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 .
Claim Objections
Claims 17-19 are objected to because of the following informalities:
Regarding claim 17, the article “a” should be inserted before “tire.”
Regarding claim 18, in line 2, the word “of” should be inserted after “mixture.”
Regarding claim 19, this claim depends from an objected to claim and includes all of the limitations thereof. Therefore, it is also subject to the objection.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
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.
Regarding claim 1, claim 1 recites the limitation "the glycosidic linkages" in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as “(i) the insoluble alpha-glucan contains glycosidic linkages, and at least about 50% of the glycosidic linkages are alpha-1,3 glycosidic linkages.”
Regarding claim 11-18, claims 11-18 recite the limitation “the rubber composition” at least once in line 1; claims 11-17 recite it twice in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as simply “the composition.”
Regarding claims 16 and 17, these claims recite that “the rubber composition is a belt, seal, footwear, valve, tubing, mat, gasket, coating, film, or adhesive” and “the rubber composition is tire,” which are products or articles. Claim 1 is directed to a composition of matter and not an article. Therefore, the meets and bounds of these claims are unclear as to whether they are directed to a composition or an article. For the purpose of further examination, these claims will be interpreted as “An article comprising the composition of claim 1, wherein the article is…”.
Regarding claim 18, claim 18 recites the limitation "the dispersion/mixture" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as “the dispersion.”
Regarding claims 2-10 and 19, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Behabtu et al. (US 2020/0181370) in view of Nambiar et al. (US 2015/0259439), Caimi et al. (US 2015/0064748), and Miyazaki et al. (US 2018/0016402).
Regarding claims 1-6, Behabtu et al. teaches a rubber composition comprising a rubber component and a polysaccharide, wherein the polysaccharide comprises water insoluble alpha-(1,3-glucan) polymer having 90% or greater alpha-1,3-glycosidic linkage, less than 1% by weight of alpha-1,3,6-glycosidic branch points, and a number average degree of polymerization in the range of from 55 to 10,000 (¶7-12). Behabtu et al. further teaches that the poly alpha-1,3-glucan can have 99% or 100% alpha-1,3-glycosidic linkages (¶105). The polysaccharide comprises particles having an average particle size in at least one dimension in the range of from about 20 nm to about 200 microns (¶88), and in the working examples is a dry poly alpha-1,3-glucan powder milled to a particle size in the range of 30 to 100 microns (in the form of particles) (Polysaccharide A, ¶292). Polysaccharides A, B, C, and D each have a crystallinity of 65% (Table 3) as determined by wide angle x-ray scattering, in which the resulting x-ray pattern was analyzed by subtracting a linear baseline from 7.2 to 30.5 degrees, subtracting the XRD pattern of a known amorphous glucan sample which had been scaled to fit the current data, fitting the remaining crystal peaks with a series of Gaussian curves corresponding to known dehydrated glucan crystal reflections, and dividing the area corresponding to the crystal peaks by the total area under the baseline-subtracted curve to yield a crystallinity index (¶298, 301) (a degree of crystallinity of at least about 0.65; a crystallinity of 65% corresponds to a crystallinity index of 0.65). This is the same procedure by which crystallinity is determined in the instant application (¶212 of the instant PG-PUB).
Behabtu et al. does not teach that the insoluble alpha-glucan is oxidized by contacting an insoluble alpha-glucan under aqueous conditions with at least one agent that is capable of oxidizing the insoluble alpha-glucan. However, Nambiar et al. teaches a composition comprising an oxidized poly alpha-1,3-glucan compound, wherein said compound is produced by contacting poly alpha-1,3-glucan under aqueous conditions with at least one N-oxoammonium salt (¶7), wherein the N-oxoammonium salt comprises a TEMPO oxoammonium salt or a 4-acetamido-TEMPO oxoammonium salt (¶14). Nambiar et al. further teaches that the poly alpha-1,3-glucan starting material can be a slurry, which forms a solid since it is insoluble in the aqueous reaction milieu (¶244), or as a wet cake (¶245), either of which can be used directly in any of the above processes for producing an oxidized poly alpha-1,3-glucan compound (¶244, 245). Additionally, the oxidized poly alpha-1,3-glucan compound itself can be in the form of microscopically dispersed insoluble particles (¶44).
