DETAILED ACTION
This Office Action is in response to the Amendment filed on 7/17/2026. Claims 5-8 were canceled and claims 21-22 were added. Claims 1-4 and 9-22 are now pending in the application.
The previous 35 USC 112 rejections of claims 1-20 and the 101 rejection of claims 19-20 are withdrawn in light of Applicant’s amendment and remarks.
Claim Objections
Claims 1 and 9 are objected to because of the following informalities: the recitation “or a blend of two or more of the foregoing” is redundant. It is suggested the claim language be amended to recite “or a blend thereof . Appropriate correction is required.
Claim 9 is also objected to because it appears to be a substantial duplicate of claim 1.
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.
Claim 18 is 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 18 recites “an average particle size diameter of less than 700 µm, less than 500 µm, less than 400 µm, or less than 250 µm.” However, claim 18 depends from claim 1, wherein claim 1 requires the rubber particles to be less than 250 µm. It is unclear whether the step recited in claim 18 is a separate grinding step before the final particle size diameter of less than 250 µm; or does claim 18’s particle size range need to be amended to only recite less than 250 µm. The claim 18 is indefinite and is thereby rejected.
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.
Claims 1-4, 9, 11-16, 19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Thomasson et al. (US PG Pub 2019/0382564 A1; as cited on the IDS dated 10/25/2023) in view of Hoelzemann, et al. (DE 19728036; English Machine Translation incorporated herewith).
Regarding claims 1, 9 and 11-14, Thomasson et al. teach a rubber composition comprising:
an elastomer, wherein the elastomer is selected from natural rubber and polyisoprene and mixtures thereof (Claim 30, [0025]), thereby reading on the claimed rubber of claims 1 and 11;
a reinforcing filler (Claim 30) thereby reading on the at least one filler, wherein the filler is carbon black (claim 47) as required by instant claim 12;
a crosslinking system (Claim 30) thereby reading on the at least one crosslinking system, wherein the crosslinking system is sulfur in an amount of between 0.5 and 5 phr [0037] thereby reading on the sulfur of claim 13 and the claimed range of claim 14;
and a crumb rubber (Claim 30), wherein the crumbs are the product of the recycling of materials and are in the form of microparticles [0040], and wherein the crumbs undergo a treatment in order to modify them, wherein the treatment is a functionalization and is a biological treatment [0061] thereby reading on the recycled rubber particles having a functionalized surface with functional groups. Thomasson et al. teach the crumb rubber having a particle size distribution such that particles having a size greater than 200 µm are removed by screening [0045] thereby reading on the claimed ranges of less than 700, less than 500, less than 400, and less than 250 µm.
Thomasson et al. do not particularly teach the functional groups are carbonyl groups and are further silent on the biological treatment being an enzyme treatment.
Hoelzemann, et al., from the same field of endeavor, namely modification of rubber particles from waste and recycled rubber [0007], teach the modification of rubber particles by biotechnical treatment, wherein the treatment on the particle surface is in the form of carbonyl groups (Abstract) and wherein the treatment is an enzymatic treatment (claims 1-2). Hoelzemeann et al. offer the motivation of utilizing the enzymatic treatment with carbonyl groups on the surface of the rubber particles due to the ability of the treatment to prepare the particle for further processing [0003]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the enzymatic treatment with a carbonyl group as a functional group on the surface of the rubber particle as disclosed by Hoelzemann, in the composition of Thomasson, thereby arriving at the claimed invention.
Regarding claim 2, Thomasson et al. teach the crumb is isoprene [0050].
Regarding claims 3-4, Thomasson et al. teach the crumb rubber in an amount of 53 phr (Table 3, T2, T3, T4) thereby reading on the claimed range of 15 to 75 phr and a minimum of 50 phr with sufficient specificity.
Regarding claim 15, Thomasson et al. teach other additives such as plasticizers, among others [0069-0070].
Regarding claims 16 and 22, Thomasson et al. teach (Table 3):
100 phr in the preferred embodiments and teach natural rubber and polyisoprene and mixtures are preferred (Claim 30, [0025]),
crumb rubber in the amount of 53 phr thereby reading on the claimed range of 15 to 75 phr;
sulfur in the amount of 1.9 phr thereby reading on the claimed range of 0.1 to 5 phr;
carbon black in the amount of 48 phr thereby reading on the claimed range of 5 to 200 phr; and further reading on the claimed range of 10 to 150 phr of claim 22;
other additives including antioxidant (3 phr), stearic acid (2.6 phr), zinc oxide (3.3 phr) and accelerator (1.15 phr), which combined together are present in an amount of 10.05 phr thereby reading on the claimed range of 1 to 50 phr of further additives.
