DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election without traverse of Group I (claims 1-7; “a conjugated diene-based polymer”) in the reply filed on 05/29/2026 is acknowledged.
3. Claims 8-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/29/2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double Patenting I
4. Claims 1-3 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of co-pending U.S. Application No. 18/256,126 (hereinafter referred to as “US Appl. ‘800”; corresponding to US PG PUB 2024/0042800) in view of Yamada et al. (US 2018/0037674).
The claims of US Appl. ‘800 and the present application are directed to a conjugated diene-based polymer comprises a polymer (A1). The claims of US Appl. ‘800 also recite that the conjugated diene-based polymer has an α value of 0.75 to 0.95 which is encompassed by the presently claimed α value of 0.65-0.97 as defined by the following mathematical expression (i):
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wherein p, q, r, and s represent compositional molar ratios of structural units represented by the following formulas (1)-(4), respectively:
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.
While the claims of US Appl. ‘800 recite that the polymer (A1) is present in an amount of 50% by mass or more, they do not specify the polymer (A1) as comprising a multi-branched structure having 4 or more molecular chains and having a functional group comprising at least one element selected from nitrogen at one or both of a terminal and a branching point as required by claim 1 of the present application. They also do not specifically mention that the polymer further has a structural unit derived from an aromatic vinyl compound and its particular amount as recited in present claims 2 and 3, and has a secondary or tertiary amino group as required by present claim 5.
Nevertheless, Yamada et al. disclose the use of 75% by mass or more of a polymer having a multi-branched structure having 3 or more molecular chains (inclusive of the presently claimed 4 or more molecular chains and overlaps with the presently claimed 25-75% by mass of polymer (A1)) and 20-40% by mass of an aromatic vinyl compound (which is encompassed by the presently claimed more than 0 mass% and 45 mass% or less of the aromatic vinyl compound) for the purposes of preparing a conjugated diene-based polymer having excellent processability and balance between low hysteresis loss and wet skid resistance (Paragraphs [0012], [0068]-[0071], and Paragraphs [0135]-[0136]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the presently claimed amounts of the polymer comprising a multi-branched structure having 4 or more molecular chains and having a functional group comprising at least one element selected from nitrogen at one or both of a terminal and a branching point, including tertiary amino group, and an aromatic vinyl compound taught by Yamada et al. in the conjugated diene-based polymer of the US Appl. ‘800, with a reasonable expectation of successfully obtaining excellent processability and balance between low hysteresis loss and wet skid resistance.
This is a provisional nonstatutory double patenting rejection.
Double Patenting II
5. Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-6 of co-pending U.S. Application No. 18/254,808 (hereinafter referred to as “US Appl. ‘808”; corresponding to US PG PUB 2024/0002643).
The claims of US Appl. ‘808 and the present application are directed to a conjugated diene-based polymer comprises a polymer (A1). The claims of US Appl. ‘808 also recite that the conjugated diene-based polymer has an α value of 0.75 to 0.97 which is encompassed by the presently claimed α value of 0.65-0.97 as defined by the following mathematical expression (i):
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wherein p, q, r, and s represent compositional molar ratios of structural units represented by the following formulas (1)-(4), respectively:
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.
The claims of US Appl. ‘808, like the present application, further recite that the polymer further comprises 3-45 mass% of a structural unit derived from an aromatic vinyl compound.
However, claim 1 of US Appl. ‘808 does not specifically mention the polymer (A1) as comprising a multi-branched structure having 4 or more molecular chains and having a functional group comprising at least one element selected from nitrogen at one or both of a terminal and a branching point as required by claim 1 of the present application.
Nevertheless, dependent claims 2 and 5-6 of US Appl. ‘808 recite 50% by mass or more of the polymer (A1) as comprising a multi-branched structure having 4 or more molecular chains and having a functional group comprising at least one element selected from nitrogen and oxygen at a branching point for the purposes of preparing a conjugated diene-based polymer. Thus, it would have been obvious to one of ordinary skill in the art to employ the presently claimed amount of the polymer comprising a multi-branched structure having 4 or more molecular chains and having a functional group comprising at least one element selected from nitrogen or oxygen at one branching point for the purposes of preparing a desired conjugated diene-based polymer.
This is a provisional nonstatutory double patenting rejection.
Double Patenting III
6. Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6 and 10 of U.S. Patent No. 11,970,637 (hereinafter referred to as “the patent”) in view of Yamada et al. (US 2018/0037674).
