DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on July 17, 2025 has been fully considered. The amendment to instant claim 21 is acknowledged. Specifically, claim 21 was amended to include limitations of an amount of the at least one (per)fluoroelastomer [elastomer (A)] in the composition is greater than the amount of other components, and wherein the amount of said capsules (M) ranges from 0.1 to 50 phr, based on 100 weight parts of the elastomer (A). These limitations in their combination were not previously presented. In light of he amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 21-23, 25-26, 30-31, 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Cont et al (US 2007/0134411) in view of Kenta (JP 2004-307765, based on machine translation) and Hagiwara et al (US 5,725,617).
4. Cont et al discloses a composition comprising:
A) 15-90%wt a matrix polymer base comprising polyfluorocarbons ([0040], [0036]-[0038]) and
B) a masterbatch comprising:
B1) 1-30%wt, or 5-15%wt (also as to instant claim 22) of microcapsules dispersed in
B2) 5-40%wt of the carrier resin, the microcapsules comprising organic lubricating oils encapsulated in a shell ([0021], [0026]), the microcapsules having a size of 0.5 micron to 500 micron ([0023]), or 5-30 micron ([0025]);
the carrier resin including polyfluorocarbons ([0038], [0036]), specifically polyvinylidene fluoride (claim 14, [0031]).
The shell of the microcapsules comprises polyvinyl alcohol or urea-formaldehyde copolymer ([0019], [0022], as to instant claim 31), i.e. at least partially comprising urethane bonds.
The composition exhibits excellent wear and friction compared to polymers without the microcapsules ([0055]), and is used for making molded durable articles, particularly in applications in which a surface formed of the composition bears against another surface ([0057]), including sealing elements ([0059]).
5. Thus, Cont et al discloses a composition comprising as high as 90%wt of the polymer matrix including polyfluorocarbons, and further as low as 5%wt or 1%wt of microcapsules comprising lubricating oil encapsulated by the shell and as low as 5%wt of the carrier resin, having excellent wear and friction and used for making sealing elements.
6. Given the polyfluorocarbon matrix is present in amount of as high as 90%wt, therefore, said polyfluorocarbons will intrinsically and necessarily be present in a higher amount that the microcapsules and the carrier resin (as to instant claim 21).
Given the microcapsules are present in amount of 5%wt per 90%wt of the polyfluorocarbon matrix, therefore, said microcapsules appear to be present in amount of 5.5 phr (as to instant claims 21 and 22).
7. Cont et al does not explicitly recite the polyfuorocarbon matrix being a vinylidene fluoride copolymer, the encapsulated lubricant being perfluoropolyether and the composition further comprising a cross-linking system/agent.
8. However, Kenta discloses a composition for making sealing elements comprising:
A’) 100 pbw of a fluororubber, particularly an iodine-based ([0012]) and specifically vinylidene fluoride-hexafluoropropylene copolymer, i.e. perfluoroelastomer ([0020], as to instant claims 25, 26);
B’) 0.5-30 pbw of an oily perfluoropolyether to improve lubricity ([0011]) having the following formula I ([0014] (as to instant claims 21, 23):
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Or the formula II ([0025]):
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C’) an organic peroxide cross-linking agent ([0022], as to instant claims 21 and 33) and triallyl isocyanurate cross-linking aid ([0036], as to instant claims 35-36).
9. Thus, Kenta discloses a composition for making sealing elements, wherein Kenta specifies the vinylidene fluoride copolymer as the polyfluorocarbon matrix and further specifies the lubricant used to lubricate said composition as being oily perfluoropolyether.
