DETAILED ACTION
This is an Office action based on application number 17/770,325 filed 20 April 2022, which is a national stage entry of PCT/EP2020/079918 filed 23 October 2020, which claims priority to FR1911954 filed 25 October 2019. Claims 1-6, 15-17, and 19-26 are pending. Claims 7-14 and 18 are canceled.
Amendments to the claims, filed 12 February 2026 have been entered into the above identified application.
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
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-6, 15-17, 19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (JP2001234143A with citations taken from the Applicant-provided machine translation) (Kobayashi).
Regarding instant claims 1-2, 16-17, and 19:
Kobayashi discloses an adhesive treatment agent for rubber/fiber composite products (paragraph [0001]).
Said “adhesive treatment” reads on the claimed bonding composition.
Kobayashi further discloses that the adhesive treatment agent comprises at least a rubber latex, a sodium salt of lignosulfonic acid, and a polyepoxide compound (paragraphs [0011-0012]).
Said “rubber latex” reads on the claimed elastomer latex.
Said “polyepoxide compound” reads on the claimed epoxy having at least two epoxy units.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is noted that Kobayashi discloses an adhesive treatment used for rubber/fiber composites and not explicitly a textile. However, a “bonding composition for textiles is considered an intended use limitation. As Kobayashi discloses a substantially identical bonding composition, said bonding composition is considered capable of performing the intended use limitation, and Kobayashi meets the limitations of the claim.
It is noted that Kobayashi does not explicitly disclose that the polyepoxide is an epoxy hardener for the lignosulfonate salt. However, the limitation “hardener for the lignosulfonate salt” is construed as an intended use limitation. Shoji discloses the requisite polyepoxide, and absent further compositional limitations required of the polyepoxide to be a hardener for a lignosulfonate salt, the polyepoxide of Shoji is construed capable of performing the intended use limitation (i.e., hardening the lignosulfonate salt).
Further, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, the polyepoxide of Kobayashi is considered substantially identical to the claimed epoxy having at least two epoxy units; therefore, the polyepoxide compound of Kobayashi is construed capable of hardening the lignosulfonate salt, absent evidence to the contrary.
Further, as discussed above, the limitations “configured for forming a cured resin comprising an elastomer latex” and “wherein said bonding composition being further configured for forming the cured resin by a crosslinking reaction between the lignosulfate salt and the epoxy hardener” are construed to be intended uses of the claimed composition. As Kobayashi discloses all of the positively recited compositional limitations required by the claim, Shoji is construed to meet the intended limitations recited by the claims.
With regard to the mass ratio and % by weight limitations of the individual components of the adhesive treatment:
Kobayashi teaches that the adhesive composition makes it possible to efficiently obtain high-quality reinforcing fibers by improving operational stability without impairing performance such as adhesiveness to rubber and fatigue resistance (paragraph [0063]).
Since the instant specification is silent to unexpected results, the specific and relative amount of each of the rubber latex, lignosulfonate, and polyepoxide are not considered to confer patentability to the claims. As the fatigue resistance and optimized adhesion are variables that can be modified, among others, by adjusting the amount of each component, the precise amounts would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of the rubber latex, lignosulfonate, and polyepoxide in Shoji to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claim 3:
Kobayashi further discloses that the epoxy compound is inclusive of polyglycidyl ether compounds of polyhydric alcohols selected from the group inclusive pentaerythritol, sorbitol, ethylene glycol, polyethylene glycol, and polypropylene glycol (paragraph [0026]) (i.e., poly-glycidyl ethers of aliphatic polyols).
Regarding instant claim 5:
Kobayashi further discloses that examples of the rubber latex are inclusive of acrylonitrile-butadiene copolymer latex, styrene-butadiene copolymer rubber latex, and a natural rubber latex (paragraph [0025]).
