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 07/14/2026.
Claims 1-12, 15-16, 18-23 are presently pending in this application. Applicant has elected Group I, claims 1-8, 22-23 with traverse and claims 9-12, 15-16, 18-21 have been withdrawn as non-elected groups II-V. Claims 1-8, 22-23 are under examination.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8, 22-23 in the reply filed on 07/14/2026 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 Boivin et al (WO 2020/094717, IDS cited reference by applicant) in view of Allain (see USPGPUB No.: 20110178227 A1, ID cited reference by applicant) 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Claims 9-12, 15-16, 18-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II-V, there being no allowable generic or linking claim.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 07/14/2026.
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 5 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 5 recites the broad recitation of d84 comprised of 120 and 430 nm followed by narrower range from 150 and 400 nm. Clarification is requested. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
Claim 7 recite: |FWHM|<250-0.815X|CTAB| is not clear as it does not define range of FWHM therefore it is not clear how this equation can be determined that FWHM indeed is less than the right side of equation. Clarification is requested. For examination purpose, examiner has interpreted as when plugging in values of CTAB (i.e., 40-300) into the presently claimed limitation, FWHM would indeed produce less than the right side of equation.
Claim 8 recite: |rf|≥0.045X|CTAB|+84 is not clear as it does not define range of rf (rate of fines) therefore it is not clear how this equation can be determined that rf is indeed is greater than equal to the right side of equation. Clarification is requested. For examination purpose, examiner has interpreted as when plugging in values of CTAB (i.e., 40-300) into the presently claimed limitation, rf would indeed produce greater than equal to the right side of equation.
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) 1-4, 7-8 and 22-23 are rejected under 35 U.S.C. 103 as obvious over Boivin et al (WO 2020/094717, IDS cited reference by applicant) in view of Allain (US PGPUB No.: 20110178227 A1, IDS cited reference by applicant (refer to as ‘Allain 1)).
Regarding Claims 1-3, Boivin ‘717 discloses SCTAB surface area greater than 160 m2/g, preferably 160-400 m2/g (paragraphs 0011-0013, overlaps claimed range of 40-300 m2/g, reads on claims 1-2), a median particle size d50 measured by centrifugation such |d50|>2500/|SCTAB| (paragraphs 0015-0020), an aluminum content not exceeding 4500 ppm (reads on does not exceed 0.45 wt% of claim 1, paragraph 0025). 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).
Boivin’ 717 further discloses d50 ranges from greater than 60 nm but does not exceed 200 nm (reads on claims 1, 3, paragraphs 0018, 0020) which is substantially similar to applicant’s claimed range of d50 from 50-200 nm and further discloses CTAB ranges which overlaps claimed range of 40-300 m2/g. Since Boivin ‘717 discloses all components that are required for presently claimed equation I, therefore it would read on presently claimed equation of |d50|<-0.782X|CTAB|+255. In addition, Boivin ‘717 discloses primary particles measured by SAXS (paragraph 0021) but does not explicitly disclose or suggest below 11nm.
However, Allain 1 discloses precipitated silica having CTAB surface area of 60-400 m2/g, (paragraphs 0335, 0434-examples 1-4), primary particle having an average size measured by SAXS 2-8 nm (reads on below 11 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). Since Allain discloses all components that are required for presently claimed equation I, therefore it would read on presently claimed equation of |d50|<-0.782X|CTAB|+255
Although there is no disclosure that the test method is conformity with “measured by SAXS” and “measured by centrifugal sedimentation”, given that the Allain discloses primary particles measured by SAXS and median particle size d50 measured by centrifugal sedimentation as the presently claimed and absent evidence criticality how the primary particles measured by SAXS and median particle size d50 measured by centrifugal sedimentation is measured, it is an examiner's position that hardness disclosed by Allain to meet the claim limitation.
Given Boivin and Allain 1 both directed to precipitated silica, 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 precipitated silica of Boivin to include primary particle having average size measured by SAXS below 11nm of Allain 1 which would provide specific morphology, a specific particle size and specific porosity and further exhibit good ability to disperse as taught by Allain (paragraph 0081).
Regarding claim 4, Boivin discloses broad particle size distribution where Ld is defined by (d84-d16)/d50 (see paragraph 0022, 0108, 0129) and discloses CTAB which is 160-400 m2/g (paragraphs 0011-0013) which would read on presently claimed equation II of |d84|<-2.08X|CTAB|+650.
Regarding claim 7, Since Boivin disclose CTAB range from 160-400 m2/g (paragraphs 0011-0013) and Allain 1 discloses precipitated silica having CTAB value from 60-400 (paragraph 0335), therefore when plug value of CTAB, for example 60 m2/g, into the claimed equation as shown below, FWHM would be expected to be less than the right side of the equation unless otherwise unexpected results are shown by the applicant:
|FWHM|<250-0.815xCTAB
|FWHM|<250-0.815x60
|FWHM|<201
Regarding Claim 8, Since Boivin disclose CTAB range from 160-400 m2/g (paragraphs 0011-0013) and Allain 1 discloses precipitated silica having CTAB value from 60-400 (paragraph 0335), therefore when plug value of CTAB, for example 60 m2/g, into the equation as shown below, rate of fines (rf) would be expected to be greater than equal to right side of the equation as claimed unless unexpected results are shown:
|rf|≥-0.045x|CTAB| + 84
|rf|≥81
Regarding claim 22, Boivin discloses BET surface area from 160-450 m2/g (paragraph 0028). 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).
Regarding claim 23, Boivin discloses the difference between BET surface area and CTAB surface area of less than 100 m2/g (paragraph 0029). 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).
10. Claim(s) 5-6 are rejected under 35 U.S.C. 103 over Boivin et al (WO 2020/094717, IDS cited reference by applicant) in view of Allain (US PGPUB No.: 20110178227 A1, IDS cited reference by applicant (refer to as ‘Allain 1)) and in further view of Allain et al (WO2018202752 A1- refer to as Allain 2, IDS cited reference by applicant).
Regarding claims 5-6, Boivin in view of Allain 1 in view of 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, 160-400 m2/g-overlaps claimed range of 40-300 m2/g of clam 1-see Boivin-paragraph 0013). 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, Boivin discloses a d84 characterized as Boivin discloses the CTAB of 160-400 m2/g which would read on |d84|<-2.08X|CTAB|+659 but does not explicitly disclose or suggest d84 comprised between 120 and 430 nm as recited in claim 5.
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 5 limitation of d84 ranging from 120-430 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).
Allain 2 further discloses inventive silica may contain other elements in addition to aluminum such as Mg, Ca, or Zn (reads on claim 6, paragraph 0028).
Therefore given Boivin, Allain 1 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 Boivin and Allain 1 to include d84 range of 248-439 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
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SMITA S PATEL whose telephone number is (571)270-5837. The examiner can normally be reached on 9AM-5PM EST M-W.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached on 5712705713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SMITA S PATEL/Primary Examiner, Art Unit 1732
09/14/2026
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