10. Since both Kenta and Cont et al are related to lubricated compositions based on polyfluorocarbon matrix, used for making sealing elements, and thus belong to the same field of endeavor, wherein Kenta further specifies the polyfluorocarbon matrix as being vinylidene fluoride copolymer and the oily lubricant being perfluoropolyether, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kenta and Cont et al and to choose and use, or obvious to try to use the vinylidene fluoride-hexafluoropropylene copolymer as the component A) and the perfluoropolyether as the oily lubricant encapsulated in the shell as the component B1) in the composition of Cont et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
11. Though Cont et al in view of Kenta do not specify the shell of the microcapsules of the component B) being cross-linked and having thickness of 0.1-1.5 micron,
Hagiwara et al discloses lubricant capsules comprising a continuous shell, including urea-formaldehyde resins and epoxy resins (col. 5, lines 15-40), with lubricant, including a halogenated hydrocarbon oil, encapsulated therein (Abstract, col. 5, lines 41-46), wherein Hagiwara et al specifies that shell of the capsules is having thickness of as low as 0.5 micron (col. 6, lines 55-58, as to instant claim 30) and the shell is cross-linked to improve solvent resistance (col. 5, lines 15-40).
12. Since cross-linking of the shells of the capsules encapsulating lubricating oil improves solvent resistance of said capsules, as taught by Hagiwara et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Hagiwara et al and Cont et al in view of Kenta, and to use, or obvious to try to use, or obvious to prepare the microcapsules of the composition of Cont et al in view of Kenta having their shell at least partially cross-linked, so to further improve solvent resistance of said microcapsules, depending on the specific end-use of the composition of Cont et al in view of Kenta as well, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
13. All ranges in the composition of Cont et al in view of Kenta and Hagiwara et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
14. It is further noted that instant specification does not provide sufficient evidence of criticality in using microcapsules comprising any perfluoropolyether encapsulated with any type of capsule shell. Only a single inventive example showing the use of capsules with commercial Fomblin YR 1800 PFPE-containing core mixed with crumbs of commercial product Tecnoflon P 457 has been presented in instant specification. The comparative examples showed the use of either empty capsules, i.e. no lubricant at all (comparative example 3), or lubricant without capsules used a minor amount (comparative example 4). It is further noted that the properties of the single inventive example and the comparative examples, as presented in Table 1 of instant specification, are very close. The scope of instant claims is significantly broader that the scope of a single inventive example presented in instant specification. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness 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). See MPEP 716.02(d).
15. Claims 21-23, 25-27, 30-31, 33-37 are rejected under 35 U.S.C. 103 as being unpatentable over Cont et al (US 2007/0134411) in view of Kenta (JP 2004-307765, based on machine translation) and Hagiwara et al (US 5,725,617), in further view of Comino et al (US 2010/0256303) and Tabb (US 6,020,440).
16. The discussion with respect to Cont et al (US 2007/0134411) in view of Kenta (JP 2004-307765, based on machine translation) and Hagiwara et al (US 5,725,617), set forth in paragraphs 3-14 above, is incorporated here by reference.
17. Though Cont et al in view of Kenta and Hagiwara et al disclose the composition comprising perfluoroelastomer having iodine sites ([0012] of Kenta), Cont et al in view of Kenta and Hagiwara et al do not recite the amount of said iodine cure sites. Further, though Cont et al in view of Kenta and Hagiwara et al recite the composition comprising peroxide and triallyl isocyanurate curing system ([0022], [0036] of Kenta), Cont et al in view of Kenta and Hagiwara et al do not recite the amounts of said components and the peroxide being dibenzoyl peroxide.
18. However,
1) Comino et al discloses a fluoroelastomer composition comprising:
A) a fluoroelastomer, including vinylidene fluoride copolymers (Abstract, [0032]), having iodine cure sites in amount of 0.05-2 mol per 100 mol of base comonomers ([0176], [0177], as to instant claim 27) for curing with peroxide;
B) perfluoropolyether ([0142], [0144]) to improve processing properties ([0112]);
C) 0.5-10%wt of curing coagents, including triallyl isocyanurate ([0181], as to instant claim 37) and
D) a dibenzoyl peroxide curing agent ([0179], as to instant claim 33).