Regarding instant claims 6 and 15:
Kobayashi further discloses that the total solid content of the components comprising the adhesive treatment is preferably 3 to 8% by weight (paragraph [0040]), which is construed to meet the claimed dry matter of the composition. The range of Kobayashi overlaps the range recited by claim 15; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 22:
Kobayashi discloses the adhesive treatment comprising the rubber latex, the lignosulfonate salt, and the polyepoxide, as cited in the rejection of claim 1 above. Any combination of the recited components is construed o mee the claimed “kit” absent further compositional and structural limitations required by said “kit”.
Claims 4, 20-21, and 23-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi in view of Wise (US Patent No. 3,968,304) (Wise).
Regarding instant claim 4:
Kobayashi disclose the adhesive treatment comprising the polyepoxide compound as cited in the rejection of claims 1 and 3, above, but does not explicitly disclose the compounds recited in the instant claim.
However, Wise discloses composite articles comprising polyester reinforcing elements, such as those used in the carcass piles of tires, having a minor amount of an adhesive so that the adhesive containing elements are subsequently bonded to rubber (col. 1, lines 9-15).
Wise further discloses that said adhesive comprises a polyepoxide (col. 3, lines 38-43) inclusive of 1,4-butanedio diglycidic ether, 3,4-epoxycyclohexylmethyl-3,4-epoxycyclohexanecarboxylate, diglycidyl ether of glycerol, and mixtures thereof (col. 4, lines 16-48).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use those polyepoxides of Wise in the adhesive treatment agent of Kobayashi. The motivation for doing so would have been that that those epoxide compositions of Wise are art recognized polyepoxides usable in the treatment of fiber reinforcement for tires. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Therefore, it would have been obvious to combine Wise with Kobayashi to obtain the invention as specified by the instant claims.
Regarding instant claims 20-21:
Kobayashi discloses the adhesive treatment comprises the rubber latex, the lignosulfonate, and the polyepoxide compound, as cited above.
Kobayashi does not explicitly disclose the pH of the composition.
However, Wise discloses an aqueous dispersion of a rubber vinyl pyridine copolymer and a heat reactable resinous composition (col. 5, lines 25-27).
Wise discloses that said heat reactable resinous composition is inclusive of polyepoxides (col 3, lines 38-43).
Wise further discloses that the aqueous dispersion further comprises additional alkaline material to render the dispersion alkaline to prevent premature coagulation of the rubbery copolymer and to solubilize the heat reactable composition (col. 5 lines 34-40).
An alkaline dispersion is construed to be one that has a pH of greater than 7.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to render the adhesive treatment composition of Kobayashi alkaline as taught by Wise. The motivation for doing so would have been to prevent premature coagulation of the rubber latex and to solubilize the polyepoxide compound.
Therefore, it would have been obvious to combine Wise with Kobayashi to obtain the invention as specified by the instant claims.
Regarding instant claim 23-26:
Kobayashi discloses a method for producing a rubber reinforcing fiber cord comprising applying the adhesive treatment to the surface of a synthetic fiber cord (paragraph [0015]). Kobayashi suggests that the produced fibers are used in applications of reinforcing rubber products inclusive of tires, belts, and hoses (paragraph [0001]).
Kobayashi does not explicitly disclose a textile inclusive of a yarn, cord or textile structure.
However, However, Wise discloses composite articles comprising polyester reinforcing elements, such as those used in the carcass piles of tires, having a minor amount of an adhesive so that the adhesive containing elements may subsequently be bonded to rubber (col. 1, lines 9-15).
Wise further discloses that the reinforcing elements comprise filaments, continuous filaments, staple, twisted yarn, tow, yarn, cords, fabrics, and the like (col. 1, lines 46-49).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, to select fibers for the reinforcement of Kobayashi in the form of filaments, continuous filaments, staple, twisted yarn, tow, yarn, cords, fabrics, and the like as prescribed by Wise. The motivation for doing so would have been that such structures are art recognized forms for adhesive-treated fiber reinforcement of rubber structures.
Therefore, it would have been obvious to combine Wise with Kobayashi to obtain the invention as specified by the instant claims.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record have been fully considered but are unpersuasive.
