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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 29, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on January 29, 2026 has been fully considered. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
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.
4. Claims 1-5, 10-11, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Born et al (US 6,096,791, Born’791) in view of Ohkubo et al (US 2017/0267842).
5. Born’791 discloses a heat curing expanding composition comprising:
A) 5-50%wt, or 20%wt of a solid rubber comprising polybutadiene copolymers having molecular weight of 200,000-400,000 (col. 3, lines 25-26, 35-45, as to instant claim 19);
B) 0.02-5%wt of a vulcanization system comprising at least one of peroxides, quinones, and quinine dioxime (col. 3, lines 50-67, col. 7, lines 40-45, as to instant claim 5);
C) a blowing agent comprising sulfonyl hydrazides and/or azodicarbonamide (col. 4, lines 6-20); specifically exemplified the use of 1%wt of azodicarbonamide (col. 5, lines 40-50, as to instant claim 4);
D) 2-20%wt of a low molecular weight polybutene or polyisobutylene oil (col. 4, lines 47-54, as to instant claim 10, 16);
E) further fillers (col. 4, lines 53-67, as to instant claim 11).
6. Based on the teachings of Born’791 that at least one, i.e. more than one, of peroxides, quinones, and quinine dioxime can be used as vulcanization system, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of peroxide and quinone, or a combination of peroxide, quinone and quinone dioxime as the vulcanization system component B) as well, 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).
7. The composition of Born’791 is used for bonding and sealing solid surfaces (col. 1, lines 8-10).
8. Born’791 does not recite said composition further comprising a liquid rubber, and the solid rubber being styrene-butadiene rubber.
9. However, Ohkubo et al discloses a thermally curable sealing composition pumpable at an application temperature of 15-60⁰C ([0082], [0083], [0009], [0099]), comprising:
A1) a solid rubber having Mooney viscosity (ML1+4 at 100⁰C) of 20-60, comprising styrene-butadiene rubber or styrene/isoprene rubber ([0027], [0030], also as to instant claim 2);
A2) a liquid olefin polymer ([0032]-[0033]);
A3) a hydrocarbon resin ([0043]-[0046]); the total amount of A2) and A3) is 5-20%wt
([0048], as to instant claim 10, 16);
A4) 15-20%wt or more of a liquid polydiene rubber comprising butadiene, isoprene and copolymers thereof ([0049]-[0050], [0053], as to instant claim 3, 12);
B) a vulcanization system comprising 0.3-4.5%wt of a peroxide and 0.01-5%wt of quinone, quinone dioxime or dinitrobenzene ([0062], [0064], used in their combination ([0058], as to instant claims 1, 5, 12);
D) 0.2-6%wt of a blowing agent comprising azodicarbonamide ([0070], [0072], as to instant claim 4, 12).
E) 2-40%wt of a liquid hydrocarbon oil ([0074]-[0075], as to instant claims 10, 16).
The composition further comprises a filler ([0078], as to instant claim 11) and adhesion promoters ([0080], as to instant claim 12).
10. Ohkubo et al teaches that when the liquid rubber used in amount of 15%wt or more, a better low-temperature impact durability can be imparted to the cured product ([0053]).
11. Since both Ohkubo et al and Born’791 are related to heat-curable expandable compositions comprising solid rubbers, liquid polyolefin, vulcanization system based on peroxides and oximes, azodicarbonamide blowing agent, used in sealing applications, and thus belong to the same field of endeavor, wherein Ohkubo et al teaches such compositions comprising styrene-butadiene copolymers as solid rubber (as to instant claim 2), the combination of peroxide and quinones as the vulcanization agents and further the composition comprising liquid rubber to provide better low temperature durability to cured products, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ohkubo et al and Born’791, and to include, or obvious to try to use styrene-butadiene copolymers as the solid rubber, the combination of peroxide and quinones as the vulcanization agents, and further include
liquid rubber in the composition of Born’791 in an amount as taught by Ohkubo et al, so to further improve low temperature durability of the cured products of Born’791 as well, 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).
