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
The claim set is objected to because of the following informalities:
The claim set is headed with “WO2023/066688” and “PCT/EP2022/077957,” however the instant application is a United States application and therefore these document numbers misidentify the claims as part of a WIPO application.
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.
Claim 13 is 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 13, the claim recites the “use” of the rubber mixtures of claim 8 but does not set forth any steps involved in the process of using. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) (see MPEP 2173.05(q)).
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Mougin (WO 2015/162053 A1, hereinafter referring to the attached ESPACENET translation) in view of Maesaka (US 2012/0252915 A1) and Kim (KR 2017/0049245 A, hereinafter referring to the attached ESPACENET translation).
Regarding claims 1-5, Mougin teaches a reinforced diene elastomer composition intended for the manufacture of tires and tire products ([0003]). Coupling agents are included in the composition to improve the interactivity between the reinforcing agent and the elastomer ([0006]). Furthermore, Mougin teaches an inventive composition comprising a mixture of coupling agents 2-phenyl-N-(3-(triethoxysilyl)propyl) diazenecarboxamide (compound (I-a)) and bis 3-triethoxysilylpropyl tetrasulfide (TESPT) (Inventive composition C5, [0205]). This inventive composition meets the limitations of claim 1 requiring a compound of “formula I” and “formula II” because Compound (I-a) is identical to “formula I” wherein all “R1” are C2 alkoxy (ethoxy) groups, “a” is zero, “R3” is an unbranched divalent C3 hydrocarbon (propyl) group, and R4 is an unsubstituted aryl (phenyl) group, and because TESPT is identical to “formula II” wherein all “R1” are C2 alkoxy (ethoxy) groups, y is 3, both of “R3” are unbranched divalent C3 hydrocarbon (propyl) groups, and “x” is 4.
Mougin is silent with regard to the incorporation of an azodicarbonamide compound of “formula III.” Mougin does however specifically state that improved grip on snowy surfaces is important for reducing fuel consumption ([0005]).
In the same field of endeavor, Maesaka teaches diene-based rubber compositions containing reinforcing fillers (Abstract) and teaches that blowing agents are useful for improving grip performance of a tire on ice and that blowing agents may include azo compounds ([0007]).
Also in the same field of endeavor, Kim teaches a thermal decomposition compound and a method of generating gas using the same ([0001]), wherein said compound is specifically indicated as a foaming agent (e.g., [0003], [0006]). Kim teaches that the inventive blowing agent is useful for external automotive products ([0106]) and comes with the added benefit of not generating harmful substances such as ammonia or formamide during decomposition ([0025]). Kim likewise teaches that rubbers are suitable resins to be foamed (e.g., [0105]). It is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (see MPEP 2144.07), and Mougin contemplates the improvement of tire grip as an important characteristic for rubber compositions used in tires. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize the blowing agent of Kim within the formulation of Mougin, as Mougin contemplates the importance of tire grip in winter conditions, Maesaka teaches that blowing agents are useful for that purpose, and Kim teaches a blowing agent suitable for automotive products and rubber.
The blowing agent of Kim includes compounds having the following chemical structure:
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Chemical Formula 1 of Kim (KR 20170049245)
Wherein inter alia R1 and R2 may be linear alkyl groups having 1 to 20 carbon atoms without heteroatoms, each R3 may be hydrogen, and each X1 may be oxygen ([0021]) and more specifically inter alia R1 and R2 may be an alkyl group having 1 to 6 carbon atoms ([0023]). This component reads on the claimed component having the structure of “formula III” because it is identical to “formula III” wherein “R5” are, inter alia, unbranched saturated aliphatic C1-C20 hydrocarbon groups.
Regarding the claimed compositional limitations of components having structures of “formula I” – “formula III,” as described Mougin teaches an example inventive composition containing both components (I-a) and TESPT, and generally discloses that the coupling agent within the inventive formulation should be between 2 and 15 percent ([0154]). The exemplified inventive composition is specifically indicated as comprising 50% of each of these compounds within the coupling agent portion of the composition (composition C5, [0205]), and the composition is indicated as containing 3.6 parts of the coupling agent per 100 parts of rubber ([0227], Table 3, composition C5). The inventive composition therefore contains 1.8 parts each of compound I-a and TESPT.
Kim teaches that the inventive foaming agents may be used in amounts ranging from 1 to 40 parts by weight per 100 parts by weight of the resin to be foamed ([0104]). It therefore would have been obvious to include between 1 and 40 parts by weight of said foaming agent within the inventive composition of Mougin within Table 3, recited above, as said composition includes 100 parts of rubber. Furthermore, Mougin contemplates forming the inventive composition by mixing the ingredients ([0161]). The mixed composition of Mougin as modified by Kim (and Maesaka) therefore includes 1.8 parts each of compound I-a and TESPT per 100 parts of rubber, and between 1 and 40 parts of the blowing agent of Kim per 100 parts of rubber, totaling between 4.6 and 43.6 total parts by weight of these ingredients per 100 parts of rubber. These amounts correspond to ranges of between about 4.1 and 39.1% each of compound I-a and TESPT, and a range of between about 60.9 and 95.9 % of the blowing agent relative to the sum of all three components. In each case, these ranges overlap/fall within their respectively claimed ranges, establishing prima facie cases of obviousness.
The specific compounds I-a and TESPT of Mougin read on the claimed listings within claims 2 and 3 because they are identical to “(CH3CH2O-)3Si-(CH2)3-NH-CO-N=N-phenyl” and “[(EtO)3Si(CH2)3]2S4,” respectively. Furthermore, as described above, the preferred blowing agent of Kim includes the above-drawn structure wherein each R3 may be hydrogen, and each X1 may be oxygen ([0021]) and R1 and R2 may each be an alkyl group having 1 to 6 carbon atoms ([0023]). This reads specifically on the first structure within the claimed list which contains n-hexyl groups (alkyl groups having 6 carbon atoms). Kim additionally contemplates structures wherein R1 and R2 may each be a linear or branched alkyl group having 1 to 10 carbon atoms ([0022]), which encompasses all of the claimed structures within claim 4.
The structures taught by Mougin in view of Kim (and Maesaka) as applied above likewise meet all of the limitations of claim 5, as the above-described components meet the restricted structural requirements.
Regarding claim 6, as described above, Mougin in view of Kim (and Maesaka) meets all of the compositional limitations within the claimed process. Furthermore, as described above, Mougin describes the formation of the inventive composition via mixing ([0161]), which reads on the claimed process step comprising mixing the claimed ingredients.
Regarding claim 7, Mougin in view of Kim (and Maesaka) are silent with regard to adding the azocarbonyl-functionalized silane and silane components during the formation of the azodicarbonamide component. Nevertheless, prima facie selection of any order of mixing is obvious (see MPEP 2144.04.IV.C.). It therefore would have been obvious to one having ordinary skill in the art to combine the azocarbonyl-functionalized silane with the silane component during formation of the azodicarbonamide compound, followed by subsequent addition of the successfully synthesized azodicarbonamide. Importantly, claim 7 as drafted does not require that the azocarbonyl-functionalized silane and silane are added to any reaction vessel where the azodicarbonamide is being produced, but merely indicates that said components are added during the synthesis of the azodicarbonamide (i.e., at the same time). The claim is therefore open to processes in which the first two components are mixed together during the separate production of the third, followed by addition of the third to the mixture of the first two. This is consistent with the instant Specification, which merely states that the blending of the azocarbonyl-functionalized silane and silane may be carried out during the production of the azodicarbonamide (see instant Specification at p. 7, lines 27-30). Claims are given their broadest reasonable interpretation, in light of the specification, as would be understood by one having ordinary skill in the art (see MPEP 2111).
Regarding claim 8, as described above, Mougin as modified by Kim (and Maesaka) teaches a combination of all of the claimed azocarbonyl-functionalized silane, silane, and azodicarbonamide compounds with all of the claimed compositional limitations. Furthermore, Mougin teaches the addition of a rubber component (c.f. [0161]).
Regarding claims 9-12, as described in the rejection of claims 1-6 above, Mougin as modified by Kim (and Maesaka) teaches components which fall within the specifically claimed listings of components, and which meet all of the structural limitations of claim 12 (the same as those of claim 5).
Regarding claim 13, Mougin teaches the formation of tire components from the inventive composition ([0189]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
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