DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura et al. (US 2018/0030287, “Kimura”) in view of Aoyagi et al. (US 2017/0152397, “Aoyagi”) and further in view of Hori et al. (US 2019/0144612, “Hori”).
Regarding claims 1 and 6, Kimura teaches a coating agent for an oil seal ([0002] – [0005]) comprising 10 to 160 parts by weight of a filler based on 100 parts of an isocyanate group-containing 1,2-polybutadiene ([0015] and see generally [0011] – [0020]), an organic solvent solution ([0016]), and teaches to include silicone resin and fluororesin particles having diameters on the range of from 0.5 to 30 micrometers ([0012] – [0014]). The Examiner notes that 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). Please see MPEP 2144.05. Kimura fails to specifically teach an amount or type of wax to be used in the oil seal. However, in the same field of endeavor of oil seals ([0003], [0084]), Aoyagi teaches to include a wax in an amount of from 10 to 80% by weight ([0032] – [0034]). Aoyagi teaches that the inclusion of a wax in a coating agent for an oil seal in order to improve the wear resistance of the coating agent ([0003], [0084], [0029] – [0033], further suggesting improved resistance at high temperatures, good hardness, low viscosity, and other improve mechanical properties). It therefore would have been obvious to the person of ordinary skill in the art at the time of filing to have included a wax in this amount in the composition of Kimura in order to improve the friction wear resistance of the oil seal (see Aoyagi, [0029] – [0033]). Kimura teaches the inclusion of various types of fillers and while Kimura teaches the particle may comprise silicone particles on the range of from 0.5 to 30 micrometers (Kimura, e.g., [0012] - [0015]), Kimura does not specifically teach that these silicone particles should be included in combination with the fluororesin particles in particle sizes of from 0.5 to 1 micrometers. However, the prior art provides teachings to include broad ranges of silicone particles in coating applications. In the same field of endeavor of particles for use in coating applications ([0051], frequently used in coating agent applications), Hori teaches that it is known and useful to include silicone particles ([0051] – [0053]) in an amount of from 0.1 to 100 parts by weight in order to balance thermal shock resistance and flexibility ([0108]; but also Kimura teaches generally the range of inclusion should be on the range of from 10 to 160 parts by weight and thus this inclusion would have been obvious to the ordinarily skilled artisan). Hori teaches that the sizing of particles is dependent on the desired properties and generally a preferred powder particles size in order to provide god compounding properties and feeling are between 0.5 to 50 micrometers or from 1 to 10 micrometers ([0033] – [0036]). The Examiner notes that this is a substantially similar range to that taught for fillers by Kimura (see Kimura, e.g., [0012]) and that this suggests that including particles having a diameters in this range would have been obvious to the ordinarily skilled artisan as they are well known in the prior art. “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)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Please see MPEP §2123. Hori teaches that the inclusion of silicone particles may improve tactile sensation, and improve the function of coating applications and thus their inclusion in an amount and size as taught by Hori would have been obvious to the ordinarily skilled artisan at the time of filing ([0019], [0033] – [0036]).
Regarding claim 4, Kimura additionally teaches that particles may be either silicone resin or fluororesin particles and may be on the range of from 0.5 micrometers to 30 micrometers ([0012]). The Examiner notes that 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). Please see MPEP 2144.05.
Regarding claim 5, Kimura additionally teaches that the filler may be included in an amount of from 10 to 160 parts by weight, thus reading on the claimed range ([0015]).
Regarding claims 7 and 8, Kimura additionally teaches that the oil may be subjected to a coating treatment, including a heat treatment ([0016], [0019]). It should be noted that claims 7 and 8 include product-by-process limitations. "[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Please see MPEP 2113.
Regarding claims 9 and 10, Kimura additionally teaches that the oil seal may have a contact angle between an oils seal surface and engine oil of less than 35 degrees (e.g., [0012]).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kimura in view of Aoyagi as applied to claim 1, above, and further in view of Inokuchi et al. (US 6,376,078, “Inokuchi”).
