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 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.
Claim(s) 1-3 and 5-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20130340651(US’651), further in view of WO2021001156(WO'156) or US20220363864A1. WO’156 is cited for convenience.
Regarding claims 1, and 5 - 7, US’651 discloses obtaining modified carbon black by treating conventional carbon black (including non-low hysteresis carbon black ASTM defined carbon black) with polysulfide in an amount of 0.1-1 0 percent of the carbon black to obtain lower hysteretic carbon black. The polysulfide interacts with, and is adsorbed at, at least a portion of the discrete surface sites of the carbon black. See [0015]; and claims 1-4. US’651 discloses that the treated carbon black may also be oxidized, for example, prior to treatment with the polysulfide. See [0037]. Thus, the polysulfide can modify both unoxidized carbon black and oxidized carbon black.
But it is silent that the surface modifier comprises at least one amine group and at least one thiol group and/or di- and/or polysulfidic linkage thereof, wherein the surface modifier is an amino acidic compound or its derivative.
WO’156 discloses that functionalized carbon blacks are useful for obtaining rubber compounds with low hysteresis and enhanced abrasion resistance, e.g. for the production of energy-saving tires. The sulfur-containing primary or secondary amine comprises a compound of the formula R1-Sx-Z-NR2R3 or Sx(-Z-NR2R3)2, wherein Z is a divalent organic group comprising 1 -20 carbon atoms, x is an integer of at least 1 , and R1, R2 and R3 are each individually selected from hydrogen and a monovalent organic group comprising 1 -20 carbon atoms, wherein Z is preferably an alkylene group comprising 1 -8 carbon atoms, x is preferably an integer in the range from 2-20, such as from 2-6, preferably being 2, and R1 preferably represents a C1-C12 alkyl group, wherein optionally one or more hydrogen atoms may be substituted by a functional group such as an amine group -NR4R5, wherein R4 and R5 are each individually selected from hydrogen and a monovalent organic group comprising 1 -20 carbon atoms. The sulfur-containing primary or secondary amine or salt thereof comprises cystamine or a salt thereof, such as a respective ammonium halide salt. WO’156 discloses that an effective coupling of the functionalized carbon blacks to the rubber component can be achieved and the filler-filler interactions be efficiently reduced resulting in rubber compounds with low hysteresis and high durability and mechanical stiffness. A “carbon black” as referred to herein is a material composed substantially, e.g. to more than 90 wt. % or more than 95 wt. %, based on its total weight, of carbon that is produced by controlled partial pyrolysis from one or more hydrocarbon precursors. Different industrial processes are known for the production of carbon black materials such as the furnace process, gas black process, acetylene black process, thermal black process or lamp black process. The production of carbon blacks is per se well known in the art and for example outlined in J.-B. Donnet et al., “Carbon Black: Science and Technology”, 2nd edition, therefore being not described herein in more detail. The carbon black used in the practice of the present invention can also comprise a mixture of two or more different carbon black grades. See [0017] and [0032, 0039-0040].
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the instant application to use the claimed modifier for the conventional carbon black, motivated by the fact that US’651 discloses modified carbon black by treating conventional carbon black with polysulfide in an amount of 0.1-1 0 percent of the carbon black to obtain lower hysteretic carbon black and WO’156 discloses that by using polysulfide such as cystamine, an effective coupling of the functionalized carbon blacks to the rubber component can be achieved and the filler-filler interactions be efficiently reduced resulting in rubber compounds with low hysteresis and high durability and mechanical stiffness. See [0017] and [0039-0040]. US’651 discloses that the polysulfide is provided in the form of the organic polysulfide, non-aqueous or organic solvents may be employed. Collection systems for the organic solvents would necessarily be employed in such embodiments. Thus, it is reasonable to expect that solvent is removed from the modified carbon black. See [0047].
Regarding claims 2-3, US’651 discloses obtaining modified carbon black by treating conventional carbon black with polysulfide in an amount of 0.1-1 0 percent of the carbon black to obtain lower hysteretic carbon black. WO'156 discloses that different industrial processes are known for the production of carbon black materials such as the furnace process, gas black process, acetylene black process, thermal black process or lamp black process. The production of carbon blacks is per se well known in the art and for example outlined in J.-B. Donnet et al., “Carbon Black: Science and Technology”, 2nd edition, therefore being not described herein in more detail. The carbon black used in the practice of the present invention can also comprise a mixture of two or more different carbon black grades. See [0032].
