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 .
This application is an amendment filed on 04/21/2026.
Claims 1-2, 4-8, 10-12, 15-18, 22-23, 27, 29 and 33 are presently pending in this application. Applicant has amended claims 1, 4, 7 and claims 15-18, 22-23, 27, 29 and 33 are withdrawn as non-elected claims.
Claim Rejections - 35 USC § 103
4. 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.
5. Claim(s) 1-2, 4-5 and 10-12 are rejected under 35 U.S.C. 103 as obvious over Allain (US PGPUB No.: 20110178227 A1, IDS cited reference by applicant) in view of Boivin et al (FR3018072, machine translation, previously cited reference).
Regarding Claims 1-2, 4, 10-11, Allain discloses precipitated silica having CTAB surface area of 60-400 m2/g, (paragraphs 0335, 0434-examples 1-4, reads on claim 1 limitation of 40-525 m2/g, reads on claims 1-2 limitation), primary particle having an average size measured by SAXS 2-8 nm (reads on below 15 nm, see paragraphs 0328-0330, 0227) and d50 median particle size less than 3.0 um. Further, Allain discloses silica is formed of two families of silica primary particles (small primary particles and large primary particles) where diameters of each family are different and two separate operations are carried out separately and results obtained are represented by two particle size distribution and further small primary particles are aggregated or not aggregated together, that is to say not connected to aggregate of large primary particles ( reads on one population of primary particles such as small or large, paragraphs 0331-0332, 0339,0154,0434-0436, 0198-0199, 0220-0227). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Allain does not explicitly disclose or suggest a rate of fines rf, that is to say a proportion (by weight) of particles of a size less than 1 µm after deagglomeration by ultrasounds, which is of at least 91%; and a particle size distribution measured by centrifugal sedimentation using a CPS, such that for a given value of the CTAB surface area, parameter FWHM is defined by relation(I): | FWHM I> -0.16 x I CTAB 1+ 130 (I).
However, Boivin discloses precipitated silica having CTAB in a range from 175-250 m2/g (encompasses claimed range of claim 1 and overlaps claimed range of claim 2) and have rate of fine content (rf) after ultrasonic deagglomeration of at least 50% (reads on greater than at least 91% of claim 1 limitation, at least 92% of claim 10 and at least 95% of claim 11 limitation since at least 50% interpreted as great than equal to 50%) and wherein rate of fine is calculated the proportion (by weight) of particles smaller than 0.3 um (would meet claimed limitation of less than 1 µm, see paragraphs 0028-0032). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Given Allain and Boivin both discloses precipitated silica having CTAB surface area as disclosed above, therefore it would have been obvious to one of the ordinary skill in the art at the time of invention to combine the precipitated silica of Allain with Boivin to include the rate of fine (rf) which would provide high dispersibility as taught by Boivin (see paragraph 0028).
Allain and Boivin do not explicitly disclose or suggest parameter FWHM is defined by relation(I): | FWHM I> -0.16 x I CTAB 1+ 130 (I).
However, Allain discloses precipitated silica having CTAB surface area 60-400 m2/g and Boivin discloses precipitated silica having CTAB surface area 175-250 m2/g as disclosed above.
Therefore when plug value of CTAB, for example 200 m2/g, into the claimed equation 1 as shown below, FWHM (includes FWHM ranging from 100-250 nm as recited in claim 4) would be expected to be greater than the right side of the equation unless otherwise unexpected results are shown by the applicant :
|FWHM|>-0.16X|CTAB|+130
|FWHM|>-0.16 X200 +130
|FWHM|>98
Although there is no disclosure that the test method is conformity with “measured by SAXS” and “measured by centrifugal sedimentation using CPS”, given that the Allain discloses primary particles measured by SAXS and particle size distribution measured by centrifugal sedimentation as the presently claimed and absent evidence criticality how the primary particles measured by SAXS and particle size measured by centrifugal sedimentation is measured, it is an examiner's position that hardness disclosed by Allain in view of Boivin to meet the claim limitation.
As per claim 5, Since Allain discloses precipitated silica having CTAB value from 60-400 m2/g (paragraph 0335) and d50 median size measured by centrifugal sedimentation (paragraphs 0154- 0155) and Boivin discloses CTAB value from 175-250 m2/g, (paragraph 0027-0032), therefore when plug value of CTAB, for example 200 m2/g, into the equation as shown below, d50 would be expected to be greater than right side of the equation as claimed unless unexpected results are shown:
d50>-0.81x|CTAB|+263 (II)
d50>-0.81X|200|+263
d50>101
Regarding claim 12, Allain discloses precipitated silica which is either in the form of powder or in the form of granules (see paragraphs 0001, 0077, 0078, 0345-0346).
6. Claim(s) 6-8 are rejected under 35 U.S.C. 103 over Allain (US PGPUB No.: 20110178227 A1 - refer to as Allain 1) in view of Boivin et al (FR3018072, machine translation, previously cited reference) and in further view of Allain et al (WO2018202752 A1- refer to as Allain 2, IDS cited reference by applicant).
