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 .
This communication is responsive to the claim set filed 07/28/2023 and Response to Restriction filed 04/29/2026. Claims 16-31 are pending. Claims 16-27 are under consideration is this Office Action. The non-elected claims 28-31 are withdrawn.
Claims 16-27 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant’s election of Group I, claims 16-27 in the reply filed on 04/29/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Interpretation
Claim 1 is a product-by-process claim reciting processes of producing a resin-extended modified diene elastomer. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).) However, the limitations of the processes are mapped into prior art when the prior art discloses the same or obvious processes.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16- 27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites “resin-extended modified diene elastomer capable of being obtained by a process” is indefinite because it is not clear of a resin-extended modified diene elastomer is obtained by a process or not.
Claim 23 is rejected under 35 U.S.C. 112(b) because Claim 1 do not have limitations related to q. For the purpose of compact prosecution, claim 23 is interpreted to be dependent on claim 21.
Claims 17-27 are rejected under 35 U.S.C. 112(b) for being dependent on Claim 16.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16-27 are rejected under 35 U.S.C. 103 as being unpatentable over Matmour et al. (WO2019020948 A1, citing US20200157269 as English translation).
Regarding Claim 16, Matmour discloses a process for obtaining a resin-extended elastomer ([0001]), wherein the process includes a’ step ([0164]-[0174]) which at least one conjugated diene monomer containing from 4 to 12 carbon atoms and at least one vinylaromatic monomer containing from 8 to 20 carbon atoms are polymerized in organic solvent in the context of an anionic polymerization with initiator, such as n-butyllithium (Id.). The process further includes a step of modifying the elastomer to produce chain end modified elastomer, a coupled elastomer or star-branched elastomer by a living reaction ([0122-0125] and [0176]). The process furthermore includes a step of adding at least one plasticizing resin to the organic solvent comprising the modified diene elastomer; and a step of removing the organic solvent to obtain the resin-extended modified diene elastomer ([0157]-[0161]).
Matmour further discloses the elastomer before or after modification has number-average molar mass (Mn) in a range of 250,000 to 450,000 and glass transition temperature (Tg) in a range of -95° C. to -65° C. ([0179]-[180]). The Mn and Tg overlap the claimed Mn and Tg, respectively. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I).
It is obvious that the Mn of an elastomer increases after modification, therefore, Mn2/Mn1 is >1. Further, Matmour cited WO2009/133068 for the modification step. WO2009/133068 exemplifies an aminoalkoxysilane-coupling modification, the Mn2/Mn1 is 152,000/91,3000=1.68 (14:49 – 15:20), and an aminoalkoxysilane-chain-end modification, the Mn2/Mn1 is 158,000/147,000=1.07 (15:27-65).
Regarding Claim 17, Matmour discloses the elastomer after modification has number-average molar mass (Mn) in a range of 250,000 to 450,000 ([0179]).
Regarding Claim 18, the cited patent application WO2009/133068 shows Mn2/Mn1 of a coupled elastomer can be about 1.7 (see discussion above).
Regarding Claim 19, the cited patent application WO2009/133068 discloses that modification can be done with phosphorus compounds, silicon-based or tin-based coupling or branching agent (2:3-17).
Regarding Claim 20, Matmour cited WO 2011/042507 which discloses tin tetrachloride as a branching agent (7:10-20). The cited WO2009/133068 discloses 3-(N,N-dimethylaminopropyl)-trimethoxysilane as a coupling agent (6:53-65).
Regarding Claim 21, tin tetrachloride has the structure of:
PNG
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104
108
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Greyscale
which reads the claimed formula wherein Z is Sn, T is a halogen, r=4. P=q=0
3-(N,N-dimethylaminopropyl)-trimethoxysilane is the preferred formula (I) compound of the instant application ([0141 of US20240109980 A1).
Regarding Claim 22, 3-(N,N-dimethylaminopropyl)-trimethoxysilane contains methoxy groups.
Regarding Claim 23, tin tetrachloride has q=0.
Regarding Claim 24, Matmour discloses the monomers include at least one vinylaromatic
monomer having from 8 to 20 carbon atoms (see discussion of claim 16).
Regarding Claims 25-27, Matmour discloses the plasticizing resin is selected from the group consisting of aliphatic resins, aromatic resins and mixtures thereof ([0021]), the plasticizing resin has a number-average molar mass of between 400 and 2000 g/mol ([0020]), and the content of plasticizing hydrocarbon-based resin is in a range extending from 5 to 100 phr ([0023]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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