DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/28/2025 has been entered.
Claims 1-6, 8-33 are pending.
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 1-6, 8-14 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.
Claim 1 recites …wherein the encapsulated stannous chloride powder is coated by the amorphous, glass hydrocarbon oligomer in an amount of greater than about 50%. It appears the stannous chloride powder is coated by the carrier compound, which is the amorphous, glass hydrocarbon oligomer. Therefore, it would not be clear if the claim requires “encapsulated stannous chloride powder” or “stannous chloride powder” is ”coated by the amorphous, glass hydrocarbon oligomer”. In other words, it appears Applicant intended to recite …wherein the
Claims 2-14 are subsumed by this rejection because of their dependence.
Claim 1 recites …wherein the encapsulated stannous chloride powder is coated by the amorphous, glass hydrocarbon oligomer in an amount of greater than about 50%. It would not be clear to one skilled in the art how much encapsulated stannous chloride powder is coated since 50% does not specify a basis. In other words, it would not be clear if the amount coated is 50% by weight, or 50% of the surface area, or 50% of volume, etc. The specification does not elude any amount other than 50%. Therefore, it would be unclear how much of the encapsulated stannous chloride powder is coated.
Claims 2-14 are subsumed by this rejection because of their dependence.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
Claims 1-6, 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma et al. (US 2004/0132911) in view of Whelan et al. (WO 2016/137556) and Thompson et al. (WO 2015/095959).
Regarding claim 1: Sharma is directed to a composition comprising a rubber additive powder encapsulated in a carrier compound being a solid at a temperature in the range of 15.5 – 260 ˚C including a combination of a low molecular weight hydrocarbon (equivalent to an oligomer), and waxes (equivalent to natural waxes) ([0061]).
Free flowing non-sticking granules are disclosed in Example 1 of Sharma, indicating it is a solid at room temperature, i.e. about 20 ˚C.
Stannous chloride is not specifically mentioned, although accelerator additives are disclosed ([0028]).
Whelan discloses a composition comprising stannous chloride powder encapsulated by a propylene-based elastomer. One skilled in the art would have been motivated to have selected stannous chloride as the accelerator of choice in Sharma since stannous chloride is used as an accelerator to increase the degree of vulcanization of rubbers ([0052] Whelan). This is relevant since Sharma is directed to a pre-dispersion of rubber that utilizes powdered additives to solve the problems associated with powdered additives in rubber compositions, wherein Whelan teaches stannous chloride in particular is a powdered additive in rubber compositions. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected stannous chloride as the accelerator of choice in Sharma to arrive at claim 1 of the present invention.
Whelan doesn’t mention the encapsulated stannous chloride powder is coated by the amorphous, glass hydrocarbon oligomer in an amount of greater than about 50%. However, the process of encapsulating the stannous chloride is the same as the of the present invention. Specifically, the stannous chloride powder is mixed and melted ([0130] Whelan). Case law holds that 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). MPEP 2112.01(I).
The combination of Sharma and Whelan doesn’t mention an amorphous, glassy hydrocarbon.
Thompson is directed to a method of preventing agglomeration of rubber particles and elastomers obtained thereby. The rubber composition comprises stannous chloride as well as a hydrocarbon resin of ESCOREZ 5300 and ESCOREZ 5400 (p. 49 Thompson) (equivalent to an amorphous glassy hydrocarbon oligomer as defined by the present invention). One skilled in the art would have been motivated to have selected ESCOREZ 5300 or ESCOREZ 5400 as the hydrocarbon resin of choice in Sharma since Sharma already teaches tackifier resins can be added ([0028] Sharma), and Thompson teaches commercially available tackifier resins include amorphous, glassy hydrocarbon oligomer of ESCOREZ 5300 and ESCOREZ 5400. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected ESCOREZ 5300 or ESCOREZ 5400 as the hydrocarbon resin of choice in Sharma to arrive at claim 7 of the present invention.