Miyazaki et al. teaches a method for producing a masterbatch comprising mixing a rubber latex with micro-fibrillated plant fibers oxidized with an N-oxyl compound and coagulating the mixture (¶9), a rubber composition for tires prepared from the masterbatch (¶12), and a pneumatic tire formed from that rubber composition (¶13). Miyazaki et al. teaches that polysaccharide fibers show low dispersibility during rubber kneading, that the incorporation of micro-fibrillated plant fibers may deteriorate fuel economy or other properties, and that there is also a need for methods for improving the dispersibility of such fibers in rubber (¶2). Miyazaki et al. further teaches that oxidation with an N-oxyl compound occurs only on the surface of the polysaccharide, that as a result, carboxyl groups are densely introduced only into the surface, and that since the carboxyl groups carrying a negative charge repel each other, the aggregation of the microfibrils is prevented by dispersing them in water (¶26). The introduction of carboxyl groups in an amount of 0.1 mmol/g or more and 2.5 mmol/g or less leads to uniform dispersion (¶27-29). Miyazaki et al. also teaches that the surface-oxidized polysaccharide retains its cellulose I crystalline structure (¶25); that is, that the surface oxidation does not destroy the crystallinity of the polysaccharide that is oxidized.
Behabtu et al., Nambiar et al., and Miyazaki et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polysaccharide compositions and polysaccharide-reinforced rubber compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to oxidize the insoluble poly alpha-1,3-glucan, as taught by Behabtu et al., by contacting it under aqueous conditions with an N-oxoammonium salt, as taught by Nambiar et al., and would have been motivated to do so in order to introduce carboxyl groups onto the surface of the polysaccharide so that the carboxyl groups carrying a negative charge repel each other and prevent aggregation, thereby providing uniform dispersion of the polysaccharide in the rubber, as taught by Miyazaki et al. (¶26-29).
Behabtu et al. does not teach that the insoluble alpha-glucan has a weight-average degree of polymerization (DPw) of about 15 to 100, of about 35 to about 100, or of about 35 to about 60. However, Caimi et al. teaches a process for producing poly alpha-1,3-glucan with reduced molecular weight, and teaches that the molecular weight of poly alpha-1,3-glucan produced by the instant process can be measured in DPw and is between about 40 and 800 (¶52). Caimi et al. further teaches that poly alpha-1,3-glucan is generally insoluble at a DPw of 8 and above in aqueous (or mostly aqueous) solutions at 20 °C (¶56), such that the poly alpha-1,3-glucan of Caimi et al. remains insoluble throughout the disclosed range.
Further, Behabtu et al. teaches that the specific surface area of the polysaccharide affects its behavior as a filler, reporting BET surface areas of 0.7 to 19.4 m2/g across its polysaccharides (¶295, Table 3) and teaching that the rubber composition requires good dispersion of the fillers in order to impart the desired performance improvement (¶304). Therefore, the degree of polymerization of the insoluble alpha-glucan is a result-effective variable. It is well known in the art to optimize result effective variables, such as degree of polymerization. MPEP § 2144.05. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454,456, 105 USPQ 233,235 (CCPA 1955). MPEP 2144.05 II.A.
Behabtu et al. and Caimi et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of insoluble poly alpha-1,3-glucan compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to provide the insoluble poly alpha-1,3-glucan, as taught by Behabtu et al., with a DPw within the range of about 40 to 800, as taught by Caimi et al., and would have been motivated to do so in order to provide a poly alpha-1,3-glucan of reduced molecular weight that remains insoluble in aqueous media, as taught by Caimi et al. (¶52, 56), and in order to provide a smaller, higher surface area particle for improved dispersion in the rubber composition, as taught by Behabtu et al. (¶295, 304).