Regarding claim 19, Thomasson et al. teach the rubber mixture in tires thereby reading on industrial rubber products (claim 57).
Claims 10 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Thomasson et al. (US PG Pub 2019/0382564 A1; as cited on the IDS dated 10/25/2023) in view of Hoelzemann, et al. (DE 19728036; English Machine Translation incorporated herewith) as set forth above for claim 1 and further in view of Birke, et al. (Applied and Environmental Microbiology; as cited on the IDS dated 1/3/2025).
Regarding claims 10 and 17-18, Thomasson et al. in view of Hoelzemann et al. teach the rubber mixture according to claim 1 as set forth above and incorporated herein by reference. Specifically, Thomasson et al. teach the rubber mixture and a process of producing rubber particles, wherein the rubber particles are produced by:
obtaining crumbs as a product of recycled materials [0040] thereby reading on the providing rubber wastes and further teach the mixture of natural rubber and synthetic polyisoprene and carbon black as set forth above in the rejection of claim 1, thereby reading on the step a);
milling or micronization of rubber compositions [0040], wherein less than 30% by weight of the particles have a particle size greater than 200 µm [0042], thereby reading on the step b);
the crumbs have an acetone extract [0059] thereby reading on the step c).
Thomasson in view of Hoelzemann et al. are silent on the rubber particles having functional groups that are carbonyl groups, which are terminal aldehyde and ketone groups as required by instant claim 10. Thomasson et al. are silent on the treating the rubber particle with an enzyme selected from Lcp, RoxA, RoxB and mixtures thereof (step d) as required by instant claims 17 and 18.
Birke et al. teach the enzymatic cleavage of rubber, particularly isoprene, is important given the enormous amounts of rubber waste materials being released especially from car tires. Birke et al. teach rubber oxygenase A, RoxA, RoxB and latex clearing protein (Lcp) as being responsible for the primary enzymatic attack on the hydrophobic and water insoluble biopolymer poly(cis-1,4-isoprene) (Abstract) thereby reading on the step d as required by instant claims 17 and 18. Birke et al. further teach the reaction of RoxA, RoxB and Lcp with polyisoprene results in terminal aldehyde and ketone functional groups (p. 7, 1st paragraph) as required by instant claim 11. Birke et al. offers the motivation of using the RoxA, RoxB and Lcp enzymes with polyisoprene due to its ability to oxidatively cleave rubber (Abstract, Importance). In light of this benefit, it would have been obvious to one of ordinary skill in the art to use the enzyme treatment of RoxA, RoxB and Lcp as disclosed by Birke et al., in the rubber mixture and the process of making the rubber mixture of Thomasson et al., thereby arriving at the claimed invention.
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Thomasson et al. (US PG Pub 2019/0382564 A1; as cited on the IDS dated 10/25/2023) in view of Hoelzemann, et al. (DE 19728036; English Machine Translation incorporated herewith) as set forth above for claim 1 and further in view of Cassell et al. (US PG Pub 2017/0283564 A1).
Regarding claims 20-21, Thomasson et al. teach the rubber mixture according to claim 1 as set forth above and incorporated herein by reference.
Thomasson et al. do not particularly teach the use of the rubber mixture for an engine mount or bushing.
Cassell et al., in the same field of endeavor, namely polyisoprene rubber compositions that are crosslinked [0006] and comprising fillers such as carbon black and silica [0024], teach vulcanized natural rubbers or the synthetic analog (polyisoprene) having improved thermal degradation properties and their use in vibration damping applications in harsh conditions (e.g. automotive engine mounts and bushings) [0001]. Cassell et al. offer the motivation of using vulcanized polyisoprene rubber compositions due to their ability to provide improved damping due to its improved thermal degradation properties [0001]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the rubber mixture of Thomasson et al. in view of Hoelzemann et al. as an engine mount and bushing as taught by Cassell et al., thereby arriving at the claimed invention.
Response to Arguments
Applicant’s arguments, see p. 1-9, filed 7/17/2026, with respect to the 102 over Thomasson have been fully considered and are persuasive. The 102 rejection over Thomasson has been withdrawn. However, upon further consideration and in light of the amendment, a new ground of 103 rejections are made over Thomasson in view of Hoelzemann et al.
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 LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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