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 .
Specification
The disclosure is objected to because of the following informalities: (Page 5) the chemical subscript in formula (1) denoting “(OR-1)” is not clearly legible. Appropriate correction is required.
Claim Objections
Claims 4-6 are objected to because of the following informalities: the chemical subscript in formula (1) denoting “(OR-1)” is not clearly legible, rendering the scope of the claim indefinite. Appropriate correction is required. For examination purposes, this chemical subscript has been interpreted as “2-r”.
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 1-9 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.
Regarding claim 1, “the hydrogenated copolymer having a weight-average molecular weight measured by a gel permeation chromatography of 300,000 or more” is indefinite language. The specification provides parameters for GPC measurement (page 3, paragraph 1) and preferred ranges of values (page 5, paragraph 2) but does not provide units (Da, kDa, amu, g/mol), rendering the claim indefinite in scope. Claims 1-9 are similarly rejected as a result of their dependency on indefinite claim 1.
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 1-3 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashiro et al (US 2018/0142089).
Regarding claim 1, Yamashiro discloses a rubber composition comprising:
10-80% mass hydrogenated aromatic vinyl conjugated diene copolymer with 30-100% hydrogenation [0012],
silica at 1 to 200 parts by mass [0021],
carbon black at 60 or less parts by mass [0103], and
a general purpose rubber selected from a group consisting of natural rubber [0012] being the remainder of the composition.
Yamashiro also teaches that the hydrogenated copolymer preferably has a weight average molecular weight of 200,000-2,000,000 [0017].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to select from the ranges for the rubber composition disclosed by Yamashiro to arrive at the claimed invention.
Regarding claim 2, Yamashiro also teaches that the hydrogenated copolymer is preferably a hydrogenated styrene butadiene copolymer [0015].
Regarding claim 3, Yamashiro further teaches that the hydrogenated copolymer is preferably a functionalized (i.e. modified) hydrogenated styrene butadiene copolymer [0016].
Regarding claim 7, the functional group disclosed in the claimed invention is an embodiment covered under the scope of Yamashiro [0048] and a specific embodiment listed in [0066].
Regarding claim 8, Yamashiro discloses that the general purpose rubber recited in the rubber composition is at least one selected from the group consisting of natural rubber and polybutadiene rubber, comprising the remainder of 10-80% by mass (i.e. 20-90% by mass) [0012].
Regarding claim 9, Yamashiro discloses the use of their rubber composition for a pneumatic tire (Abstract).
Claims 4, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashiro et al (US 2018/0142089) in view of Inoue et al (US 2022/0289952).
The discussion with respect to Yamashiro et al (US 2018/0142089) set forth in the above rejection is incorporated here by reference.
Regarding claim 4, Yamashiro discloses the hydrogenated copolymer having the following functional groups at an end thereof: a hydrocarbyloxysilyl group (formula 1) or a nitrogen, phosphorous, or sulfur-containing monovalent functional group [0058].
Yamashiro does not disclose functional groups to the hydrogenated aromatic vinyl conjugated diene copolymer that include carbon-nitrogen double bonds or nitrogen-containing heterocyclic groups.
Inoue discloses functional groups which contain carbon-nitrogen double bonds [0035] and nitrogen-containing heterocycles [0035] as preferred embodiments for the modified polymerization initiation terminal of a conjugated diene-based polymer used in a tire formulation. Inoue further teaches that functional groups containing nitrogen are particularly preferred because of their good affinity with silica [0045].
Since both Yamashiro and Inoue are related to rubber compositions for pneumatic tires comprising functionalized hydrogenated aromatic vinyl conjugated diene copolymers, these references belong to the same field of endeavor.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the rubber composition taught by Yamashiro with the functional groups disclosed by Inoue with the expected result of improved breaking strength and tear strength, thereby arriving at the claimed invention.
Regarding claim 5, the combination of Yamashiro and Inoue discloses all of the limitations of claim 4. Yamashiro further discloses that groups R3, R4, and R5 (formula 1) are preferably 1-20 carbons in length [0020 and 0021]. Note that R3, R4, and R5 in Yamashiro are analogous to instant groups R1, R2, and R3 in formula (1).
Yamashiro does not disclose functional groups analogous to group X in formula (1) of the instant application which include carbon-nitrogen double bonds, nitrogen-containing heterocyclic groups, or hydrocarbyloxysilyl groups.
Inoue discloses functional group A1, which maps to instant group X in formula (1), being a monovalent functional group containing silicon [F2], wherein group R5, analogous to instant group R3 [0036]. Note that in Inoue [F2], groups R3 and R4 are analogous to instant groups R2 and R1 [0036].
In the context of Inoue’s teaching that functional groups containing nitrogen are particularly preferred because of their good affinity with silica [0045], it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the rubber composition taught by Yamashiro with the functional groups disclosed by Inoue with the expected result of improved breaking strength and tear strength, thereby arriving at the claimed invention.
Regarding claim 6, the combination of Yamashiro and Inoue, as shown in the rejection above, discloses the limitations of claim 5. Yamashiro also discloses functional group A1, analogous to instant group X in formula (1), being a primary amino group substituted by two protecting groups, a secondary amino group substituted by a protecting group, or a tertiary amino group [0065]. Yamashiro further discloses a trisubstituted hydrocarbylsilyl group as a suitable example for this protecting group [0065].
The further limitations of the claimed invention, being unprotected amino groups as functional ends of the hydrogenated copolymer, are obvious variants of the protected amino groups disclosed by Yamashiro. Inoue also discloses that functional group A1, analogous to instant group X in formula (1), may be a group that can be turned into an onium ion, of which unprotected primary and secondary amino groups are capable. Unprotected primary and secondary amino functional groups were therefore obvious to try with the goal of onium ion formation and a reasonable expectation of success.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the rubber composition taught by Yamashiro and Inoue with the functional groups disclosed by Yamashiro with the expected result of improved breaking strength and tear strength, thereby arriving at the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ozawa et al (US Patent No. 7,288,594) discloses two-stage chemical modification of an aromatic vinyl conjugated diene copolymer with hydrocarbyloxysilyl groups, resulting in partially condensed functional groups having more than one Si center. Shigenaga et al (JP 2022093146 A) discloses modification of an aromatic vinyl conjugated diene copolymer with an aziridine compound containing hydrocarbyloxysilyl functional groups, directed towards tires. Takano et al (WO 2018186367 A1) discloses silicon-based functional groups analogous to the claimed invention for conjugated diene-based copolymers, directed towards pneumatic tires. Kato et al (WO 2020261618 A1) discloses a tire rubber composition having an aromatic vinyl conjugated diene copolymer component which is partially hydrogenated.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-F 8-5 ET.
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, 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.
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.
/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights