DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response to Applicant’s response to a Nonfinal rejection filed November 12, 2025.
Claims 1-9, 12-14, and 28-29 are currently pending.
This Action is FINAL.
Claim Analysis
Summary of Claim 1:
A composition comprising:
100 parts by weight per hundred parts by weight rubber (phr) of a rubber;
and 1 phr to 30 phr of a propylene-a-olefin-diene (PE(D)M) polymer comprising
65 wt% to 97.5 wt% propylene,
2.5 wt% to 35 wt% C2 or C4-C20 a-olefin,
and 0.2 wt% to 20 wt% diene, said wt% based on the weight of the PE(D)M polymer, wherein the wt% numbers are uncorrected numbers, wherein wt% propylene plus wt% C2 or wt% C4-C20 α-olefin equals 100%, wherein the PEDM polymer has an atactic polypropylene structure and wherein the PEDM polymer is produced from a tetrahydroindacenyl-based catalyst and
the PE(D)M polymer has
(a) Mooney viscosity (ML(1+4) @ 125°C) of 1 to 100,
(b) melt flow rate of 0.1 g/min to 100 g/min, and
(c) a weight average molecular weight to n-average molecular weight (Mw/Mn) ratio of 1.5 to 3.0;
1 to phr to 500 phr of carbon black.
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.
Claims 1-9, 12-13, and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Blok et al. (US 20170292013 as listed on IDS dated 01/12/2023).
Regarding claim 1, Blok et al. disclose a composition comprising 100 parts per hundred rubber (SBR and PBD Example 6 of Table 3), and 12.07 phr EPDM 2 wherein EPDM 2 comprises 3.2 wt% of C2, 4.2 wt% of ENB (which is 5-ethylidene-2-norbornene [0015] thereby reading on the diene), which implies the propylene content is 92.6 wt% (Table 2). Blok et al. discloses the EPDM polymers were measured using FTIR, thereby reading on uncorrected numbers in view of instant specification [0054]. Blok et al. further teach EPDM had a melt flow rate of 3.6 (Table 2). Furthermore, Blok et al. disclose the carbon black is present in 1.81 phr in Example 6 (Table 3), thereby lying within the claimed range.
Blok et al. is silent on the Mooney viscosity and the Mw/Mn ratio of Example 6.
However, Blok et al. teaches the Mooney viscosity of the EPDM polymer is less than 100 [0027] and the Mw/Mn ratio is from 1.5 to 4.0 [0022], thereby overlapping with the claimed ranges. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Blok et al.
Blok et al. does not teach an embodiment comprising butadiene/styrene copolymers, isoprene/butadiene copolymers, and isoprene/butadiene/styrene copolymers and mixtures thereof.
However, Blok et al. teach the diene elastomers are polybutadienes, and mixtures of these elastomers. Furthermore, Blok et al. teach the diene elastomer is predominantly an SBR [0049-0050]. Therefore, it would have been obvious to form a composition comprising butadiene/styrene copolymers only.
Blok et al. is silent on the PEDM polymer is produced from a tetrahydroindacenyl-based catalyst.
However, the present claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).) If the prior art teaches the same product as the product formed by the process recited in the claims at issue, the claims are unpatentable. However, if the process of the claims at issue results in a product that is different from the product taught by the prior art, then the prior art does not teach the invention recited in the claims at issue.
Blok et al. is silent on if the PEDM polymer used in Example 6 has an atactic polypropylene structure.
However, Blok et al. teach PEDM 2 used in Example 6 is amorphous ([0090-0099], Table 2). Atactic structures are well known to form amorphous polymers. Thus, Blok et al. teach a PEDM polymer having an atactic polypropylene sequence. Therefore, it would be obvious to one of ordinary skill in the art that the PEDM of Blok et al. would also have an atactic polypropylene structure.
Regarding claim 2, Blok et al. disclose the composition comprises styrene butadiene rubber (see Table 3).
Regarding claim 3, Blok et al. disclose EPDM 2 in Table 2 lying within the claimed range as discussed in the rejection for claim 1.
Regarding claim 4, Blok et al. is silent on the Tg of the PE(D)M polymer as recited in the instant claim.
However, Tg is dependent on the structure and molecular weight of the polymer. Blok et al. teach a substantially identical EPDM polymer as recited in claim 1. Therefore, one of ordinary skill in the art would consider the Tg of the EPDM to be expected. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 5, Blok et al. disclose the heat of fusion of the PE(D)M polymer is in the range of from 0 J/g to 80 J/g [0009], thereby overlapping with 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Blok et al.