Regarding claims 8-13, US’651 discloses that the polysulfide is, at least in part, adhered as an adsorbate on the surfaces of the adsorbent, the carbon black aggregates. Without being bound to any particular theory, it is believed that the polysulfide is adhered to the surfaces of the carbon black aggregates through at least one of: van der Waals interactions; physical interaction with porous three-dimensional graphitic lattice microstructures of the carbon black aggregates; and covalent and/or ionic or other non-covalent interactions with active species such as oxygen, nitrogen, etc. also found at the surfaces of the carbon black. See [0030].
Regarding claim 14, US’651 discloses obtaining modified carbon black by treating carbon black with polysulfide in an amount of 0.1-1 0 percent of the carbon black to obtain lower hysteretic carbon black. Thus, the content is about 0.1% to 9% based on the treated carbon black.
Regarding claims 15-16, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Response to Arguments
Applicant's affidavits filed 05/15/2026 have been fully considered but they are not persuasive. Please refer to the response filed 12/17/2025.
The affidavits state that: The claims of the subject application recite a refined surface modified non- oxidized, non-low hysteresis carbon black product. According to the present teaching, the surface modifier is attached to the carbon black via thermochemical coupling, using a heat treatment step. The Examiner highlighted solvent collection system of US'651 (Figure 2) is used during the production of surface modified/treated carbon black before, or without, the heat treatment. The Examiner mentioned the process is happening before the final surface modified product is formed. The present teaching is performed by a post treatment refining after the production of surface modified/treated carbon black, which differs from US'651 and WO'156.
The Examiner respectfully submits that the claims are drawn to a product not a process of making it. The patentability of a product does not depend on its method of production. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the surface modifier is attached to the carbon black via thermochemical coupling, using a heat treatment step and a post treatment refining ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The affidavits state that : The solvent collection system is not a refined process. This is the procedure for removing the polysulfide suspended excess or undesired solvent. It is not a purification process of surface modified carbon black such as that disclosed in the present teaching. Removing the excess or undesired suspended solvent does not remove most of the loosely bound or physiosorbed surface modified compounds, because the carbon black is still wet and it has contact with the solvent. The concentration of a surface modifying agent in solvent of contacted carbon black is approximately the same as the concentration of the surface modifying agent of the removed solvent. To remove significant amounts of loosely bound or physiosorbed surface modified compounds, it is necessary to use a solvent with no surface modifying agent or a solvent with a modifying agent of less concentration. US'651 has not described such a process. The post refining process of the present teaching removes most of the loosely bound or physiosorbed surface modified compounds. Therefore, final products of US'651 and the present teaching are not similar. The effect of the solvent collection system of US'651 cannot produce the product of the present teaching”.
The Examiner respectfully submits that In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., remove significant amounts of loosely bound or physiosorbed surface modified compounds; carbon black being nott wet ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). There is no definition of the relationship between “the refined” vs the amount of removed loosely bound or physiosorbed surface modified compounds. The Examiner respectfully submits that the instant application discloses ‘the SMNLHCB is refined using a suitable solvent (e.g., water) to remove weakly bound surface modifying agent. Specifically, the presence of loosely bound or physiosorbed surface modified agent on carbon black results in adverse effects on mechanical properties of the final rubber compound. Refining of the SMNLHCB as a slurry may be carried out in any suitable vessel without but preferably with agitation”. See [0025]. US’651 discloses that the polysulfide is provided in the form of the organic polysulfide, non-aqueous or organic solvents may be employed. Collection systems for the organic solvents would necessarily be employed in such embodiments. Thus, it is reasonable to expect that solvent is removed from the modified carbon black and at least some loosely bound or physiosorbed surface modified compounds would be removed with the solvent. See [0047]. The Examiner respectfully submits that there is no definition in the application that the removal degree of the loosely bound or physiosorbed surface modified compounds removed is enough.
The affidavits state that the concentration of a surface modifying agent in solvent of contacted carbon black is approximately the same as the concentration of the surface modifying agent of the removed solvent.
The Examiner respectfully submits that some at least some loosely bound or physiosorbed surface modified compounds are removed. Thus the concentration of a surface modifying agent in solvent of contacted carbon black is not the same as the concentration of the surface modifying agent of the removed solvent.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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