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 .
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 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.
Claims 1-4, 7-10, 12-15 are pending.
Response to Amendment
Applicant’s amendment of 05/20/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-4, 7-10, 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (U.S. 2013/0289182) in view of Kim (KR 2015-0130779, see machine translation).
Regarding claims 1-4, 7-10, 12-15, Bastioli discloses a rubber composition comprising 30-100% of a vinyl aromatic conjugated diene polymer formed by hydrocarbon solvent based polymerization with an initiator, as in claim 9, with a molecular weight overlapping claim 13 ([0025]-[0029]), mixed with 0-70% of a butadiene rubber ([0075]-[0077]), as in claim 9, as well as a filler as in claims 7-8 at an amount overlapping claim 14. Bastioli does not disclose that the butadiene rubber is copolymerized with vegetable oil as claimed.
However, Kim is also directed to rubber compositions that include filler, as in Bastioli, and discloses that such butadiene rubber may be copolymerized (from an already formed and active, i.e., reactive, polymer, as in claim 10, [0026]-[0031]) with an overlapping amount ([0037], as in claims 11-12) of vegetable oils (including those of claim 3-4, [0039]) to produce a MW corresponding to the conjugated diene part that overlaps the range of claims 2 and 10 ([0040], the disclosed MW is of the polybutadiene modified with vegetable oil, but because the polybutadiene is formed before such modification, and given the disclosed amount of vegetable oil based repeating units included in the final copolymer, the MW prior to modification with the vegetable oil still overlaps the claimed range) in order to improve dispersibility of the filler in the composition ([0008]), such that it would have been obvious to have used such a vegetable oil modified butadiene rubber as the butadiene rubber in Bastioli in order to improve dispersibility of the filler as taught by Kim.
The above amounts of vinyl-diene and vegetable oil butadiene rubber overlap the amounts of claims 1 and 9.
Although the particular butadiene isomer in Kim is not disclosed as in claim 15, the butadiene isomer in claim 15 is prima facie obvious. See MPEP 2144.09 II. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant presents piecemeal arguments against the combination of references which ignores the combined teachings of the references.
Applicant also argues that the references cannot be combined because they do not have the same composition. However, the references are far more closely related than is required for a combination of references to render obvious the present claims and it is more than sufficiently obvious to use the particular butadiene rubber from Kim for the butadiene rubber in Bastioli for the reasons set forth in Kim. The benefits attributed to the vegetable oil modified rubber in Kim are related to the rubber itself and nothing in either reference indicates that including the vegetable oil modified rubber along with a styrene butadiene copolymer (as in Bastioli) would negate those benefits or otherwise be unsuitable.
Applicant then argues that because Bastioli does not disclose the vegetable oil based rubber it cannot be modified to use the vegetable oil based rubber. However, nothing in the primary reference limits the rubber to preclude the vegetable oil based version.
Applicant argues a lack of expectation of success but the primary reference already generally calls for the same type of rubber that the secondary reference provides with a more specific beneficial version, such that there is every expectation of success in using an improved specific version of the rubber from the secondary reference for the general rubber already generally taught by the primary reference.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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