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 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.
3. Claim(s) 1-4 and 6-21 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 “obtained by means of hydrothermal treatment” is directed to a process limitation and thus, fails to further define the structure eof the claimed organic filler.
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 claims 17 and 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+).
Response to Arguments
4. Applicant's arguments filed July 27, 2026 have been fully considered but they are not persuasive.
Applicant argues that Benko discloses that the lignosulfonate has to be necessarily silylated, which is in direct contrast to the organic filler of amended claim 1. Applicant also states that while Benko broadly mentions other functional groups, such as for example epoxides, thiols, and the like, Benko states that silyl lignosulfonate is beneficial and desired. It is clearly evident from Applicant’s position that Benko is in fact directed to embodiments in which the organic modifier does not contain silicon atoms (disclosure is not limited to a preferred embodiment or embodiment having specific benefits). The functionalizing compound of Benko corresponds with the claimed organic modifier and Benko specifically describes a plurality of compounds that are devoid of silicon atoms (Column 3, Lines 25+). For example, acetic acid anhydride is devoid of silicon atoms. Thus, contrary to Applicant’s arguments, a lignosulfonate in Benko does not necessarily have to silylated. It is emphasized that Kraft lignin is a specific type of lignin (water soluble lignosulfate) and Benko is not limited to lignin obtained in such a manner. Additionally, Benko states that functionalized lignin may be obtained, FOR EXAMPLE, by esterification to form lignin ester and by silylation to form silylated lignin (Column 2, Lines 50+). Thus, absolutely noting in the disclosure of Benko teaches the required use of silylation.
Applicant further argues that Benko does not disclose, teach, or suggest hydrothermal treatment. The claims as currently drafted, though, are directed to an organic filler and limitations pertaining to the method of manufacture fail to further define the structure of the claimed organic filler (lack of evidence that the disclosed method results in a materially different article).
Conclusion
5. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
6. 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 August 4, 2026
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