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 .
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.
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 7, 12 and 17 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.
Regarding claim 7: The phrase "preferably an oligosaccharide comprising from two to 10 monosaccharides" renders the claim indefinite because it is unclear whether the limitation is a required part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 12: The phrase "preferably a tread or a ground-contacting tire component" renders the claim indefinite because it is unclear whether the limitation is a required part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 17: Claim 17 depends from claim 6 and states that the polyol is a monosaccharide; however, the claim also states that the polyol is one of an oligosaccharide and a polysaccharide. See claimed conditions (ii) and (iii). Note that there is no conjunction between conditions (ii) and (iii), it is therefore unclear whether the claim is intended to require that the compounds of all three conditions (i) to (iii) are present at once or if it is intended to require only one of conditions (i) to (iii) be met.
Furthermore, not that claim 17 states that polyol may be an oligosaccharide or polysaccharide of formula Cx(H2O)y wherein x and y are ≥ 1. The terms “oligosaccharide” and “polysaccharide” refer to compounds having structures comprising more than 1 saccharide unit, with a monosaccharide typically comprising 3 to 7 carbon atoms. The scope of claim 17 is indefinite, as it is unclear what structure(s) would qualify as either being an oligosaccharide or a polysaccharide while having corresponding to the formula CH2O as allowed by the instant claim when x and y are 1.
Claims 15-17 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.
Regarding claim 15: Claim 15 depends from claim 13, and states that the silylated material is a product of silylation of a naturally occurring polyol, a pentaerythritol, a polyvinyl alcohol-based polymer, or ester derived therefrom. Note, however, that the process recited in parent claim 13 states that the silylated material is made by first reacting a polyol or is derivative with a fatty acid to form an esterified material, followed by silylation of said esterified material; see claimed steps (A) to (C). The parent claim therefore requires that the silylated material made via silylating an esterified material derived in part from a fatty acid. Claim 15 therefore impermissibly broadens the scope of the parent claim to include processes wherein the silylated material is made by a different process than that required by steps (A) to (C).
Regarding claims 16-17: Claim 16 depends from claim 13 and states that the silylated material is a product of at least one of a condensation and silylation reaction starting with the polyol. Note that the phrase “at least one” only requires one of either a condensation reaction and a silylation reaction to occur, whereas the parent claim specifically requires both a condensation reaction and a silylation reaction; see steps (A) to (C) of the process of claim 13. Claim 16 therefore impermissibly broadens the scope of the parent claim to read on processes wherein the silylated material is obtained via a different process than that required by the parent claim.
Claim 17 depends from claim 16 and does not correct this deficiency. Claim 17 is therefore rejected per the same rationale as claim 16.
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
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.
Claim(s) 1, 2, 4-7 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu et al, published in eXPRESS Polymer Letters vol. 6 (2012).
The examiner notes that Helmer et al, CN 102958989, is cited as evidence that Xu inherently meets a claimed structural limitation. A machine translation of Helmer was used to prepare this Action.
Samples M-2 to M-6 (page 16: Table 1) disclose compositions comprising 100 parts natural rubber, corresponding to the claimed elastomer (for claim 1), and a modified nanocrystalline cellulose.
Regarding the claimed silylated material: Xu teaches that the modified crystalline nanocellulose is obtained by modifying the surface of nanocellulose, corresponding to the claimed polyol which is a naturally occurring polyol (for claim 4) which is a polysaccharide (for claims 5, 6), with one of 3-aminopropyltriethoxysilane KH550; note that this is a silane compound (abstract; page 15: section 2.3). The prior art modified nanocrystalline cellulose therefore corresponds to the claimed silylated material (for claim 1).
Regarding claim 2: The prior art compositions M2-M6 further comprise silica, corresponding to the claimed filler (see Table 1).
Regarding claim 7: As noted above, the prior art composition comprises a silane-functionalized cellulose, corresponding to the claimed polysaccharide. Note that Helmer teaches that it is known in the art that cellulose is a large polysaccharide typically having a degree of polymerization of 700 to 2000 (see Helmer page 2: lines 8-11). As the repeating unit of cellulose has the formula C6H10O5, a degree of polymerization of 700 to 2000 would correspond to the claimed general formula Cx(H2O)y with x being 4200 to 12000 and y being 3500 to 10000; note that these values are entirely encompassed by the claimed ranges. It is therefore reasonably expected that the cellulose used in Xu corresponds to the claimed general formula.
Regarding claim 9: The prior art composition is not reported to contain a processing oil; see the footnote of Table 1.
Regarding claim 10:The prior art modified nanocrystalline cellulose is used as a filler to partially replace silica (abstract).
Regarding claim 11: The prior art composition is sulfur-cured; see the footnote of Table 1 indicating the inclusion of sulfur the prior art composition.
Regarding claim 12: Xu envisions the use of the prior art composition in the production of tire treads (page 20: right column, first paragraph).
Claim(s) 1, 4-7, and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Singh et al, published in Polymers for Advanced Technologies vol. 31 (2020).
The examiner notes that Helmer et al, CN 102958989, is cited as evidence that Xu inherently meets a claimed structural limitation
Singh discloses the production of rubber composites comprising 100 parts natural rubber, corresponding to the claimed elastomer (A) (for claim 1), and modified crystalline nanocellulose. See page 3061, Table 1: Samples NR-MCNC-APTES, NR-MCNC-TESPT, and NR-MCNC-MPTMS.
