DETAILED ACTION
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 .
This communication is responsive to the claim set filed 01/20/2026. Claims 1-8 and 10-36 are pending. Elected claims 1-8, 10, 20-36 are under consideration in this Office Action.
Claims 11-19 are withdrawn.
The 35 USC 103 rejection dated 10/21/2025 is MAINTAINED.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a
previous Office Action.
Claim Rejections - 35 USC§ 103
Claims 1-5, 7-8, 10, and 20-35 are rejected under 35 U.S.C. 103 as being unpatentable over
Cevahir et al. (WO2015188939) in view of Xu et al. (CN106084362A).
The 35 USC 103 rejection dated 10/21/2025 at para. 9 is MAINTAINED.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Cevahir et al. (WO2015188939) in view of Xu et al. (CN106084362A).
The disclosure of Cevahir in view of Xu on Claim 1 is incorporated herein by reference.
Xu teaches the rubber modifier includes carbon black (Ins 127-128), therefore, Cevahir in view of Xu teaches the modified composition comprising carbon black.
Response to Arguments
Applicant's arguments filed 01/20/2026 have been fully considered but they are not persuasive.
Applicant’s argument: Cevahir teaches against modifications to its reactive component system by expressly stating that "each component of the dip formulation must be used in an optimum stoichiometry to achieve the targeted adhesion retention properties.
Examiner’s answer: After modification, each component of Cevahir’s dip formulation is still used in an optimum stoichiometry. Cevahir teaches the aqueous dipping composition comprising, by dry weight, 6 -21 wt.% rubber latex, 1-3 wt.% polyisocyanate, 0.1-2wt.% epoxy, and 0.1-2 wt.% acrylic polymer; while instant claim 5 claims a dipping composition comprising 4.5% to 50% by dry weight of the at least one rubber latex, 0.2% to 4.5% by dry weight of the at least one blocked isocyanate, 0.2% to 4% by dry weight of the at least one epoxy group-containing compound, 0.1 % to 2% by dry weight of the at least one polymer with carboxylic acid functional groups. And the filler amount can be as low as 0.3% by dry weight, at a glance, one ordinary skilled artisan would know that range of each component is still overlapping the claimed range.
Applicant’s argument: Xu does not teach or suggest a filler.
Examiner’s answer: Xu teaches the rubber modifier is one or more of carbon black, white carbon black,
lignin, clay powder, mica powder, kaolin, bentonite, liquid paraffin or solid paraffin. Carbon black, white carbon black, clay powder, mica powder, and kaolin are well known fillers. Additionally, [T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer (MPEP 2112 I).
Applicant’s argument: Xu does not teach or suggest the ratio of latex to resin.
Examiner’s answer: The primary reference Cevahir teaches such ratio.
Applicant’s argument: the claimed compositions yield unexpected result.
Examiner’s answer: The showing of unexpected results must be commensurate in scope with the claims.
See MPEP 716.02(d). To establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP § 716.02(d)(II).
Applicant presented comparison of two examples to show the composition with R=4 is superior than the composition with R=0.9. Examiner does not agree that the data can show the criticality of R being at least 2. And R being at least 2 is open to an unlimited upper range. Applicant did not present data to support the upper range.
Regarding the unexpected results based on technical advantages of "0.3% to 10% by dry weight of at least one filler."
Examiner agrees that Applicant has established the criticality of the lower limit: 0.3% by dry weight. However, the highest dry weight of the example fillers is 2.26%, while the claimed upper limit is 10%. In addition, the data do not show a trending to expand to 10 wt.%. Moreover, data only support carbon black and silica while claimed filler.
Conclusion
THIS ACTION IS MADE FINAL. 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 HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763
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