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 1-5 and 10-17 in the reply filed on 6/29/2026 is acknowledged. The traversal is on the ground(s) that the restriction does not show a serious search and examination burden. This is not found persuasive because the restriction states that inventions I-V would require separate fields of search including different search queries. Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g., employing different search queries), a different field of search is shown. See MPEP 808.02. This is sufficient to establish a serious search and/or examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-9 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/29/2026.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-5 and 10-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasse et al (US 20090221751 A1).
Regarding claims 1-5 and 10-17, Hasse teaches rubber mixtures comprising 80 parts of Ultrasil 7000 GR (readily dispersible silica [0200]), 4 parts of Lutensol TO5, and 126 parts of rubber - 96 parts of Buna VSL5025-1 (solution-polymerized SBR [0198] and 30 parts of Buna CB 24 (cis-1,4-polybutadiene [0199]) [Example 12, 0224 and Table 13].
Ultrasil 7000 GR reads on the claimed silica particles.
Lutensol TO5 is ethoxylated tridecanol having HLB value of 10.5 and molar mass of 430, as evidenced by BASF (“Care Chemicals & Formulators”, page 3, January 2010), which reads on the claimed nonionic surfactant having a hydrophilic lipophilic balance (HLB) value of from about 8 to about 14 (claim 1) and from 11.4 to about 12.4 (claim 15), and having a molecular weight of from about 100 Da to about 2000 Da as specified in claims 2 and 13-17.
Buna VSL5025-1 and Buna CB 24 read on the claimed rubber material. Buna VSL5025-1 reads on the claimed solution styrene butadiene rubber (sSBR) and Buna CB 24 reads on the claimed cis-polybutadiene in claims 5 and 10.
The amount of 80 parts of Ultrasil 7000 GR and the amount of 126 parts of rubber results in 63 phr of Ultrasil 7000 GR , meeting the recited “from about 10 phr to about 150 phr” of silica particles in claim 4.
According to the applicant, the term “phf” as used herein, refers to “parts by weight of a respective material per 100 parts by weight of filler” [0027 pgpub].
Therefore, the amount of 80 parts of Ultrasil 7000 GR (filler) and the amount of 4 parts of Lutensol TO5 results in 5 phf of Lutensol TO5, meeting the recited “from about 0.5 phf to about 15 phf” of the nonionic surfactant in claim 3.
The amount of 96 parts of Buna VSL5025-1 and the amount of 30 parts of Buna CB 24 results in 76 phr of Buna VSL5025-1 and 24 phr of Buna CB 24. These amounts meet the recited about 30 phr to about 100 phr of sSBR and about 10 phr to about 60 phr of cis-polybutadiene in claim 11.
According to the applicant, “the terms “about,” “approximate,” “at or about,” and “substantially” mean that the amount or value in question can be the exact value or a value that provides equivalent results or effects as recited in the claims or taught herein. That is, it is understood that amounts, sizes, formulations, parameters, and other quantities and characteristics are not and need not be exact, but may be approximate and/or larger or smaller, as desired, reflecting tolerances, conversion factors, rounding off, measurement error and the like, and other factors known to those of skill in the art such that equivalent results or effects are obtained. In some circumstances, the value that provides equivalent results or effects cannot be reasonably determined. In such cases, it is generally understood, as used herein, that “about” and “at or about” mean the nominal value indicated±10% variation” [0024 pgpub].
Therefore, Hasse’s 76 phr of Buna VSL5025-1 and 24 phr of Buna CB 24 meet the recited about 70 phr of sSBR and about 30 phr of cis-polybutadiene in claim 12.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 nonobviousness.
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.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasse et al (US 20090221751 A1) as applied to claims 1 and 10 above, further in view of Korth et al (US 20070203274 A1).
Regarding claim 12, Hasse teaches the rubber composition in claim 1 and the rubber being a combination of sSBR and cis-polybutadiene in claim 10; Example 12 teaches 76 phr of sSBR and 24 phr of cis-polybutadiene as stated above.
Hasse does not expressively teaches the sSBR is present at 70 phr and the cis-polybutadiene is present at 30 phr.
In the same field of endeavor, Korth teaches rubber mixtures comprising silica particles filler and rubber material including S-SBR and polybutadiene [0403-0404]. Mixtures of the abovementioned rubbers whose S-SBR content is above 50% by weight, particularly preferably above 60% by weight, can be used with preference [0415]. Thus, the amount of S-SBR is above 50 phr, overlapping the claimed about 70 phr. The amount of polybutadiene is below 50 phr, overlapping the claimed about 30 phr. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a rubber mixture according to Hasse including above 50 phr of S-SBR and below 50 phr of cis-polybutadiene, as Korth demonstrates this range to be suitable for similar resin-cellulose nanofiber composite. This represents the use of a suitable range of cellulose nanofiber in resin-cellulose nanofiber composite which are compositionally similar to those of Jeyoung and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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