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 Amendments and Arguments
Applicant’s amendments and arguments, filed May 20, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Kohlstrung et al. and Koch et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant has amended claim 1 to recite wherein the elemental sulfur component is present in an amount of 1.5 to 2.5 wt%. This range was recited in the previously rejected claim 19 (see relevant section below):
Kohlstrung discloses that the preferred amount of elemental sulfur taught by Kohlstrung (4 to 10 wt% of the composition ([0033] and [0034])), which does not overlap with the claimed range. However, comparative example V1 of Kohlstrung teaches an amount of elementary sulfur that is within the claimed range (i.e., 1.75 wt%). 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 (see MPEP 2123 II). That is, while Kohlstrung notes that an article formed from the formulation of comparative example V1 (i.e., a flanged seam sealant, see [0054]) exhibit reduced elongation at break compared to examples in accordance with the invention, said article formed from the formulation of comparative example V1 is indeed operable as a flanged seam sealant. While a person having ordinary skill in the art would recognize that modulating the amounts of the vulcanization system components (see [0033] of Kohlstrung), it would have been obvious to a person having ordinary skill in the art to utilize elemental sulfur in the amount in Table I, V1 within inventive compositions, such as E1 with reasonable expectation of successfully forming articles such as a flanged seam sealant or a flanged seam adhesive, albeit with differing mechanical properties and the motivation would have been, e.g., decreasing the cost of the composition by limiting the ingredient input or to reduce emission of volatile sulfur compounds.
Applicant argues that the rejection is based on improper picking and choosing select features from the comparative examples and inventive examples of Kohlstrung and that the rejection fails to provide a motivation for combining that is gleaned from the facts in the prior art. Applicant further argues that the motivation of cost is flawed because sulfur is significantly cheaper than many of the other components such that modification to its concentration would be negligible and increase the relative concentration of more expensive components. The courts have made clear that the teaching, suggestion, or motivation test is flexible and an explicit suggestion to combine the prior art is not necessary. "[A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references." Id. at 1368, 80 USPQ2d at 1651. (emphasis added). In the instant case, it is the position of the Office that reducing the input of any component can provide cost advantages at production scale even where the ingredient has a low cost.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, it is the position of the Office that a person having ordinary skill in the art would reasonably recognize sulfurous derivatives of rubber vulcanization as malodorous compounds and furthermore that reducing the amount thereof would result in a reduction of volatile organic compounds (VOCs) released from compositions comprising the same. While not relied upon for the rejection and merely presented as a rebuttal to Applicant’s allegation of hindsight reasoning, it is long established within the art that the presence of compounded sulfur used for crosslinking polymeric rubber systems (e.g., polybutadiene) results in evolution of hydrogen sulfide, a known malodorous compound, and that the rate of evolution of such emission is dependent on the portion of sulfur within the rubber1, and thus would be within the level of ordinary skill at the time the claimed invention was made without gleaning the same from the instant specification.
Applicant’s amendments and arguments are considered fully responded to within the comments above and rejections below.
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.
Claims 1 and 3-10, 12, 14, 15, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kohlstrung et al. (US 2012/0148856, hereinafter referred to as “Kohlstrung”) in view of Koch (US Pat. No. 5,356,994, hereinafter referred to as “Koch”).
As to Claim 1: Kohlstrung teaches a heat-curing reactive composition which may undergo a crosslinking reaction in the presence of a vulcanization system (Abstract and [0033]) (i.e., a crosslinking agent), said composition comprising:
elemental sulfur ([0033] and [0034])
phenolic resins ([0031])
thiazole compounds including dibenzothiazyl disulfide ([0034]) (i.e., a thiazole disulfide), and
zinc dibenzyl dithiocarbamate (i.e., a metal salt mased on a thiocarbamate) ([0034])
Kohlstrung discloses that the preferred amount of elemental sulfur taught by Kohlstrung (4 to 10 wt% of the composition ([0033] and [0034])), which does not overlap with the claimed range. However, comparative example V1 of Kohlstrung teaches an amount of elementary sulfur that is within the claimed range (i.e., 1.75 wt%). 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 (see MPEP 2123 II). That is, while Kohlstrung notes that an article formed from the formulation of comparative example V1 (i.e., a flanged seam sealant, see [0054]) exhibit reduced elongation at break compared to examples in accordance with the invention, said article formed from the formulation of comparative example V1 is indeed operable as a flanged seam sealant. While a person having ordinary skill in the art would recognize that modulating the amounts of the vulcanization system components (see [0033] of Kohlstrung), it would have been obvious to a person having ordinary skill in the art to utilize elemental sulfur in the amount in Table I, V1 within inventive compositions, such as E1 with reasonable expectation of successfully forming articles such as a flanged seam sealant or a flanged seam adhesive, albeit with differing mechanical properties and the motivation would have been, e.g., decreasing the cost of the composition by limiting the ingredient input or to reduce emission of volatile sulfur compounds.