The claims of the patent and the present application are directed to polymers having the following structural formulas:
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The claims of the patent also recite that the polymer has an α value of 0.75 or more which overlaps with the presently claimed α value of 0.65-0.97 as defined by the following mathematical expression (i):
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wherein p, q, r, and s represent compositional molar ratios. The claims of the patent, like the claims of the present application further recite that the polymer has a functional group comprising at least one element selected from nitrogen and oxygen in a part or all of the initiating terminals, and have two or more molecular chains (overlaps with the presently claimed 4 or more molecular chains), wherein a coupling agent is bonded to the moiety of the polymer and includes secondary or a tertiary amino group.
However, the claims of the patent do not specify the particular amount of the presently claimed polymer. They also do not specifically mention the addition of a structural unit derived from an aromatic vinyl compound and its particular amount as required by present claims 2 and 3.
Nevertheless, Yamada et al. disclose the use of 75% by mass or more of a polymer having a multi-branched structure having 3 or more molecular chains (inclusive of the presently claimed 4 or more molecular chains and overlaps with the presently claimed 25-75% by mass of polymer (A1)) and 20-40% by mass of an aromatic vinyl compound (which is encompassed by the presently claimed more than 0 mass% and 45 mass% or less of the aromatic vinyl compound) for the purposes of preparing a conjugated diene-based polymer having excellent processability and balance between low hysteresis loss and wet skid resistance (Paragraphs [0012], [0068]-[0071], and Paragraphs [0135]-[0136]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the presently claimed amounts of the polymer (A1) also further comprising an aromatic viny compound taught by Yamada et al., with a reasonable expectation of successfully preparing a conjugated diene-based polymer having excellent processability and balance between low hysteresis loss and wet skid resistance.
Double Patenting IV
7. Claims 1-3 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,479,982 (hereinafter referred to as “the patent”) in view of Yamada et al. (US 2018/0037674).
The claims of the patent and present application are directed to conjugated diene-based polymers having the following structural formulas (1)-(4):
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.
The claims of the patent also recite that the polymer has an α value of 0.80-0.97 (which is encompassed by the presently claimed α value of 0.65-0.97) as defined by the following mathematical expression (i):
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.
wherein p, q, r, and s represent compositional molar ratios.
However, the claims of the patent do not specifically mention their polymer (A1) as comprising a multi-branched structure having 4 or more molecular chains and having a functional group comprising at least one element selected from nitrogen at one or both of a terminal and a branching point, and its particular amount as required by the claims of the present application. They also do not specifically mention that the polymer further has a structural unit derived from an aromatic vinyl compound and its particular amount as recited in present claims 2 and 3, and has a secondary or tertiary amino group as required by present claim 5.
Nevertheless, Yamada et al. disclose the use of 75% by mass or more of a polymer having a multi-branched structure having 3 or more molecular chains (inclusive of the presently claimed 4 or more molecular chains and overlaps with the claimed 25-75% by mass of polymer (A1)) and 20-40% by mass of an aromatic vinyl compound (which is encompassed by the claimed more than 0 mass% and 45 mass% or less of the aromatic vinyl compound) for the purposes of preparing a conjugated diene-based polymer having excellent processability and balance between low hysteresis loss and wet skid resistance (Paragraphs [0012], [0068]-[0071], and Paragraphs [0135]-[0136]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the presently claimed amounts of the polymer comprising a multi-branched structure having 4 or more molecular chains and having a functional group comprising at least one element selected from nitrogen at one or both of a terminal and a branching point, including tertiary amino group, and an aromatic vinyl compound taught by Yamada et al. in the conjugated diene-based polymer of the patent, with a reasonable expectation of successfully obtaining excellent processability and balance between low hysteresis loss and wet skid resistance.
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 nonobviousness.
8. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 950 3801 (hereinafter referred to as “EP ‘380”) in view of Yamada et al. (US 2018/0037674).