Applicant contends that none of the references, taken either singly or in combination, discloses or suggests each and every element of Applicant’s claims. Applicant submits the Declaration under Rule 132 by Maelle Gobin (February 2026 Declaration) to support their arguments. Applicant specifically argues that the cited Kobayashi reference relates to a composition that is substantially different than Applicant’s claimed invention and does not disclose or suggest the present claims. Applicant argues that Kobayashi, at most, relates to a composition made up of a rubber latex, a sodium lignosulfate, a polyepoxide, a blocked isocyanate, and/or an ethyleneurea. Applicant points to the examples of Kobayashi. Applicant, in their arguments and the February 2026 Declaration contend that the composition of examples 1 to 3 in Kobayashi differ from that of Applicant’s claimed invention. Specifically, Applicant contends that the molar ratio of epoxide to isocyanate in these examples is 1.25/1, typical of a system to be crosslinked and are thus chosen to form a consistent structured network. Applicant further argues that the amounts of epoxide and blocked isocyanate are much higher than the amount of lignosulfate salt, and in particular, the epoxy hardener/lignosulfate mass ratio A/D is of 2.45% or more. Applicant argues that the lignosulfate salt acts as a dispersing agent and is silent regarding the formation of a resin based on the sodium lignosulfate salt as in the present claims. Applicant contends that Kobayashi states that if the proportion of the lignosulfonic salt is too low, the gum-up phenomenon is suppressed, and if the proportion is too high, sufficient adhesion cannot be ensured. Applicant alleges that this teaching completely rules out the idea that the lignosulfate salt of Kobayashi can serve as the basis for the formation of a resin-type network.
Applicant’s arguments are unpersuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP §2123(II). In the instant case, although the examples of the prior art are outside the scope of Applicant’s claims, said examples do not constitute a teaching away from the broader disclosure of the references, which obviate the claims as cited above (e.g., an adhesive treatment comprising a rubber latex, a sodium salt of lignosulfonic acid, and a polyepoxide compound construed to read on the claimed epoxy hardener.
Applicant’s arguments that certain components acting in particularly ways (i.e., that the lignosulfonic acid forms the basis of the resin-type network are unpersuasive as such action is not explicitly recited by the claims. Furthermore, such actions performed by the components would be intended use limitations that do not lend patentability to the claims absent evidence to the contrary.
Applicant further argues the merits of the February 2026 Declaration. Applicant alleges that experiments provided therein confirm the substantial structural and functional differences associated with the lignosulfate salt of the claims. Specifically, these experiments prepare two treatment baths commensurate in scope with the disclosure of Kobayashi except one bath is prepared without lignosulfate. Applicant contends that the experiments show that the presence of lignin in the bath does not influence the bonding properties. Applicant argues that the conclusions run contrary to their invention where the presence of lignin allows for the formation of a polymer forming a thermosetting mesh around the elastomer latex to improve the mechanical strength of the adhesive.
Applicant’s argument is unpersuasive. Although Applicant contends that the amount of lignin of Kobayashi is not intended to improve the adhesiveness of the produced combination, the rejections of record rely upon the position of a result effective variable wherein one of ordinary skill in the art would be motivated to optimize the amounts of the individual components to improve operational stability without impairing performance such as adhesiveness and fatigue resistance. Though the purpose of the lignosulfate salt of the prior art differs from that of Applicant’s invention, Applicant has not shown that through the optimization of the prior art to achieve the intended benefits (i.e., operational stability), one of ordinary skill in the art would arrive at a composition that obviates the invention of the claims, absent evidence of unexpected results. Further, although Applicant may allege that their provided evidence further shows unexpected results, all the evidence provided by Applicant is not commensurate in scope with Applicant’s broadest claim (i.e., claim 1) as all evidence is drawn to specific components in specific amounts, whereas claim 1 is drawn broadly to a cured resin formed of any elastomer latex, any lignosulfate salt, and any epoxy hardener of a lignosulfate salt comprising at least two epoxy units all in broad amounts that must stipulate one claimed ratio.
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.
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/TAM/Examiner, Art Unit 1788 05/26/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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