Kohlstrung teaches that the composition may comprise a blend of polybutadiene and polybutadiene with carboxylic anhydride groups ([0031] and Table I), but does not specifically identify the structure of said carboxylic anhydride (i.e., a maleic anhydride).
Koch teaches a related hot-vulcanizable adhesive/sealant composition comprising a rubber component (col. 1, ln. 6-9) wherein said rubber component may be a mixture of butadiene solid rubber and liquid butadiene wherein the liquid butadiene comprises carboxylic acid groups (Abstract). Koch further teaches that the carboxylic acid groups attached to the butadiene rubber may be maleic acid and anhydrides thereof (col. 2, ln. 58-64) and also teaches an exemplary embodiment of maleic anhydride-modified polybutadiene (col. 4, ln. 20-24) (i.e., a polybutadiene-maleic anhydride adduct). Kohlstrung and Koch are considered analogous art because they are directed towards the same field of endeavor, namely vulcanizable rubber compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select or substitute a maleic anhydride group as the carboxylic anhydride group contemplated by Kohlstrung and the motivation would have been that Koch teaches that maleic anhydride is a species of carboxylic anhydride known within the art as suitable for modifying polybutadiene components within vulcanizable systems (col. 2, ln. 8-23).
Kohlstrung is silent towards the composition improving compatibility with bismuth-based catalysts. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., “the crosslinking agent according to the invention comprises one or more thiazole disulfide compounds. It has surprisingly been found that the addition of these compounds promotes, in particular, tolerance to bismuth compounds, such as bismuth-based catalyst system” (instant specification para. [0012])). Therefore, the claimed effects and physical properties, i.e. compatibility with bismuth-based catalysts, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 3: Kohlstrung and Koch teach the crosslinking agent of claim 1 (supra).
Kohlstrung further teaches that the composition may comprise phenolic resins in an amount of 0.1 to 10 wt% of the composition ([0031]), which overlaps with the claimed range. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Kohlstrung suggests, that the overlapping portion is a useable range for a phenolic resin within a polymer composition which may undergo a crosslinking reaction in the presence of a vulcanization system comprising at least components a) through d) (see above).
As to Claim 4: Kohlstrung and Koch teach the crosslinking agent of claim 1 (supra).
Kohlstrung does not teach wherein at least one of the one or more phenolic resins is obtained by condensation of a mixture comprising formaldehyde and phenol, the mixture having an excess of phenol and a molar ratio of formaldehyde to phenol of less than 1:1. However, the instant claim is a product-by-process claim. “[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) (citations omitted). See MPEP § 2113. Kohlstrung teaches that the composition comprises a phenolic resin (([0031]), and there is no evidence that the phenol obtained from a mixture comprising formaldehyde and phenol, mixture having an excess of phenol and a molar ratio of formaldehyde to phenol of less than 1:1 would materially affect the structure of the final product.
As to Claim 5: Kohlstrung and Koch teach the crosslinking agent of claim 1 (supra).
Kohlstrung further teaches that the composition may comprise thiazole compounds including dibenzothiazyl disulfide (MBTS) (i.e., a thiazole disulfide which is construed as having the same structure as the claimed benzothiazole disulfide). Table 1, Examples V1 and V2 teach compositions with an amount of MBTS within the claimed range (4.5 and 5 wt%, respectively). The Examiner acknowledges that comparative examples V1 and V2 are not preferred embodiments of the invention of Kohlstrung, however, it is the position of the Office that Kohlstrung merely notes that compositions V1 and V2 have somewhat inferior properties compared to other disclosed examples see ([0054]). 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 (see MPEP 2123 II). Examples V1 and V2 also differ from inventive examples in other amounts and identities of components of the composition and Kohlstrung does not explicitly point to the MBTS component for the difference in properties. Therefore, based on the disclosure of Kohlstrung that the composition may comprise MBTS ([0034]) and exemplary compositions comprising the same in an amount within the claimed range, albeit comparative examples, is reasonably found to render obvious the claimed composition.
