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 (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.
Claim Listing
For clarity of the record, Claim 12 has been included in the claim listing under Claim 11 rather than on a separate line on its own. Applicant is encouraged have each claim on its own line in future filings.
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.
Claim 2 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.
Claim 2 recites a specific list of polymer (a) recited by Claim 3 from which it depends which is broader than the list in Claim 3. Therefore, Claim 2 does not include all the limitation from the claim from which it depends as Claim 2 has a broader list of alternatives of polymer (a) than that of Claim 3.
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
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 2, 3, 4, 7-8, and 11, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Koda (U.S. 20200254816), Nizzia (IT-MI20131378; reference made to English translation provided) and Platzer (EP2168884; reference made to provided English translation) in view of Farina (U.S. 20170113864) and Grunlan (U.S. 20160030977).
Koda teaches compositions comprising solid rubber, silane functional liquid diene rubber and filler. (abstract) The silane modified liquid rubber is used in the compositions to improve the dispersibility of the filler. (¶[0070]) Therefore, one of ordinary skill in the art is reasonably suggested the above liquid diene is a dispersibility additive.
Koda does not teach or suggest a sealed pouch as in Claim 1.
Nizzia, working in the field of packaging of additives for rubber similar to Applicant ¶[0032], teaches the use of ethylene vinyl acetate (EVA) bags for rubber/rubber additives used for the production of tires and other finished products made of rubber. ¶[0035].
The bags have EVA with a melting point of 70 oC – 105 oC which allows for better dispersion of the contents into the rubber itself. ¶[0040] and ¶[0041]
Platzer, working in the field of packaging of additives for rubber similar to Applicant, teaches films (bags) comprising EVA to contain additives for elastomer mixtures used in the production of rubber. ¶[0001-0002] Plazter teaches the bags of Platzer are useful because they can be melted into an elastomer mixture easily at a relatively low melting temperature and allow for a reliable allocation of a weighed additive to an elastomer mixture in a production facility. ¶[0011]. Platzer teaches a film thickness of 30 to 150 microns is sufficiently tear and stretch resistant to absorb and transport an additive in the form of pastes, powder or liquid mixtures without leakage and, on the other hand, thin enough to melt quickly in the mixer. ¶[0019]
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Koda such that the additives, such as the silane modified liquid diene rubber of Koda, was compounded (or in other words kneaded) into the rubber by placing these components into an additive bag as taught by Nizzia and Platzer for the advantage of better dispersion of the additives in the solid rubber as taught by Nizzia and allowing for the reliable allocation of weighed additives to an elastomer mixture in a production facility which can be melted easily at a lower temperature.
One of ordinary skill in the art would have been motivated to use additive bags which are made of EVA with a melting point of 70 oC – 105 oC for the dispersibility reason given by Nizzia and also have the thickness of the films of EVA making the bags being 30 to 150 microns for the above tear and stretch benefits taught by Platzer.
A skilled artisan would have a reasonable expectation of success in the above modification because the teachings of Nizzia and Platzer are to bags used for rubber additives that are compounded into rubber material and both Nizzia and Plazter are drawn to EVA bags (films) with similar labels also made from EVA. Therefore, the benefits above are reasonably suggested to be most strongly associated with the overall bags themselves rather than the differences between the EVA labeling.
The above modification results in a silane functionalized liquid diene in a bag (sealing pouch) of EVA with a melting point of 70 oC – 105 oC and a thickness of 30 to 150 microns. Nizza teaches heat sealing the bags in ¶[0062] and both Nizzia and Platzer teach the bags of rubber additives are compounded into rubber (i.e. solid rubber) and Koda teaches any production method can be used in ¶[0165] (which also includes discussion of kneaders).
The melting temps read over the melting temp range of Claim 1.
The above thickness overlaps the range of Claim 1.
The EVA reads over the EVA copolymer of Claim 1 and Claim 2.
Koda, Nizzia and Platzer do not teach or suggest putting the heat-sealed bags in another container with low moisture permability.
Farina, working in the field of packaging bags to protect compounds from moisture similar to Applicant, teaches in ¶[0024] such bags (packaging systems) can be placed inside an over bag and heat sealed closed for long term storage and this over bag serves as a moisture barrier and further isolates the product (i.e. the individual bag or packing systems) from moisture. This over bag can be made of Mylar or some other material with very low moisture transmission rate.
Koda teaches the silane modified liquid diene should not contain groups such as OH groups that is reactive with the silane modification (free from hydroxyl groups). ¶[0096] As water / moisture contains 2 hydroxyl groups (2 OH groups) one of ordinary skill in the art would find the teachings of Farina’s over bag relevant to practice the invention of Koda, Nizzia and Platzer.
It would have been obvious to a person of ordinary skill in the art at the time the invention was filed to practice the invention of Koda, Nizzia and Platzer discussed above by placing the bags of silane modified liquid diene and other additives for compounding into solid rubber into an over bag with low moisture permeability for long term storage as the over bag will serve as a moisture barrier to further isolate the product (the diene containing bag) from moisture as suggested by Farina in ¶[0024] for related types of packaging systems. This is further desirable from the perspective of one of ordinary skill in the art because Koda teaches suggests the diene be free from OH groups of which water/moisture contains two of these groups.
This reads over the sealing container C of Claim 3, the diene of Claim 1, the container as a bag of Claim 7.
As detailed above, Farina simply states the over bag can be made of polymeric material (such as PET) and have a low water vapor transmission rate but does not teach or suggest the type of over bag material of Claim 1 nor the water vapor transmission rate of the material as recited by Claims 4.
