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 1 is objected to because of the following informalities: i) in (a) “to lipid-based biomass” should instead be –to a lipid-based biomass--; ii) in (b) “to prepare carbon black” should instead be –to obtain carbon black--; and in (c) “to raw rubber” should instead be –to a raw rubber--. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: “solvent” should instead be –solvents--. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: i) “in the (c)” should instead be –in (c)-- or –in step (c)--; ii) “and an” should instead be –or an--; and iii) “vulcanization accelerator” is recited twice. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: “carbon black” should instead be –the carbon black--. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-8 and 10 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 1, the recitation of step (a) of “adding a single or mixed solvent of alcohol and hydrocarbon-based solvents” is indefinite with respect to i) a single or mixed solvent of, and ii) alcohol and hydrocarbon-based solvents. Regarding i): it is not clear if the limitation intended to recite ‘adding a single solvent or a mixed solvent, selected from’ or if the claim intends to recite that any ‘single solvent may be selected or a mixed solvent comprising alcohol and hydrocarbons’. Regarding ii): it is not clear if the claim intended to recite ‘alcohols and hydrocarbons’ or ‘alcohol-based and hydrocarbon-based solvents’ or ‘alcohol solvents and hydrocarbon-based solvents’. It is further not clear if the ‘mixed’ solvent is intended to be limited to ‘alcohol and hydrocarbon’ or if ‘a mixture of alcohols’ or ‘a mixture of hydrocarbons’ satisfy the limitation of mixed solvent.
selected from alcohol and hydrocarbon-based solvents. Further the recitation of step (b) of “extracting the all-in-one” is unclear as extraction occurred in step (a). As such it is not clear if the claim intended to mean ‘separating the all-in-one activator’ from remaining residual solids and then carbonizing. This includes claims 2-8 and 10 as they depend from claim 1.
Regarding claim 8, it is not clear if the claim intends to be a recitation of intended use, a recitation of a property (i.e. is capable of replacing), or is meant as a positive step. It is further not clear if each recited component is partially or fully replace or just one must be selected. It is also not clear if both the carbon black and the activator (as in the combination of) is doing the replacing or if only one must be so utilized/capable of being utilized.
Claim Rejections - 35 USC § 112(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.
Claim 10 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. The recitation of claim 10 fails to further limit the subject matter of claim 1 which results in a tire compositions. 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 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bian (CN 106978072 A; using Clarivate Analytics machine translation for English language citations).
Bian teaches compositions for tire applications comprising a carbon material which is prepared by carbonizing a plant straw material (lipid based biomass, absent evidence to the contrary) in an inert gas atmosphere to obtain a bio-carbon which is then added to the composition (pg3-4; embodiment examples) as an absorbent, load carrier (pg4 (4))instant reinforcing filler).
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 101938993 B1; using Clarivate Analytics machine translation for English language citations, cited by Examiner on accompanying PTO-892) in view of Ramón-Gonçalves et al. (Scientific Reports, 2019, 9, 17706; cited on IDS of 3/26/2024).
Regarding claims 1-3 and 9, Kim teaches rubber compositions for forming tire treads comprising a rubber, a reinforcing filler, and oil extracted from microalgae (abstract; pg3) and which may further contain various additives including antioxidants and anti-aging agents (pg6, top; pg7,bottom). Kim teaches the reinforcing filler is a carbon black (pg4). Kim teaches the microalgae (instant lipid-based biomass) is subjected to solvent extraction to obtain an extracted oil containing fatty acids, etc. (pg5-6), wherein solvents used include hexanes, methanol, ethanol, petroleum ether, chloroform, and mixtures thereof (pg6, top).
Kim teaches solvent extracting biomass materials to obtain oils and fatty acids but does not specifically teach the solvent extraction to obtain polyphenols. However, Ramón-Gonçalves teaches similar solvent extraction of biomass materials, in this case spent coffee grounds (abstract). Ramón-Gonçalves teaches the solvent extraction, using alcohols, results in extraction of polyphenol compounds, well known to have antioxidant properties (abstract; pg1; pg2). Ramón-Gonçalves and Kim are analogous art and are combinable because they are concerned with the same field of endeavor, namely solvent extraction of biomass materials. At the time of filing a person having ordinary skill in the art would have either found it obvious that the alcohol-based solvent extraction undertaken by Kim would also result in the extraction of polyphenol materials as taught by Ramón-Gonçalves, or would have found it obvious to substitute/include the solvent extraction step of Kim using microalgae with the solvent extraction step of Ramón-Gonçalves using spent coffee grounds with and arrive at the instant invention with a reasonable expectation of success. Motivation further stemming from the desired inclusion by Kim of antioxidants and the teaching by Ramón-Gonçalves that extracted polyphenols have antioxidant properties.
Kim teaches the inclusion of reinforcing fillers including carbon black but does not specifically teach a method of carbonizing the residues remaining after solvent extraction and utilizing such as the carbon filler. However, Ramón-Gonçalves teaches that the spend coffee ground residual materials left after solvent extraction can be carbonized in a tubular furnace under nitrogen carrier (pg3) to form an activated carbon material thus resulting in reduced waste via simple, easy and ecofriendly means (pg2). At the time of filing a person having ordinary skill in the art would have either found it obvious to further carbonize the microalgae residue after solvent extraction and utilize such as the carbon filler material as Ramón-Gonçalves teaches doing so reduces waste and is ecofriendly, or would have found it obvious to include the carbonized spend coffee grounds of Ramón-Gonçalves as the carbon filler material of Kim and would have been motivated to do so as Ramón-Gonçalves teaches reduced waste by using carbonized biomass materials.
Regarding claims 4-6, Kim in view of Ramón-Gonçalves render obvious the method as set forth above. Kim further teaches the solvent extraction solvents include methanol and ethanol (instant C1-15 carbon alcohol) and Ramón-Gonçalves teaches ethanol (instant C1-C15 carbon alcohol)(claim 4). Kim further teaches the solvent extraction solvents include hexanes and chloroform (claim 5). The recitation of claim 6 is further limiting to the non-positively recited optional alternative ‘mixed solvent’ recitation and is deemed met by the Kim teaching of any one of hexanes, methanol, ethanol, petroleum ether and chloroform, where the optional alternative of a single solvent is selected.
Regarding claim 7, Kim in view of Ramón-Gonçalves render obvious the method as set forth above. Kim further teaches, as noted above, the further inclusion of various additives including vulcanizing agents, vulcanizing accelerators, vulcanization accelerator aids, anti-aging agents (pg6, top), and antioxidants and processing aids (pg7, bottom).
Regarding claim 8, Kim in view of Ramón-Gonçalves render obvious the method as set forth above. Ramón-Gonçalves renders obvious the full or partial substitution of the fillers and ant-aging agent (i.e. antioxidants) of Kim in the manner noted in the rejection of claim 1 above.
Additionally, the recitation that the basic formulation containing the combination of the carbon black and the ‘all-in-one activator’ is to be used to fully or partially replace reinforcing fillers, processing oils, vulcanization accelerators or anti-aging agents does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982)). Furthermore, the recitation of a new intended use for an old product does not make a claim(s) to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
Regarding claim 10, Kim in view of Ramón-Gonçalves render obvious the method as set forth above. As noted Kim teaches the compositions are used to form tires, preferably tire treads (pg8, top).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767
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