As to Claims 7 and 8: Kohlstrung and Koch teach the crosslinking agent of claim 1 (supra).
Kohlstrung further teaches that the composition may comprise zinc dibenzyl dithiocarbamate (ZBEC) (i.e., a metal salt mased on a thiocarbamate) in an amount of 0.5 to 2 wt%, preferably 0.7 to 1.5 wt% of the composition ([0034]), which is within the claimed range.
As to Claims 9 and 10: Kohlstrung and Koch teach the crosslinking agent of claim 1 (supra).
Kohlstrung further teaches that the composition may include fillers including carbon black, calcium carbonate ([0035]), and calcium oxide ([0036] and [0041]).
As to Claim 12: Kohlstrung and Koch teach the crosslinking agent of claim 1 (supra).
Kohlstrung teaches that the composition may comprise a blend of polybutadiene and polybutadiene with carboxylic anhydride groups ([0031] and Table I), but does not specifically identify the structure of said carboxylic anhydride (i.e., a maleic anhydride).
Koch teaches a related hot-vulcanizable adhesive/sealant composition comprising a rubber component (col. 1, ln. 6-9) wherein said rubber component may be a mixture of butadiene solid rubber and liquid butadiene wherein the liquid butadiene comprises carboxylic acid groups (Abstract). Koch further teaches that the carboxylic acid groups attached to the butadiene rubber may be maleic acid and anhydrides thereof (col. 2, ln. 58-64) and also teaches an exemplary embodiment of maleic anhydride-modified polybutadiene (col. 4, ln. 20-24) (i.e., a polybutadiene-maleic anhydride adduct). Kohlstrung and Koch are considered analogous art because they are directed towards the same field of endeavor, namely vulcanizable rubber compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select or substitute a maleic anhydride group as the carboxylic anhydride group contemplated by Kohlstrung and the motivation would have been that Koch teaches that maleic anhydride is a species of carboxylic anhydride known within the art as suitable for modifying polybutadiene components within vulcanizable systems (col. 2, ln. 8-23). Example E2 of Kohlstrung includes polybutadiene with active carboxylic anhydride groups in an amount of 5.3 wt% and a liquid polybutadiene in an amount of 22.90 wt% (Table 1, Example E2), the sum of which is within the claimed range for a mixture of a polybutadiene and a polybutadiene-maleic anhydride adduct.
As to Claim 14: Kohlstrung teaches the crosslinking agent of claim 1 (supra).
Kohlstrung teaches a heat-curing reactive composition which may undergo a crosslinking reaction in the presence of a vulcanization system (Abstract and [0033]) (i.e., a crosslinking agent), said composition comprising:
elemental sulfur
phenolic resins in an amount of 0.1 to 10 wt% of the composition ([0031])
thiazole compounds including the zinc salt of 2-mercaptobenzothiazole (ZMBT) (which reads on the claimed thiazole disulfide) in an amount of 0.3 to 0.7 wt% of the composition ([0034]), and
zinc dibenzyl dithiocarbamate (i.e., a metal salt mased on a thiocarbamate) in an amount of 0.7 to 1.5 wt% of the composition ([0034]), which is within the claimed range
The amounts for the components which read on the claimed components a), b), and c) overlaps with the claimed ranges. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Kohlstrung suggests, that the overlapping portion is a useable range for an amount of elemental sulfur, one or more phenolic resins, and one or more thiazole disulfide compounds within a polymer composition which may undergo a crosslinking reaction in the presence of a vulcanization system comprising at least components a) through d) (see above).
As to Claim 15: Kohlstrung teaches the crosslinking agent of claim 14 (supra).
