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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-18, drawn to a method comprising adding a polyisobutene derivative to a synthetic rubber.
Group II, claim(s) 19 and 20, drawn to a composition.
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
Regarding the polyisobutene derivative:
wherein the polyisobutene derivative comprises at least one hydroxyl group (claims 8, 9 and 12),
wherein the polyisobutene derivative comprises at least one carboxyl group, amino group, or quaternary ammonium group, (claim 10),
wherein the polyisobutene derivative comprises at least one carboxyl group or silicon-comprising functional group, (claim 11),
wherein the polyisobutene derivative comprises at least one sulfide or mercapto group, (claims 13 and 14),
wherein the polyisobutene derivative comprises at least one anhydride group with a mono- or polyunsaturated alcohol (claim 15),
wherein the polyisobutene derivative comprises at least one anhydride group with a mono- or polyunsaturated amine (claim 16).
Regarding the synthetic rubber:
wherein the synthetic rubber is an isobutene-isoprene rubber (claim 17).
wherein the synthetic rubber is a styrene-butadiene rubber (claim 18)
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: Claim 1.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a polyisobutene derivative synthetic rubber composition, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US 2007/129477, US 2021/054116, US 2018/057674, US 2008/182927, US 2008/214718, US 2009/0025284, US 2004/171759, or USPN 6,372,855.
During a telephone conversation with Dr. Jaskiranjit Kang on 5/18/2026, a provisional election was made with traverse to prosecute the invention of Group I, species Aa) and Ba), claims 1-9, 12, and 17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10, 11, 13-16 and 18-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to non-elected inventions.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Lee et al. (US 2021/0054116).
In claims 1-12, Lee et al. teach a modified polyisobutylene polymer for compounding rubber, produced by blending polyisobutylene having isobutylene as the main chain; unsaturated dicarboxylic anhydride; and a silane compound.
In addition, a rubber composition containing the modified polyisobutylene polymer, a rubber and a filler is claimed (claims 17-20).
The use of the modified polyisobutylene polymer in the rubber composition makes it possible to increase the dispersibility/compatibility of the filler (¶’s 38 and 42).
Rubber composition containing synthetic rubber (SBR), modified polyisobutylene (a polyisobutene modified with amino-group-containing silane compounds, containing silicon-containing functional groups and also amino groups), silica and carbon black as fillers, zinc oxide, sulfur, and vulcanization accelerators (table 2).
It has been confirmed that the use of the modified polyisobutylene polymer according to the examples was able to significantly improve the dispersibility of silica and carbon black (See ¶’s 135 and 136).
Regarding claims 3-7, the product of the claimed process is the same product as in the prior art. While the claims are to the process, an otherwise old composition would still not be patentable, regardless of any new or unexpected properties. In re Fitzgerald et al , 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
The use of polyisobutene derivatives containing at least one amino group, as dispersant for carbon black in rubbers is taught in the prior art and the requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by DiStefano (US 2008/0182927).
In claim 1, DiStefano teach a dispersion for metal oxide nanoparticles, comprising nanoparticles or particles and at least one PIBSA or PIBSA reaction product as dispersant.
The examples describe dispersions of ZnO nanoparticles in organic solvent with PIBSA (tables 1 and 2) or with reaction products of PIBSA with amines (tables 3, 4 and 6).
This composition can be added to a broad range of polymer matrixes by adding the composition to a solution or dispersion of the polymer in an organic solvent. Examples of suitable polymers include, inter alia, polyisoprene, polychloroprene and poly(styrene-co-butadiene) (see ¶ 15).
Therefore, the use of a polyisobutene derivative, containing a carboxyl group, as dispersant for zinc oxide in a synthetic rubber is disclosed.
Regarding claims 2 and 4-7, the product of the claimed process is the same product as in the prior art. While the claims are to the process, an otherwise old composition would still not be patentable, regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Thus, requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1-8 and 12 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Ellul (US 2018/0057674).
In claims 1 and 10, Ellul teach a dynamically vulcanized elastomer composition containing polyisobutenyl-substituted succinic anhydride (PIBSA) as compatibility-modifying agent or viscosity-modifying agent
Examples A-C describe elastomer compositions composed of BIMSM (an isobutylene-para-methyl styrene copolymer), polyamide, graphene, zinc oxide, talcum and PIBSA (table 2).
PIBSA is also referred to as a reactive plasticizer (paragraph [0059]). Consequently, the use of a polyisobutene derivative, containing at least one hydroxyl group, as a plasticizer in rubbers is already known.
Regarding claims 2-4, 6 and 7, the product of the claimed process is the same product as in the prior art. While the claims are to the process, an otherwise old composition would still not be patentable, regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Thus, requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by DiStefano et al. (US 2008/0214718).
In ¶ 8 and claims 1-3, 7 and 10-13, DiStefano et al. teach the treatment of metal or metal oxides such as ZnO with polyisobutenyl-substituted succinic anhydrides (PIBSA) and analogous molecules. The resulting hydrophobic powder improves the dispersion stability in aqueous polymer formulations.
In examples 1-9, ZnO is treated with PIBSA or a PIBSA modified with amine groups, in order to produce hydrophobic particles. Mixtures of ZnO dispersions and neoprene latices are produced by blending.
The use of polyisobutene derivatives, containing hydroxyl groups, carboxyl groups and amino groups as additives in synthetic rubbers, to improve the dispersibility/compatibility of zinc oxide is therefore already known.