As to Claims 1-5: EP ‘380 discloses a conjugated diene-based polymer having, when composition ratios (molar ratios) are represented as p, q, r, and s, respectively, in the polymer of structural units represented by formulas (1)-(4):
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and has a value α represented by formula (i) of 0.80-0.97 (which is encompassed by the claimed value α of 0.65-0.97):
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(see, for example, abstract). EP ‘380 also discloses that the polymer is reacted with a compound having a functional group selected from a nitrogen atom, a sulfur atom and an oxygen atom, including secondary and tertiary amino groups, at the end terminal of the polymer (Paragraphs [0028]-[0029]), corresponding to the claimed polymer (A1) having a functional group comprising at least one element selected from nitrogen, oxygen and sulfur at the terminal of the polymer (A1). EP ‘380 further discloses that in the polymer, their chains are bonded to a moiety derived from a coupling agent comprising at least one element, such as silicon, e.g., silicon tetrachloride (Paragraph [0043]).
However, EP ‘380 does not specifically mention that its polymer (A1) comprises a multi-branched structure having 4 or more molecular chains and its particular amount as required by claim 1 of the present application. It also does not specifically mention that the polymer further has a structural unit derived from an aromatic vinyl compound and its particular amount as required by present claims 2 and 3.
Nevertheless, Yamada et al. disclose the use of 75% by mass or more of a polymer having a multi-branched structure having 3 or more molecular chains (inclusive of the presently claimed 4 or more molecular chains and overlaps with the claimed 25-75% by mass of polymer (A1)) and 20-40% by mass of an aromatic vinyl compound (which is encompassed by the claimed more than 0 mass% and 45 mass% or less of the aromatic vinyl compound) for the purposes of preparing a conjugated diene-based polymer having excellent processability and balance between low hysteresis loss and wet skid resistance (Paragraphs [0012], [0068]-[0071], and Paragraphs [0135]-[0136]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the claimed amounts of the polymer comprising a multi-branched structure having 4 or more molecular chains and an aromatic vinyl compound taught by Yamada et al. in the conjugated diene-based polymer of EP ‘380, with a reasonable expectation of successfully obtaining excellent processability and balance between low hysteresis loss and wet skid resistance.
9. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Adachi et al. (WO 2020/203984; utilized US 12,479,982 as its English equivalent) in view of Yamada et al. (US 2018/0037674).
It is noted that WO 2020/0203984 is used for date purposes only, and all column, line numbers cited below refer to its English equivalent, namely US 12,479,982 because WO 2020/0203984 is in Japanese.
As to Claims 1-5: Adachi et al. disclose a conjugated diene-based polymer having, when composition ratios (molar ratios) in the polymer of structural units represented by formulas (1)-(4):
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(Col. 1, line 19-Col. 2, line 36) and has a value α represented by formula (i) of 0.80-0.97 (which is encompassed by the claimed value α of 0.65-0.97):
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(Col. 2, lines 5-10). Adachi et al. also disclose that the polymer is reacted with a compound having a functional group selected from a nitrogen atom, a sulfur atom and an oxygen atom, including secondary and tertiary amino groups, at the end terminal of the polymer (Paragraphs Col. 6, line 59-Col. 7, line 30), corresponding to the claimed polymer (A1) having a functional group comprising at least one element selected from nitrogen, oxygen and sulfur at the terminal of the polymer (A1). Adachi et al. further disclose that in the polymer, their chains are bonded to a moiety derived from a coupling agent comprising at least one element, such as silicon, e.g., silicon tetrachloride (Col. 10, lines 29-60). Moreover, Adachi et al. disclose that the conjugated diene polymer further comprises an aromatic vinyl compound and is present in an amount of 4-30% by mass (Col. 4, lines 20-50), which overlaps with the claimed 25-75 mass% of an aromatic vinyl compound.
While Adachi et al. disclose that the polymer (A1) is used in an amount of 10% by mass or more (Col. 13, lines 5-20), it does not specify its polymer (A1) as comprising a multi-branched structure having 4 or more molecular chains as required by claim 1 of the present application.
Nevertheless, Yamada et al. disclose the use of a polymer having a multi-branched structure having 3 or more molecular chains (inclusive of the presently claimed 4 or more molecular chains) for the purposes of preparing a conjugated diene-based polymer having excellent processability and balance between low hysteresis loss and wet skid resistance (Paragraphs [0012], [0068]-[0071], and Paragraphs [0135]-[0136]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the claimed amount of the polymer comprising a multi-branched structure having 4 or more molecular chains taught by Yamada et al. in the conjugated diene-based polymer of Adachi et al., with a reasonable expectation of successfully obtaining excellent processability and balance between low hysteresis loss and wet skid resistance.
Allowable Subject Matter
10. Claims 6 and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Correspondence
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 09/23/2024.
Prosecution Insights