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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-10) in the reply filed on 08/17/2026 is acknowledged. The traversal is on the ground(s) that claims 11-20 (Group II) do not define a distinct invention, but rather recite the same inventive concept from a different claim perspective. Specifically, elected claims 1-10 (Group I) are directed to a process in which silica is surface-modified with a silane during the claimed process, whereas claims 11-20 (Group II) are directed to a process utilizing surface-modified silica as a starting material. Both groups are directed to preparation of a silica-containing masterbatch and share the same essential inventive features, differing primarily in whether the silica modification occurs within the claimed process or prior to the process. This is not found persuasive because, as discussed in the restriction mailed 07/01/2026, the inventions are distinct from one another and the inventions would require a different field of search and the prior art applicable to one invention would not likely be applicable to another invention.
The requirement is still deemed proper and is therefore made FINAL.
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 non-obviousness.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over ZHANG et al. (U.S. Publication No. 2005/0209370, hereinafter ZHANG) in view of LIU et al. (U.S. Publication No. 2013/0131357, hereinafter LIU).
Regarding claims 1, 3-5, and 8-10, ZHANG teaches a method of preparing rubber compositions comprising silica masterbatch wherein the silica is treated using a combination of two silane coupling agents (e.g., mercaptosilane and bis(triethoxylsilylpropyl)disulfide (TESPD) [0020, 0027, and 0028]) in a hydrocarbon solvent [0025] (e.g., organic solvents such as hexane) in a reactor [0027]; the treated silica in an organic solvent is then blended with elastomer cement in an organic solvent [0029 and 0038].
FIG. 3 shows that very good silica dispersion is achieved from the silica masterbatch ([0036]; Example 2 [0077]; [0084]).
An agitation will be provided to mix the various components together to attain an essentially homogenous solution [0038 and 0060].
However, ZHANG does not teach a process for preparing a masterbatch, the process comprising ultrasonically mixing silica and a silane in a hydrocarbon solvent to form a solution.
In the same field of endeavor of silica dispersion, LIU teaches the methods of ultrasonic dispersion and stirring at a constant rate are employed to obtain silica dispersing solution with ideal particle size and uniform dispersion [0021]. The ultrasonic wave is a sound wave which generates plenty of energy and accelerates dispersion wherein the energy is released along with the deconstruction of the microbubbles when the ultrasound is in a liquid medium, which can generate a high-temperature, high-pressure, and high-energy environment [0022]. The ultrasonic wave is used to disperse silica uniformly and then the contact area between silica and the silane coupling agent increases. A combination effect of some processes like shear dispersion and stirring could be used to disperse silica and ensure silica with ideal particle size and uniform dispersion in the solution [0023].
The time for an ultrasonic dispersion process of 10 mins to about 1 hour (60 minutes). After every shear dispersion is completed, the solution is stirred to lower the temperature to room temperature, and then the next shear dispersion is performed [0010-0011].
Given ZHANG teaches the silica dispersion is achieved from the silica masterbatch and an agitation of the components (e.g., silica, silane coupling agents, and elastomer cement in an organic solvent), it would have been obvious to a person of ordinary skill in the art to have provided the ultrasonic wave of LIU with the silica dispersion of ZHANG for the benefit of dispersing silica uniformly and then the contact area between silica and the silane coupling agent increases as taught by LIU.
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 2, as discussed above, see paragraph 6 above. More specifically, ZHANG teaches
the treated silica in an organic solvent is then blended with elastomer cement in an organic solvent [0029 and 0038]. The elastomer cement is from styrene butadiene rubber (SBR), butadiene rubber (BR), or other elastomers [0029].
Regarding claim 6, as discussed above, see paragraph 6 above. More specifically, ZHANG teaches
a method of preparing rubber compositions comprising silica masterbatch wherein the silica is treated using a combination of two silane coupling agents (e.g., mercaptosilane and bis(triethoxylsilylpropyl)disulfide (TESPD) [0020 and 0028]. Note: bis(triethoxylsilylpropyl)disulfide (TESPD) is the same as bis[3-(triethoxysilyl)propyl]disulfide.
Regarding claim 7, ZHANG teaches the elastomer cement is mixed for 1 hour (60 minutes) [0094].
Pertinent Art
HARDIMAN et al. (U.S. Publication No. 2019/0263979), one of the closest prior art, fails to teach a process for preparing a masterbatch, the process comprising ultrasonically mixing silica and a silane in a hydrocarbon solvent to form a solution.
HARDMAN teaches a process for making masterbatches of a silicas and a rubber made in a solution process. The silica is suspended in a solvent (hexane or cyclohexane). A silane is added into the suspension and then the mixture is heated to the boiling temperature of the solvent. Agitation is provided during the reflux period [0017]; however, HARDMAN does not teach ultrasonically mixing the silica and a silane in a hydrocarbon solvent to form a solution. Therefore, HARDMAN fails to disclose or render obvious the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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