Thus, Comino et al explicitly teaches advantages of using a fluoroelastomer having
iodine cure site to improve peroxide-based cross-linking.
2) Tabb discloses peroxide-based crosslinking agents for cross-linking of elastomeric vinylidene fluoride polymers comprising:
- 0.2-5 pbw per 100 pbw of dibenzoyl peroxide and
- 0.5-10%wt of triallyl cyanurate (col. 8, lines 1-26).
Thus, Tabb teaches the specific amounts of dibenzoyl peroxide and triallyl isocyanurate for cross-linking vinylidene fluoride-based elastomers.
19. Since all of Comino et al, Tabb and Cont et al in view of Kenta and Hagiwara et al are related to fluoroelastomer compositions, specifically vinylidene fluoride (co)polymers, cross-linked with peroxide and triallyl isocyanurate, and thereby belong to the same field of endeavor, wherein Tabb and Comino et al teach the specific amounts of peroxide and triallyl isocyanurate used for said cross-linking, and further the use of iodine-containing fluoroelastomers to improve said cross-linking level, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Cont et al in view of Kenta and Hagiwara et al, Comino et al and Tabb, and to use, or obvious to try to use, at least partially, the iodine cure site-containing fluoroelastomer, dibenzoyl peroxide and triallyl isocyanurate, as taught by Comino et al and Tabb, in the amounts as taught by Comino et al and Tabb, in the composition of Cont et al in view of Kenta and Hagiwara et al, so to further improve cross-linking of the fluoroelastomer component A) of the composition of Cont et al in view of Kenta and Hagiwara et al to a desired level, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
20. Claims 21-23, 25-26, 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Cont et al (US 2007/0134411) in view of Kenta (JP 2004-307765, based on machine translation) and Hagiwara et al (US 5,725,617), in further view of Walters et al (WO 2018-100179; rejection is based on US equivalent 2019/0388861).
21. The discussion with respect to Cont et al (US 2007/0134411) in view of Kenta (JP 2004-307765, based on machine translation) and Hagiwara et al (US 5,725,617), set forth in paragraphs 3-14 above, is incorporated here by reference.
22. Cont et al in view of Kenta and Hagiwara et al do not specify the weight ratio between the core and the shell of the microcapsules.
23. However, Walters et al discloses a method for making microcapsules and the microcapsules, including lubricant ([0005]), having size of 0.1-20 micron, wherein the cross-linked polymer shell, including polyurethanes and containing acrylate and urethane groups (as to instant claim 31), encapsulates the active core ([0057], [0074], [0076]), wherein Walters et al explicitly teaches that the volume ratio of the core composition and the shell composition is 1:10 to 10:1 , and maybe controlled to adjust the thickness of the shell ([0066]-[0067]; [0074], [0076], [0080]); the specifically exemplified core/shell ratio is 30:70 by weight ([0182]).
24. Since the volume and weight ratio between the core active substance and the cross-linked shell in the microcapsules can be adjusted depending on the desired thickness of the shell, which in turn depends on the specific end-use of said microcapsules, as taught by Walters et al, wherein Walters et al further exemplified the weight ratio between the core substance and the shell being 30:70, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Walters et al and Cont et al in view of Kenta and Hagiwara et al, and to prepare or to use, or obvious to try to use the microcapsules having the ratio between the lubricant core and the cross-linked shell in the composition of Cont et al in view of Kenta and Hagiwara et al of 1:10 to 10: 1, or 30:70, as taught by Walters et al, and further it would have been obvious to a one of ordinary skill in the art to adjust the weight ratio between the lubricant core and the crosslinked shell, so to produce the final microcapsules having a desired shell thickness, depending on the specific end-use of the composition of Cont et al in view of Kenta and Hagiwara et al as well, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
25. Claims 21-23, 25-26, 30-31, 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Kenta (JP 2004-307765, based on machine translation) in view of Cont et al (US 2007/0134411) and Hagiwara et al (US 5,725,617).