Example E2 of Kohlstrung includes polybutadiene with active carboxylic anhydride groups in an amount of 5.3 wt% and a liquid polybutadiene in an amount of 22.90 wt% (Table 1, Example E2), the sum of which is within the claimed range for a mixture of a polybutadiene and a polybutadiene-maleic anhydride adduct. Selecting a maleic anhydride, as motivated by Koch (see above), as the active carboxylic anhydride groups of Kohlstrung yields a composition that meets the limitations of the claim in the claimed amounts.
As to Claim 23: Kohlstrung teaches the crosslinking agent of claim 5 (supra).
Kohlstrung further teaches that the composition may comprise thiazole compounds including dibenzothiazyl disulfide (MBTS) (i.e., a thiazole disulfide which is construed as having the same structure as the claimed benzothiazole disulfide). Table 1, Example V2 teaches a composition with an amount of MBTS within the claimed range (5 wt%, respectively). The Examiner acknowledges that comparative example V2 is not a preferred embodiments of the invention of Kohlstrung, however, it is the position of the Office that Kohlstrung merely notes that articles formed from V2 have somewhat inferior properties compared to other disclosed examples see ([0054]). 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 (see MPEP 2123 II). Example V2 also differs from inventive examples in other amounts and identities of components of the composition and Kohlstrung does not explicitly point to the MBTS component for the difference in properties. Therefore, based on the disclosure of Kohlstrung that the composition may comprise MBTS ([0034]) and exemplary compositions comprising the same in an amount within the claimed range, albeit comparative examples, it would have been obvious to a person having ordinary skill in the art to utilize MBTS in the amount in Table I, V2 within inventive compositions, such as E1 with reasonable expectation of successfully forming articles such as a flanged seam sealant or a flanged seam adhesive, albeit with differing mechanical properties.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kohlstrung et al. (US 2012/0148856, hereinafter referred to as “Kohlstrung”).
As to Claim 19: Kohlstrung teaches the crosslinking agent of claim 1 (see above).
Kohlstrung teaches a heat-curing reactive composition which may undergo a crosslinking reaction in the presence of a vulcanization system (Abstract and [0033]) (i.e., a crosslinking agent), said composition comprising:
elemental sulfur in a preferred amount of 4 to 10 wt% of the composition ([0033] and [0034]), which is not within the claimed range (see below),
phenolic resins in an amount of 0.1 to 10 wt% of the composition ([0031])
thiazole compounds including the zinc salt of 2-mercaptobenzothiazole (ZMBT) (which reads on the claimed thiazole disulfide) (i.e., a thiazole disulfide) in an amount of 0.3 to 0.7 wt% of the composition ([0034]), which is within the claimed range,
zinc dibenzyl dithiocarbamate (i.e., a metal salt mased on a thiocarbamate) in an amount of 0.5 to 2 wt% of the composition ([0034]), which is within the claimed range,
polybutadiene ([0020]) (i.e., a polymeric component according to the instant specification para. [0016]) in an amount of 16 to 29 wt% of the composition ([0026]), which is within the claimed range, and
fillers, including calcium carbonate ([0035]) (which reads on the claimed filler according to the instant specification para. [0014]) in an amount of 25 to 55 wt% ([0035]).
The amounts of components which read on the claimed components b) and f) overlaps with the claimed ranges. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Kohlstrung suggests, that the overlapping portion is a useable range for an amount of one or more phenolic resins, and a filler within a polymer composition which may undergo a crosslinking reaction in the presence of a vulcanization system comprising at least components a) through f) (see above).
Kohlstrung discloses that the preferred amount of elemental sulfur taught by Kohlstrung (4 to 10 wt% of the composition ([0033] and [0034])), which does not overlap with the claimed range. However, comparative example V1 of Kohlstrung teaches an amount of elementary sulfur that is within the claimed range (i.e., 1.75 wt%). 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 (see MPEP 2123 II). That is, while Kohlstrung notes that an article formed from the formulation of comparative example V1 (i.e., a flanged seam sealant, see [0054]) exhibit reduced elongation at break compared to examples in accordance with the invention, said article formed from the formulation of comparative example V1 is indeed operable as a flanged seam sealant. While a person having ordinary skill in the art would recognize that modulating the amounts of the vulcanization system components (see [0033] of Kohlstrung), it would have been obvious to a person having ordinary skill in the art to utilize elemental sulfur in the amount in Table I, V1 within inventive compositions, such as E1 with reasonable expectation of successfully forming articles such as a flanged seam sealant or a flanged seam adhesive, albeit with differing mechanical properties and the motivation would have been, e.g., decreasing the cost of the composition by limiting the ingredient input or to reduce emission of volatile sulfur compounds.
