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 § 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 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, the claim requires a vulcanized elastomeric material which is vulcanized via a vulcanization process, which is enacted on a composition containing components “(a)” through “(c).” However, claim 16, on which claim 20 depends, already requires all of these limitations: claim 16 specifically indicates components “(a)” through “(c),” requires a “vulcanized elastomeric material” in line 1, and requires that the material is obtained by vulcanizing the aforementioned composition, as described in line 2. Claim 20 therefore does not add any additional limitations to the composition of claim 16. 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
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.
Claims 16, 18, 20-25, and 28-34 are rejected under 35 U.S.C. 103 as being unpatentable over Hergenrother (US Patent No. 6,590,017 B1).
Regarding claims 16, 18, and 20, Hergenrother teaches an amide compound as a processing aid to improve the dispersion of silica within a rubber composition, wherein the rubber composition is useful in pneumatic tires (Abstract). The composition contains a vulcanizable elastomer and a silica reinforcing filler in addition to the aforementioned amide (Abstract), and the amide compounds include those of the following formula:
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Amide formula of Hergenrother (US Patent No. 6,590,017 B1, col. 2, lines 40-45)
wherein R may include primary alkyl groups having 1 to about 30 carbon atoms, and R’ and R” are the same or different and are optionally selected from C1-C30 aliphatic groups (col. 2, lines 47-57). The amide compounds of Hergenrother encompass the all possible molecules falling within the claimed component “(c)” when R is selected from a C6-C12 alkyl group and when R’ and R” are methyl groups. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the claimed amide of component “(c)” within the formulation of Hergenrother.
Hergenrother specifically teaches the formation of a tire tread from the inventive composition (c.f. col. 10, lines 44-48 and col. 1, lines 42-44).
Hergenrother further teaches the vulcanization of the composition (col. 3, lines 18-25).
Regarding claims 21 and 34-35, Hergenrother further describes that the composition may include other dispersants (col. 5, lines 41-47), and teaches that polyethylene glycol is a dispersing agent for this type of composition (col. 2, lines 8-10). Therefore, it would have been obvious to one having ordinary skill in the art to include a polyethylene glycol within the composition of Hergenrother as the other dispersant component.
Regarding claim 22, as described above, Hergenrother teaches that groups analogous to the claimed “R” may be C1-C30 alkyl groups (col. 2, lines 47-57).
Regarding claims 23-25, Hergenrother that the inventive composition includes the amide component in amounts ranging from 0.1 to 150 wt% relative to the amount of silica within the formulation (col. 3, lines 11-17) with inventive examples including 3 phr of an amide component (col. 15, Table 3), and teaches the incorporation of between 1 and 100 phr of silica with respect to 100 parts of the elastomer (col. 11, lines 32-37). The amount of the amide may therefore range from about 0.001 to about 150 phr of the amide with respect to 100 parts of the elastomer, which overlaps the claimed ranges of “0.1 phr to 15 phr,” “1 phr to 5 phr,” and “2 phr to 3 phr,” establishing prima facie cases of obviousness.
Regarding claims 28-30, Hergenrother teaches the incorporation of between 1 and 100 phr of silica with respect to 100 parts of the elastomer (col. 11, lines 32-37), which overlaps/encompasses the claimed ranges of “an amount lower than or equal to 100 phr,” “from 10 phr to 100 phr,” and “from 15 phr to 70 phr,” establishing prima facie cases of obviousness.
Regarding claim 31, as described above, Hergenrother specifically teaches the incorporation of silica as a reinforcing filler (Abstract).
Regarding claim 32, Hergenrother further teaches the addition of carbon black (col. 3, lines 6-8).
Regarding claim 33, Hergenrother further teaches the incorporation of alkoxysilanes (col. 5, lines 50), which reads on the claimed “silane coupling agent” because the instant Specification states that silane coupling agents include materials having hydrolysable silane groups such as alkoxysilanes (see instant Specification at p. 9, lines 27-34).
Claims 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Hergenrother (US Patent No. 6,590,017 B1) in view of Incavo (US 2011/0126953 A1).
Regarding claims 26-27, Hergenrother teaches all of the limitations of claim 21, as described above. Hergenrother differs from claims 26-27 because it is silent with regard to the molecular weight of the polyethylene oxide dispersant.
In the same field of endeavor, Incavo teaches a pneumatic tire (abstract), containing silica (Abstract), carbon black ([0040]) and an elastomer of butyl rubber ([0034]). Incavo further teaches the incorporation of polyethylene glycol with a weight-average molecular weight ranging from about 2,000 to about 15,000 g/mol ([0045]). 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 incorporate the polyethylene glycol having a molecular weight in the range of about 2,000 to about 15,000 g/mol for the polyethylene glycol within the formulation of Hergenrother, as Incavo teaches said material as a suitable dispersant for rubber-based tire compositions. The weight-average molecular weight range of 2,000-15,000 g/mol reads on the claimed “medium” molecular weight because the instant Specification states that a “medium” molecular weight includes weight average molecular weights within the range of 400-8,000 g/mol (c.f. instant Specification at p. 5, lines 34-37). The weight-average molecular weight range of 2,000 to 15,000 g/mol overlaps the range of 400-8,000 g/mol and the claimed range of “1500 to 8000,” establishing prima facie cases of obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762