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 § 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.
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 1 and 15 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 the limitation "the polymerization" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the tire of claim 11" in the beginning of the first line in the claim. There is insufficient antecedent basis for this limitation in the claim when claim 11 teaches “The resin of claim 1”.
Claims 2 is 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. Claim 2 teaches more than end of life tires and therefor it is an improper dependency of claims 2 a. 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.
Claim Interpretation
Examiner interprets the term “whole tires” in claim 3 as “whole tires or pieces of the same” as stated in paragraph 11 of the Specifications.
Claim Rejections - 35 USC § 102
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 1-5, 10-12, and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2024/0018332, Sutter et al.
Sutter et al. teach a method of recycling rubber articles, see paragraph 1. Sutter et al. disclose that the rubber chips are obtained from articles at the end of their life and recycle them to produce raw materials, see paragraph 6. Rubber chips undergo pyrolysis to yield pyrolysis oil which contains olefinic monomers, see paragraph 9. The Tg range of the resins is preferred to be from 20 to 140 °C, (meets Applicants’ range of claim 1, -30 to 140 °C) and a preferred molecular weight less than or equal to 3,000 g/mol, or more preferably below 1,500 g/mol, see paragraph 122 (meets Applicants’ range of claim 1, 100 and 5,000 Da). Sutter et al. anticipates the claim limitation of claim 1 as the ranges fall within the claimed ranges, see MPEP 2131.03.
Sutter et al. does not teach the softening point of the resin derived from end-of-life rubber materials such as tires. The monomers contained in the oil is taught to be C4-C12 olefinic monomers, see paragraph 10, which is also disclosed by the Applicant in the Specifications, see paragraph 21. The resin is made by polymerizing the hydrocarbon mixture in the oil, see paragraph 11, and paragraph 25 of the specifications. The resin is derived from a similar process, containing similar monomeric and oligomeric units, and meets the claimed Tg and molecular weight ranges of claim 1.
Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art. A chemical composition and its properties are inseparable. Please see MPEP 2112 for further explanation.
As for claim 2, Sutter et al. teaches that the rubber chips undergo pyrolysis at temperatures 300 to 900 °C to produce the pyrolysis oil containing olefinic monomers, see paragraph 9.
As for claim 3, Sutter et al. teach that the rubber is obtained from tire treads, see paragraph 51.
As for claim 4, all modern tires are typically made of vulcanized/cured rubber. Sutter et al. teach that the rubber is obtained from tire treads, see paragraph 51.
As for claim 5, Sutter et al. teach the resin synthesis step oligomerizes the olefinic monomers from the intermediate fraction, see paragraph 89. The intermediate fraction comes from the separation of the pyrolysis oil of the rubber chips, see paragraphs 9 and 10.
As for claim 10, Sutter et al. teach the resin recovered in the form of a yellow/orange solid, paragraph 144.
Regarding claims 11 and 12: Sutter et al. teach that the recycled rubber chips from articles at the end of their life and produce raw materials and resins, which can be used in the manufacturing of new tires, paragraph 6. Sutter et al. further teach the rubber chips come from tire treads, see paragraph 16, and tire waste, see paragraph 5.
As for claim 14, Sutter et al. teaches the resin noted in claim 1 above. It also teaches recycle rubber chips from rubber “at the end of life” to produce raw materials such as resin that can be used in manufacturing of new tires, see paragraph 6. Sutter et al. disclose that the rubber comprises of diene elastomer, see paragraph 12.
As for claim 15, Sutter et al. teach to recycle rubber chips from rubber “at the end of life” to produce raw materials such as resin that can be used in manufacturing of new tires, see paragraph 6. The rubber chips undergo pyrolysis at temperatures of 300-900 °C, to produce pyrolysis oil containing monomers, see paragraph 9.
Regarding claims 16 and 18: Sutter et al. teach resin synthesis, where the olefinic monomers in the intermediate fraction of the pyrolysis oil is oligomerized/polymerized, forming new oligomeric materials from the recycled resin, see paragraphs 88 and 89.
As for claim 17, Sutter et al. teach the separation of the pyrolysis oil can be carried out by any means known a person skilled in the art that makes it possible to increase the concentration of olefinic monomers, and limiting the content of heteroatoms, see paragraph 75. The process can be refined to utilize the light aromatic hydrocarbons if the extract has a low content of compounds on interest for the resin synthesis step, see paragraph 81. Claim Rejections - 35 USC § 103
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 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.
Claims 6-9, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2024/0018332, Sutter et al. as applied to claims 1 and 16, above, and further in view of EP 4,067,114, Nakatani et al.
Regarding claims 6, 7, and 19: Sutter et al. teach a method of recycling rubber to obtain raw materials pertaining to claim 1. Sutter et al. also teach the Tg and molecular weights of the desired resins derived from pyrolysis oil of claim 1.
Sutter et al. does not teach the resin formed from the oil monomers copolymerized with other hydrocarbon cuts.
