DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/EP2022/073655 filed 8/25/2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. EP 21193500.2 filed 8/27/2021, which papers have been placed of record in the file.
Claims 1-20 are pending.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract of the disclosure is objected to under 37 CFR 1.72(b) for exceeding 150 words in length. The abstract should be at most 150 words in length. Applicant is reminded not to add content which may be considered new matter. See MPEP § 608.01(b)(C), second paragraph, and see 37 CFR 1.72(b). Appropriate correction is required.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
Claim 1 recites 10.0000 and it appears Applicant intended to recite 10 since integers are whole numbers.
Appropriate correction is required.
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 1-20 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 variable n is formula (1) and later also recites the same variable of valence corresponding to n. However, the valence and n values in formula (1) can be the same or different. For instance, stearic acid has a valence of 1 and also a value of n is 1. However, when n is 10 in formula (1), the valence cannot be 10 since carbon atoms have a valency of 4. Therefore, it would not be clear if n in formula (1) is intended to be the same or different value for the valency corresponding to n.
Claims 2-20 are subsumed by this rejection because of their dependence.
Claim 1 recites the formula (1) as Ry-(Acg)n, wherein n is 1 to 10.000. It would not be clear what species are encompassed when n is greater than 1. For instance, Acg is an acid group selected from -COOH, -SO3H, -OSO3H, -PO3H2, -OPO3H2 and salts thereof. In other words, it is not clear how n can be anything other than 1.
Claims 2-20 are subsumed by this rejection because of their dependence.
Claim 3 recites the limitation "Rx" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 7, 9 recites the limitation "A" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites n represents an integer of 1 to 1000. Claim 1 recites the formula (1) as Ry-(Acg)n, wherein n is 1 to 10.000. It would not be clear what species are encompassed when n is greater than 1. For instance, Acg is an acid group selected from -COOH, -SO3H, -OSO3H, -PO3H2, -OPO3H2 and salts thereof. In other words, it is not clear how n can be anything other than 1.
Appropriate correction and/or clarification is required.
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.
Claim 9 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 9 recites n is an integer of 1 to 1,000. However, claim 1 recites n is an integer from 1 to 10. Therefore, claim 9 does not further limit claim 1.
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 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 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Steinhauser et al. (US 2016/0075809).
Regarding claim 1: Steinhauser is directed to a polymer composition comprising
(i) at least one first polymer wherein the first polymer is a functionalized diene polymer comprising at least one functional unit having at least one carboxylic acid group or salt thereof, wherein the functional unit is selected from terminal groups, side groups and combinations thereof
(ii) at least one organic acid including a carboxyl or carboxylate group of stearic acid is disclosed in the working examples (Table 2)
Wherein the composition can contain 100% of a first polymer.
3-350 parts of an additive per 100 parts rubber including an extender oil is disclosed [0077]-[0078], although 0 parts oil extender is well within the scope of Steinhauser.
The diene polymer is a copolymer of butadiene [0022]-[0023].
Example 3 comprises the reaction of a butadiene copolymer with 2,2-dimethyl-1-oxa-4-thia-2-silacyclohexan-6-one which proceeds according the Scheme 1
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Stearic acid is added to the composition in the working examples (Table 2 Steinhauser) (equivalent to formula (1) wherein Acg is -COOH and Ry is an aliphatic hydrocarbon with a valency of 1).
Regarding claim 2: The functional unit of the first polymer corresponds to
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(equivalent to -COOX represents a carboxylic acid group and Rx is a spacer group connecting the COOX group and the polymer, wherein the spacer group is a silane or siloxane and may contain heteroatoms of O, N, S or Si).
Regarding claim 3: The functional unit of the first polymer corresponds to
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(equivalent to formula 2A wherein R1-R4 are H or residue having 1 to 20 carbon atoms, A is a divalent organic group having 1-20 carbon atoms).
Regarding claim 4: A vinyl butadiene copolymer is disclosed wherein the vinylaromatic comonomers may, be styrene, o-, m- and/or p-methylstyrene, p-tert-butylstyrene, α-methylstyrene, vinylnaphthalene, divinylbenizene, trivinylbenzene and/or divinylnaphthalene ([0024]).
Regarding claim 5: The composition can comprise 100% by weight of the first polybutadiene copolymer.
Regarding claim 6: The first polymer is not oil extended.
Regarding claim 7: A represent a carboxylic acid (-COOH) group (abstract Steinhauser).
Regarding claim 8: The formula Ry is a saturated aliphatic hydrocarbon residue (abstract).
Regarding claim 9: The formula represents a carboxylic acid group and n is 1.
Regarding claim 10: Stearic acid comprises 18 carbon atoms.
Regarding claim 11: The working examples comprise 1 wt% stearic acid.
Regarding claim 12: Additional rubbers of butadiene are disclosed ([0059]-[0060], although a composition comprising no additional rubber is well within the scope of Steinhauser.
Regarding claim 13: The rubber compositions comprising the styrene copolymer and additives were produced in a kneader ([0091]) and vulcanized at 160 ˚C ([0092]) (equivalent to adding in the presence of solvent or solid form).
Regarding claim 14: The composition further comprises at least one filler and at least one curing agent capable of curing the at least first polymer.
Regarding claim 15: An article of a tire is disclosed.
Regarding claims 16-17: The value of n is 1.
Regarding claims 18-19: The working examples comprise 1 wt% stearic acid, although amounts slightly greater than 1 wt%, i.e. 1.1 wt% are well within the scope of Steinhauser and well within the skill level of one skilled in the art.
Regarding claim 20: An article of a tire is disclosed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee 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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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