26. Kenta discloses a composition for making sealing elements comprising:
A’) 100 pbw of a fluororubber, particularly an iodine-based ([0012]) and specifically vinylidene fluoride-hexafluoropropylene copolymer, i.e. perfluoroelastomer ([0020], as to instant claims 25, 26);
B’) 0.5-30 pbw (i.e. 0.5-30 phr) of an oily perfluoropolyether to improve lubricity ([0011]) having the following formula I ([0014] (as to instant claims 21, 23):
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C’) an organic peroxide cross-linking agent ([0022], as to instant claims 21 and 33) and triallyl isocyanurate cross-linking aid ([0036], as to instant claims 35-36).
27. Thus, Kenta discloses a composition for making sealing elements, wherein Kenta specifies the vinylidene fluoride copolymer as the perfluorocarbon/perfluoroelastomer used in the major amount and further minor amounts of both the lubricant used to lubricate said composition being oily perfluoropolyether and the cross-linking agent (as to instant claim 21).
28. Though Kenta does not specify the oily perfluoropolyether lubricant being used in the form of microcapsules,
Cont et al discloses a composition comprising:
A) 15-90%wt a matrix polymer base comprising polyfluorocarbons ([0040], [0036]-[0038]) and
B) a masterbatch comprising:
B1) 1-30%wt, or 5-15%wt (also as to instant claim 22) of microcapsules dispersed in
B2) 5-40%wt of the carrier resin, the microcapsules comprising organic lubricating oils encapsulated in a shell ([0021], [0026]),
the microcapsules having a size of 0.5 micron to 500 micron ([0023]), or 5-30 micron ([0025]);
the carrier resin including polyfluorocarbons ([0038], [0036]), specifically polyvinylidene fluoride (claim 14, [0031]).
The shell of the microcapsules comprises polyvinyl alcohol or urea-formaldehyde copolymer ([0019], [0022], as to instant claim 31), i.e. at least partially comprising urethane bonds.
The composition exhibits excellent wear and friction compared to polymers without the microcapsules ([0055]), and is used for making molded durable articles, particularly in applications in which a surface formed of the composition bears against another surface ([0057]), including sealing elements ([0059]).
29. Thus, Cont et al discloses a composition comprising as high as 90%wt of the polymer matrix including polyfluorocarbons, and further as low as 5%wt or 1%wt of microcapsules comprising lubricating oil encapsulated by the shell and as low as 5%wt of the carrier resin, having excellent wear and friction and used for making sealing elements.
30. Given the polyfluorocarbon matrix in the composition of Cont et al is present in amount of as high as 90%wt, therefore, said polyfluorocarbons will intrinsically and necessarily be present in a higher amount that the microcapsules and the carrier resin (as to instant claim 21). Given the microcapsules are present in amount of 5%wt per 90%wt of the polyfluorocarbon matrix, therefore, said microcapsules appear to be present in amount of 5.5 phr (as to instant claims 21 and 22).
31. Since both Kenta and Cont et al are related to lubricated compositions based on polyfluorocarbon matrix, used for making sealing elements, and thus belong to the same field of endeavor, wherein Cont et al discloses the lubricant in said composition being used in the form of microcapsules dispersed in a minor amount of the carrier, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kenta and Cont et al and to choose and use, or obvious to try to use the lubricant component B) of Cont et al, i.e. lubricant in the form of microcapsules dispersed in a minor amount of the carrier, as the lubricant component B’) in the composition of Kenta since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
32. Though Kenta in view of Cont et al do not specify the shell of the microcapsules of the component B) being cross-linked and having thickness of 0.1-1.5 micron,
Hagiwara et al discloses lubricant capsules comprising a continuous shell, including urea-formaldehyde resins and epoxy resins (col. 5, lines 15-40), with lubricant, including a halogenated hydrocarbon oil, encapsulated therein (Abstract, col. 5, lines 41-46), wherein Hagiwara et al specifies that shell of the capsules is having thickness of as low as 0.5 micron (col. 6, lines 55-58, as to instant claim 30) and the shell is cross-linked to improve solvent resistance (col. 5, lines 15-40).