Regarding claim 2, while Kimura teaches to include a silicone resin particle ([0012]) and teaches that such particles are not particularly limited ([0014]), Kimura fails to teach the specifically claimed polymethylsilsesquioxane particles. However, such particles are known in the prior art. Inokuchi teaches polymethylsilsesquioxane silicone resin particles that that may have a diameter on the range of from 0.1 to 50 micrometers and may be included in order to improve slipperiness or anti-wear resistance in resin compositions (see, e.g., col. 1 lines 35-67, col. 2 lines 5-45). It therefore would have been obvious to have substituted the polymethylsilsesquioxane particles of Inokuchi for the generic silicone resin particles of Kimura in order to give the seal composition of Kimura improved slipperiness or anti-wear resistance (see, e.g., col. 1 lines 35-67, col. 2 lines 5-45). Further, the simple substitution of one known element or composition for another that would have provided predictable results (i.e., as a filler component in a resin compositions, e.g., col. 3 lines 45-65) would have been obvious to the person of ordinary skill in the art at the time of filing. Please see MPEP 2143.
Response to Arguments
Applicant’s arguments filed 3/10/26 are considered moot in light of the new grounds of rejection, which were necessitated by Applicant’s amendments. Arguments that are relevant to the current rejections are addressed below.
Applicant maintains and expands the previously presented arguments that reference Kimura positively teaches against the inclusion of a wax. The Examiner must respectfully disagree. The Examiner maintains the position that Applicant over-interprets Kimura’s silence regarding the inclusion of a wax. Kimura does not strictly limit against the inclusion of a wax in its formulation or teach that poor properties in prior art formulations are owed specifically to the inclusion of a wax. Therefore the Examiner must maintain that Kimura, while not explicitly teaching the inclusion of a wax, neither explicitly teaches against the inclusion of a wax. Applicant points to Kimura’s acknowledgement that the prior art for coating agent for oil seals often include a wax, and subsequent inventive composition that does not include a wax, as constituting a teaching away from the inclusion of a wax. But Kimura merely teaches that further lower torque characteristics have recently been demanded beyond those of the composition of a “Patent Document 1” ([0005], implying that the formulation as a whole does not have the desired torque characteristics of the formulation of Kimura). That Kimura is not particularly concerned with the inclusion of a wax is supported by the fact that Kimura uses the word “wax” only twice. Once when describing the known inclusion of waxes in coating agent formulations (along with the other components in a formulation described in a specific patent reference) and again when providing a reference example of a formulation for that same patent reference (Kimura, [0039]). This suggests both that Kimura does not envision the inclusion of a wax as preferred but also that Kimura does not consider the inclusion of a wax to be notably problematic (indeed, Kimura notes that waxes have been included in formulations before but does not warn against the inclusion in any specific way). Applicant argues that the inclusion of wax in the Reference Example 1 leads to the composition having inferior contact angle and dynamic friction coefficient in oil properties. Notably secondary reference Ayogi teaches the inclusion of a wax in a coating agent for an oil seal in order to improve the wear resistance of the coating agent ([0003], [0084], [0029] – [0033], further suggesting improved resistance at high temperatures, good hardness, low viscosity, and other improve mechanical properties), which are not the properties specifically described as deficient in Table 1 of Kimura. But beyond this digression, Kimura itself does not describe the poor contact angle and dynamic friction coefficient properties as being directly tied to the inclusion of a wax. As previously noted by the Examiner, Reference Example 1 that Applicant cites as suggesting against the inclusion of a wax differs from the inventive coating agents by more than merely the inclusion of a wax. It therefore cannot be said that the differences in properties of the reference coating and the inventive coatings are owed exclusively to the inclusion of a wax. For example, both the reference example and Comparative Example 3 include PTFE particles rather than silica particles (see [0038], [0039], [0022, [0023]). Further, the reference example also teaches to include a different butadiene component than the inventive examples. Finally, it appears that it is the size of the particles in the filler that is associated with the contact angle after coating (that is, rather than the inclusion of a wax, [0012]). Therefore, despite Applicant’s arguments to the contrary, it does not follow that a coating composition having inferior properties and comprising various components, one of which is a wax, constitutes a teaching-away from the inclusion of any wax in a coating application. For these reasons, and because the inclusion of a wax is taught by the prior art as described in the rejections above, the Examiner maintains that Kimura does not teach away from the inclusion of a wax as an additional component.
Therefore, claims 1, 2, and 4-10 are rejected as described above.
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 ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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