Regarding claims 6 and 8, Allain 1 in view of Boivin discloses precipitated silica having primary particles having an average size measured by SAXS of 2-8 nm (meets claimed limitation of below 11 nm, see paragraphs Allain 1-0328-0330, 0227), CTAB surface area (range from 60-400 m2/g-encompasses the claimed range of 40-525 m2/g- see Allain 1-paragraph 0335, 175-250 m2/g-overlaps claimed range of 40-525 m2/g of clam 1-see Boivin-paragraphs). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, Allain 1 discloses a median particle size d50 measured by centrifugal sedimentation (paragraph 0154) such that:
|d50|<-0.81x|CTAB| +263 (II) (see paragraph 335 and examples) wherein for example when CTAB is 200 m2/g and when plug value of CTAB, for example 200 m2/g, into the equation as shown below, d50 would be expected to be greater than right side of the equation as claimed unless unexpected results are shown:
d50>-0.81x|CTAB|+263 (II)
d50>-0.81X|200|+263
d50>101
Allain 1 in view of Boivin does not explicitly disclose or suggest d50 from 110-240 nm of claim 6.
However, Allain 2 discloses precipitated silica having CTAB surface area of 40-300 m2/g (paragraph 0013, see table 1), disclosed d50 greater than 65 nm, greater than 70 nm even, equal to or greater than 80 nm and does not exceed 300nm (see paragraphs 0042-0043 and table 1), reads on claim 6), d84 ranges from 248-439 (see table s1-s10, reads on claim 8 limitation of d84 ranging from 200-550 nm). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore given Allain 1, Boivin and Allain 2 discloses precipitated silica and directed to elastomer, therefore it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to modify the invention of Allain 1 and Boivin to include d50 in a range of 110-240 nm of Allain 2 which would provide good mechanical properties and/or reduced energy dissipation in elastomeric composition as taught by Allain 2 (see paragraph 0008).
Regarding claim 7, Allain 1, Boivin and Allain 2 does not explicitly disclose or suggest the formula as claimed: |d84|<2.81X|FWHM|+35 but Allain 2 discloses d84 which ranges from 248-439 (see table 1) therefore, it would be obvious that it encompass the presently claimed formula unless otherwise unexpected results are shown.
Response to Arguments
Applicant’s arguments, see applicant remarks on pages 8-12, filed on 04/21/2026 with respect to the rejections of Claims 1-2, 4-5, 10-12 under 35 U.S.C. § 103 over Allain (US PGPUB No.: 20110178227 A1) in view of Boivin et al (FR 3018072) and Claims 6-8 are rejected under 35 U.S.C. § 103 over Allain (US PGPUB No.: 20110178227 A1 - refer to as Allain 1) in view of in view of Boivin et al (FR 3018072) and in further view of Allain et al (WO2018202752-refere to as Allain 2) are not persuasive and therefore the rejections have been maintained.
Applicant mainly argues that none of Allain 1, Boivin and Allain 2 disclose precipitated silica having one population of primary particles based on SAXS measured profile based on the amended claim 1 limitation.
However, Allain 1 discloses silica is formed of two families of silica primary particles (small primary particles and large primary particles) where each family is different, and two separation operations are carried out and determination of the particle size distribution of the small primary particle (<10 nm) and determination of the particle size distribution of large primary particles (>10 nm) are carried out separately (See paragraphs 0222-0223). Allain 1 further discloses small primary particles are aggregated or not aggregated together, that is to say not connected to aggregate of large primary particles and further discloses that preferably, in the precipitated silica, there are very few, indeed even no, isolated small primary particles aggregated or not aggregated together, that is to say not connected to aggregates of large primary particles so therefore small primary particles does not contain large primary particles which means that primary particles (i.e., small primary particles) measured by SAXS 0-10 nm and/or large primary particles of above 10nm which can interpreted as small primary particles having one population and/or large primary particles having one population. Further, presently claim discloses “having” which does not exclude other population of primary particles present. Therefore the rejections are maintained as set forth below.
Second argument related to Boivin is entirely silent on primary particles and does not disclose any SAXS measurements and can not cure the deficiencies of Allain 1. However, Allain 1 discloses precipitated silica comprising primary particle measured by SAXS, CTAB, d50 while Boivin discloses CTAB, rate of fines (rf) and further Boivin and Allain 1 both are pertained to precipitated silica which are useful in reinforcing fillers for polymers therefore combination discloses presently claimed limitation as disclosed above in the rejection.
Thirdly, Allain 1 and 2 and Boivin are all pertained to precipitated silica that are useful in reinforcing fillers for polymers and while Allan 1 discloses primary particles measured by SAXS therefore combination of Allain 1 and 2 and Boivin discloses presently claimed limitation as disclosed above in the rejections.
Further, amendment to abstract overcomes the specification objection of record.
Further, amendment to claims overcomes the 112(b) rejections of record.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 06/09/2026
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