Kohlstrung is silent towards the composition improving compatibility with bismuth-based catalysts. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., “the crosslinking agent according to the invention comprises one or more thiazole disulfide compounds. It has surprisingly been found that the addition of these compounds promotes, in particular, tolerance to bismuth compounds, such as bismuth-based catalyst system” (instant specification para. [0012])). Therefore, the claimed effects and physical properties, i.e. compatibility with bismuth-based catalysts, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 20-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Kohlstrung et al. (US 2012/0148856, hereinafter referred to as “Kohlstrung”).
As to Claim 20: Kohlstrung teaches a heat-curing reactive composition which may undergo a crosslinking reaction in the presence of a vulcanization system (Abstract and [0033]) (i.e., a crosslinking agent). Kohlstrung teaches an exemplary composition (Table I, E1) consisting of components which read on the claimed crosslinking agent:
polybutadiene with active carboxylic anhydride groups, liquid polybutadiene, MW approx. 1800, and low molecular weight stereospecific polybutadiene (i.e., species which are construed to fall within the claimed a) polybutadiene),
sulfur (construed to read on the claimed b) elemental sulfur, see [0033] and [0034] of Kohlstrung)
zinc 2-metcapto-benzothiazole (ZMBT) (i.e., a thiazole disulfide compound according to the instant specification para. [0012]),
zinc dibenzyl dithiocarbamate (ZBEC) (i.e., a metal salt mased on a thiocarbamate),
CaO (i.e., a filler according to the instant specification para. [0014]),
ZnO, antioxidant, chalk, graphite, and hexamethylene bis(thiosulfate), (i.e., construed to read on the claimed additives).
The exemplary composition of Kohlstrung Table 1, E1 differs from the claimed crosslinking agent in the presence of c) a phenolic resin and in that the example of Kohlstrung requires the presence of a liquid polyisoprene. Kohlstrung teaches that phenolic resins may optionally be added to the composition ([0031]). While the Examiner concedes that the liquid polyisoprene is required by Kohlstrung (see Abstract), Kohlstrung specifically notes that related compositions lacking polyisoprene components (i.e., based solely on polybutadiene) comprising liquid polybutadiene rubber, pulverulent sulfur, and organic accelerators are known within the art as suitable for forming adhesives or sealants and sealing compounds ([0006]). Thus, when considering the disclosure of Kohlstrung and level of skill and knowledge within the art, a person having ordinary skill in the art would recognize that omission of the polyisoprene component of Table I, E1 of Kohlstrung would be operable for its intended purpose of adhesives or sealants and sealing compounds based on the disclosure of Kohlstrung at para. [0006], albeit without the improved properties offered from the inventive concept disclosed within Kohlstrung.
Kohlstrung discloses that the preferred amount of elemental sulfur taught by Kohlstrung (4 to 10 wt% of the composition ([0033] and [0034])), which does not overlap with the claimed range. However, comparative example V1 of Kohlstrung teaches an amount of elementary sulfur that is within the claimed range (i.e., 1.75 wt%). 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 (see MPEP 2123 II). That is, while Kohlstrung notes that an article formed from the formulation of comparative example V1 (i.e., a flanged seam sealant, see [0054]) exhibit reduced elongation at break compared to examples in accordance with the invention, said article formed from the formulation of comparative example V1 is indeed operable as a flanged seam sealant. While a person having ordinary skill in the art would recognize that modulating the amounts of the vulcanization system components (see [0033] of Kohlstrung), it would have been obvious to a person having ordinary skill in the art to utilize elemental sulfur in the amount in Table I, V1 within inventive compositions, such as E1 with reasonable expectation of successfully forming articles such as a flanged seam sealant or a flanged seam adhesive, albeit with differing mechanical properties and the motivation would have been, e.g., decreasing the cost of the composition by limiting the ingredient input or to reduce emission of volatile sulfur compounds.
As to Claim 21: Kohlstrung teaches the crosslinking agent of claim 20 (supra).