33. Since cross-linking of the shells of the capsules encapsulating lubricating oil improves solvent resistance of said capsules, as taught by Hagiwara et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Hagiwara et al and Kenta in view of Cont et al, and to use, or obvious to try to use, or obvious to prepare the microcapsules of the composition of Kenta in view of Cont et al having their shell at least partially cross-linked, so to further improve solvent resistance of said microcapsules, depending on the specific end-use of the composition of Kenta in view of Cont et al as well, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
34. All ranges in the composition of Kenta in view of Cont et al and Hagiwara et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
35. It is further noted that instant specification does not provide sufficient evidence of criticality in using microcapsules comprising any perfluoropolyether encapsulated with any type of capsule shell. Only a single inventive example showing the use of capsules with commercial Fomblin YR 1800 PFPE-containing core mixed with crumbs of commercial product Tecnoflon P 457 has been presented in instant specification. The comparative examples showed the use of either empty capsules, i.e. no lubricant at all (comparative example 3), or lubricant without capsules used a minor amount (comparative example 4). It is further noted that the properties of the single inventive example and the comparative examples, as presented in Table 1 of instant specification, are very close. The scope of instant claims is significantly broader that the scope of a single inventive example presented in instant specification. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness 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). See MPEP 716.02(d).
36. Claims 21-23, 25-27, 30-31, 33-37 are rejected under 35 U.S.C. 103 as being unpatentable over Kenta (JP 2004-307765, based on machine translation) in view of Cont et al (US 2007/0134411) and Hagiwara et al (US 5,725,617), in further view of Comino et al (US 2010/0256303) and Tabb (US 6,020,440).
37. The discussion with respect to Cont et al (US 2007/0134411) in view of Kenta (JP 2004-307765, based on machine translation) and Hagiwara et al (US 5,725,617), set forth in paragraphs 25-35 above, is incorporated here by reference.
38. Though Kenta in view of Cont et al and Hagiwara et al disclose the composition comprising perfluoroelastomer having iodine sites ([0012] of Kenta), Kenta in view of Cont et al and Hagiwara et al do not recite the amount of said iodine cure sites. Further, though Kenta in view of Cont et al and Hagiwara et al recite the composition comprising peroxide and triallyl isocyanurate curing system ([0022], [0036] of Kenta), Kenta in view of Cont et al and Hagiwara et al do not recite the amounts of said components and the peroxide being dibenzoyl peroxide.
39. However,
1) Comino et al discloses a fluoroelastomer composition comprising:
A) a fluoroelastomer, including vinylidene fluoride copolymers (Abstract, [0032]), having iodine cure sites in amount of 0.05-2 mol per 100 mole of base comonomers ([0176], [0177], as to instant claim 27) for curing with peroxide;
B) perfluoropolyether ([0142], [0144]) to improve processing properties ([0112]);
C) 0.5-10%wt of curing coagents, including triallyl isocyanurate ([0181], as to instant claim 37) and
D) a dibenzoyl peroxide curing agent ([0179], as to instant claim 33).
Thus, Comino et al explicitly teaches advantages of using a fluoroelastomer having
iodine cure site to improve peroxide-based cross-linking.
2) Tabb discloses peroxide-based crosslinking agents for cross-linking of elastomeric vinylidene fluoride polymers comprising:
- 0.2-5 pbw per 100 pbw of dibenzoyl peroxide and
- 0.5-10%wt of triallyl cyanurate (col. 8, lines 1-26).
Thus, Tabb teaches the specific amounts of dibenzoyl peroxide and triallyl isocyanurate for cross-linking vinylidene fluoride-based elastomers.
