and amounts of said polar compound. The Applicant further states that the “amount of hydrogen to be reacted in polymerization of a polymer before hydrogenation” is a factor, however the Applicant’s examples illustrate that the claimed product can be produced by introducing no hydrogen during polymerization (c.f. Example 1 of instant Specification on pp. 77-78). The prior art is consistent with this method (c.f. Nosaka ‘211 Col. 13, Example 1).
Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed ratio described within the claimed expression “(X)” will therefore necessarily be present in Nosaka ‘211, as applied above.
Importantly, the discovery of a new property of a previously disclosed invention does not confer patentability (see MPEP 2112.I.). Therefore, the composition of Nosaka ‘211, which inherently possesses the claimed characteristic “(X),” anticipates the claimed polymer despite not appearing to directly appreciate the value of the claimed expression “(X)” as contemplated by the Applicant.
Regarding claims 5 and 6, as described above, Nosaka ‘211 teaches that the hydrogenation rate is preferably 70% or more (col. 10, lines 61-64), which overlaps and therefore anticipates the claimed ranges of “51% or more” and “71% or less.”
Regarding claim 7, Nosaka ‘211 teaches the use of nitrogen-containing modifier compounds (col. 7, lines 35-38), which become part of the inventive polymer during modification, and therefore read on the claimed limitation requiring a nitrogen atom within the polymer.
Regarding claim 8, Nosaka ‘211 is silent with regard to the claimed “modification ratio.” Nevertheless, as described in the rejection of claim 1, above, Nosaka ‘211 teaches a hydrogenated, modified diene polymer which contains all of the claimed components, which is produced by a substantially identical process, and which is shown to share similar characteristics such as hydrogenation rate and vinyl structural unit content. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed “modification ratio” will therefore necessarily be present in Nosaka ‘211, as applied above.
Regarding claim 9, Nosaka ‘211 is silent with regard to the claimed aluminum content. Nevertheless, as described in the rejection of claim 1, above, Nosaka ‘211 teaches a hydrogenated, modified diene polymer which contains all of the claimed components, which is produced by a substantially identical process, and which is shown to share overlapping characteristics such as hydrogenation rate and vinyl structural unit content. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed aluminum content will therefore necessarily be present in Nosaka ‘211, as applied above.
Regarding claim 11, Nosaka ‘211 teaches all of the limitations of claim 1, as described above. Nosaka ‘211 teaches the incorporation of 100 parts of rubber components and 20 to 130 phr of a silica filler based thereon (col. 11, lines 19-37), which encompasses the claimed range of “20 parts by mass or more and 100 parts by mass or less,” but differs from claim 11 because it is silent with regard to the amount of each rubber component.
Nosaka ‘931 teaches a tire composition for tires containing a hydrogenated conjugated diene copolymer (p. 1), containing silica as a filler (p. 7, Claim 14), and another rubber component (p. 7, Claim 15), wherein the hydrogenated conjugated diene copolymer and other rubber component respectively comprise between 20-100 wt% and 0-80 wt% with respect to the total amounts of rubber components (p. 31, second paragraph). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the hydrogenated conjugated diene copolymer and other rubber component respectively in amounts ranging between 20-100 wt% and 0-80 wt% within the formulation of Nosaka ‘211, as Nosaka ‘931 teaches them as suitable ranges for elastomeric tire formulations. Nosaka ‘211 additionally contemplates the formation of a tire from the inventive composition (col. 11, line 3). These ranges overlap the claimed ranges of “10 parts by mass or more and 50 parts by mass or less” and “50 parts by mass or more and 90 parts by mass or less,” respectively, establishing prima facie cases of obviousness.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nosaka ‘211 (US Patent No. 10,125,211 B2) in view of Nosaka ‘931 (WO 2009/060931 A1, hereinafter referring to the attached ESPACENET translation) and Sato (US 2014/0329930 A1), and further in view of Pan (US 2012/0065315 A1).
Regarding claim 10, Nosaka ‘211 teaches all of the limitations of claim 1, as described above. Nosaka ‘211 further teaches a molded body containing the inventive polymer (col. 21, lines 42-45), and teaches the suitability of the inventive material for the formation of a tire (col. 11, line 3), but differs from claim 10 because it is silent with regard to the claimed “bale.”
In the same field of endeavor, Pan teaches a elastomeric compounds (Abstract) suitable for tire formulations ([0003]), and teaches that elastomers are stored in bales for shipping ([0003]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to mold the composition of Nosaka ‘211 into a bale, as taught by Pan, for the purpose of storing the elastomeric compound for shipping.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nosaka ‘211 (US Patent No. 10,125,211 B2) in view of Nosaka ‘931 (WO 2009/060931 A1, hereinafter referring to the attached ESPACENET translation) and Sato (US 2014/0329930 A1), and further in view of Tawara (JP 2008/050432 A, hereinafter referring to the attached ESPACENET translation).
Regarding claim 12, Nosaka ‘211 as modified by Nosaka ‘931 teaches all of the limitations of claim 11, as described above. Both Nosaka documents are silent regarding the incorporation of a liquid rubber in the claimed amounts.
Tawara teaches the incorporation of 2-25 phr of liquid rubber per 100 parts of diene rubber within a tire-forming composition ([0007]), and teaches that the incorporation of liquid butadiene/styrene-butadiene rubbers improve the grip performance of the resulting tire ([0019]) is prima facie obvious to utilize a material based on its art-recognized suitability for an intended purpose (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art to incorporate between 2 and 25 phr of liquid rubber to the formulation of Nosaka ‘211 as modified by Nosaka ‘931, as taught by Tawara, for the purpose of improving the grip performance of the resulting tire product. The range of 2-25 phr encompasses the claimed range of “2 parts by mass or more and 25 parts by mass or less,” establishing a prima facie case of obviousness.
Regarding claim 13, Nosaka ‘211 teaches the formation of a tire (col. 22, line 34) and the molding of the composition (col. 21, line 42).
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed May 7, 2026, with respect to the rejection(s) of claim(s) 1-9 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nosaka ‘211, Nosaka, ‘931, and Sato, as described 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.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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