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 .
Response to Amendment
Applicant amendment filed 08/10/2026 has been entered and is currently under consideration. Claims 1-3 and 8 remain pending in the application.
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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conner et al. (US 10090453 of record) hereinafter Conner in view of Koyama et al. (US 2022/0069320 of record) hereinafter Koyama and Luong et al. (US2017/0229717 of record) hereinafter Luong.
Regarding claim 1, Conner teaches:
A manufacturing method a seal (col 1, ln 22-33), comprising:
providing a discharge device (col 1, ln 13-17);
providing a base member (col 1, ln 13-17);
discharging a liquid onto a base member via the discharge device (col 1, ln 13-17); and
forming a seal on the base member (col 1, ln 13-33) by curing the discharged liquid rubber (col 1, ln 34-57), wherein
the discharge device includes:
a valve body which opens and closes a flow channel through which the liquid flows (Fig 2a,b: valve element 76, discharge outlet 104; col 5, ln 20-53), and
a discharge port from which a droplet of the liquid is intermittently discharged as the valve body opens and closes a valve (Fig 2a,b: discharge outlet 104, droplet 102; col 5, ln 20-53), and
the discharge device is a contactless-type discharge device used in a state in which the discharge port is not in contact with the base member (Fig 2a,b; col 1, ln 13-17).
Conner does not teach a manufacturing method of a gasket, a thermosetting liquid rubber, and curing the discharged thermosetting liquid rubber by heating.
In the same field of endeavor regarding seal manufacturing, Koyama et al. (US 2022/0069320 of record) hereinafter Koyama teaches a manufacturing method of a gasket ([0028]) using a thermosetting liquid rubber ([0049, 0086]), diluting a thermosetting liquid rubber ([0062]), and curing the thermosetting liquid rubber by heating ([0083]) for the motivation of providing a curable resin composition having a low viscosity and capable of obtaining a cured material having excellent compression set ([0007]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the method as taught by Conner with the gasket manufacturing as taught by Koyama in order to provide a curable resin composition having a low viscosity and capable of obtaining a cured material having excellent compression set.
Conner in view of Koyama does not teach providing a base member with a surface that is generally planar, forming a convex portion on the base member such that the convex portion protrudes outwardly from the surface of the base member, and discharging a thermosetting liquid rubber onto only a surface of the convex portion so that an interface between the surface of the convex portion and the thermosetting liquid rubber is spaced apart from the surface of the base member, and the rubber gasket being formed having a dome-shape in which a central part of the dome- shape in a width direction of the rubber gasket is larger than opposing sides of the dome-shape in the width direction.
However, Koyama further teaches a method of forming a gasket for a fuel cell ([0001]).
In the same field of endeavor regarding gaskets, Luong manufacturing a fuel cell having gasket portions by providing a base member with a surface that is generally planar (Fig 4a-b, 6: metal bead 105; [0026]), forming a convex portion on the base member such that the convex portion protrudes outwardly from the surface of the base member (Fig 4a-b: engaging surface 107), and discharging a thermosetting liquid rubber onto only a surface of the convex portion so that an interface between the surface of the convex portion and the thermosetting liquid rubber is spaced apart from the surface of the base member (Fig 4a-b, 6, 7: microseal 110; [0037-0038]), and the rubber gasket being formed having a dome-shape in which a central part of the dome-shape in a width direction of the rubber gasket is larger than opposing sides of the dome-shape in the width direction (Fig 7; [0037]) for the motivation of maintaining contact throughout the expected compression range.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the method as taught by Conner in view of Koyama to form a gasket for the base member as taught by Luong in order to maintain contact throughout the expected compression range.
Conner in view of Koyama and Luong does not explicitly recite diluting a thermosetting liquid rubber such that the thermosetting liquid rubber has a viscosity of not less than 100 mPa·s and not more than 300 mPa·s after dilution.
However, Koyama teaches a range of values for the viscosity that overlaps with the claimed range ([0079]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Since overlapping ranges are evidence of prima facie obviousness, it would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have chosen the portion of the viscosity as taught by Koyama that overlaps with the claimed range.
