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 .
Claim Objections
Claims 1, 13, 16, 19 objected to because of the following informalities:
Claim 1 the period after 85 ° C is improper;
Claim 13 the period after 85 ° C is improper;
Claim 16 the period after 30 ° C is improper;
Claim 19 the period after 85 ° C is improper.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kerstetter, et al., (US20160340480, herein Kerstetter), in the view of Smink et al., (WO2011028206, herein Smink), as evidenced by Irganox® 1076 datasheet.
Regarding Claims 1-6, 9, 10, Kerstetter teaches the rubber is dynamically vulcanized with the curative in the presence of the thermoplastic resin and the propylene-based elastomer to form the thermoplastic vulcanizate [0018], which indicates dynamically vulcanizing the composition to yield a thermoplastic vulcanizate (TPV), including: the thermoplastic resin, such as a polypropylene [0053]; natural rubber [0031] reads on the vulcanizable elastomer, also including: “Black MB” was a carbon black masterbatch that contained 57.75 wt % polypropylene, 41.1 wt % carbon black, and 0.25 wt % primary antioxidant [0133]; oil [0083].
Kerstetter does not teach the specific hindered phenol antioxidant and range, however, Smink teaches octadecyl-3-(3,5-di-tert-butyl-4-hydroxyphenyl)-propionate [0031], reads on hindered phenolic antioxidant, with melting range 50-55° C, and comprises an alkyl chain of 18 carbons [as evidenced by Irganox® 1076 datasheet], and in the range of “the antioxidant is added up to about 15% by weight of the masterbatch” [0031], which overlaps the claimed range, structure see below [as evidenced by Irganox® 1076 datasheet]
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Kerstetter and Smink are considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of the polypropylene, carbon black and antioxidant based masterbatch formation toward plastic composition application. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute octadecyl-3-(3,5-di-tert-butyl-4-hydroxyphenyl)-propionate [0031], in the range of “the antioxidant is added up to about 15% by weight of the masterbatch” [0031] as the antioxidant into masterbatch, with the purpose of improving the degradation and product service life span, and prevention of the loss of mechanical property during materials processing via the optimized antioxidant range, and further apply the masterbatch into the composition formation, because doing so would further achieve the desired property of exhibits excellent colorant dispersibility, coloring properties, increased additive concentrations, as well as improved handleability, so that the colored end product has excellent physical and mechanical strength as well as excellent coloration [0016] as taught by Smink.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding wherein the TPV has a UV ΔE 3200 hrs of less than 1, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. UV ΔE would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 12, Kerstetter teaches “mixer” [0101].
Claims 7, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kerstetter, et al., (US20160340480, herein Kerstetter), in the view of Smink et al., (WO2011028206, herein Smink) as applied in claim 1 above, in the view of Chung, et al., (US20170022332, herein Chung).
Regarding Claims 7, 8, Kerstetter teaches “process oils” [0018], but does not explicitly teach wherein the process oil comprises one or more of a Group II base oil and/or a Group II base oil resin-in-oil and the hydrotreating process. However, Chung teaches “Group II oil” [0067]; process oils can be hydrotreated [0070]. Kerstetter and Chung are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the thermoplastic vulcanizates comprising process oil selection. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute “Group II oil” [0067] and process oils can be hydrotreated [0070] from Chung into the composition formation, because doing so would further achieve the desired property of oils obtained from a catalytic hydrotreating process have low Noack volatility which can further help improve fogging properties when such oils are used in the TPVs described herein [0071] and optimized viscosity range.
Claims 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kerstetter, et al., (US20160340480, herein Kerstetter), in the view of Smink et al., (WO2011028206, herein Smink).
Regarding Claims 13-14, 16-18, Kerstetter teaches the rubber is dynamically vulcanized with the curative in the presence of the thermoplastic resin and the propylene-based elastomer to form the thermoplastic vulcanizate [0018], which indicates dynamically vulcanizing the composition to yield a thermoplastic vulcanizate (TPV), including: the thermoplastic resin, such as a polypropylene [0053]; curatives include phenolic resins [0085]; natural rubber [0031] reads on the vulcanizable elastomer, and also including: “Black MB” was a carbon black masterbatch that contained 57.75 wt % polypropylene, 41.1 wt % carbon black, and 0.25 wt % primary antioxidant [0133]; oil [0083].