Kohlstrung teaches a heat-curing reactive composition which may undergo a crosslinking reaction in the presence of a vulcanization system (Abstract and [0033]) (i.e., a crosslinking agent), said composition comprising:
polybutadienes ([0020]) in an amount of 16 to 29 wt% of the composition ([0026]), which is within the claimed range,
elemental sulfur,
phenolic resins in an amount of 0.1 to 10 wt% of the composition ([0031])
thiazole compounds including the zinc salt of 2-mercaptobenzothiazole (ZMBT) (which reads on the claimed thiazole disulfide) (i.e., a thiazole disulfide) in an amount of 0.3 to 0.7 wt% of the composition ([0034]), which is within the claimed range,
zinc dibenzyl dithiocarbamate (i.e., a metal salt mased on a thiocarbamate) in an amount of 0.5 to 2 wt% of the composition ([0034]), which is within the claimed range,
The amounts of components which read on the claimed components b) and c) overlaps with the claimed ranges. In the case where 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(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Kohlstrung suggests, that the overlapping portion is a useable range for an amount of elemental sulfur and one or more phenolic resins within a polymer composition which may undergo a crosslinking reaction in the presence of a vulcanization system comprising at least components a) through e) (see above).
As to Claims 22: Kohlstrung teaches the crosslinking agent of claim 21 (supra).
Kohlstrung further teaches that the composition may comprise thiazole compounds including dibenzothiazyl disulfide (MBTS) (i.e., a thiazole disulfide which is construed as having the same structure as the claimed benzothiazole disulfide). Table 1, Example V2 teaches a composition with an amount of MBTS within the claimed range (5 wt%, respectively). The Examiner acknowledges that comparative example V2 is not a preferred embodiments of the invention of Kohlstrung, however, it is the position of the Office that Kohlstrung merely notes that articles formed from V2 have somewhat inferior properties compared to other disclosed examples see ([0054]). 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 (see MPEP 2123 II). Example V2 also differs from inventive examples in other amounts and identities of components of the composition and Kohlstrung does not explicitly point to the MBTS component for the difference in properties. Therefore, based on the disclosure of Kohlstrung that the composition may comprise MBTS ([0034]) and exemplary compositions comprising the same in an amount within the claimed range, albeit comparative examples, it would have been obvious to a person having ordinary skill in the art to utilize MBTS in the amount in Table I, V2 within inventive compositions, such as E1 with reasonable expectation of successfully forming articles such as a flanged seam sealant or a flanged seam adhesive, albeit with differing mechanical properties. The instant claim recites “a crosslinking agent consisting of…a thiazole disulfide compound” and is thus construed as excluding the presence of thiazole disulfide compounds beyond benzothiazole disulfide. Based on the disclosure of Kohlstrung that MBTS and ZMBT are both equivalents known within the art as suitable accelerators for vulcanization systems ([0034]), a person having ordinary skill in the art could at once envisage an arrangement of Table I, E1 wherein MBTS in the amount motivated by Table I, V2 is utilized as an alternative to the ZMBT of Table I, E1 based on Kohlstrung’s explicit contemplation of a finite number of options for disulfide components within a vulcanizable composition ([0034]) (see MPEP 2131.02 III).
As to Claim 24: Kohlstrung teaches the crosslinking agent of claim 20 (supra).
Kohlstrung teaches an exemplary composition (Table I, E1) consisting of components which read on the claimed crosslinking agent including:
Polybutadiene with active carboxylic anhydride groups, MW approx. 1800-2400, liquid polybutadiene, MW approx. 1800, and low molecular weight stereospecific polybutadiene (i.e., species are construed to fall within the claimed a) polybutadiene), which exhibit molecular weights within the claimed range.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sauer teaches a related vulcanizable rubber composition comprising polyisoprene and a vulcanization system consisting of sulfur and accelerators including MBTS (Abstract and [0035]). Sauer further teaches a comparative example that is recognized within the art as a “Standard Formulation” for forming underseal adhesives ([0050], Example 1), which is based solely on polybutadiene and does not comprise a polyisoprene component.
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.
Correspondence
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
1 Wolesensky, E., Evolution of Hydrogen Sulphide from Vulcanized Rubber. J. Res. Natl. Bur. Stand. 1930, 4 (4), 501.
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