40. Since all of Comino et al, Tabb and Kenta in view of Cont et al and Hagiwara et al are related to fluoroelastomer compositions, specifically vinylidene fluoride (co)polymers, cross-linked with peroxide and triallyl isocyanurate, and thereby belong to the same field of endeavor, wherein Tabb and Comino et al teach the specific amounts of peroxide and triallyl isocyanurate used for said cross-linking, and further the use of iodine-containing fluoroelastomers to improve said cross-linking level, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kenta in view of Cont et al and Hagiwara et al, Comino et al and Tabb, and to use, or obvious to try to use, at least partially, the iodine cure site-containing fluoroelastomer, dibenzoyl peroxide and triallyl isocyanurate, as taught by Comino et al and Tabb, in the amounts as taught by Comino et al and Tabb, in the composition of Kenta in view of Cont et al and Hagiwara et al, so to further improve cross-linking of the fluoroelastomer component A) of the composition of Kenta in view of Cont et al and Hagiwara et al to a desired level, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
41. Claims 21-23, 25-26, 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Kenta (JP 2004-307765, based on machine translation) in view of Cont et al (US 2007/0134411) and Hagiwara et al (US 5,725,617), in further view of Walters et al (WO 2018-100179; rejection is based on US equivalent 2019/0388861).
42. The discussion with respect to Kenta (JP 2004-307765, based on machine translation) in view of Cont et al (US 2007/0134411) and Hagiwara et al (US 5,725,617), set forth in paragraphs 25-35 above, is incorporated here by reference.
43. Kenta in view of Cont et al and Hagiwara et al do not specify the weight ratio between the core and the shell of the microcapsules.
44. However, Walters et al discloses a method for making microcapsules and the microcapsules, including lubricant ([0005]), having size of 0.1-20 micron, wherein the cross-linked polymer shell, including polyurethanes and containing acrylate and urethane groups (as to instant claim 31), encapsulates the active core ([0057], [0074], [0076]), wherein Walters et al explicitly teaches that the volume ratio of the core composition and the shell composition is 1:10 to 10:1 , and maybe controlled to adjust the thickness of the shell ([0066]-[0067]; [0074], [0076], [0080]); the specifically exemplified core/shell ratio is 30:70 by weight ([0182]).
45. Since the volume and weight ratio between the core active substance and the cross-linked shell in the microcapsules can be adjusted depending on the desired thickness of the shell, which in turn depends on the specific end-use of said microcapsules, as taught by Walters et al, wherein Walters et al further exemplified the weight ratio between the core substance and the shell being 30:70, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Walters et al and Kenta in view of Cont et al and Hagiwara et al, and to prepare or to use, or obvious to try to use the microcapsules having the ratio between the lubricant core and the cross-linked shell in the composition of Kenta in view of Cont et al and Hagiwara et al of 1:10 to 10: 1, or 30:70, as taught by Walters et al, and further it would have been obvious to a one of ordinary skill in the art to adjust the weight ratio between the lubricant core and the crosslinked shell, so to produce the final microcapsules having a desired shell thickness, depending on the specific end-use of the composition of Kenta in view of Cont et al and Hagiwara et al as well, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Response to Arguments
46. Applicant's arguments filed on July 17, 2025 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
47. With respect to Applicant’s arguments regarding unexpected results of instant invention, it is noted that:
1) instant specification does not provide sufficient evidence of criticality in using microcapsules comprising any perfluoropolyether encapsulated with any type of capsule shell. Only a single inventive example showing the use of capsules with commercial Fomblin YR 1800 PFPE-containing core mixed with crumbs of a single commercial product Tecnoflon P 457 has been presented in instant specification. The comparative examples showed the use of either empty capsules, i.e. no lubricant at all (comparative example 3), or lubricant without capsules used a minor amount (comparative example 4). It is further noted that the properties of the single inventive example and the comparative examples, as presented in Table 1 of instant specification, are very close.
2) Further, the scope of instant claims is significantly broader that the scope of a single inventive example presented in instant specification. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness 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). See MPEP 716.02(d).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764