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 June 25, 2026 has been fully co9nsidered. The amendment to instant claims 1 and 20 is acknowledged. Specifically, claim 1 has been amended to include a limitation of the composition further comprising an adhesion promoter including an epoxy resin having a molecular weight of less than 700 g/mol. In light of the amendment, all previous rejections are withdrawn.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 1-5, 7, 11-14, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560) in view of Kutch et al (US 4,169,822), as evidenced by Philipson et al (US 2,891,927).
4. 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 claims 1, 4, 12);
E) 0.1-10%wt of at least one vulcanizing agent including organic peroxides, quinones ([0029], as to instant claims 5, 12);
F) 0.1-10%wt of adhesion promoters including polyepoxy resins ([0031], as to instant claims 6, 12);
G) 1-20%wt of fillers ([0033], as to instant claim 11).
5. 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).
6. The composition is having good adhesion to substrates and used in reinforcing and/or stiffening applications in vehicles ([0013], [0031], Abstract).
7. Though Sauer’560 discloses the composition comprising epoxy resins as the adhesion promoter component F) to improve adhesion, wherein Sauer’560 discloses said epoxy resins having molecular weight of above 700 in finely ground form are preferably employed ([0031]), however, said teaching is cited as preferable only, and not as required. Under 35 USC 103 a preferred embodiment is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
Sauer’560 does not teach away from using epoxy resins having molecular weight of less than 700 g/mol.
8. Though Sauer’560 does not teach further use of epoxy resins having molecular weight of less than 700 g/mol, and further the at least one of the styrene-butadiene rubbers having molecular weight of more than 300,000 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 (as to instant claim 19), 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 in amount of 0.5-60 pbw per 100 pbw of the elastomer (col. 2, lines 42-51).
2) Further, as evidenced by Philipson et al, the commercial epoxy resin Epon 828 is having molecular weight of 390 (col. 3, lines 57-60).
9. 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 comprising styrene-butadiene solid rubbers, 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 Sauer’560, and to use, or obvious to try to include the commercial epoxy resin Epon 828 having molecular weight of 390, at least in a minor amount, as the adhesion promoter in the sealing composition of Sauer’560, either in addition to the preferably used epoxy resins having molecular weight of more than 700 or as at least partial substitution, so to further increase adhesive properties of the sealing composition of Sauer’560, depending on the specific surfaces to be sealed, and further to use, or obvious to try to use the styrene-butadiene rubber having molecular weight of more than 300,000 g/mol, 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).
Given in the composition of Sauer’560 in view of Kutch et al, the styrene-butadiene rubber is used in amount of 20%wt ([0027] of Sauer’560) and the low molecular weight epoxy adhesion promoter is used in amount of 0.5-60 phr (col. 2, lines 42-45 of Kutch et al), therefore, the low molecular weight epoxy resin adhesion promoter in the composition of Sauer’560 in view of Kutch et al will be used in amount of 0.1-12%wt (as to instant claims 6 and 12).
10. It is further noted that instant specification does not explicitly cite the requirement for molecular weight of the epoxy resin adhesion promoter. Though in the specific examples 1-4 of instant specification the epoxy resin having molecular weight of <700 g/mol is used, any evidence of criticality of using the epoxy resin having such molecular weight has not been provided, as no comparative examples showing the use of the epoxy resins having molecular weight of more than 700 g/mol and adverse effect of using those have been provided.
11. As to instant claim 11, the composition further comprises fillers ([0033] of Sauer’560). Since the composition of Sauer’560 in view of Kutch et al is essentially or substantially the same as that claimed in instant invention, therefore, the composition of Sauer’560 in view of Kutch et al 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.
12. Claims 1-16, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560) in view of Kutch et al (US 4,169,822), as evidenced by Philipson et al (US 2,891,927), in further view of Kohlstrung et al (US 2017/0002164, Kohlstrung’164).
13. The discussion with respect to Sauer et al (US 2004/0265560, Sauer’560) in view of Kutch et al (US 4,169,822), as evidenced by Philipson et al (US 2,891,927),
set forth in paragraphs 4-11 above, is incorporated here by reference.
14. 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.
15. 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, 16) 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.
16. Since both Kohlstrung’164 and Sauer’560 in view of Kutch 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 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 in view of Kutch 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 Kutch 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
17. Since the composition of Sauer’560 in view of Kutch 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 Kutch 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.
18. Claims 1-5, 7, 10-14, 16, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560) in view of Kutch et al (US 4,169,822), as evidenced by Philipson et al (US 2,891,927), in further view of Ohkubo et al (US 2017/0267842).
19. The discussion with respect to Sauer et al (US 2004/0265560, Sauer’560) in view of Kutch et al (US 4,169,822), as evidenced by Philipson et al (US 2,891,927),
set forth in paragraphs 4-11 above, is incorporated here by reference.
20. Sauer’560 in view of Kutch et al do not explicitly recite the use of combination of peroxide and quinone as the vulcanization agents, and the use of liquid olefin resin.
21. 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]).
