DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 16, 2025 has been entered.
Claims 1, 4, and 9-12 are amended and claims 7 and 8 are cancelled. Claims 1-6, 9-20, 22, 23, 26, and 27 are pending with claims 10-18, 23, 26, and 27 withdrawn from consideration. Therefore, claims 1-6, 9, 19, 20, and 22 are treated on the merits.
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 § 112
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.
Claims 5 and 6 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.
Regarding claims 5 and 6, claim 5 recites that the rubber composition further comprises a cross-linking agent. It is not clear if this is meant to refer to an additional cross-linking agent other than the sulfur recited in claim 1, or if this limitation fails to further limit claim 1. For the purpose of further examination, this limitation will be interpreted as not referring to an additional cross-linking agent and will be met by the sulfur recited in claim 1. This interpretation is further in line with the group selections recited in claim 6.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 9, 19, 20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (WO 2017/204354) in view of Nakano et al. (US 2009/0176916). The citations below for Hashimoto et al. are taken from English language equivalent US 2019/0168542.
Regarding claims 1-4 and 9, Hashimoto et al. teaches a rubber composition comprising 100 parts by mass of natural rubber, 5 parts by mass of carbon black, 50 parts by mass of silica, 4 parts by mass of a silane coupling agent, 15 parts by mass of a hydrocarbon resin, and 1.9 parts by mass of sulfur (Table 1, Examples G, H, I, and J; Table 3, Examples 6-9 show that these compositions are inventive examples). The rubber composition may additionally include compounding agents typically used in the rubber industry such as an age resistor (antioxidant) (¶81). Additionally, no other rubber components are present within the rubber composition.
Hashimoto et al. does not teach that the rubber composition contains 3-methyl-5-pyrazolone, which corresponds to the structure of formula (1) wherein R1, R3, and R4 are hydrogens and R2 is a methyl group. However, Nakano et al. teaches a rubber composition (¶2) comprising natural rubber (¶26), filler (¶29, 36), and an antioxidant that is 3-methyl-5-pyrazolone (¶45). Hashimoto et al. and Nakano et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of rubber compositions comprising natural rubber, filler, and an antioxidant used in molded rubber articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add 3-methyl-5-pyrazolone, as taught by Nakano et al., to the rubber composition, as taught by Hashimoto et al., and would have been motivated to do so because Nakano et al. teaches that this compound is a suitable antioxidant to use in rubber compositions comprising natural rubber and filler used for molded rubber articles.
Regarding claims 5 and 6, Hashimoto et al. teaches a rubber composition comprising carbon black and sulfur as set forth in the rejection of claim 1 above. Hashimoto et al. does not teach that the rubber composition is used as a vibration-proof rubber. However, the rubber composition being used as a vibration-proof rubber is an intended use of the composition. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). MPEP 2111.02 II. In this case, the rubber composition is capable of being used as a vibration-proof rubber.
Regarding claims 19, 20, and 22, by forming the rubber composition set forth above, the antioxidant will be incorporated into the rubber component (¶83 of Hashimoto et al.).
Response to Arguments
Applicant's arguments filed September 16, 2025 have been fully considered but they are not persuasive.
Applicant argues that the instant invention has achieved unexpected results with respect to the amount of sulfur present in the rubber composition. Specifically, applicant argues that the claimed range of sulfur, 0.8 to 2.2 parts by mass, is critical to the invention. This argument is unpersuasive.
In response to applicant’s argument that the instant invention has achieved unexpected results, the Office points out that enhancing and improving upon existing properties is not necessarily equated to the generation of unexpected results. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP §716.02. Further, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
In this case, while the Office appreciates the data submitted by applicant and that it is commensurate in scope with the claims with respect to the amount of sulfur claimed, this data fails to rebut the obviousness rejection. The obviousness rejection is based on the inclusion of the compound (b1). Applicant has provided no data to show that the inclusion of this component provides an unexpected result. Further, Hashimoto et al., the primary reference used in the obviousness rejection, teaches rubber compositions that contain 1.9 parts by mass of sulfur, which is within the claimed range. This amount of sulfur anticipates the claimed amount and therefore applicant cannot argue that this range is critical to the invention. This data is unpersuasive.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANGELA C SCOTT/Primary Examiner, Art Unit 1767