12. Since the composition of Born’791 in view of Ohkubo et al is substantially the same as that claimed in instant invention, i.e. comprises the same components in relative amounts as those claimed in instant invention, therefore, the composition of Born’791 in view of Ohkubo et al will intrinsically and necessarily comprise the properties the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, including being pumpable at application temperature of 30-120⁰C and having a flow rate of at least 100 g/min when discharged, at 60°C and a pump pressure of 6 bar, from a completely filled, commercially available aluminum nozzle cartridge having a capacity of 310 mL, an internal diameter of 46 mm, and an outlet opening that has been opened by a cartridge piercing tool having an external diameter of 9 mm (as to instant claims 1, 11) as well.
Where 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). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
13. All ranges in the composition of Born’791 in view of Ohkubo 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. Claims 1-16, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Born et al (US 6,096,791, Born’791) in view of Ohkubo et al (US 2017/0267842), Kohlstrung et al (US 2017/0002164, Kohlstrung’164) and Sauer et al (US 2007/0299193, Sauer’193).
15. The discussion with respect to Born et al (US 6,096,791, Born’791) in view of Ohkubo et al (US 2017/0267842), set forth in paragraphs 4-13 above, is incorporated here by reference.
16. Born’791 in view of Ohkubo et al do not recite the composition further comprising adhesion promoters used in amount 1-15%wt and peroxidically cross-linkable polymers.
17. However,
1) Kohlstrung’164 discloses a thermally expandable composition comprising:
a) a solid rubber, such as styrene-butadiene rubber, polybutadiene rubber, butyl rubber, having a molecular weight Mw of 100,000 or above ([0037], [0042]);
b) a liquid polyene ([0038]),
c) blowing agents, peroxide curing agents ([0022], [0071]), and further
an epoxy resin as an elasticity-increasing resin and as an adhesion promoter ([0032], [0045]) and a heat-activatable or latent curing agent, specifically dicyandiamide, for said epoxy resin ([0033], as to instant claim 6).
Kohlstrung’164 further teaches that it has proven to be advantageous if the thermally expandable preparations further contain at least one peroxide-crosslinkable polymer ([0073]), in particular an ethylene/vinyl acetate copolymer having melt flow index of as high as 400 g/10 min ([0079], as to instant claims 7-8, 13-14), so to provide good adhesion properties ([0076]). Kohlstrung’164 further teaches that the peroxide-crosslinkable polymer maybe functionalized ethylene/methyl acrylate, where the functional groups maybe glycidyl methacrylate group ([0074], as to instant claims 9, 13, 15). The composition of Kohlstrung’164 is used for sealing applications (Abstract).
2) Sauer’193 discloses a sprayable rubber composition comprising a liquid diene, peroxide and quinone vulcanization system, oils, plasticizers and further adhesion promoters ([0017]-[0028]), wherein Sauer’193 teaches the use of polyepoxy resins or anhydrides as adhesion promoters in amount of 5-20%wt ([0039]). The composition of
Sauer’193 is used as an adhesive or sealant ([0002]).
18. Since all of Kohlstrung’164, Sauer’193 and Born’791 in view of Ohkubo et al are related to compositions based on rubbers, peroxide/quinone vulcanization system used in sealing applications, and thereby belong to the same field of endeavor, wherein Sauer’193 specifies the use of polyepoxy resins or anhydrides as adhesion promoters in amount of 5-20%wt, and Kohlstrung’164 explicitly teaches the use of dicyandiamide as the latent curing agent for said polyepoxy resins and further peroxide- cross-linkable polymers to provide good adhesion properties, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Born’791 in view of Ohkubo et al, Kohlstrung’164 and Sauer’193, and to use, or obvious to try to use the polyepoxy resins as the adhesion promoters in the composition of Born’791 in view of Ohkubo et al in amount of 5-20%wt, further in combination with dicyandiamide as additional curing agent, so to further promote curing of the composition of Born’791 in view of Ohkubo et al, and further include at least one, in at least minor amount, peroxide-crosslinkable polymer in the composition of Born’791 in view of Ohkubo et al to further improve adhesion properties, and 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).
