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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/22/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 and 9-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant has amended independent claim 1 to recite “wherein the silica is rendered dispersible such that the solution remains substantially free of phase separation for at least 24 hours” in lines 5-7. However, there is no support for this added limitation to claim 1.
The remaining claims are rejected as depending, whether directly or indirectly, from a rejected base claim.
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 (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 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.
Claim(s) 1-3, 6-7, 9-11, and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over U. S. Patent No. 7,307,121 to Zhang et al. (hereinafter Zhang) in view of U.S. Patent Application Publication No. 2013/0131357 to Liu et al. (hereinafter Liu).
With respect to claim 1, Zhang discloses dispersing silica and a coupling agent such as bis(triethoxysilylpropyl)disulfide or TESP, throughout an organic solvent such as a hydrocarbon solvent such as cyclohexane or hexane, which results in the formation of a slurry of treated silica in the organic solvent, wherein normally agitation is provided to mix the various components together to attain an essentially homogeneous solution (Zhang, abstract, col. 5, lines 45-63; col. 6, lines 33-42; col. 8, lines 20-60). The fact that the reference discloses the formation of homogeneous solution would read on the formation of a “stable solution”. It is important to note that the treated silica has silane groups on its surface, and thus, after the process of treatment, it is considered “silane-modified silica” (Zhang, col. 6, lines 33-41). Furthermore, Zhang is silent as to the formation of any non-homogeneous solution; in fact, Zhang teaches the opposite, and is directed to forming a well dispersed silica masterbatch (Zhang, abstract, col. 8, lines 29-31). Therefore, it is expected of the solution containing treated or silane-modified silica to remain free of phase separation for any amount of time because the reference is simply directed to producing a homogeneous solution, not a solution with two or more separate phases, absence evidence proving the contrary. This is especially in light of the fact that Zhang discloses the use of one of the preferred compounds as hydrocarbon solvent as well as one of the preferred silanes as those disclosed in the original disclosure of the present Application under examination (see specification of the present Application under examination, pages 2 and 3, paragraphs [0007]-[0010]).
Zhang, additionally, teaches blending the solution of treated silica with a rubber polymer (i.e. claimed “polymer cement”) such as a synthetic rubber such as styrene butadiene rubber or SBR (Zhang, col. 7, lines 30-37; col. 8, lines 32-41).
Although Zhang recognizes the importance of agitation in mixing the components forming the solution containing the treated silica, the reference is, however, silent as to the use of ultrasonic vibration as the method used in mixing the components.
Liu, directed to a method of preparing silica modified by a silane coupling agent through the use of a mixture of components such as silane coupling agent, solvent, water, and a catalyst, as well as silica and an organic solvent, discloses a uniform dispersion of silica in the solution is obtained through the use of shearing and stirring done with ultrasonic wave due to the fact that ultrasonic wave generates plenty of energy and accelerates dispersion, and generates a high-temperature, high-pressure, and a high energy environment (Liu, abstract, [0003]-[0007], [0009], [0020]-[0022], [0025]).
Liu, additionally, discloses that silica treated by the silane coupling agent can improve rolling resistance of rubber products, wherein such treated silica is used, without losing other properties, and as a result, it is widely used in tire industry (Liu, [0015]). Zhang, also, teaches their treated silica, when used in rubber composition, results in a product exhibiting low rolling resistance (Zhang, abstract, col. 5, lines 45-51; col. 6, lines 23-28). Thus, the two references are the same field of art and endeavor.
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Zhang in order to incorporate the use of ultrasonic wave as that taught by Liu as the method of agitation taught by Zhang, motivated by the fact that ultrasonic wave generates plenty of energy and accelerates dispersion, as that taught by Liu, and result in a high-temperature, high-pressure, and a high-energy environment.
With respect to claims 2 and 3, the combination of references renders the claim obvious; this is, in particular, because Zhang, as the primary reference, teaches the use of an alkane such as n-hexane or cyclohexane as the organic solvent which would be a liquid hydrocarbon (Zhang, col. 8, lines 42-52).
With respect to claim 6, the combination of references renders the claim obvious; this is, in particular, because Zhang, as the primary reference, teaches the use of silane coupling agent such as bis(triethoxysilylpropyl)disulfide which is the same as bis[3-(triethoxysilyl)propyl]disulfide (Zhang, col. 5, lines 60-64). Zhang, also, teaches a number of other silanes (Zhang, col. 9, line 55 to col. 10, line 62).
With respect to claim 7, the combination of references renders the claim obvious; this is, in particular, because Zhang, as the primary reference, teaches a number of silane coupling agents, many of which including bis(triethoxysilylpropyl)disulfide contains triethoxysilane (Zhang, col. 5, lines 60-64; col. 9, line 55 to col. 10, line 62).
With respect to claim 9, the combination of references renders the claim obvious; this is, in particular, because Zhang, as the primary reference, discloses preparing a well dispersed silica masterbatch (Zhang, abstract, col. 6).
With respect to claims 10 and 11, the combination of references renders the claim obvious; this is, in particular, because Zhang, as the primary reference, teaches the use of an alkane such as n-hexane or cyclohexane as the organic solvent which would be a liquid hydrocarbon (Zhang, col. 8, lines 42-52).
With respect to claim 14, the combination of references renders the claim obvious; this is, in particular, because Zhang, as the primary reference, teaches the use of silane coupling agent such as bis(triethoxysilylpropyl)disulfide which is the same as bis[3-(triethoxysilyl)propyl]disulfide (Zhang, col. 5, lines 60-64). Zhang, also, teaches a number of other silanes (Zhang, col. 9, line 55 to col. 10, line 62).
With respect to claim 15, the combination of references renders the claim obvious; this is because both references are directed to obtaining surface-modified silica or silica which has been treated to have silane coupling agents attached to its surfaces (Zhang and Liu, their abstracts, and throughout the references).
Response to Arguments
Applicant’s arguments, see page 1 of the claims, and pages 1-3 of the Remarks, filed 05/22/2026, with respect to the rejection(s) of claim(s) 1-7 and 9-15 under 103 obviousness have been fully considered and, in view of the amendment to independent claim 1 by incorporating the addition of a polymer cement, are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Zhang in view of Liu as detailed out above.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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