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
Claim 12 is objected to because of the following informalities:
Claim 12 recites “The rubber mixture according to any of claim 7…” which appears to be a typographical error.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 19 and 22 are rejected under 35 U.S.C. §101 because the claimed recitation of a use, without setting forth any steps involved in the process results in an improper definition of a process under 35 U.S.C. § 100(b); i.e., the claim language results in a claim which is not a proper process claim under 35 U.S.C. § 101. See MPEP 2173.05(q)
Claims 19 and 22 recite “use of…” In this case, it is unclear if “use of” is an actual step or not. See MPEP 2173.05(q).
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 10, 13, 18, 19, 21 and 22, 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 10 recites in line 5-6 “other metal oxides, such as…”and “synthetic silicates, such as…” and “alkaline earth metal silicates such as…” The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 13 recites in line 4-5 “as well as sulfur donors such as…”and the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 18 recites “The process for producing rubber vulcanizates by vulcanization of a rubber mixture according to claim 7…” However, it is unclear if the claim recites an actual step. See MPEP 2173.05(q). It appears that the claim should be amended to read “The process for producing rubber vulcanizates of a rubber mixture according to claim 7, comprising vulcanizing at a temperature…”
Claims 19 and 22 recite “use of…” In this case, it is unclear if “use of” is an actual step or not. See MPEP 2173.05(q).
Regarding claim 21, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9-15 and 20, are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 9-14 recite “The rubber mixture according to claim 7, comprising…” and Claim 15, recites “wherein the rubber mixture has a content…” However, claim 7 recites a mixture with a rubber, a filler, and a compound of formula (I). It appears that claims 9-15 are replacing the rubber mixture with a different mixture and/or component and thus, fails to further limit. It is suggested to amend the claims to “wherein the at least one rubber comprises…” for claim 9, “wherein the at least one filler comprises…” for claims 10 and 11, “further comprising…” for claims 12-14, and/or “wherein the rubber mixture further has a content…” for claim 15.
Claim 20, recites “Vulcanizates obtainable by vulcanization of a rubber mixture according to claim 7.” The term “obtainable” appears to make using the rubber mixture of claim 7 optional and thus, fails to further limit. The claim should be amended to “A vulcanizate obtained by vulcanization of a rubber mixture according to claim 7.”
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1-8, 16 and 17, are allowed.
Claims 9-15, and 18-22, would be allowable if rewritten or amended to overcome the above rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and/or under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The first closest prior art is US 2004/0132880 A1 to Durel et al. (hereinafter Durel). Durel teaches the formula (I)
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, wherein x is 3-5, R1 is an alkyl group of 1-4 carbons, R2 and R3 are alkyl groups with 1-6 carbons (para 27-32).
Durel does not teach the claimed formula (I).
The second closest prior art is WO 2018/206787 A1 in which US 2020/0181382 A1 to Weidenhaupt et al. is used as the US equivalent. (hereinafter Weidenhaupt). Weidenhaupt teaches the formula
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, wherein R2 and R7 are methyl or ethyl groups, x=4, R1, R3, R6 and R8 are methyl or ethyl groups, R4 and R4 are ethyl or methyl groups. (para 8-12).
Weidenhaupt does not teach the claimed formula (I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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