19. Since the composition of Born’791 in view of Ohkubo et al, Kohlstrung’164 and Sauer’193 is substantially the same as that claimed in instant invention, i.e. comprises the same components in relative amounts as those claimed in instant invention, therefore, the composition of Born’791 in view of Ohkubo et al, Kohlstrung’164 and Sauer’193 will intrinsically and necessarily comprise the properties the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, including being pumpable at application temperature of 30-120⁰C and having a flow rate of at least 100 g/min when discharged, at 60°C and a pump pressure of 6 bar, from a completely filled, commercially available aluminum nozzle cartridge having a capacity of 310 mL, an internal diameter of 46 mm, and an outlet opening that has been opened by a cartridge piercing tool having an external diameter of 9 mm (as to instant claims 1, 11) as well. Where 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). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
20. Claims 1-5, 7, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560).
21. Sauer’560 discloses a composition comprising:
A) 3-20%wt of solid rubber, specifically styrene/butadiene rubber having Mw of 100,000 or higher ([0027], as to instant claims 1-2, 12);
B) 5-50%wt of liquid rubber ([0026], as to instant claims 1, 3, 12);
C) 2-20%wt of thermoplastic polymers, specifically ethylene/vinyl acetate copolymer ([0028], as to instant claims 7-8; 13-14);
D) 0.1-2%wt of azodicarbonamide blowing agent ([0030]-[0031], as to instant claim 4);
E) 0.1-10%wt of at least one vulcanizing agent including organic peroxides, quinones ([0029], as to instant claim 5);
F) 0.1-10%wt of adhesion promoters including hydrocarbon resins, tackifying agents, polyepoxy resins ([0031]);
G) 1-20%wt of fillers ([0033], as to instant claim 11).
22. Though Sauer’560 does not explicitly teach the vulcanizing agent component E) comprising both peroxides and quinones, since Sauer’560 discloses that at least one, i.e. more than one, of cited vulcanizing agents can be used, it would have been obvious to a one of ordinary skill in the art to use both peroxide and quinones vulcanizing agents in a mixture, so to further improve curing of the composition, 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).
23. The composition is having good adhesion to substrates and used in reinforcing and/or stiffening applications in vehicles ([0013], [0031], Abstract).
24. As to instant claim 11, the composition further comprises fillers ([0033]). Since the composition of Sauer’560 is essentially or substantially the same as that claimed in instant invention, therefore, the composition of Sauer’560 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties that are either he same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, including being pumpable at a temperature 30-120⁰C and having a flow rate of at least 100 g/min when discharged, at 60°C and a pump pressure of 6 bar, from a completely filled, commercially available aluminum nozzle cartridge having a capacity of 310 mL, an internal diameter of 46 mm, and an outlet opening that has been opened by a cartridge piercing tool having an external diameter of 9 mm (as to instant claims 1, 11) as well. Where 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). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
25. Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560) in view of Kohlstrung et al (US 2017/0002164, Kohlstrung’164).
26. The discussion with respect to Sauer et al (US 2004/0265560, Sauer’560) set forth in paragraphs 20-24 above, is incorporated here by reference.
27. Sauer’560 does not specify the use of dicyandiamine curing agent for said epoxy resin adhesion promoter; further the use of glycidyl-group containing terpolymers as peroxidically cross-linkable polymer, the ethylene-vinyl acetate copolymer having MFR of more than 200 g/10 min and a liquid hydrocarbon resin.