Regarding claims 7-10, Behabtu et al. teaches that that the rubber component comprises at least one diene-based sulfur-vulcanizable elastomer having a Tg below -30 °C, as determined by dynamic mechanical analysis, and that the elastomer comprises natural rubber, synthetic polyisoprene, styrene butadiene copolymer rubber, ethylene propylene diene monomer rubber, hydrogenated nitrile butadiene rubber, polybutadiene, silicone rubber, or neoprene (¶20).
Regarding claim 11, Behabtu et al. teaches that the rubber composition comprises from about 5 to about 100 parts per hundred of polysaccharide, based on the weight fraction of the rubber component (¶30).
Regarding claim 12, Behabtu et al. teaches that the rubber composition comprises silica in an amount of from 0 to 20 phr (¶224) and carbon black in an amount of from 0 to 100 phr (¶225), with 45 phr of carbon black used in the working examples (Table 5).
Regarding claim 13, Behabtu et al. teaches that the rubber composition further comprises zinc oxide, microcrystalline wax, and a treated distillate aromatic extract processing oil (Table 5), and the compositions are prepared by mixing in non-productive stages followed by a final mixing stage that involves the addition of curatives and antidegradants (¶303).
Regarding claim 14, Behabtu et al. teaches that the rubber composition comprises a polyetheramine (¶228, 229).
Regarding claim 15, Behabtu et al. teaches that the composition may contain silane coupling agents such as bis(3-triethoxysilylpropyl) tetrasulfide, bis(3-triethoxysilylpropyl) disulfide, bis(2-triethoxysilylethyl) tetrasulfide, 3-mercaptopropyl trimethoxysilane, 3-mercaptopropyl triethoxysilane, 3-nitropropyl trimethoxysilane, 3-aminopropyl triethoxysilane, or an organic silane compound having an organic moiety capable of reacting with a polymer, such as a sulfide, an amino group, or a mercapto group (¶227).
Regarding claims 16 and 17, Behabtu et al. teaches an article comprising the rubber composition, wherein the article is a tire, a belt, a seal, footwear, a valve, tubing, a mat, a gasket, a coating, film, or an adhesive (¶32).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Behabtu et al. (US 2020/0181370) in view of Nambiar et al. (US 2015/0259439), Caimi et al. (US 2015/0064748), and Miyazaki et al. (US 2018/0016402) as applied to claim 1 above, and further in view of Behabtu et al. (US 2020/0190270) (hereinafter “Behabtu II”).
Regarding claims 18 and 19, Behabtu et al., Nambiar et al., Caimi et al., and Miyazaki et al. teach the composition of claim 1 as set forth above. Behabtu et al. does not teach a method of producing the composition comprising providing an aqueous dispersion comprising a mixture of the oxidized insoluble alpha-glucan and the rubber component, coagulating the aqueous dispersion to produce a coagulated mass, and optionally drying the coagulated mass. However, Behabtu II teaches a method of producing a polysaccharide-elastomer masterbatch composition comprising a step of mixing an aqueous polysaccharide dispersion, or a basic aqueous polysaccharide solution, with a rubber latex solution containing a rubber component, and optionally a flocculant, to form a mixture (¶6-10), coagulating the mixture obtained to produce a coagulated mass (¶11), and drying the coagulated mass (¶12). Behabtu II further teaches that the masterbatch composition is used to formulate a compounded rubber-polysaccharide material by mixing the masterbatch composition with additives such as a filler, a coupling agent, a curing agent or an accelerator (Table 2, Examples 1A and 1B).
Behabtu et al. and Behabtu II are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polysaccharide-reinforced rubber compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to prepare the rubber composition, as taught by Behabtu et al., by mixing an aqueous dispersion of the polysaccharide with a rubber latex, coagulating the mixture to produce a coagulated mass, drying the coagulated mass, and compounding the dried coagulated mass with rubber additives, as taught by Behabtu II, and would have been motivated to do so in order to produce a polysaccharide-elastomer composition that has excellent processability and improved rubber properties as evidenced by Miyazaki et al. (¶14).
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.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 34, and 35 of U.S. Patent No. 11,608,388 (“the ‘388 patent”) in view of Nambiar et al. (US 2015/0259439) and Miyazaki et al. (US 2018/0016402).