Regarding claim 2: ESCOREZ 5300 or ESCOREZ 5400 are cycloaliphatic hydrocarbons (p. 49 Thompson).
Regarding claim 3: The molecular weight of the hydrocarbon is preferably between 300-3000 ([0083] Sharma). A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 4: Free flowing non-sticking granules are disclosed in Example 1 of Sharma, indicating it is a solid at room temperature, i.e. about 20 ˚C.
Regarding claim 5: Sharma discloses a low molecular weight hydrocarbon has a molecular weight of 300-3000 g/mol ([0083] Sharma).
Regarding claim 6: The molecular weight of the hydrocarbon is preferably between 300-3000 ([0083] Sharma). Polypropylene having a molecular weight of 1500 has a degree of polymerization of about 34, which is squarely within the claimed degree of polymerization and squarely within the molecular weight taught by Sharma. Therefore it is clear the ranges at least overlap. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 8: The amount of additive in the composition of Sharma is 5-95% by weight of the total composition ([0078] Sharma).
Regarding claim 9: The stannous chloride is in the stannous chloride, or stannous chloride dehydrate form (equivalent to anhydrous and dehydrated form), respectively ([0052] Whelan).
Regarding claim 10: Additives are disclosed ([0079] Sharma).
Regarding claim 11: Reinforcer [fillers] are disclosed ([0079] Example 11 Sharma).
Regarding claim 12: CaCO3 filler is disclosed in Example 11 in an amount of 45 pbw in a composition having a total weight of 300 pbw. It follows the amount of filler is present in an amount of 15% by weight based on the total weight of the composition.
Regarding claim 13: Example 1 of Sharma is in the form of free flowing granules ([0094] Sharma).
Regarding claim 14: Sharma doesn’t mention the size of the granules.
Whelan discloses the pellets have an average diameter of 0.25-10 mm ([0090]). One skilled in the art would have been motivated to have selected pellets having the size in Whelan to provide a form that can be used as an additive for a wide range of applications ([00107] Whelan). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a pellet having a size within the scope of claim 14.
Response to Arguments
Applicant's arguments filed 10/28/2025 herein “Remarks” have been fully considered but they are not persuasive.
Applicant argues Thompson teaches elastomers useful for specific applications such as sealants for windows. However nowhere does Thompson describe encapsulation or carrier compounds for the encapsulation of rubber additives. Nor does Thompson describe ESCOREZ as a carrier let alone stannous chloride. Thompson is concerned with elastomer blends for specific applications and only mentions ESCOREZ resins in the context of glass sealants. Thus Thompson provides no indication that ESCOREZ resins can be utilized as a carrier compound to encapsulate a rubber additive such as those of Sharma. A passing mention of hydrocarbon resins as tackifiers or plasticizers in Thompson does not render its use as a carrier resin.
This argument is not found persuasive since Thompson is relied on to disclose tackifier resins typically used in the art include ESCOREZ 5300 or ESCOREZ 5400. It is not necessary for Thompson to specifically teach they can be used as a carrier since Sharma teaches tackifier additives are used in combination with stannous chloride, and Whelan teaches the stannous chloride is encapsulated. Hence, the carrier resin serves both as the resin to encapsulate the stannous chloride and also serves as a tackifier additive.
Applicant argues hindsight analysis is used to arrive at the claimed invention from the cited art.
This argument is not found persuasive since case law holds “[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). See MPEP 2145 (X)(A). In the instant case, the present office action takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, and therefore impermissible hindsight is not required to arrive at the present invention.
Applicant argues the claims have been amended to require the encapsulated stannous chloride powder is coated by the amorphous, glass hydrocarbon oligomer in an amount of greater than about 50%. While the Examiner indicated that no basis is provided, the claimed “greater than about 50%” is in reference to the amount of carrier resin coats the stannous chloride.
This argument is not found persuasive since it would not be clear if 50% includes a surface area, volume, weight, etc. No indication is provided by the specification. Hence, it would not be clear what amount of coating is required by the claims.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764