28. However, Kohlstrung’164 discloses a thermally expandable composition comprising:
a) a solid rubber, such as styrene-butadiene rubber, polybutadiene rubber, butyl rubber, having a molecular weight Mw of 100,000 or above ([0037], [0042]);
b) 5-50%wt of a liquid polyene ([0038], as to instant claim 10),
c) blowing agents, peroxide curing agents ([0022], [0071]),
d) aliphatic hydrocarbon resin in an exemplified amount of 8 pbw (Table 1, as to instant claim 10) and further
an epoxy resin as an elasticity-increasing resin and as an adhesion promoter ([0032], [0045]) and a heat-activatable or latent curing agent, specifically dicyandiamide, for said epoxy resin ([0033], as to instant claim 6).
Kohlstrung’164 further teaches that it has proven to be advantageous if the thermally expandable preparations further contain at least one peroxide-crosslinkable polymer ([0073]), in particular an ethylene/vinyl acetate copolymer having melt flow index of as high as 400 g/10 min ([0079], as to instant claims 7-8, 13-14), so to provide good adhesion properties ([0076]). Kohlstrung’164 further teaches that the peroxide-crosslinkable polymer maybe functionalized ethylene/methyl acrylate, where the functional groups maybe glycidyl methacrylate group ([0074], as to instant claims 9, 13, 15). The composition of Kohlstrung’164 is used for applications requiring sealing and filling cavities, including sealing cavities in vehicles (Abstract, [0112]).
Thus, Kohlstrung’164 explicitly teaches the use the latent curing agent, specifically dicyandiamide, for said epoxy resin adhesion promoter.
29. Since both Kohlstrung’164 and Sauer’560 are related to expandable compositions, based on solid rubbers, liquid rubbers, peroxidically cross-linkable resins, peroxide, blowing agent and epoxy-based adhesion promoters, used in sealing applications in vehicle industry, and thereby belong to the same field of endeavor, wherein Kohlstrung’164 specifies the use of latent curing agent for such epoxy resin-based adhesion promoter, further use of liquid hydrocarbon resin, and glycidyl-based terpolymers as peroxidically cross-linkable resins, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sauer’560 and Kohlstrung’164, and to include, or obvious to try to include, the latent curing agent for said epoxy resin adhesion promoter, glycidyl-containing terpolymer, EVA having MFR of 400 g/10 min and liquid hydrocarbon resins in the composition of Sauer’560, since such components are taught in the art as being used in sealing compositions, as shown by Kohlstrung’164, and 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). 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
30. Since the composition of Sauer’560 in view of Kohlstrung’164 is substantially the same as that claimed in instant invention, i.e. comprises the same components in relative amounts as those claimed in instant invention, therefore, the composition of Sauer’560 in view of Kohlstrung’164 will intrinsically and necessarily comprise the properties the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, including being pumpable at application temperature of 30-120⁰C and having a flow rate of at least 100 g/min when discharged, at 60°C and a pump pressure of 6 bar, from a completely filled, commercially available aluminum nozzle cartridge having a capacity of 310 mL, an internal diameter of 46 mm, and an outlet opening that has been opened by a cartridge piercing tool having an external diameter of 9 mm (as to instant claims 1, 11) as well. Where 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). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
31. Claims 1-5, 7, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560) in view of Ohkubo et al (US 2017/0267842).
32. The discussion with respect to Sauer et al (US 2004/0265560, Sauer’560) set forth in paragraphs 20-24 above, is incorporated here by reference.
33. Sauer’560 does not explicitly recite the use of combination of peroxide and quinone as the vulcanization agents, and the use of liquid olefin resin.
34. However, Ohkubo et al discloses a thermally curable sealing composition pumpable at an application temperature of 15-60⁰C ([0082], [0083], [0009], [0099]), comprising:
A1) a solid rubber having Mooney viscosity (ML1+4 at 100⁰C) of 20-60, comprising styrene-butadiene rubber or styrene/isoprene rubber ([0027], [0030], also as to instant claim 2);
A2) a liquid olefin polymer ([0032]-[0033]);
A3) a hydrocarbon resin ([0043]-[0046]); the total amount of A2) and A3) is 5-20%wt
([0048], as to instant claim 10, 16);
A4) 15-20%wt or more of a liquid polydiene rubber comprising butadiene, isoprene and copolymers thereof ([0049]-[0050], [0053], as to instant claim 3, 12);
B) a vulcanization system comprising 0.3-4.5%wt of a peroxide and 0.01-5%wt of quinone, quinone dioxime or dinitrobenzene ([0062], [0064], used in their combination ([0058], as to instant claims 1, 5, 12);
D) 0.2-6%wt of a blowing agent comprising azodicarbonamide ([0070], [0072], as to instant claim 4, 12).