Regarding claim 3, Conner in view of Luong teaches the method of claim 1.
Conner further teaches wherein the discharge device includes a piezo actuator which drives the valve body with a piezoelectric element (Fig 2a,b: piezoelectric stack 40; col 5, ln 20-53).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conner in view of Koyama and Luong as applied to claim 1 above, and further in view of Fujii (US6060125 of record).
Regarding claim 2, Conner in view of Koyama and Luong teaches the method of claim 1.
Conner in view of Koyama and Luong does not teach wherein the discharge device includes an air pulse actuator which drives the valve body with compressed air.
In prior art attempting to solve a similar problem of fluid application, Fujii teaches a discharge device includes an air pulse actuator which drives a valve body with compressed air (Fig 1: dispensing gun 1, piston 7, needle 9, pneumatic/hydraulic converter 13; col 4, ln 66-col 5, ln 43) for the motivation of preventing formation of bubbles (col 3, ln 46-47).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the discharging device as taught by Conner in view of Koyama and Luong with the discharging device as taught by Fujii in order to prevent formation of bubbles.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conner in view of Koyama and Luong as applied to claim 1 above, and further in view of Tomihashi et al. (US6325752) hereinafter Tomihashi.
Regarding claim 8, Conner in view of Koyama and Luong teaches the method of claim 1.
Koyama further teaches diluting the thermosetting liquid rubber ([0062]).
Conner in view of Koyama and Luong does not teach that the thermosetting liquid rubber has a solid content concentration of 40 wt% to 60 wt%.
In the same field of endeavor regarding gasket forming, Tomihashi teaches a fluororubber having solid content concentration of 40 wt% to 60 wt% of a thermosetting liquid rubber for the motivation of providing a fluororubber that can maintain storage stability (col 1, ln 37-43; col 6, ln 32-40).
It would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have modified the rubber as taught by Conner in view of Koyama and Luong with the fluororubber as taught by Tomihashi in order to provide a fluororubber that can maintain storage stability.
Response to Arguments
Applicant's arguments filed 08/10/2026 have been fully considered but they are not persuasive.
Applicant argues that Koyama teaches away from diluting the liquid rubber to the claimed viscosity. Applicant argues that Koyama discourages adding a diluent without significant consideration of the impact that such an addition would have on the compression set property of the cured material. However, in the following paragraph [0007], Koyama recites “The present invention has been made in view of the above circumstances, and an object of the present invention is to provide a curable resin composition having a low viscosity and capable of obtaining a cured material having excellent compression set.” [0062] of Koyama further recites that “(meth)acrylate monomer is a compound polymerized by radicals generated by the component (C) of the present invention, and is used as a reactive diluent”. Therefore, rather than teaching away from all use of diluents to reduce viscosity in a liquid rubber, Koyama is merely identifying a disadvantage of the previous diluents and providing a diluent that solves the problem of obtaining a cured material having excellent compression set.
Applicant argues that the viscosities of the specific examples provided in Table 1 of Koyama fall outside of the claimed range. However, the examiner notes that the examples discussed by applicant are not relied upon in the art rejection. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123. Instead, the art rejection cites [0079] of Koyama which recites “The lower limit of the viscosity of the curable resin composition is not particularly limited because the lower the viscosity, the more preferable. For example, the viscosity of the curable resin composition may be 0.1 Pa·s or more, and preferably 3 Pa·s or more.” The examiner notes that while expressed in Pa·s, 0.1 Pa·s or more converts to 100 mPa·s or more, which overlaps with the claimed range and therefore makes obvious the claimed range.
Applicant argues that the claimed invention provides the benefit of stabilizing the gasket without a mold. The examiner notes Koyama teaches cure-in-place gaskets ([0098, 0101]). Furthermore, col 5, ln 58-67 of Tomihashi teaches that, within the viscosity contemplated by Tomihashi, the rubber composition allows for application of the rubber composition that allows for complicated shapes, shaped in the form of a thin film, or applied as a coating.
For at least the above reasons, the application is not in condition for allowance.
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 ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached on 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER A WANG/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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