Kerstetter does not teach the specific hindered phenol antioxidant and range, however, Smink teaches octadecyl-3-(3,5-di-tert-butyl-4-hydroxyphenyl)-propionate [0031], reads on hindered phenolic antioxidant, with melting range 50-55° C, and comprises an alkyl chain of 18 carbons [as evidenced by Irganox® 1076 datasheet], and in the range of “the antioxidant is added up to about 15% by weight of the masterbatch” [0031], which overlaps the claimed range, structure see below [as evidenced by Irganox® 1076 datasheet]
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Kerstetter and Smink are considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of the polypropylene, carbon black and antioxidant based masterbatch formation toward plastic composition application. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute octadecyl-3-(3,5-di-tert-butyl-4-hydroxyphenyl)-propionate [0031], in the range of “the antioxidant is added up to about 15% by weight of the masterbatch” [0031] as the antioxidant into masterbatch, with the purpose of improving the degradation and product service life span, and prevention of the loss of mechanical property during materials processing via the optimized antioxidant range, and further apply the masterbatch into the composition formation, because doing so would further achieve the desired property of exhibits excellent colorant dispersibility, coloring properties, increased additive concentrations, as well as improved handleability, so that the colored end product has excellent physical and mechanical strength as well as excellent coloration [0016] as taught by Smink. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding wherein the TPV has a UV ΔE 3200 hrs of less than 1, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. UV ΔE would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 15, Kerstetter teaches the TPV comprises antioxidants in an amount less than or equal to 2 wt % [0100] overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Claims 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kerstetter, et al., (US20160340480, herein Kerstetter), in the view of Smink et al., (WO2011028206, herein Smink).
Regarding Claims 19, 20, 21, 22, Kerstetter teaches the rubber is dynamically vulcanized with the curative in the presence of the thermoplastic resin and the propylene-based elastomer to form the thermoplastic vulcanizate [0018] via the method of blending by melt-mixing in any order in a mixer heated to above the melting temperature of the thermoplastic resin component [0101], which indicates dynamically vulcanizing the composition to yield a thermoplastic vulcanizate (TPV) and also indicates the mixing temperature is above the thermoplastic resin melting temperature, including: the thermoplastic resin, such as a polypropylene [0053]; natural rubber [0031] reads on the vulcanizable elastomer, and also including: “Black MB” was a carbon black masterbatch that contained 57.75 wt % polypropylene, 41.1 wt % carbon black, and 0.25 wt % primary antioxidant [0133]; oil [0083].
Kerstetter does not teach the specific hindered phenol antioxidant and range, however, Smink teaches octadecyl-3-(3,5-di-tert-butyl-4-hydroxyphenyl)-propionate [0031], reads on hindered phenolic antioxidant, with melting range 50-55° C, and comprises an alkyl chain of 18 carbons [as evidenced by Irganox® 1076 datasheet], and in the range of “the antioxidant is added up to about 15% by weight of the masterbatch” [0031], which overlaps the claimed range, structure see below [as evidenced by Irganox® 1076 datasheet]
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Kerstetter and Smink are considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of the polypropylene, carbon black and antioxidant based masterbatch formation toward plastic composition application. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute octadecyl-3-(3,5-di-tert-butyl-4-hydroxyphenyl)-propionate [0031], in the range of “the antioxidant is added up to about 15% by weight of the masterbatch” [0031] as the antioxidant into masterbatch, with the purpose of improving the degradation and product service life span, and prevention of the loss of mechanical property during materials processing via the optimized antioxidant range, and further apply the masterbatch into the composition formation, because doing so would further achieve the desired property of exhibits excellent colorant dispersibility, coloring properties, increased additive concentrations, as well as improved handleability, so that the colored end product has excellent physical and mechanical strength as well as excellent coloration [0016] as taught by Smink. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding wherein the TPV has a UV ΔE 3200 hrs of less than 1, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. UV ΔE would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Kerstetter, et al., (US20160340480, herein Kerstetter), and Smink et al., (WO2011028206, herein Smink) as applied to claim 19 above, in the further view of Jourdain, et. al., (US20180319961, herein Jourdain).
Regarding Claim 23, Kerstetter and Smink collectively teach the method of claim 19 as shown above. Kerstetter is silent on the steps of introducing to the blender each of kaolin and zinc oxide powder prior to dynamic vulcanization; however, Jourdain teaches “inorganic filler, kaolin, zinc oxide” [0082]; “followed by addition of the inorganic fillers to make the compositions. Dispersion (or “letdown”) of the masterbatch may take place as part of a processing step used to fabricate articles, such as in the extruder on an injection molding machine” [0096], indicates the kaolin and zinc oxide powder were introduced prior to dynamic vulcanization. Kerstetter and Jourdain are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the thermoplastic vulcanizates via inorganic filler selection and processing. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to add “inorganic filler, kaolin, zinc oxide” [0082]; “followed by addition of the inorganic fillers to make the compositions. Dispersion (or “letdown”) of the masterbatch may take place as part of a processing step used to fabricate articles, such as in the extruder on an injection molding machine” [0096] into the composition formation, because doing so would further achieve the product formation toward “molded articles include vehicle sealing systems, coatings, e.g., low friction coating, thermoplastic veneers, thermoplastic overmoldings, films, tapes, noise attenuating devices, automotive interior surfacing, automotive and industrial belts and hoses, packaging (in decorative and protective applications), construction compositions, decorative building compositions and consumer goods such as handbags, backpacks, clothing, hand or power tools, drawer and cabinet liners, picture frames, and hunting decoys.” [0111] as taught by Jourdain.
Response to Arguments
Applicant’s arguments, filed 11/24/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kerstetter, et al., (US20160340480, herein Kerstetter), and Smink et al., (WO2011028206, herein Smink).
The newly added references_Kerstetter and Smink collectively teach the composition as set forth above in the new rejection, including the specific masterbatch.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767