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 .
Applicant’s preliminary amendment dated 1 December 2023 is acknowledged. Claims 1-20 as amended are pending.
Claim Interpretation
The Office interprets claim 13, in particular the phrase “using rosin ester . . . as rubber additive” as implying the step of adding the rosin ester to a rubber composition.
Claim Objections
Claim 15 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim must be dependent from more than one claim only in the alternative. See MPEP § 608.01(n). Claim 15 claims dependence from claims 1 and 13 simultaneously, and not in the alternative. Accordingly, the claim not been further treated on the merits.
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 1-12, 14, and 16 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.
Claim 1 recites “has or have not more than seven hydroxyl groups”. This is confusing because it is unclear whether the alcohol(s) must have or are excluded from having more than seven hydroxyl groups.
For the purpose of applying prior art, the claims will be interpreted as requiring seven or fewer hydroxyl groups. The Office recommends amending to “has not or have not” to clarify according to this interpretation. This ground of rejection is also applied to claims 2-12.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “a molecular weight of at least 380”, and the claim also recites “preferably from 380 to 2000” which is the narrower statement of the range/limitation. Claim 3 provides the broad recitation “at least 2 hydroxyl groups,” and the narrower recitation “in particular 2, 3, or 4”. Claim 5 provides the broad recitation “PEG”, and the narrower recitations “such as PEG having a molecular weight of from 200 to 800 g/mol.” Claim 5 also provides the broad recitation “PPG”, and the narrower recitation “ such as PPG having a molecular weight . . . .” Claim 5 also contains the broad recitation ‘ethoxylated glycerol”, and the narrower recitations “in particular up to 10”, “such as 5 to 10,” and “e.g., 7 ethylene oxide units”. Claim 7 contains the broad recitation “between 0.1 and 40 phr,” and the narrower recitation “preferably 1 to 30 phr”. Claim 12 recites “further additives and constituents,” and the narrower recitation “in particular, one or more fillers”. Claim 14 recites “by at least 5%, and the narrower recitation “preferably at least 10%”. Claim 16 recites the broad recitation “one or more solid carrier material(s)”, and the narrower recitation “wherein a silica is preferably used”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 16 recites that a blend “is used”. This is not deemed to properly recite a method step for use of the blend, and makes it unclear what action is required to use the blend.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-8, 10-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,777,013 (“Gardiner”) as evidenced by US 3,497,490 (“Arlt”).
The additional reference is used to show that a recited limitation is inherent in the primary reference. See MPEP 2131.01.
As to claims 1-6, Gardiner teaches rubber compositions (see table 3) containing a compound formed from condensation, thus esterification of polyethylene glycol and tall oil fatty acid (8:59-9:30), and it is therefore reasonable to presume the resulting additive is an ester of rosin acid and alcohol. Gardiner teaches the rosin ester made from TORA, Actinol R type S tall oil rosin (table 2). While the acid value is not stated, Arlt, 3:65-70 evidences that this rosin has acid value of 172, which is within the recited ranges of claims 1 and 6. The polyethylene glycol has a molecular weight of 400 and 2 hydroxyl groups, which is within the ranges of claims 1-5.
As to claim 7, Table 3 shows compositions calculated as providing approximately 1 percent of the additive, 2 wt % of silica, in a rubber compound, which is calculated as providing approximately 1 phr of the additive with respect to the rubber (Table 3, example 12).
As to claim 8, Table 3 exemplifies polyisoprene and butadiene rubber. Gardiner teaches that SBR and natural rubber may also be used (4:12-20).
As to claim 10, Gardiner does not discuss the recited improvement in the recited properties after vulcanizing. However, it is reasonable to conclude that the compositions of Gardiner are improved over the same compositions with at least one additive in existence.
As to claim 11, Gardiner suggests the use of the compound with silica, which is useful for tire applications (1:22-23). Moreover, Gardiner teaches use with silica, which Gardiner teaches is useful for improving traction (1:20-26), which suggests use in treads.
As to claim 12, Gardiner teaches compositions with silica, a filler (table 3).
As to claim 13, Gardiner teaches forming rubber compositions (see table 3) containing a compound formed from condensation, thus adding as additive a product of esterification of polyethylene glycol and tall oil fatty acid (8:59-9:30), and it is therefore reasonable to presume the resulting additive is an ester of rosin acid and alcohol. Gardiner teaches the rosin ester made from TORA, Actinol R type S tall oil rosin (table 2). While the acid value is not stated, Arlt, 3:65-70 evidences that this rosin has acid value of 172, which is within the recited range. The polyethylene glycol has a molecular weight of 400 and 2 hydroxyl groups, which is within the range. Gardiner teaches the use of this material for improving dispersibility of silica in the rubber, which Gardiner teaches is useful for wet traction (grip) (1:15-20).
As to claim 14, Gardiner does not discuss the recited improvement in the recited properties. However, it is reasonable to conclude that the compositions of Gardiner are improved over the same compositions with at least one additive in existence.
As to claim 16, Gardiner teaches blending the additive with silica and adding to rubber (9:30-45).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,777,013 (“Gardiner”) in view of US 2017/0190935 (“Schaapman”) as evidenced by US 3,497,490 (“Arlt”).
The discussion of Gardiner with respect to claim 1 is incorporated by reference.
As to claim 9, Gardiner teaches rosin acids, but does not discuss disproportionated rosin acids as the starting material. Schaapman teaches similar oligoesters formed from rosin ester and polyhydric alcohol, and teaches that rosin acids often include conjugated double bond acids that may cause oxidative instability (para. 0021), and that rosin acids may be pretreated by disproportionation prior to esterification (para. 0107), and exemplifies disproportionated rosins having the recited acid value (para. 0204). It would be obvious to a person of ordinary skill in the art to use disproportionated rosin as the starting material, as Schaapman suggests such treatment reduces oxidative instability.
Claims 17, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,777,013 (“Gardiner”) as evidenced by US 3,497,490 (“Arlt”).
The discussion of Gardiner with respect to claim 1 is incorporated by reference.
As to claims 17 and 18, Gardiner teaches curing the rubber composition (10:38-40). While Gardiner does not exemplify manufacturing tires, but teaches that the use of the additive is useful for dispersing silica (2:45-47), and teaches the utility of silica in tires (1:15-25). As such, using the additive to form a rubber composition and tire is an obvious modification suggested by Gardiner.
As to claim 20, Gardiner does not exemplify manufacturing tire treads, but teaches that the use of the additive is useful for dispersing silica (2:45-47), and teaches the utility of silica in tires (1:15-25), specifically for wet traction, which suggests utility in treads. As such, using the additive to form a rubber composition and tire treads is an obvious modification suggested by Gardiner.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,777,013 (“Gardiner”) as evidenced by US 3,497,490 (“Arlt”) as applied to claim 18, further in view of US 2012/0041128 (“Kosso”).
As to claim 19, Gardiner does not discuss the recited type for tires, but teaches that the use of the additive is useful for dispersing silica (2:45-47). Kosso teaches that high proportion of silica is used in summer tires (Kosso, para. 0128), and as such, the use of the additive for dispersing silica in summer tires is obvious given the utility of silica in summer tires taught by Kosso.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5,039,726 teaches rosin acid esters of alcohols, including alcohols in the recited weight range, as rubber additives.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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 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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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764
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