DETAILED CTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per preliminary amendment dated 7/13/23, claims 1-9 are currently pending in the application.
Restriction Requirement
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
i. Group I, claim(s) 1-3, drawn to a mix;
ii. Group II, claim(s) 4-8, drawn to a rubber composition; and
iii. Group III, claim(s) 9, drawn to a tire.
The inventions listed as Groups I to III do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: The technical feature that is common to Groups I to III is the mix of claim 1. Regarding this feature, Mihara (JP 2007-031581A, machine translation) teaches a composition comprising a silane coupling agent, such as N-phenyl-3-aminopropyltrimethoxysilane (reads on (A)), and a sulfur-containing silane coupling agent, such as polysulfide group and mercapto group-containing alkoxysilanes (read on B)) [0005]-[0012], [0016] (elaborated further in the rejections below). Thus, given that the common technical feature of presently cited claims in Groups I to III fails to define a contribution over the cited art, the common technical feature does not amount to a special technical feature.
In light of above, there is lack of unity between the cited groups.
During a telephone conversation with Mr. Gerald Murphy on 1/21/26, a provisional election was made with traverse to prosecute the invention of Group II, claims 4-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-3 and 9 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 102 and 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 4-6, 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mihara (JP 2007-031581A, machine translation).
At the outset, it is noted that the translations from two different sites are relied upon capture the missing and/or accurate terms).
It is further noted that claim 4 depends on claim 3 which in turn depends on claim 1. Therefore, limitations from claim 1 are incorporated into claim 4.
Mihara teaches a rubber composition comprising a diene rubber, silica, an aminosilane coupling agent, and a sulfur-containing silane coupling agent (Overview, ref. claims, [0005]-[0010].
Disclosed examples of aminosilane coupling agents include N-phenyl-3-aminopropyltrimethoxysilane, which reads on claimed (A) (formula (1)). That is, in formula 1, R1= C1 alkyl, n=3, Z=divalent group=C3 alkylene, and R3= R4=H, and in formula (2) of claim 6, R1= C1 alkyl, n=3, m=3, and R3= R4=H [0011]-[0012].
Disclosed genus of sulfur-containing silane coupling agents include sulfide-based silane coupling agents, such as bis(3-triethoxysilypropyl)tetrasulfide (reads on (B), and 3-mercaptopropyltriethoxysilane (reads on (B), including mercapto and alkoxysilyl groups) [0016].
Disclosed compositions in Examples 5-8 (Table 2) comprise a silane coupling agent (Si69®, Degussa), aminosilane-3 (corresponding to N-phenyl-3-aminopropyltrimethoxysilane, reads on (A)) (KBM573 manufactured by Shin-Etsu Chemical Co., Ltd.), diene rubber (reads on (A)), and silica (reads on (D)). It is noted that Si69® corresponds to bis(3-triethoxysilypropyl)tetrasulfide) (reads on (B)).
In light of above, presently cited claims are anticipated by Mihara.
Claims 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hannon et al. (US 6,753,374 B1).
As stated previously, claim 4 depends on claim 3 which in turn depends on claim 1. Therefore, limitations from claim 1 are incorporated into claim 4.
Hannon teaches a rubber composition comprising (a) a rubber component, (b) a silica filler, and other ingredients, such as coupling agents (Ab., col. 2, lines 15-20, ref. claims 1, 4).
Disclosed rubbers include diene rubbers and natural rubber (col., lines 41-67, ref. claims 2-4)
Disclosed genus of coupling agents includes, for e.g., the following species which may be used alone or as a mixture (col. 4-5, bridging paragraph):
N-phenyl-g-aminopropyltrimethoxysilane (reads on (A), formula (1)), i.e., in formula 1, R1= C1 alkyl, n=3, Z= divalent group=C3 alkylene, and R3= R4=H, and in claimed formula (2) of claim 6, R1= C1 alkyl, n=3, m=3, and R3= R4=H;
g-mercaptopropyl trimethoxysilane (includes alkoxysilyl and mercapto groups, reads on (B)); and
[3-(triethoxysilyl)propyl]tetrasulfide (includes alkoxysilyl and polysulfide groups, reads on (B)).
Hannon is silent on a composition comprising claimed organosilicon compounds (A) and (B) in one single embodiment as in the claimed invention
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching in Hannon on suitable coupling agent species, such as N-phenyl-g-aminopropyltrimethoxysilane, g-mercaptopropyl trimethoxysilane and [3-(triethoxysilyl)propyl]tetrasulfide, i.e., equivalence thereof, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a composition comprising a diene rubber or a natural rubber, silica, and a combination of coupling agents, such as N-phenyl-g-aminopropyltrimethoxysilane, and g-mercaptopropyl trimethoxysilane/[3-(triethoxysilyl)propyl]tetrasulfide. It would have been obvious to one of ordinary skill in the art to combine N-phenyl-g-aminopropyltrimethoxysilane, and g-mercaptopropyl trimethoxysilane or [3-(triethoxysilyl)propyl]tetrasulfide, as the they are considered to be equivalents known for the same purpose. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270- 7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762