22. Since both Ohkubo et al and Sauer’560 in view of Kutch et al 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 in view of Kutch et al, 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 in view of Kutch et al, to provide a desired curing rate and level of curing, and further include liquid polyolefins and hydrocarbons into the composition of Sauer’560 in view of Kutch et al, so to further increase impact durability of the composition of Sauer’560 in view of Kutch 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).
23. Since the composition of Sauer’560 in view of Kutch et al and 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 Kutch et al and 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.
24. Claims 1-16, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560) in view of Kutch et al (US 4,169,822) and Ohkubo et al (US 2017/0267842), as evidenced by Philipson et al (US 2,891,927), in further view of Kohlstrung et al (US 2017/0002164, Kohlstrung’164).
25. The discussion with respect to Sauer et al (US 2004/0265560, Sauer’560) in view of Kutch et al (US 4,169,822) and Ohkubo et al (US 2017/0267842), as evidenced by Philipson et al (US 2,891,927), set forth in paragraphs 18-23 above, is incorporated here by reference.
26. Sauer’560 in view of Kutch et al and Ohkubo et al do 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.
27. 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.
28. Since Kohlstrung’164 and Sauer’560 in view of Kutch et al and 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 Kutch et al and Ohkubo et al, 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 Kutch et al and 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
29. Since the composition of Sauer’560 in view of Kutch et al, 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 Kutch et al, 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.
30. Claims 1-5, 7, 10-14, 16, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560, Sauer’560) in view of Kutch et al (US 4,169,822), as evidenced by Philipson et al (US 2,891,927), in further view of Born et al (US 6,096,791, Born’791).
31. The discussion with respect to Sauer et al (US 2004/0265560, Sauer’560) in view of Kutch et al (US 4,169,822), as evidenced by Philipson et al (US 2,891,927),
set forth in paragraphs 4-11 above, is incorporated here by reference.
32. Though Sauer’560 does not explicitly teaches the composition comprising liquid hydrocarbon resins and does not specify the styrene-butadiene rubber having molecular weight of more than 300,000,
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 to establish consistency and mechanical properties (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).
33. Since Born’791 and Sauer’560 in view of Kutch et al 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, and the composition further comprising liquid polybutene or polyisobutylene oil, 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 Kutch et al 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 in view of Kutch et al, and further include, at least partially liquid polyisobutylene oil to establish consistency and mechanical properties of the composition of Sauer’560 in view of Kutch 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).
34. 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) and Seymour et al (US 2,675,365).
35. Ohkubo et al discloses a thermally curable sealing composition pumpable at an application temperature of 15-60⁰C ([0082], [0083], [0009], [0099]) consisting of:
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, preferably petroleum hydrocarbon resins ([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) adhesion promoter ([0080]);
F) further filler ([0066]), and optionally a plasticizer ([0073]).
36. Ohkubo et al recites the same composition as claimed in instant invention,
but further including a hydrocarbon resin as the component A3), which is preferably petroleum hydrocarbon resin ([0044]). As evidenced by Seymour et al, the hydrocarbon resins derived from polymerization of petroleum oil are thermoplastic resins, and are also used in sealing compositions (see col. 3, lines 5-6, claim 1). Therefore, the component A3) in the composition of Ohkubo et al corresponds to “thermoplastic polymer” components as claimed in the amended claim 20.
37. 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).
38. 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).
Response to Arguments
39. Applicant's arguments filed on June 25, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
40. With respect to Applicant’s arguments regarding the teachings of Ohkubo et al (US 2017/0267842), Kutch et al (US 4,169,822) and Philipson et al (US 2,891,927), applied to the rejection of claim 20, it is noted that:
1) Kutch et al is a secondary reference which was applied for the teachings of the sue of polyepoxy resins having molecular weight lower than 700 g/mol as adhesion promoters in sealing compositions based on styrene-butadiene rubbers. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
2) Instant claim 20 (and also instant claim 1) is silent with respect to the relative amounts of the components in the composition. Thus, the amount of the low molecular weight polyepoxy resin in claim 20 is not mentioned, and maybe used in a very minor amount. Therefore, it is not clear how “a skilled artisan would expect a low molecular weight epoxy to undermine the properties (e.g. damping and impact resistance) of Ohkubo et al”, as argued by Applicant, even if said low molecular weight polyepoxy resin is used in a very minor amount. Further, the composition of Ohkubo et al includes liquid rubber in amount of as high as 30%wt ([0053]) and liquid thermoplastic petroleum-based hydrocarbon resins in amount of as high as 20%wt ([0048]), both of which will intrinsically and necessarily reduce the compositional viscosity. Therefore, there is no substantial evidence that the use of a very minor amount of the low molecular weight epoxy resin adhesion promoter in the composition of Ohkubo et al will “reduce compositional viscosity” to such extent that will “adversely affect expansion behavior, diminish energy dissipation and damping, and reduce low temperature impact resistance” as argued by Applicant.
3) Furthermore, instant claims 1 and 20 are silent with respect to any properties of the composition, and further instant claims 1 and 20 are very broad, since do not cite relative amounts of the components.
4) In response to Applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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
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