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 in response to restriction filed on 11/13/2025.
Claims 1-2, 4-8, 10-12, 15-19, 22-23, 27, 29 and 33 are presently pending in this application. Applicant has elected Group I, claims 1-2, 4-8 and 10-12 with traverse, claims and claims 15-19, 22-23, 27, 29 and 33 have been withdrawn as non-elected groups II-V. Claims 1-2, 4-8 and 10-12 are under examination.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-2, 4-8 and 10-12 in the reply filed on 11/13/2025 is acknowledged. The traversal is on the ground(s) that applicant results from search of one group will necessarily produce results applicable to the examination of the other groups because all groups require precipitated silica and there would be no serious burden on examiner to examine the claims of groups II-V. This is not found persuasive because Group I, claim 1 discloses a precipitated silica composition while Groups II-V only share this technical feature of precipitated silica composition of Group I and this technical feature of precipitated silica composition taught by Allain (see USPGPUB No.: 20110178227 A1, previously cited reference) in view of Boivin (FR3018072, previously cited reference) which disclose the process but does not disclose the process as claimed in Group II and therefore Groups II-V, claims 15-19, 22-23, 27, 29 and 33 are different in scope and requires searches in separate classes and subclasses. The examiner respectfully submits that such searches would impose serious burden of time on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-19, 22-23, 27, 29 and 33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II-V, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/13/2025.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Currently abstract is less than 50 words in length. It is suggested to have the abstract within the range of 50 to 150 words in length.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 4 and 7-8 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.
Claim 4 recite: “FWHM ranging from 100-250” as recited in claim 4. However it is unclear if FWHM ranges refer in nm, micrometer, microns, etc. For purpose of examination, examiner interprets the ranges 100-250 nm. Clarification is requested.
Claim 7 recites: |d84|<2.81X|FWHM|+35 (III) wherein the claim recites |FWHM| and dependent on claim 1, however the value of FWHM is not provided nor defined in the instant claim to enable the calculation of the |d84| in the equation (III). Clarification is requested.
Regarding dependent claim 8, this claim does not remedy the deficiencies of parent claim 7 as noted above and are rejected for the same rationale.
Claim Rejections - 35 USC § 103
8. 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.
9. 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 claim 2 limitation of 120-275 m2/g), 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 (paragraphs 0339,0154,0434-0436). 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% (would meet 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 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).
10. Claim(s) 6 and 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 5-6, 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).
Conclusion
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/SMITA S PATEL/Primary Examiner, Art Unit 1732
01/23/2026