Appeal No. 95-2190
Application 07/777,034
The claims on appeal are directed to a rubber stock composition comprising (a) a rubber stock
selected from the group consisting of natural rubber, a rubber derived from a diene monomer (e.g.
a styrene/butadiene rubber) or mixture thereof, and (b) from about 0.1 to about 10 phr of a metal salt
of a hydroxy-aryl substituted maleamic acid selected from the group consisting of a sodium or
potassium salt of a hydroxy-aryl substituted maleamic acid and a cobalt or zinc salt of a hydroxy-aryl
substituted bis-maleamic acid.
In the first Office action (Paper No. 3) in this application, the examiner made a restriction
requirement under 37 CFR § 1.121 requiring applicants to elect a single disclosed species for
prosecution on the merits. Counsel for applicants elected, with traverse, the cobalt salt of the bis-
maleamic acid in a styrene/butadiene rubber composition. The application as filed contained 5 claims.
Claim 2 is the only claim directed to a non-elected species, namely, a sodium salt of a hydroxy-aryl
substituted phenyl maleamic acid. Despite the election, the examiner included claim 2 in the rejection
of claims 1 and 3-5 for obviousness. Dependent claims 6-11 were added after the first Office action
and defined the rubber stock composition as further including a vulcanizing agent and a methylene
donor. None of the newly added dependent claims, however, is dependent on claim 2.
Original claims 1-5 have not been amended. Claim 2 is directed to a non-elected species.
Although appellants have presented arguments in their brief for separate patentability of claim 2
(brief, p. 4-6), the examiner noted in the answer that these arguments “are drawn to a non-elected
invention” (answer, p. 5). On this record, it appears that claim 2 was inappropriately included in the
claims rejected. Accordingly, we do not consider claim 2 as being properly before us in that it stands
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