DETAILED ACTION
This office action follows a reply filed on October 22, 2025. Claim 1 has been amended. Claims 1-2 and 5-21 are currently pending and under examination.
The rejections, as set forth in the previous office action, are deemed proper and are therefore maintained.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
Claims 1, 2 and 5-21 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-350491 in view of Otsuki (US 2017/0253722).
JP ‘491 teaches a method for bonding a zinc-plated steel cord with a rubber layer by attaching the zinc-plated steel cord with a rubber composition, the rubber composition comprising 1-20 phr, preferably 0.3-10 phr, zinc diacrylate or zinc dimethacrylate and 0.1-10 phr, preferably 1-7 phr, of an organic cobalt salt, cobalt neodecanoate and cobalt stearate being preferable.
JP ‘491 does not teach or suggest the inclusion of the claimed rubber-metal adhesion promoter containing Bi.
Otsuki teaches a rubber-metal adhesion promoter and a rubber composition containing such, teaching that organic acid cobalt metal soaps, such as cobalt stearate, cobalt naphthenate, cobalt tallate, etc. has been frequently used because of favorable adhesive properties; however, cobalt compounds are possibly carcinogenic (p. 1, [0002]-[0003]). Therefore, there is a demand for alternative adhesion promoters (non-cobalt based adhesion promoters).
Otsuki teaches that a metal salt of an aliphatic carboxylic acid having 2-25 carbon atoms in which the metal is bismuth, such as bismuth 2-ethylhexylhexanoate and bismuth neodecanoate, is capable of exerting a high adhesive force between rubber and a metal, without containing cobalt that is of concern for toxicity (p. 1, [0007]). Otsuki teaches the rubber-metal adhesion promoter as being present in an amount of 0.01-10 parts, preferably 1-6 phr (p. 5, [0066]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have substituted the organic cobalt salt with an organic bismuth salt, as Otsuki teaches that the bismuth salts provide similar rubber-metal adhesion without the toxicity that comes with using cobalt.
JP ‘491 does not teach the molar ratio of Zn (in zinc diacrylate) to the Co (in the organic cobalt salt), as claimed. Otsuki teaches a similar amount of Bi salt as the Co salt of JP ‘491.
For example, a combination of 10 parts zinc oxide, 10 phr zinc dimethacrylate (Mw=235.55 g/mol) and 6 phr bismuth neodecanoate (Mw=722.75 g/mol) is prima facie obvious over the teachings of JP ’491 in view of Otsuki. This combination suggests a composition comprising 0.12 mol Zn from ZnO, 0.04 mol Zn from the acid, and 0.008 mol Bi, suggesting a molar ratio of Zn/Bi=20, where the total content of zinc dimethacrylate and bismuth neodecanoate is 16 phr.
Therefore, it can be seen that the suggested amounts of zinc di(meth)acrylate and organic bismuth salt overlap with the claimed molar ratio, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
JP ‘491 in view of Otsuki is prima facie obvious over instant claims 1-8, 10-12 and 16.
As to claim 9, Otsuki teaches the inclusion of up to 10 phr zinc oxide, which meets applicants’ zinc compound that is not an organic salt, where the total amount of zinc oxide and zinc dimethacrylate, as suggested above, is present in an amount of 20 phr.
As to claims 13-15, Otsuki teaches that the bismuth salts can also include those reacted with boron, which have the same formulae as claimed.
As to claim 17, JP ‘491 teaches the steel cord as galvanized.
As to claims 18-21, JP ‘491 teaches that the rubber compositions can be used for conveyor belts, rubber crawlers, tires, hose, etc.
Response to Arguments
Applicant's arguments filed October 22, 2025 have been fully considered but they are not persuasive.
Applicants argue that the combination of the 2,4-mercapto-6-substituted-1,3,5-triazine and an organic cobalt salt is an essential condition for JP ‘491.
At no point does JP ‘491 discuss a reaction between the triazine and the cobalt salt, or the dependence on the cobalt as being necessary for the triazine to improve adhesion. JP ‘491 actually shows that the composition can include the cobalt compound and zinc compound without the triazine (Example 7); therefore, it is not mandatory to include both a cobalt compound and triazine, as argued.
Applicants argue that one of ordinary skill in the art would recognize that the inclusion of the triazine and zinc di(meth)acrylate together with an organic cobalt salt is an essential condition for JP ‘491, and as a result a person of ordinary skill would not consider replacing cobalt salt with a bismuth salt in Otsuki.
Otsuki gives clear and direct motivation for substituting cobalt salts for bismuth salts as adhesion promoters in rubber compositions.
Otsuki teaches metal salt of bismuth becomes an adhesion promotor capable of exerting a high adhesive force between rubber and metal, rather than a cobalt-containing adhesion promoter “without containing cobalt that is of concern for toxicity…”
Therefore, carrying out such substitution without the presence of any cobalt is prima facie obvious.
Conclusion
THIS ACTION IS MADE FINAL. 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 BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766