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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-14 and 20 in the reply filed on 10/8/2025 is acknowledged. The traversal is on the ground(s) that there is no undue burden. This is not found persuasive because the different groups require separate searches.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-19 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/8/2025.
Claim Objections
Claims 2-12 are objected to because of the following informalities: “A” at the beginning of the dependent claims must be relace with “The”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 is indefinite for the following reasons:
The limitation “about” is indefinite. Neither the claims nor the instant specification provides any indication as to the metes and bounds of the term “about”. This rejection applies to every recitation of “about” in the dependent claims.
Claim 1 recites the limitation "the hard segments". There is insufficient antecedent basis for this limitation in the claim.
The three embodiments for the rubber phase: 1) a carboxylic acid cure site, 2) chlorine cure site functional acrylate rubber, and 3) anhydride cure site functional acrylate rubber are indefinite since 1) is not an acrylate rubber as specified in c).
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 20 is indefinite for the following reasons:
The limitation “about” is indefinite. Neither the claims nor the instant specification provides any indication as to the metes and bounds of the term “about”. This rejection applies to every recitation of “about” in the dependent claims.
Claim 1 recites the limitation "the hard segments". There is insufficient antecedent basis for this limitation in the claim.
The three embodiments for the rubber phase: 1) a carboxylic acid cure site, 2) chlorine cure site functional acrylate rubber, and 3) anhydride cure site functional acrylate rubber are indefinite since 1) is not an acrylate rubber.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abraham et al. (6,207,752).
Regarding claims 1-4 and 9-11: Abraham et al. teach a thermoplastic vulcanizate comprising a plastic phase and a rubber phase, wherein
the plastic phase comprises 60 parts by weight, based on 100 parts by weight of the plastic and rubber phases of the thermoplastic polyurethane, Estane 58144, which is partially crystalline and has melting peaks at 180°C, 192°C and 205°C (Example 22; col. 23, lines 45); and
a rubber phase comprising 40 parts by weight based on 100 parts by weight of the plastic and rubber phases of a rubber, which is carboxylic acid functional rubber (Example 22); and
1.26 parts per 100 parts by weight of the plastic and rubber phases of an addition type curing agent, which is 1,3-PBO: 1,3-phenylenebis2,2'-(oxazoline-2).
Abraham et al. teach that the curatives react with the acid groups of the caboxylated rubber by an addition reaction which results in crosslinking without the evolution of volatiles (col. 13, lines 30-36). Abraham et al. teach that the nitrile rubbers utilized in the composition contain pendant carboxyl groups (col. 3, lines 36-47). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select acrylic acid as the pendant carboxyl group in Abraham et al. It is noted that the instant specification discloses that the term “acrylic” can be used interchangeably with “acrylate rubber” [0039].
Regarding claims 5-6: The claimed ranges with the modifier “about” overlaps the amounts in claim 22 of Abraham et al. "About" permits some tolerance. At least about 10% was held to be anticipated by a teaching of a content not to exceed about 8% In re Ayers, 154 F2d 182, 69 U.S.P.Q. 109 (C.C.P.A. 1946).
Regarding claim 7: Abraham et al. teach adding a plasticizer (column 6, line 55).
Regarding claim 8: Abraham et al. teach adding up to about 60 wt% (column 6, lines 55-60). The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 12: Abraham et al. teach at least 80 percent crosslinked (col. 24, 26; claims 7 and 15).
Regarding claims 13 and 14: Abraham et al. teach a hose (col. 8, lines 15-16).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abraham et al. (6,207,752).
Abraham et al. teach a thermoplastic vulcanizate comprising a plastic phase and a rubber phase, wherein
the plastic phase comprises 60 parts by weight, based on 100 parts by weight of the plastic and rubber phases of the thermoplastic polyurethane, Estane 58144, which is partially crystalline and has melting peaks at 180°C, 192°C and 205°C (Example 22; col. 23, lines 45); and
a rubber phase comprising 40 parts by weight based on 100 parts by weight of the plastic and rubber phases of a rubber, which is carboxylic acid functional rubber (Example 22); and
1.26 parts per 100 parts by weight of the plastic and rubber phases of an addition type curing agent, which is 1,3-PBO: 1,3-phenylenebis2,2'-(oxazoline-2).
Abraham et al. teach that the curatives react with the acid groups of the caboxylated rubber by an addition reaction which results in crosslinking without the evolution of volatiles (col. 13, lines 30-36). Abraham et al. teach that the nitrile rubbers utilized in the composition contain pendant carboxyl groups (col. 3, lines 36-47). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select acrylic acid as the pendant carboxyl group in Abraham et al. It is noted that the instant specification discloses that the term “acrylic” can be used interchangeably with “acrylate rubber” [0039].
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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