DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/10/25 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 9/22/25, claims 1, 7-13 are currently pending in the application, with claims 7-13 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al. (US 2010/0323141 A1, of record).
Kawasaki teaches acrylic rubbers formed from 100 parts of an alkyl acrylate, 10-100 parts by weight of an alkyl methacrylate, and 0.5 to 4 parts by weight of a crosslinking monomer (Ab., ref. claim 1). The reference teaches butyl acrylate and/or ethyl acrylate as preferred alkyl acrylate(s), and n-butyl methacrylate as a preferred species of alkyl methacrylate [0011]-[0012], [0022], [0027]. Additionally, the disclosed genus of crosslinking monomers includes acrylic acid, methacrylic acid, crotonic acid and monobutyl buteonoate, i.e., monomers with a carboxy group [0032]. Kawasaki is further open to ethylene as a further copolymerizable monomer, preferably in an amount of 10 parts or less, per 100 parts of alkyl acrylate ([0036]-[0037], TABLE 1).
Disclosed Example 5 is drawn to an acrylic rubber based on 100 parts by weight of butyl acrylate, 38.9 parts by wt. of ethyl methacrylate and 1.5 parts by weight of glycidyl methacrylate (TABLE 1).
Kawasaki is silent on an acrylic rubber comprising units of butyl methacrylate, ethylene and a crosslinking monomer having a carboxy group, in addition to the claimed alkyl acrylate, in one single embodiment as in the claimed invention.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05.
Given the generic teaching in Kawasaki on butyl methacrylate as a suitable alkyl methacrylate and the prescribed amount thereof, ethylene as a suitable comonomer, and crosslinking monomers having a carboxy group, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare acrylic rubbers from 100 parts by weight of butyl acrylate and/or ethyl acrylate, 10-100 parts by weight of butyl methacrylate, ethylene, and 0.5 to 4 parts by weight of a crosslinking monomer having a carboxyl group, including acrylic rubbers comprising claimed units in claimed amounts. For instance, a skilled artisan would have found it obvious to substitute ethyl methacrylate in Example 5 with n-butyl methacrylate, and further modify it to include ethylene units in amount within the scope of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Bando (US 12,466,907 B2).
Bando teaches an acrylic rubber including 15 to 55% by wt. of methacrylic acid alkyl ester monomer units (a), 44.5 to 84.5% by weight of acrylic acid ester monomer units (b), and 0.5 to 4% by weight of carboxyl group-containing monomer units (c) (Ab., ref. claim 1). Bando teaches n-butyl methacrylate as a particularly preferred species of methacrylic acid alkyl ester monomer (col. 5-6, bridging paragraph), and ethyl acrylate and n-butyl acrylate as preferred specie of acrylic acid ester monomer (col. 6, lines 38-47).
Furthermore, Bando is open to including olefin monomer units, e.g., ethylene disclosed as a more preferred copolymerizable monomer over other species, in an amount of 40 % by weight or less, more preferably 5 % by weight or less (col. 9, lines 61-62, col. 10, lines 29-43).
Disclosed Production Example 11 in TABLE 1 is drawn to an acrylic rubber (a-11), comprising ethyl acrylate and n-butyl acrylate (sum at 72.5 wt.%), n-butyl methacrylate (35 wt.%), and monobutyl maleate units (TABLE 3, Example 14). The calculated relative amount of butyl methacrylate is 42.03 parts, per 100 parts by wt. of ethyl acrylate and n-butyl acrylate, and falls within the claimed range. Thus, acrylic rubber (a-11) meets the limitations of claimed monomer units, except for those of ethylene, and meets the claimed relative amount of n-butyl methacrylate.
Bando is silent on a copolymer comprising units of ethylene and other claimed monomer units in one single embodiment as in the claimed invention.
Given the teaching in Bando on monomers suitable for preparing the acrylic rubber, on ethylene as a preferred copolymerizable monomer and prescribed amount thereof, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare acrylic rubbers within the scope of the claimed invention. As stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Response to Arguments
The amendment dated 9/22/25 had been entered in the advisory action dated 10/3/25. The rejection based on Kawasaki is rewritten herein above to improve clarity. Additionally, a new ground of rejection is presented herein above in view of the IDS dated 12/10/25. Applicant’s arguments dated 9/22/25 had been responded to in the advisory action, and summarized herein below:
Referring to Examples 1-4 in the disclosure, Applicant argues on the criticality of “35 to 55 parts by mass” for n-butyl methacrylate for achieving unexpected superior heat resistance and excellent elongation after heat aging, compared to Comparative Examples F, G and H. Applicant submits that it is the specific combination of: (1) the critical amount of n-butyl methacrylate, (2) the presence of ethylene, (3) the specific alkyl acrylate or alkyl acrylates, and
(4) the carboxy group crosslinking monomer that synergistically produces the remarkable heat resistance, that in contrast, Kawasaki, with its teaching on 10-100 parts for an alkyl methacrylate, provides no teaching or suggestion to those of ordinary skill in the art the specific, narrow critical sub-range as presently claimed.
In response, as stated in the final office action, Kawasaki teaches specific monomers as claimed for forming the acrylic rubber, in overlapping ranges, thereby obviating the rubber of claim 1. Regarding the arguments on unexpected results, it is seen that inventive Examples 1-4 in the disclosure demonstrate superior heat resistance and elongation after heat aging. However, this data is limited, at best, to acrylic rubbers (A) to (D) formed from butyl acrylate or a combination of butyl acrylate and ethyl acrylate, at 100 parts by mass, n-butyl methacrylate at 41-55 parts by mass, ethylene at 2.2-2.4 parts by mass, and monobutyl fumarate or monobutyl maleate at 2.2 parts by mass (TABLEs 1 and 2). It is not clear why the limited data on such acrylic rubbers (A)-(D) of Examples 1-4 would be considered to be reasonably representative of an acrylic rubber of claim 1 which is of a much broader scope. Clearly, the data on record demonstrating unexpected results is not reasonably commensurate in scope with the claim language.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762