Regarding claims 1 and 6, claim 1 of the ‘388 patent teaches composition comprising insoluble alpha-glucan particles having a degree of crystallinity of at least about 0.65, wherein the insoluble alpha-glucan has a weight-average degree of polymerization (DPw) of at least 15, and at least 50% of the glycosidic linkages of the insoluble alpha-glucan are alpha-1,3 glycosidic linkages. Claims 34 and 35 of the ‘388 patent further teach that the composition is a composite comprising at least one polymer in addition to the insoluble alpha-glucan particles, and wherein said at least one polymer is a polyurethane, rubber, or thermoplastic polymer.
The ’388 patent does not teach that the insoluble alpha-glucan is oxidized by contacting the insoluble alpha-glucan under aqueous conditions with at least one agent that is capable of oxidizing the insoluble alpha-glucan. However, Nambiar et al. teaches a composition comprising an oxidized poly alpha-1,3-glucan compound, wherein said compound is produced by contacting poly alpha-1,3-glucan under aqueous conditions with at least one N-oxoammonium salt (¶7), wherein the N-oxoammonium salt comprises a TEMPO oxoammonium salt or a 4-acetamido-TEMPO oxoammonium salt (¶14). Nambiar et al. further teaches that the poly alpha-1,3-glucan starting material can be a slurry, which forms a solid since it is insoluble in the aqueous reaction milieu (¶244), or as a wet cake (¶245), either of which can be used directly in any of the above processes for producing an oxidized poly alpha-1,3-glucan compound (¶244, 245). Additionally, the oxidized poly alpha-1,3-glucan compound itself can be in the form of microscopically dispersed insoluble particles (¶44).
Miyazaki et al. teaches a method for producing a masterbatch comprising mixing a rubber latex with micro-fibrillated plant fibers oxidized with an N-oxyl compound and coagulating the mixture (¶9), a rubber composition for tires prepared from the masterbatch (¶12), and a pneumatic tire formed from that rubber composition (¶13). Miyazaki et al. teaches that polysaccharide fibers show low dispersibility during rubber kneading, that the incorporation of micro-fibrillated plant fibers may deteriorate fuel economy or other properties, and that there is also a need for methods for improving the dispersibility of such fibers in rubber (¶2). Miyazaki et al. further teaches that oxidation with an N-oxyl compound occurs only on the surface of the polysaccharide, that as a result, carboxyl groups are densely introduced only into the surface, and that since the carboxyl groups carrying a negative charge repel each other, the aggregation of the microfibrils is prevented by dispersing them in water (¶26). The introduction of carboxyl groups in an amount of 0.1 mmol/g or more and 2.5 mmol/g or less leads to uniform dispersion (¶27-29). Miyazaki et al. also teaches that the surface-oxidized polysaccharide retains its cellulose I crystalline structure (¶25); that is, that the surface oxidation does not destroy the crystallinity of the polysaccharide that is oxidized.
The ‘388 patent, Nambiar et al., and Miyazaki et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polysaccharide compositions and polysaccharide-reinforced rubber compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to oxidize the insoluble poly alpha-1,3-glucan, as taught by the ‘388 patent, by contacting it under aqueous conditions with an N-oxoammonium salt, as taught by Nambiar et al., and would have been motivated to do so in order to introduce carboxyl groups onto the surface of the polysaccharide so that the carboxyl groups carrying a negative charge repel each other and prevent aggregation, thereby providing uniform dispersion of the polysaccharide in the rubber, as taught by Miyazaki et al. (¶26-29).
Regarding claim 2, claim 2 of the ‘388 patent teaches that at least about 90% of the glycosidic linkages of the insoluble alpha-glucan are alpha-1,3 linkages.
Regarding claim 3, claim 3 of the ‘388 patent teaches that at least about 99% of the glycosidic linkages of the insoluble alpha-glucan are alpha-1,3 linkages.
Regarding claim 4, claim 4 of the ‘388 patent teaches that the DPw of the insoluble alpha-glucan is about 35 to about 100.
Regarding claim 5, claim 5 of the ‘388 patent teaches that the DPw of the insoluble alpha-glucan is about 35 to about 60
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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