Regarding claims 2, 5 and 7, the product of the claimed process is the same product as in the prior art. While the claims are to the process, an otherwise old composition would still not be patentable, regardless of any new or unexpected properties. In re Fitzgerald et al , 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Thus, requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Weng et al. (US 2007/0129477).
In claims 1-5 and 8-20, Weng et al. teaches a nanocomposite comprising a halogenated elastomer and a polymer or oligomer functionalized by a polar group, the polar group being selected from the group consisting of alcohols, ethers, acids, anhydrides, nitriles, amines, acrylates, esters, ammonium ions and combinations thereof, and comprising a clay material.
As polymers, mention is made of polyisobutenyl-substituted succinic anhydrides (PIBSA) (¶ 79) – a polyisobutene derivative containing carboxyl groups (-COOH).
The examples relate to rubber blends containing a rubber (synthetic rubber Exxpro: a brominated isobutyleneparamethyl-styrene terpolymer (BIMSM)), PIBSA, a clay material (cloisite; a silicate), carbon black and zinc oxide (Kadox 911).
In examples 36-40, use is made of a polyisobutene derivative containing an amino group (Amine-PIBSA 48) (table 7).
The polar polymer is used to improve the compatibility/dispersibility of the clay material (¶ 71). Consequently, the use of polyisobutene derivatives for improving the compatibility/dispersibility of silicates is already disclosed.
Regarding claims 2, 3 and 6, the product of the claimed process is the same product as in the prior art. While the claims are to the process, an otherwise old composition would still not be patentable, regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Thus, requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Lange et al. (US 2009/0025284).
In examples 4-20; claim 1, Lange et al. teach a method for preparing 2-alkyl polyisobutenylphenols and the Mannich adducts thereof.
The 2-alkyl polyisobutenylphenols and the Mannich adducts thereof which can be obtained according to the method, and the compositions, are advantageously suitable for stabilizing non-living organic material against the action of light, oxygen and heat. As plastics which can be stabilized by the stabilizers, mention is made of polybut-1-ene, polyisoprene, polybutadiene, styrene-butadiene, styrene-acrylonitrile (SAN), styrene-ethyl methacrylate, styrene butadiene-ethyl acrylate, styrene-acrylonitrile-methacrylate, acrylonitrile-butadiene-styrene (ABS) and methyl methacrylate-butadiene-styrene (MBS) (See ¶’s 91-97).
Polyisobutene derivatives containing a chain derived from polyisobutene, and also a hydroxyl group and an amino group, are described (See examples 4-20).
Consequently, the use of polyisobutene derivatives, containing hydroxyl groups and amino groups, as antioxidants in rubbers is known from Lange et al.
Regarding claims 2-7, the product of the claimed process is the same product as in the prior art. While the claims are to the process, an otherwise old composition would still not be patentable, regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Thus, requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1-7 and 17 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Lange et al. (US 2004/0171759).
In claims 1 and 9-10, Lange et al. discloses a polymer composition containing:
a) at least one polyisobutene-containing component, selected from medium-molecular-weight, reactive polyisobutene having an Mn in the range from 5000 to 80,000 Daltons and a content of terminal double bonds of at least 50 mol%, derivatives of this medium-molecular-weight, reactive polyisobutene, and mixtures thereof,
b) at least one polymer other than a),
wherein component b) is selected from elastomers, such as, inter alia, isobutene-isoprene copolymers (IIR) and styrene butadiene rubbers (SBR).
The examples describe the reaction of a polyisobutene with phenol, with maleic anhydride, with hydrogen sulfide and with a thiol.
Lange et al. therefore discloses the use of polyisobutene derivatives according to claim 1 of the application as additive in synthetic rubbers such as isobutene-isoprene copolymers and styrene-butadiene rubbers.
Regarding claims 2-7, the product of the claimed process is the same product as in the prior art. While the claims are to the process, an otherwise old composition would still not be patentable, regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Thus, requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1-7 and 17 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Chino et al. (USPN 6,372,855).
In col. 2, lines 30-43; col. 6, lines 49-60, Chino et al. teach modified polybutene or polyisobutylene polymer and a rubber composition containing same, wherein the use of the polybutene (polyisobutene) derivatives as additives in rubber compositions for improving compatibility is described.
In examples III-1 and III-2, a modified polybutene is produced which contains a chain derived from polyisobutene and also hydroxyl groups, carboxyl groups, an amino group and a functional group containing silicon. In addition, the modified polybutene has a >C=CH2 double bond.
Formulations containing SBR, the modified polybutene as reactant in a blend with rubbers, carbon black, silica, ZnO, sulfur and, inter alia, vulcanization accelerators, were vulcanized (table III-1).
It was found that, when compounding a rubber composition with the modified polybutene (polyisobutylene) that contains this structure in the polymer, the affinity (compatibility) with the filler is improved and, at the same time, the reinforcing effect due to the "pseudo-crosslinking effect" caused by hydrogen bonds, as well as the viscoelastic properties and the resistance to wear, are improved.
Therefore, the use of these polyisobutene derivatives, which contain at least one double bond, as reactant in a blend with synthetic SBR rubbers in vulcanization is described.
Regarding claims 2-7, the product of the claimed process is the same product as in the prior art. While the claims are to the process, an otherwise old composition would still not be patentable, regardless of any new or unexpected properties. In re Fitzgerald et al , 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Thus, requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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, Robert Jones can be reached at (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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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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