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 .
Claim Rejections - 35 USC § 112
Claim 3 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.
In claim 3, “any combination thereof” is redundant to the antecedently-recited “one or more”.
Claim Rejections - 35 USC § 102/103
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 (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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed 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.
Claims 1-20 are rejected under 35 U.S.C. 102(a1) and (a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 8,394,883 (Viola).
Viola discloses a vulcanizable composition comprising:
(a1) from 30 to 90 wt.% of a partially hydrogenated vinylarene-conjugated diene random elastomeric copolymer having a hydrogenation degree of preferably 20 to 89% (C3:40-44);
(a2) from 10 to 70 wt.% of one or more diene rubbers;
(b) from 10 to 150 phr of silica;
(c) from 0.1 to 20 phr of a silane coupling agent; and
(d) from 0.1 to 10 phr of a vulcanization agent (e.g., abstract, examples, claims).
In Table 3, Viola sets forth hydrogenated styrene/butadiene elastomeric copolymers having a hydrogenation degree ranging from 44.1 to 89.8% (corresponding to a double bond content of from 10.2 to 55.9%). Notably, the elastomeric copolymers LCH1, LCH2, LCH3, BCH1, BCH2 and BCH3, with a hydrogenation degree ranging from 73.9 to 76.2%, have a double bond content of from 23.8 to 26.1% (meets Applicants’ double bond content).
As to claims 1 and 9, Viola expressly sets forth (Table 4) vulcanizable compositions comprising, inter alia,
(a1) a hydrogenated styrene/butadiene elastomeric copolymer LCH1, LCH2, LCH3, BCH1, BCH2 or BCH3 having a double bond content of from 23.8 to 26.1% (meets Applicants’ partially saturated elastomer and double bond content thereof);
(a2) diene rubbers; and
(b) 87.5 phr of COUPSIL 8113 - a reaction product of bis(triethoxysilyl propyl)polysulfide and silica (meets Applicants’ pre-silanized silica and content thereof);
As to claims 2 and 5, noted are Viola’s exemplified (Table 4) vulcanizable compositions comprising hydrogenated styrene/butadiene elastomeric copolymer LCH3 or BCH1 having a double bond content as presently claimed.
As to claims 3 and 4, Viola’s exemplifies hydrogenated styrene/butadiene elastomeric copolymers.
As to claim 6, noted are Viola’s exemplified (Table 3) vulcanizable compositions comprising hydrogenated styrene/butadiene elastomeric copolymer LCH1, LCH3, BCH1 or BCH3 having styrene/butadiene contents as presently claimed.
As to claims 7 and 8, Viola’s exemplifies (Table 3) hydrogenated styrene/butadiene elastomeric copolymers meeting the presently claimed glass transition temperature and molecular weight.
As to claims 10 and 11, Viola expressly exemplifies COUPSIL 8113 - a reaction product of bis(triethoxysilyl propyl)polysulfide and silica, which is reasonably expected to possess the same properties. “Products of identical chemical composition cannot have mutually exclusive properties” because a chemical composition and its properties are inseparable, In re Spada 15 USPQ2d 1655, MPEP 2112.01 (II). Where the claimed and prior products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established, In re Best 195 USPQ 430. Where applicant claims a composition in terms of function, property or characteristic and the composition of the prior art is the same as that of the claim but the function property or characteristic is not explicitly disclosed, a rejection under both 35 U.S.C. 102 and 103 is appropriate (MPEP 2112).
As to claims 12-14, Viola’s exemplified COUPSIL 8113 - a reaction product of bis(triethoxysilyl propyl)polysulfide and silica, meets all claimed limitations.
As to claims 15 and 16, Viola’s examples further comprise 1.4 phr sulfur vulcanizing agent and 2 phr diphenyl guanidine vulcanizing accelerator.
As to claims 17 and 18, Viola exemplifies vulcanized products (Table 4).
As to claims 19 and 20, Viola is specifically directed to tire treads (C1:24-28).
Viola anticipates the present claims in that it is reasonably believed that the disclosed hydrogenation degrees correspond to amounts of repeating units comprising a double bond. In the alternative, it would have been within the purview of one having ordinary skill in the art to vary the hydrogenation degree in accordance with the desired properties given that Viola discloses hydrogenation degree lower than 100%.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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