E) 2-40%wt of a liquid hydrocarbon oil ([0074]-[0075], as to instant claims 10, 16).
The composition further comprises a filler ([0078], as to instant claim 11) and adhesion promoters ([0080], as to instant claim 12).
The composition of Ohkubo et al is used as an adhesive/sealant in structural components including vehicles ([0099]).
35. Since both Ohkubo et al and Sauer’560 are related to curable expandable compositions comprising solid rubbers, liquid rubber, vulcanization system based on peroxides and oximes, azodicarbonamide blowing agent, used in sealing applications, and thus belong to the same field of endeavor, wherein Ohkubo et al teaches such compositions comprising the combination of peroxide and quinones as the vulcanization agents and further the composition comprising liquid polyolefins and hydrocarbon resins to provide impact durability at low temperatures ([0048]), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ohkubo et al and Sauer’560, and to include, or obvious to try to use the combination of peroxide and quinones as the vulcanization agents in the composition of Sauer’560, to provide a desired curing rate and level of curing, and further include liquid polyolefins and hydrocarbons into the composition of Sauer’560, so to further increase impact durability of the composition of Sauer’560, 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).
36. Since the composition of Sauer’560 in view of Ohkubo et al is substantially the same as that claimed in instant invention, i.e. comprises the same components in relative amounts as those claimed in instant invention, therefore, the composition of Sauer’560 in view of Ohkubo et al will intrinsically and necessarily comprise the properties the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, including being pumpable at application temperature of 30-120⁰C and having a flow rate of at least 100 g/min when discharged, at 60°C and a pump pressure of 6 bar, from a completely filled, commercially available aluminum nozzle cartridge having a capacity of 310 mL, an internal diameter of 46 mm, and an outlet opening that has been opened by a cartridge piercing tool having an external diameter of 9 mm (as to instant claims 1, 11) as well.
Where 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). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
37. Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560) in view of Ohkubo et al (US 2017/0267842) and Kohlstrung et al (US 2017/0002164, Kohlstrung’164).
38. The discussion with respect to Sauer et al (US 2004/0265560, Sauer’560) in view of Ohkubo et al (US 2017/0267842) set forth in paragraphs 31-36 above, is incorporated here by reference.
39. Sauer’560 in view of Ohkubo et al does not specify the use of dicyandiamine curing agent for said epoxy resin adhesion promoter; further the use or glycidyl-group containing terpolymers as peroxidically cross-linkable polymer, the ethylene-vinyl acetate copolymer having MFR of more than 200 g/10 min and liquid hydrocarbon resin.
40. However, Kohlstrung’164 discloses a thermally expandable composition comprising:
a) a solid rubber, such as styrene-butadiene rubber, polybutadiene rubber, butyl rubber, having a molecular weight Mw of 100,000 or above ([0037], [0042]);
b) 5-50%wt of a liquid polyene ([0038], as to instant claim 10),
c) blowing agents, peroxide curing agents ([0022], [0071]),
d) aliphatic hydrocarbon resin in an exemplified amount of 8 pbw (Table 1, as to instant claim 10) and further
an epoxy resin as an elasticity-increasing resin and as an adhesion promoter ([0032], [0045]) and a heat-activatable or latent curing agent, specifically dicyandiamide, for said epoxy resin ([0033], as to instant claim 6).
