DETAILED ACTION
Applicant’s response of February 18, 2026 has been fully considered. Claim 4 is cancelled. Claims 1-3 and 5-11 are pending.
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 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.
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 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Amemiya et al. (US 2009/0171000) in view of Koga (WO 2017/170190). The citations below for Koga are taken from an English language machine translation included herewith.
Regarding claims 1-3 and 5, Amemiya et al. teaches an ethylene-propylene-diene (EPDM) composition comprising 100 parts by weight of EPDM and 0.2 to 4 parts by weight of an organic peroxide as a cross-linking agent (¶14). The composition also comprises 20 to 120 parts by weight of silica with a specific surface area of about 30 to about 250 m2/g; and from about 0.5 to about 3 parts by weight of a silane coupling agent (¶31, 32).
The specific surface area provided by Amemiya et al. is calculated by a nitrogen adsorption process (BET-type) not by the CTAB method recited in claim 1. CTAB and BET specific surface area are recognized in the rubber-compounding art as closely related and correlated metrics for the same class of precipitated/wet-process silica reinforcing fillers, and the two methods are frequently reported side-by-side for the same commercial silica products. While the two measurements cannot be equated, at the low surface-area end of the range, the two can be relatively close if the silica has little microporosity. Amemiya et al. expressly identifies 30 m2/g as an art significant lower bound for the specific surface, and this is the same lower bound of the claimed CTAB range. Given that Amemiya et al.’s disclosed 30 to 250 m2/g range broadly overlaps the claimed 30 to 50 m2/g CTAB range and they share a common, functionally-defined lower bound, selecting a silica whose CTAB specific surface area falls within 30 to 50 m2/g would have been routine selection from a finite number of identified, predictable silica grades and well within the knowledge of one of ordinary skill in the art at the time of the filing of the instant invention. Moreover, there is no evidence on the record that this claimed range is critical to the invention.
Amemiya et al. does not disclose that its rubber component is an ethylene-butene-ethylidene norbornene terpolymer with an iodine value of 3 to 20. However, Koga teaches a rubber composition comprising ethylene-butene-ethylidene norbornene terpolymer, carbon black, a hardness modifier such as silica, and a peroxide cross-linking agent (Page 2, lines 12-14; Page 3, line 40; Page 4, line 9). The iodine value of the terpolymer is 3 to 20 (Page 1, line 43 to Page 2, line 1). Amemiya et al. and Koga are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of ethylene-alpha olefin-diene terpolymer compositions useful for sealing materials. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to substitute the ethylene-butene-ethylidene norbornene terpolymer, as taught by Koga, into the composition for the EPDM polymer, as taught by Amemiya et al., and would have been motivated to do so because Koga teaches that the ethylene-butene-ethylidene norbornene terpolymer has a hardness equivalent to EPDM while also possessing excellent low-temperature rubber properties and processability (Page 1, lines 38-39). EPDM and ethylene-butene-ethylidene norbornene terpolymer are art recognized equivalents used for the same purpose in sealing materials and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. MPEP 2144.06 II.
Regarding claims 6 and 10, Amemiya et al. teaches that the resulting vulcanization product can be shaped as a sealing materials such as O rings, gaskets, packings, and oil seals (¶37).
Regarding claim 7, Amemiya et al. and Koga do not teach that the vulcanized molded article comprising the composition made by the above-described combination of Amemiya et al. and Koga has a value of TR-70 of -40° C or lower. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, 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 amounts. Therefore, the claimed effects and physical properties, i.e., a value of TR-70 of -40° C or lower, 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 8, Amemiya et al. and Koga do not teach that the vulcanized molded article comprising the composition made by the above-described combination of Amemiya et al. and Koga has a volume resistivity of 1x1012 Ω·cm or more. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, 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 amounts. Therefore, the claimed effects and physical properties, i.e., a volume resistivity of 1x1012 Ω·cm or more, 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 9, Amemiya et al. and Koga do not teach that the vulcanized molded article comprising the composition made by the above-described combination of Amemiya et al. and Koga has a compression set as measured under the conditions of 130° C and 70 hours is 20% or less. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, 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 amounts. Therefore, the claimed effects and physical properties, i.e., a compression set as measured under the conditions of 130° C and 70 hours is 20% or less, 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 11, Amemiya et al. teaches that the silane coupling agent is vinyltrimethoxysilane (¶32).
Response to Arguments
Applicant’s arguments with respect to claims 1-3 and 5-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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