Grunlan, working in the field of packaging systems with low water vapor permeability similar to Applicant and Farina (see ¶[0098]), teaches multilayer films that are effective barriers for humidity and oxygen. ¶[0048] The coatings are layers of clay (MMT or VMT) on PET. (see ¶[0024] for instance) and provide advantageous water vapor transmission rates of 0.1 to about 1.0 g / m2 day (¶[0097]) in particular 0.65 g / m2 day. ¶[0097].
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Koda, Nizzia, Platzer and Farina such that the over bag with the low water vapor permeability is made of the layered clay PET film of Grunlan because Grunlan teaches these layered clay PET films are effective barriers for humidity and oxygen (¶[0048]) and have advantageous water vapor transmission of 0.65 g/m2 day in a particular exemplary structure taught by Grunlan. This would 0.65 g/m2 day PET clay layered film would be considered and exceptionally low water vapor transmission rate (WVTR) in light of the other ranges of the same WVTR taught by Grunlan and, therefore, in pursuit of having a low water vapor permeable taught by Farina and to the suggested minimization of hydroxyls (water hydroxyls) suggested by Koda.
This reads over the WVTR of Claim 4 and the layered film of Claim 1 as PET in the above form of a bag reads over a polymer sheet.
With respect to the desiccant of Claim 8, Farina teaches the use of desiccants as a gas scavenging material in other parts of the bag packaging system of Farina. (¶[0010]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the above over bag packaging system by placing desiccant in the over bag with the bags of liquid diene because it logically follows this would reinforce the same benefit that the over bag is providing by further scavenging moisture (i.e. gaseous water) to prevent it from interacting with the bags of Koda, NIzzia, and Platzner.
This reads over the desiccant of Claim 8.
With respect to the method claims of Claims 11-12, while Koda, Nizzia and Platzer and Farina do not explicitly teach the recited method steps, the opening of the heat sealed over bag to use one (or more) bags of silane function liquid diene / additive in rubber compound and then resealing the bag logically follows in order to be able to use the bag of Nizzia and Platzer as intended to compound into the solid rubber of Koda and then logically resealing the over bag to further protect any remaining diene bags in the over bag. Since Farina teaches heat sealing the over bag, this also reasonably suggests resealing the over bag after using an individual bag inside it. This reads over the method of Claim 11 and Claim 12.
If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Applicant’s results are to the combination of Claim 3 (storage container plus individual bags while the claims are, at their broadest, to the individual bags. Therefore, for at least this reason, the claims are not commensurate in scope with the showing of any allegedly unexpected results Applicant may argue in the future.
Applicant’s results do not appear truly unexpected. Koda suggest OH groups are not favorable to the silane functionalized liquid diene as discussed above. Removing water which contains said groups from the packaging system at any level would reduce unwanted reactions to the liquid diene during storage. Applicant’s results suggest the more water vapor excluded from the overall packaging container leads to less degradation in the properties such as number of functional groups in the liquid diene stored. This all appears expected as Koda teaches the liquid diene should be substantially free of OH groups (or water functional groups) and by minimizing the water vapor transmission of the packaging system (such as with Farina and Grunlan’s bag material) one of ordinary skill in the art would expect less degradation of the water sensitive liquid diene of Koda, Nizzia and Platzer as Applicant has demonstrated.
Response to Arguments
Applicant claim amendments and arguments filed June 26, 2026 have been fully considered but are not sufficient to move the application to allowance. The claim amendments represent the combination of previous Claim 1, 5 and 6 with the type of container previously recited by Claim 5 having been modified. Examiner notes that PET with clay on it still reads on a polymer sheet now claimed. The rejections of record have been updated to reflect the combination of the above claims into Claim 3 and the explanation of how the PET reads over Claim 1’s previous Claim 5 limitation has been addressed. The §112 rejection newly added of record has been necessitated by Applicant’s amendment to Claim 3.
Applicant’s remarks filed June 26, 2026 have been fully considered but are not persuasive.
Applicant argues that Koda’s teaching to keep -OH functionality away from the functional liquid diene and this teaching giving support for motivating keeping moisture / water from the liquid diene of Koda is a logical leap. Additionally, Applicant argues the prior art must only be considered from the perspective of keeping moisture out from a storage stability perspective only. This argument is not persuasive.
Koda teaches keep -OH away from the silane functional diene. The art is not required to address Applicant’s specific reasons for keep -OH away from the functional liquid diene. There is no logical leap present. Water has two OH groups and Applicant has not provided any evidence as to why the OH groups of water are somehow different than those OH groups Koda desires to keep away from the liquid diene from, as Applicant has put it, a synthetic chemistry perspective. Applicant makes a speculative argument that OH groups bonded to a polymer backbone and the OH groups from water are no interchangeable. Without evidence as why the OH in water would not react with silane on the liquid diene but OH on another component in Koda would and, therefore, must be prevented, this argument is speculative in nature and not persuasive for that reason.
Further, there is no requirement that Koda must be concerned with storage stability of the liquid diene to modify as discussed in the rejection of record.
Applicant also argues that Koda does not teach or suggest a liquid diene rubber which has been functionalized with a group that is highly reactive to water. This argument is not persuasive. There is no requirement that Koda use Applicant’s specific claim language for a compound in the art to read over the claim language. Applicant is invited to provide evidence the silane functionalized liquid diene of Koda is not capable of being highly reactive to water. Applicant is remined that silane compounds for this purpose are taught in ¶[0019] (alkoxysilyl i.e. alkoxysilane) ¶[0020] and ¶[0023] and alkoxysilyl groups are disclosed for this specific purpose in ¶[0043] in the as-filed specification).
Applicant is strongly encouraged to exercise their right to appeal the decision of the Examiner.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Christopher M Rodd/Primary Examiner, Art Unit 1766
Prosecution Insights