Regarding claim 6 and 7, Blok et al. disclose the PE(D)M polymer has a number average molecular weight of 3,000,000 or less [0019] and a weight average molecular weight of 5,000,000 or less [0019], thereby overlapping with the claimed ranges. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Blok et al.
Regarding claim 8, the polydispersity index is interpreted to be Mw divided by Mn in view of instant specification [0037]. Blok et al. teaches the Mw/Mn ratio is from 1.5 to 4.0 [0022], thereby overlapping with 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Blok et al.
Regarding claim 9, Blok et al. disclose the glass transition temperature of EPDM 2 is -3.8°C (Table 2), thereby lying within the claimed range.
Regrading claim 12, Block et al. is silent on the Picma Tack as recited in the instant claims. In view of the substantially identical composition of Block et al., the composition of Block et al. will possess the claimed properties because Picma Tack are inherent properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 13, Blok et al. disclose the composition is cured and made from at least one cure package, at least one curative, and at least one crosslinking agent [0086]. Blok et al. further include stearic acid, zinc oxide, and sulfur in Example 6 (Table 3), which are defined vulcanization activators and vulcanizing agents as in view of the instant specification [00177-00178].
Regarding claim 28 and 29, Blok et al. does not teach in Example 6 the amount of PEDM polymer and carbon black as recited in the instant claim.
However, Blok et al. teach the amount of carbon black is between 20 to 80 wt% of the composition (claim 1), equivalent to 26.67 phr to 1600 phr 20 to 200 phr and thereby overlapping the claimed range [0070]. Blok et al. also teach the amount of PEDM is 5 to 30 wt% (claim 1), equivalent to 6.67 to 600 phr and thereby overlapping the claimed range.
Therefore, one of ordinary skill in the art would have considered it obvious to add the amount of PEDM and carbon black taught by Blok et al. with “sufficient specificity” that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” the amount of EPDM polymer and carbon black as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Blok et al. (US 20170292013 as listed on IDS dated 01/12/2023) in view of Walton et al. (US 20060199910).
The composition disclosed in claim 1 is incorporated herein by reference.
Regarding claim 14, Blok et al. is silent on a belt comprising the composition as recited in the instant claim.
Walton et al. teach a thermoplastic vulcanizate comprising an ethylene/α-olefin polymer and a thermoplastic polymer (abstract). Walton teaches that thermoplastic vulcanizates are useful in making a variety of articles such as tires and belts [0181]. Blok et al. teach the composition is used for a tire (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the composition of Blok et al. to form a belt.
Response to Arguments
Applicant's arguments filed November 22, 2025 have been fully considered but they are not persuasive.
Applicant states, “a PEDM polymer having an atactic polypropylene structure may have different % crystallinity values that those disclosed with respect to the terpolymer of Blok.”
In response, the examiner is unconvinced. The examiner acknowledges there may be different % crystallinities. However, Blok et al. teach PEDM 2 used in Example 6 is amorphous ([0090-0099], Table 2). Atactic structures in polymers are well known to form amorphous polymers. Therefore, it would be obvious to one of ordinary skill in the art that the PEDM 2 of Blok et al. would also have an atactic polypropylene structure.
Applicant states “Blok does not explicitly teach a composition comprising 250 phr to 500 phr carbon black as recited in claim 29”.”
In response, the examiner respectfully disagrees that such a disclosure constitutes a teaching away. Blok et al. teaches “Preferably, the level of total reinforcing filler is from 20 to 200 phr” [0070]. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." (In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).) Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. (MPEP 2123 (II) (citing In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." (In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).) Thus, although Blok et al. may disclose a preferred embodiment of the recited compound, such a disclosure does not teach away from the broader disclosure and the teachings of the nonpreferred embodiments.
Furthermore, the amount of 26.67 phr to 1600 phr is calculated using a basis of 100 g total of the composition. Therefore, the minimum and maximum amounts of rubber is 5 to 75 g and of filler is 20 to 80 grams. Selecting an amount of 5 g of rubber and 80 grams of carbon black results in the following conversion:
80
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100
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5
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=
1660
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5
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100
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75
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6.67
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Thereby overlapping the claimed range.
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 ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763