Nakatani et al. teach a rubber composition for tire tread and tire having improved balance performance of abrasion resistance and chipping resistant, see the abstract. The composition disclosed also includes recycled rubber used comes from car tires, see paragraph 73. The composition further contains resins such as terpene resin, aliphatic-based petroleum resin (e.g., a C5-based petroleum resin), a terpene resin, a rosin, and other similar resins, paragraph 89. Nakatani et al. further teaches that the C5-C9 petroleum resin is obtained by copolymerizing the fractions, see paragraph 140.
It would have been obvious for one with ordinary skill in the art at the effective date of filing to have been obvious to combine the resin derived from used tires taught by Sutter et al. and the teachings of Nakatani et al. of copolymerizing recycled tire resin with other hydrocarbon because Nakatani et al. discloses a tire composition having improved balance performance or abrasion resistance and chipping resistance by copolymerizing the resin with other resins and hydrocarbon cuts. DyStar Textifarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). See MPEP 2143 (I) (G). .
Regarding claim 8, Sutter et al. teach a method of recycling rubber to obtain raw materials pertaining to claim 1. Sutter et al. also teach the Tg and molecular weights of the desired resins derived from pyrolysis oil of claim 1. The pyrolysis oil contains C4-C12 olefinic monomer mixture, see paragraphs 9 and 10.
Sutter et al. does not teach the resin can be hydrogenized or hydrogenated.
Nakatani et al. teach a rubber composition for tire tread and tire having improved balance performance of abrasion resistance and chipping resistant, see the abstract. The composition disclosed also includes recycled rubber used comes from car tires, see paragraph 73. The composition further contains resins such as terpene resin, aliphatic-based petroleum resin (e.g., a C5-based petroleum resin), a terpene resin, a rosin, and other similar resins, paragraph 89. Nakatani et al. further disclose that the C5-C9 based petroleum resin can be hydrogenated, see paragraph 57.
It would have been obvious for one with ordinary skill in the art at the effective date of filing to have been obvious to combine the teaching of Sutter et al. of the recycled resin with the teachings of Nakatani et al. that the C5-based petroleum oil can be hydrogenated because Nakatani et al. discloses a tire composition having improved balance performance or abrasion resistance and chipping resistance by copolymerizing the resin with other resins and hydrocarbon cuts. DyStar Textifarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). See MPEP 2143 (I) (G).
Regarding claim 9: Sutter et al. teach a method of recycling rubber to obtain raw materials pertaining to claim 1. Sutter et al. also teach the Tg and molecular weights of the desired resins derived from pyrolysis oil of claim 1. The pyrolysis oil contains C4-C12 olefinic monomer mixture, see paragraphs 9 and 10.
Sutter et al. does not teach the resin formed from the oil monomers is liquid.
Nakatani et al. teach a rubber composition for tire tread and tire having improved balance performance of abrasion resistance and chipping resistant, see the abstract. The composition disclosed also includes recycled rubber used comes from car tires, see paragraph 73. The composition further contains resins such as terpene resin, aliphatic-based petroleum resin (e.g., a C5-based petroleum resin), a terpene resin, a rosin, and other similar resins, paragraph 89.
It would have been obvious for one with ordinary skill in the art at the effective date of filing to have been obvious to combine the teaching of Sutter et al. of a resin derived from recycled tires with teachings of Nakatani et al. that the resins used in tire formulations can be C5-based petroleum resin which can be either solid or liquid because Nakatani et al. discloses a tire composition having improved balance performance or abrasion resistance and chipping resistance by copolymerizing the resin with other resins and hydrocarbon cuts. DyStar Textifarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). See MPEP 2143 (I) (G).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 2024/0018332, Sutter et al. as applied to claim 1 above, and further in view of US 6,121,392, Thompson et al.
Sutter et al. teach a method of recycling rubber to obtain raw materials pertaining to claim 1. Sutter et al. also teach the Tg and molecular weights of the desired resins derived from pyrolysis oil of claim 1. The intermediate fraction purified from the pyrolysis oil contains compounds of the terpene family, such as a-pinene, see paragraph 73. Further, Sutter et al. teach that in the synthesis of the resin, Lewis acid catalysts are preferred, paragraph 92. The Lewis acids are selected from aluminum halide family, such as diethyl aluminum chloride, and preferably has a co-ligand with a Lewis base character, see paragraph 92.
Sutter et al. does not teach that the resin can be incorporated in an adhesive.
Thompson et al. teaches of a b-pinene based polyterpene resin which is used in modern adhesives, see the abstract. The polyterpene resin is synthesized with a Lewis acid catalyst, see column 6 lines 10-19, and aluminum chloride is the preferred Lewis acid, column 2, lines 34-37. The molecular weights are in all around 1000 Da, see Table columns 5 and 6.
It would be obvious to combine the teachings of Sutter et al. and Thompson et al. because the adhesive composition requires nothing more than the resin of claim 1. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VLADIMIR VLADIMIROVIC ZOTOV whose telephone number is (571)272-0627. The examiner can normally be reached 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi R Kelley can be reached at (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.V.Z./ Examiner, Art Unit 1765
/HEIDI R KELLEY/ Supervisory Patent Examiner, Art Unit 1765
