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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 23, 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4, 6-16, and 18-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benko (US 8,664,305, of record) and further in view of Lahtinen (EP 3243877, of record).
Benko is directed to an organic filler and a tire rubber composition including said filler (Column 2, Lines 65+). More particularly, said filler is lignin (claimed organic filler precursor) (Column 2, Lines 21+), wherein said lignin includes a wide variety of substituents (e.g. aromatic, hydroxyl, methoxyl, carbonyl, and carboxy groups) (Column 2, Lines 36+). These groups or substituents correspond with the claimed functional groups. Benko also states that said constituents are functionalized with at least one functionalizing compound having a moiety reactive with said constituents (corresponds with claimed organic modifier) (Column 3, Lines 20+). As to specific compounds, Benko suggests a wide variety of compounds that are devoid of silicon atoms, such as ethyl acetate, acetic anhydride, valeric anhydride, hexanoic anhydride, glycerol triacetate, delta valerolactone, methyl caprate, and methyl laurate (Column 3, Lines 40+).
While Benko fails to expressly disclose 14C contents, the claimed values appear to result from using organic fillers obtained from biomass (as opposed to fossil fuels), such as lignin (see Pages 13-15 of Applicant’s original specification). As such, it reasons that the lignin of Benko would demonstrate a 14C content in accordance to the claimed invention.
Also, regarding claim 1 (and claims 4 and 21), while Benko is silent with respect to a surface area of lignin, the broad range of the claimed invention is consistent with that which is conventionally associated with lignin used in tire rubber compositions, as shown for example by Lahtinen (Paragraph 17). One of ordinary skill in the art would have found it obvious to use lignin having surface areas in accordance to the claimed invention absent a conclusive showing of unexpected results (lignin of Benko necessarily has a surface area and the claimed range is consistent with surface areas associated with providing sufficient reinforcement in tire rubber compositions).
Lastly, as to claim 1, the language “hydrothermally treated” is directed to a process limitation and thus, fails to further define the structure of the claimed organic filler. There is no evidence that such a method results in a materially different product. Alternatively, it is noted that Lahtinen evidences the common use of hydrothermal treatments in the manufacture of lignin material for tire compounds (Paragraph 14). One of ordinary skill in the art would have found it obvious to use hydrothermally treated lignin in the rubber composition of Benko (a fair reading of Benko suggests the use of any number of lignin products). Also, Lahtinen recognizes carbon contents as high as 65% and even higher (Paragraph 18) and such is seen to substantially overlap with the claimed invention. Applicant has not provided a conclusive showing of unexpected results for the claimed carbon contents (appears to be consistent with common lignin products used in the tire rubber compositions).
With respect to claims 2 and 6, as noted above, a wide variety of organic modifiers disclosed by Benko are devoid of silicon atoms.
As to claims 3 and 8, Benko teaches a rubber composition formed by functionalizing lignin with an organic modifier prior to mixing rubber materials with functionalized lignin (Column 3, Lines 62+). This corresponds with step (a) of claim 8 and the additional steps are optional. Additionally, the claims are directed to an organic filler and limitations pertaining to a method of manufacture fail to further define the structure of the claimed organic filler.
As to claim 7, Benko discloses the inclusion of at least one functionalizing compound. Thus, the use of two functionalizing compounds, for example, is within the scope of Benko. Additionally, the disclosed amino silane can be viewed as the claimed “at least one other functional group” that increases the basicity of the filler after bonding of the organic modifier (amino group is disclosed as being a suitable “at least one other functional group” and thus, would be expected to impact the basicity in an analogous manner to the claimed invention).
As to claim 9, it would be expected that Benko encompasses organic fillers in which not every single substituent is reacted with a functionalizing compound.
Regarding claims 10 and 11, Benko teaches a wide variety of elastomers consistent with the claimed invention (Column 4, Lines 47+).
With respect to claim 12, Benko teaches exemplary embodiments comprising up to 15 phr of lignin (Table 2).
As to claim 13, the rubber composition of Benko includes zinc oxide and sulfur (Table 2).
Regarding claim 14, sulfur is disclosed as being added to a base rubber composition (part A) in a productive mixing stage (Table 2) and as such, it corresponds with part B as required by the claims.
With respect to claim 18, the claims are directed to an organic filler and limitations pertaining to the method of manufacture fail to further define the structure of the claimed filler.
With respect to claim 20, Benko discloses a wide variety of common tire components (Column 4, Lines 5+).
As to claim 22, given the extreme similarities between the organic filler in Benko, as modified by Lahtinen, and that of the claimed invention, it reasons that said organic filler would demonstrate a solubility in accordance to the claimed invention (no evidence that additional factors contribute to the claimed solubility).
Response to Arguments
Applicant's arguments filed September 23, 2026 have been fully considered but they are not persuasive.
Applicant argues that Lahtinen does not disclose that the organic filler is a lignin-based filler present in a hydrothermally treated form. This argument is not entirely understood since the abstract of Lahtinen specifically states that the invention relates to the use of lignin that has been treated by hydrothermal carbonization in a rubber based component of a pneumatic tyre. It is further noted, as detailed above, the language “hydrothermally treated” is directed to the method of manufacture and fails to further define the structure of the claimed product.
Applicant further argues that the claimed hydrothermal treatment produces an organic filler that achieves a better filler-polymer interaction. The Examiner respectfully disagrees. Page 53 in Applicant’s original specification states that improved filler-polymer interaction is attributed to the use of modified lignins, as opposed to unmodified lignins- there is no connection between improved polymer-filler interaction and a hydrothermal treatment. More particularly, Applicant has not provided a comparison between modified lignins formed by a hydrothermal treatment and additional treatments to evidence a manufacturing method in which distinctive structural characteristics are present in the final product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 October 14, 2026