Kohlstrung’164 further teaches that it has proven to be advantageous if the thermally expandable preparations further contain at least one peroxide-crosslinkable polymer ([0073]), in particular an ethylene/vinyl acetate copolymer having melt flow index of as high as 400 g/10 min ([0079], as to instant claims 7-8, 13-14), so to provide good adhesion properties ([0076]). Kohlstrung’164 further teaches that the peroxide-crosslinkable polymer maybe functionalized ethylene/methyl acrylate, where the functional groups maybe glycidyl methacrylate group ([0074], as to instant claims 9, 13, 15). The composition of Kohlstrung’164 is used for applications requiring sealing and filling cavities, including sealing cavities in vehicles (Abstract, [0112]).
Thus, Kohlstrung’164 explicitly teaches the use the latent curing agent, specifically dicyandiamide, for said epoxy resin adhesion promoter.
41. Since Kohlstrung’164 and Sauer’560 in view of Ohkubo et al are related to expandable compositions, based on solid rubbers, liquid rubbers, peroxidically cross-linkable resins, peroxide, blowing agent and epoxy-based adhesion promoters, used in sealing applications in vehicle industry, and thereby belong to the same field of endeavor, wherein Kohlstrung’164 specifies the use of latent curing agent for such epoxy resin-based adhesion promoter, further liquid hydrocarbon resin, and glycidyl-based terpolymers as peroxidically cross-linkable resins, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sauer’560 in view of Ohkubo et al and Kohlstrung’164, and to include, or obvious to try to include, the latent curing agent for said epoxy resin adhesion promoter, glycidyl-containing terpolymer, EVA having MFR of 400 g/10 min and liquid hydrocarbon resins in the composition of Sauer’560 in view of Ohkubo et al, since such components are taught in the art as being used in sealing compositions, as shown by Kohlstrung’164, and 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). 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
42. Since the composition of Sauer’560 in view of Ohkubo et al and Kohlstrung’164 is substantially the same as that claimed in instant invention, i.e. comprises the same components in relative amounts as those claimed in instant invention, therefore, the composition of Sauer’560 in view of Ohkubo et al and Kohlstrung’164 will intrinsically and necessarily comprise the properties the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention, including being pumpable at application temperature of 30-120⁰C and having a flow rate of at least 100 g/min when discharged, at 60°C and a pump pressure of 6 bar, from a completely filled, commercially available aluminum nozzle cartridge having a capacity of 310 mL, an internal diameter of 46 mm, and an outlet opening that has been opened by a cartridge piercing tool having an external diameter of 9 mm (as to instant claims 1, 11) as well. Where 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). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
43. Claims 1-5, 7, 11, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560) in view of Born et al (US 6,096,791, Born’791).
44. The discussion with respect to Sauer et al (US 2004/0265560, Sauer’560) set forth in paragraphs 20-24 above is incorporated here by reference.
45. Though Sauer’560 discloses a composition comprising as component A) 3-20%wt of solid rubber, specifically styrene/butadiene rubber having Mw of higher than 100,000 ([0027]), Sauer’560 does not specify said Mw as being greater than 300,000.
46. However, Born’791 discloses a curing expanding composition comprising:
A) 5-50%wt, or 20%wt of a solid rubber comprising polybutadiene copolymers having molecular weight of 200,000-400,000 (col. 3, lines 25-26, 35-45, as to instant claim 19);
B) 0.02-5%wt of a vulcanization system comprising at least one of peroxides, quinones, and quinine dioxime (col. 3, lines 50-67, col. 7, lines 40-45, as to instant claim 5);
C) a blowing agent comprising sulfonyl hydrazides and/or azodicarbonamide (col. 4, lines 6-20); specifically exemplified the use of 1%wt of azodicarbonamide (col. 5, lines 40-50, as to instant claim 4);
D) 2-20%wt of a low molecular weight polybutene or polyisobutylene oil (col. 4, lines 47-54, as to instant claim 10, 16);
E) further fillers (col. 4, lines 53-67, as to instant claim 11).