Regarding the claimed silylated material: Singh teaches that the modified crystalline nanocellulose is obtained by modifying the surface of nanocellulose, corresponding to the claimed polyol which is a naturally occurring polyol (for claim 4) which is a polysaccharide (for claims 5, 6), with one of 3-aminopropyltriethoxysilane (APTES), bis-(3-triethoxysilylpropyl)tetrasulfide (TESPT), and 3-mercaptopropyltrimethoxysilane (MPTPMS) (abstract; page 3061: section 2.3; page 3063:Scheme 1); note that these are all silane compounds. The prior art modified nanocrystalline cellulose therefore corresponds to the claimed silylated material (for claim 1).
Regarding claim 7: As noted above, the prior art composition comprises a silane-functionalized cellulose, corresponding to the claimed polysaccharide. As discussed earlier in this Action, Helmer teaches that it is known in the art that cellulose is a large polysaccharide typically having a degree of polymerization of 700 to 2000, corresponding to the claimed general formula Cx(H2O)y with x being 4200 to 12000 and y being 3500 to 10000. It is therefore reasonably expected that the cellulose used in Singh corresponds to the claimed general formula.
Regarding claim 9: The prior art composition is not reported to comprise a processing oil or a silica coupler (see page 3061: Table 1).
Regarding claim 10: Singh discloses that the modified cellulose is a reinforcing filler (abstract).
Regarding claim 11: The prior art composition is cured with sulfur (page 3061: section 2.4, Table 1).
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.
Claim(s) 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki et al, US2016/0272792, in view of Singh et al, published in Polymers for Advanced Technologies vol. 31 (2020).
The examiner notes that Helmer et al, CN 102958989, is cited as evidence that Xu inherently meets a claimed structural limitation
Miyazaki discloses a rubber composition (for claim 1)(abstract) for use in the production of tire treads (for claim12) (¶0075), wherein said composition is made by mixing (¶0072), corresponding to claimed step (D) (for claim 13), a rubber component, a chemically modified cellulose, and carbon black, corresponding to the claimed reinforcing filler (for claim 2) (¶0011). Said rubber component may be natural rubber (¶0021), corresponding to the claimed elastomer (for claims 1, 13).
Said chemically modified cellulose is a cellulose (for claims 6, 17), corresponding to the claimed naturally occurring polyol which is a polysaccharide (for claims 4, 5, 15, 16), wherein a portion of the hydroxyl groups are esterified via reaction with an unsaturated carboxylic acid such as palmitoleic acid (¶0030, 0036, 0038). The chemically modified cellulose of Miyazaki therefore corresponds to the claimed polyol derivative which is an esterified product of a polymer (i.e., cellulose) containing 2 or more OH groups (for claim 8). Further note that this corresponds to claimed process steps (A) and (B) (for claim 13).
Regarding claim 7: As noted above, the prior art composition comprises a silane-functionalized cellulose, corresponding to the claimed polysaccharide. As discussed earlier in this Action, Helmer teaches that it is known in the art that cellulose is a large polysaccharide typically having a degree of polymerization of 700 to 2000, corresponding to the claimed general formula Cx(H2O)y with x being 4200 to 12000 and y being 3500 to 10000. It is therefore reasonably expected that the cellulose used in Singh corresponds to the claimed general formula.
Regarding claims 9, 14: It has been held that a reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component; see also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP § 2123(I)). Note that Miyazaki teaches that a silane coupling agent is an optional component of the prior art composition (¶0071); the prior art therefore teaches a composition that is free of silane coupling agents.
Regarding claim 10: The prior art chemically modified cellulose acts as a reinforcing agent-i.e., a filler (¶0018).
Regarding claim 11: The prior art composition is sulfur curable (¶0108).
Miyazaki is silent regarding silanization of the prior art chemically modified cellulose.
As discussed earlier in this Action, Singh discloses that it was known in the art to modify the surface of cellulose by reacting it with a silane compound such as 3-aminopropyltriethoxysilane (abstract; page 3061: section 2.3). Singh discloses that silanization of the cellulose surface strengthens the rubber/cellulose interaction at the interface, resulting in improved dispersion of the cellulose throughout the rubber and improving mechanical properties such as tensile properties (abstract; page 3064: section 4.3; page 3068: Section 5). Note that medication with aminopropyltriethoxysilane will introduce a group containing the structure (CH2)3Si(OCH2CH3) (for claim 18).
Miyazaki and Singh are both directed towards the functionalization of cellulose for use as an additive in rubber. Note that Miyazaki teaches that the chemically modified cellulose of US2016/0272792 may comprise a portion of hydroxyl groups that are modified with different functionality than that obtained by the esterification reaction discussed above (¶0042). As noted above, Singh teaches that it was known in the art to modify cellulose via silanization to improve its dispersibility within rubber and improve the mechanical properties of the final composition. Given that the chemically modified cellulose of Miyazaki may comprise additional modifications , it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Miyazaki by reacting the chemically modified cellulose with a silane such as 3-aminopropyltriethoxysilane, with the reasonable expectation of obtaining a composition having improved dispersibility of the cellulose within the rubber matrix and improved mechanical properties such as tensile properties (for claim 1).
Note that the product of said modification would correspond to claimed step (C) (for claim 13), with the silylated material corresponding to the product obtained by functionalizing an esterified product (i.e., a polyol derivative) with a silane (for claims 1, 3, 8, 16).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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, Heidi Riviere 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights