DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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.
2. Claims 16-30 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.
3. Claims 1, 27, 28 recite the terms “highly saturated” and “predominantly”. Those terms are relative terms which render the claims indefinite. The terms “highly” and “predominantly” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
4. Claims 16, 20, 21 refer to limitations that are the same as those previously cited in claim 16, but do not have prepositions “the” or “said’ in front of those, and it is not clear if said terms used for the second and more times are the same or different from those previously used.
5. Claim 29, which is dependent on claim 16, refers to “a content of silica”, however, there is a lack of antecedent basis for said limitation, since claim 16 is silent with respect to the presence of silica.
6. Claim 30 is cited as being dependent on claim 15, which is cancelled. For the purpose of prosecution, it is considered that claim 30 is dependent on claim 16.
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.
7. Claims 16-30 are rejected under 35 U.S.C. 103 as being unpatentable over Merino Lopez et al (WO2020/128305) in view of Regalrez 1018 Hydrocarbon Resin flyer, 2018, as evidenced by Heemann et al (US 2019/0264075).
It is noted that while the rejection is made over WO2020/128305 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,728,672 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,728,672.
8. Merino Lopez et al discloses a rubber composition comprising:
A) more than 50 phr, or greater than 70 phr or 100 phr (col. 12, lines 10-20, as to instant claim 20) of a copolymer of more than 50%mol, or more than 70%mol and at most 90%mol (col. 5, lines 45-51, as to instant claim 17) of ethylene and of a 1,3-diene, specifically 1,3-butadiene (Abstract, as to instant claims 18-19), which is a highly saturated diene rubber (col. 5, lines 52-60);
B) 35-100 phr of a reinforcing filler comprising silica (col. 12, lines 25-38, as to instant claims 28-29) and
C) 10-80 phr (col. 15, lines 1-5, as to instant claim 21) of a plasticizing system comprising liquid hydrocarbon-based plasticizing agents having a Tg of less than -20⁰C (col. 16, lines 1-29, as to instant claims 16, 22); specifically exemplified as being used in amount of 10-38 phr (Table 1, as to instant claim 21) and
D) a vulcanization system (col. 17, lines 8-55).
9. As to instant claim 30, further disclosed tires comprising said rubber composition (Abstract; col. 3, lines 8-12, claim 1).
10. Though Merino Lopez et al discloses the use of liquid hydrocarbon-based plasticizing agents having Tg of less than -20⁰C as the component C), Merino Lopez et al does not specify Mn and other properties of said plasticizer.
11. However, Regalrez 1018 Hydrocarbon Resin flyer, 2018 discloses a commercial low molecular weight liquid hydrocarbon resin Regalrez 1018 having Tg of -23⁰C, Mn of 300; Mw/Mn of 1.2 (see the flyer, as to instant claims 16, 23-24) and which is used as a plasticizer in various applications, including tires (see the flyer).
As evidenced by Heemann et al, the commercial product Regalrez 1018 is a resin produced by polymerization of styrene, vinyl toluene and alpha-methylstyrene (see [0066] of Heemann et al, as to instant claim 27).
12. Since the commercial product Regalrez 1018 is a liquid hydrocarbon resin having Tg as required by Merino Lopez et al, specifically cited as being used as a plasticizer in various compositions, including tires, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Merino Lopez et al and Regalrez 1018 Hydrocarbon Resin flyer, 2018, and include, or obvious to try to include, at least partially the commercial liquid hydrocarbon plasticizer Regalrez 1018 as the liquid hydrocarbon plasticizer component C) in the composition of Merino Lopez et al, since such plasticizer is liquid, hydrocarbon-based and is having properties, such as Tg, as required by Merino Lopez et al, further is commercially available, and it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
13. It is further noted that the commercial product Regalrez 1018 is the same commercial product used in instant invention, that is specified as having aromatic proton content of 2% and aliphatic proton content of 98% (see Table 2 of instant specification). Therefore, the commercial product Regalrez 1018 used as the component C) in the composition of Merino Lopez et al will intrinsically and necessarily have both aliphatic proton content and aromatic proton content as those claimed in instant invention as well (as to instant claims 25-26). “Products of identical chemical composition cannot have mutually exclusive properties” (See MPEP 2112.01). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie 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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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