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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 5-10, 12, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (US 2011/0086229) in view of Underwood et al. (US 2003/0176516 A1). All references have been cited in a prior Office action.
Regarding Claims 1 and 2, Noguchi teaches a crosslinked perfluoroelastomer composition and molded articles formed therefrom. The perfluoroelastomer is formed from tetrafluoroethylene (TFE) and a perfluoroalkylvinyl ether (PAVE) (Abstract). TFE and PAVE monomers are recognized in the art as containing no hydrogen atoms; therefore, the final product will necessarily have a hydrogen atom content of less than 1 mass%.
In the alternative, the crosslinked composition includes a crosslinking agent in amounts of 0.3-10.0 parts by mass based on 100 parts by mass of perfluoroelastomers (p. 2, [0022]). The crosslinking agents illustrated at p. 2, [0023]-[0025] include hydrogen atoms. It would have been obvious to one of ordinary skill in the art at the time of filing to include the crosslinking agents in amounts of 0.3 parts by mass or more and 1 mass% or less, thereby arriving at an overall hydrogen atom content of less than 1 mass% in the overall composition, as this portion of Noguchi’s range is expressly recognized as being suitable.
The composition exhibits a Shore A hardness of about 40 to about 95 (p. 11, [0111]). This overlaps the claimed range of 28-50. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Although Noguchi teaches that fillers such as carbon black and silica may be included, these additives are expressly disclosed as being optional (p. 10, [0099]). Noguchi therefore contemplates compositions and molded articles formed therefrom that are free of carbon black and silica. Noguchi therefore reads on Claims 1 and 2.
Noguchi is silent with respect to Asker C hardness. Noguchi measures hardness using a different test but nevertheless recognizes that hardness leads to superior sealing characteristics. It would have been obvious to one of ordinary skill in the art at the time of the invention to optimize hardness generally, including as measured on the Asker C scale, by routine experimentation in order to achieve the desired sealing characteristics, thereby arriving at the claimed range. See MPEP 2144.05(II).
Noguchi is silent as to use of the composition in a foam. In the same field of endeavor, Underwood teaches closed-cell or open-cell (i.e. foamed) perfluoroelastomer compositions (Abstract). Underwood also recognizes that while they have desirable properties, the cost associated with perfluoroelastomers is high and it is desirable to reduce the amount of raw material used to form such articles (p. 1, [0003]). By using a foamed product, the amount of perfluoroelastomer required to form articles like seals and gaskets would be reduced. See, e.g., p. 7-8, [0073] and [0075]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Noguchi with the foaming of Underwood to arrive at the claimed invention, and to reduce the cost of manufacturing seals and gaskets, as taught by Underwood (p. 7-8, [0073] and [0075]).
Regarding Claims 5, 6, and 8-10, as indicated above, Noguchi, as modified by Underwood, teaches a foamed perfluoroelastomer comprising perfluoroalkylene groups (present in both TFE and PAVE units), crosslinked by a crosslinking agent (B) (p. 2, [0023]) and optionally an organic peroxide co-curative (p. 5, [0054]).
Regarding Claim 7, Noguchi is silent with respect to the claimed mass reduction under the indicated conditions. Nevertheless, Noguchi as applied to Claim 1 above is identical to the claimed invention in both composition and physical properties including Shore A hardness and hydrogen atom content. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Noguchi as applied above will therefore necessarily possess the claimed mass reduction under the indicated conditions.
Regarding Claim 12, Noguchi’s composition may be formed into articles such as seals (p. 10, [0095]). A seal is capable of protecting an article being sealed; therefore, Noguchi reads on Claims 12 and 13 (note the interpretation of Claim 13 discussed above).
Claims 14 and 15 place intended use limitations on the protective member of Claim 12. The claimed intended use limitations do not require steps to be performed or limit the claims to a particular structure. These limitations do not limit the scope of the instant claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02. Noguchi as applied to Claim 12 above therefore also reads on Claims 14 and 15.
Response to Arguments
Applicant's arguments filed 18 December 2025 have been fully considered but they are not persuasive. Applicant argues that the amended Shore A hardness range and added Asker C hardness limitation in claim 1 render the instant claims non-obvious over the cited prior art (Noguchi and Underwood). Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762