The composition of Born’791 is used in sealing/bonding applications for bonding vehicle parts (col. 1, lines 8-12).
47. Since both Born’791 and Sauer’560 are related to substantially the same compositions based on solid rubber, peroxide/quinone vulcanization systems, blowing agents, used in sealing/adhesive applications, and thereby belong to the same field of endeavor, wherein Born’791 discloses the use of solid rubber having Mw of as high as 400,000, therefore, it would have been obvious toa one of ordinary skill in the art to combine the teachings of Sauer’560 and Born’791, and to use, or obvious to try to use the solid rubber having Mw of as high as 400,000 as the solid rubber in the composition of Sauer’560, 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).
48. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ohkubo et al (US 2017/0267842) in view of Kutch et al (US 4,169,822), as evidenced by Philipson et al (US 2,891,927).
49. Ohkubo et al discloses a thermally curable sealing composition pumpable at an application temperature of 15-60⁰C ([0082], [0083], [0009], [0099]), comprising:
A1) a solid rubber (Abstract);
A2) an olefinic double bond-containing polymer ([0032]-[0033]), i.e. peroxidically
crosslinkable polymer;
A3) as low as 0.1%wt of a hydrocarbon resin ([0043]-[0046], [0048]);
A4) a liquid polydiene rubber comprising butadiene, isoprene and copolymers thereof ([0049]-[0050], [0053]);
B) a vulcanization system comprising a peroxide and quinone, quinone dioxime or dinitrobenzene ([0062], [0064], used in their combination ([0058], as to instant claims 1, 5, 12);
C) a blowing agent comprising azodicarbonamide ([0070], [0072]);
D) a vulcanization accelerator (Table 1);
E) filler ([0066]) and
E) adhesion promoter ([0080]).
50. Though Ohkubo et al does not explicitly recite the adhesion promoter
component E) being an epoxy resin with molecular weight of less than 700 g/mol,
1) Kutch et al discloses a composition used as sealants, adhesives, comprising: solid elastomeric polymers having molecular weight of more than 300,000, including copolymers of styrene and butadiene (col. 2, lines 1-5), in further combination with adhesion promoter comprising epoxy resins, such as commercial product Epon 828 (col. 2, lines 42-51).
2) As evidenced by Philipson et al, the commercial epoxy resin Epon 828 is having molecular weight of 390 (col. 3, lines 57-60).
51. Since epoxy resins having molecular weight of 390, specifically Epon 828, are taught in the art as being used as adhesion promoters for solid rubber-based sealing compositions, as shown by Kutch et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kutch et al and Ohkubo et al, and to use, or obvious to try to use the commercial epoxy resin Epon 828 having molecular weight of 390 as the adhesion promoter in the sealing composition of Ohkubo et al, so to further increase adhesive properties of the sealing composition of Ohkubo et al 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).
52. The present claim 20 employs “consisting essentially of” claim language. “Consisting essentially of” claim language limits a claim to the recited ingredients and any ingredients which do not materially affect the novel and/or basic characteristics of the invention. See MPEP 2111.03. A “consisting essentially of” claim occupies a middle ground between closed claims that are written in a “consisting of” format and fully open claims that are drafted in a “comprising’ format." PPG Indus. v. Guardian Indus., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). For the purposes of searching for and applying prior art under 35 USC 103 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention."); see also AK Steel Corp. v. Sollac, 344 F3.d 1234, 1239-1240, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003); In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 895-96 (CCPA 1963). If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964); see also MPEP 2111.03. The claim as a whole, including all limitations found in the preamble (see Pac-Tec Inc. v. Amerace Corp., 903 F.2d 796, 801, 14 USPQ2d 1871, 1876 (Fed. Cir. 1990) (determining that preamble language that constitutes a structural limitation is actually part of the claimed invention)), the transitional phrase, and the body of the claim, must be sufficiently supported to satisfy the written description requirement. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations. Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.
Response to Arguments
53. Applicant's arguments filed on January 29, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
Conclusion
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764