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 without traverse of Group I in the reply filed on July 31, 2026 is acknowledged.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 31, 2026.
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 1-19 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The specification fails to disclose or provide any guidance on how to synthesize the presently claimed antiozonant of formula (I). Undue experimentation would be required to determine appropriate production schemes to arrive at the plurality of materials embraced by the depicted presently claimed antiozonant.
Claims 1-19 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.
In claim 1, in formula (I), it is unclear how nitrogen as X forms 3 covalent bonds.
In claim 12, it is unclear how the zinc oxide distinguishes over the reinforcing filler per claim 1.
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.
Claims 1-9 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2266602 (Howland) in view of US 4855346 (Battey).
Howland discloses an antioxidant having the
formula
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36
210
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Greyscale
wherein R1 is an aryl group, R2 is an arylene group and Y’ is a group selected from an amino, -O-metal, -O-ammonium, hydroxy, alkoxy, aryloxy, etc. (e.g., pages 1-2, example, claims). Notably, Howland’s antioxidant wherein R1 is a phenyl group, R2 is a phenylene group, the alkylene is CH2 and Y’ is an amino or hydroxy group meets the presently claimed antiozonant of formula (I) wherein X is O. Howland’s antioxidant is used in any rubber composition such as those used for automobile tires.
In essence, Howland differs from claims 1 and 14 in not expressly disclosing a rubber composition comprising the antioxidant, and article therefrom, wherein the rubber composition comprises the presently claimed components, e.g., diene elastomer, reinforcing filler, sulfur-based curing agent and accelerator. In this regard, Battey discloses (Example V) the use of similar-such N-phenyl p-phenylene diamino compounds as antioxidants in standard rubber compositions comprising natural rubber (meets Applicants’ diene elastomer), carbon black (meets Applicants’ reinforcing filler), sulfur (meets Applicants’ sulfur-based curing agent) and N-cyclohexyl-2-benzothiazylsulphenamide (meets Applicants’ accelerator). Thus, it would have been obvious to one having ordinary skill in the art to use a similar standard rubber composition as Howland’s rubber composition with the reasonable expectation of success.
As to claims 2-4, 16 and 17, Howland discloses the rubber composition comprises about 0.1 to 5% of the antioxidant, rendering obvious the presently claimed amounts to one having ordinary skill in the art.
As to claim 5, Battey discloses similar diene elastomers (C3:1-8) and expressly exemplifies natural rubber in Example V.
As to claim 6, Battey discloses (C3:1-8), and renders obvious to one having ordinary skill in the art, butadiene copolymers comprising styrene or acrylonitrile units.
As to claim 7, Battey expressly exemplifies a rubber composition comprising 45 phr carbon black (C5:1-10).
As to claims 8, 9 and 15, Battey expressly exemplifies a rubber composition comprising carbon black.
As to claim 12, Battey expressly exemplifies a rubber composition comprising zinc oxide (C5:1-10).
As to claim 13, Battey expressly exemplifies a rubber composition comprising stearic acid (C5:1-10).
As to claims 18 and 19, Howland discloses the rubber compositions are used for automobile tires, thus rendering obvious to one having ordinary skill in the art the presently claimed tire articles.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2266602 (Howland) in view of US 4855346 (Battey), both described hereinabove, further in view of US 2024/0093000 (Yang).
Claims 10 and 11 differ from Howland and Battey in further requiring a silica filler (claim 10) and a silane coupling agent (claim 11). From Yang, it is known that silica pre-treated with a silane coupling agent is a well-known reinforcing filler alternative to carbon black in rubber compositions [0037]/[0040]. Thus, it would have been within the purview of one having ordinary skill in the art to further include a silica pre-treated with a silane coupling agent into the standard rubber composition disclosed by Battey for its expected reinforcing additive effect.
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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