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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/06/2025 has been entered.
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 arguments filed 11/06/2025 have been fully considered but they are not persuasive.
The applicant argues that the Examiner mentioned a step that is used during the surface treatment process. However, the product of the present teaching results from a post treatment of the product. The collection system described in US'651 is not a post treatment refined process. It is a procedure for removing the polysulfide suspended excess or undesired solvent. When the excess solvent is removed, the carbon black is still wet, and it needs some drying process to obtain the final surface modified carbon black product.
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 applicant argues that the heat treatment step shown in Figure 1 is a possible combination product of US'651 and WO' 156, which contained mechanical defects on the rubber compounds.
The Examiner respectfully submits that the applicant fails to provide any factual evidence to show the contrary.
The applicant argues that 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 patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) Furthermore, it is noted that the features upon which applicant relies (i.e., by 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 applicant argues that 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 Examiner respectfully submits that there is no definition in the application that how much of the loosely bound or physiosorbed surface modified compounds removd is enough.
The Examiner respectfully submits 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 surface modifying agent in solvent reacs with the carbon black, 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.
The applicant argues that 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.
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., use a solvent with no surface modifying agent or a solvent with a modifying agent of less concentration) 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 applicant argues that the combination of US'651 and WO'156 can produce only the unrefined surface modified carbon black product since they do not follow a post treatment refining step.
The Examiner respectfully submits that the instant application claims are drwn to a product not a process. The Examiner respectfully submits that patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) Furthermore, it is noted that the features upon which applicant relies (i.e., by 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 applicant argues that sulfur content and coating levels are clearly different for unrefined and refined products.
The Examiner respectfully submits that it is noted that the features upon which applicant relies (i.e., sulfur content and coating levels) 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 Applicant argues that the mechanical defects observed on the Table 3 in WO'156. Ex. 5, 6,7, 8, and 9 compounds have a poor elongation at break (270%- 330% range) compared to the reference compound Ex. 1 (490%) and Table5 in US'651, the treated N234 has poor 300% modulus. Such weak mechanical properties are not desired for some rubber applications, specifically tire tread.
The Examiner respectfully submits that In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, 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]. 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., mechanical, hardness and tear strength properties) 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).
Conclusion
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731