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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 8, 2026 has been entered.
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (US Pat. 5,571,871).
Considering Claim 1: Ikeda et al. teaches a process of preparing a hydrogenated polymer composition comprising a hydrogenated conjugated diene polymer modified with a boron containing functional group (26:35-57), comprising the steps of anionically polymerizing isoprene/a conjugated diene in the presence of butyl lithium/a reactive metal compound to produce a diene polymer with a reactive terminal group (26:35-57), reacting the reactive terminal polymer with a boron ester (26:35-57) that is preferably tripropylborate or tributylborate (6:12-21) to prepare a terminal modified diene polymer with boron containing terminal groups; and hydrogenating the conjugated diene polymer to react the double bonds present in the polymer (26:35-57). The original specification of the instant application teaches propyl and butyl groups as having the claimed Taft steric parameter in Formula (I) (¶0035).
Ikeda et al. teaches adding the boron ester with a borate complex (27:20-40) that includes a polar compound such as triethylamine or tetrahydrofuran (27:20-40; 6:4-12). Ikeda et al. does not teach premixing the complex comprising the polar compound with the boron ester. However, the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP § 2144.04. It would have been obvious to a person of ordinary skill in the art to have mixed the boron ester and borate complex prior to the addition to the polymer, and the motivation to do so would have been, a person of ordinary skill in the art would expect the resultant product to be substantially similar to the product where they are added separately.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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