DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 21, 2025 has been entered.
Claim 1 is amended. Claims 1-11 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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 requires that the composition contain the silane coupling agent in an amount of from 0.5 to 3.0 parts by weight. However, claim 1, from which claim 4 depends, requires that the silane coupling agent be present in an amount of 0.5 to 1.0 parts by weight. The range in claim 1 is smaller than the range in claim 4. Therefore, claim 4 fails to further limit the claim from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Koga (US 2018/0355232 in view of Ichino et al. (US 2016/0355622).
Regarding claims 1-5 and 11, Koga teaches a rubber composition comprising 100 parts by weight of an ethylene/butene/ethylidene norbornene terpolymer (¶36, 44, 61), 0.1 to 300 parts by weight of a filler such as carbon black or silicic acid (hydrated silica) (¶45, 46), and 0.5 to 10 parts by weight of an organic peroxide crosslinker (¶47, 48). The terpolymer has an iodine value of 3 to 20 (¶40).
Koga does not teach that the composition comprises a silica with a CTAB specific surface area of 30 to 50 m2/g; or from 0.5 to 1.0 parts by weight of a silane coupling agent such as vinyltrimethoxysilane. However, Ichino et al. teaches a composition comprising 100 parts by weight of an ethylene/α-olefin/nonconjugated polyene copolymer, 5 to 90 parts by weight of silica (¶476) with a BET specific surface area of 5 to 500 m2/g (¶475), 1.5 parts by weight of a silane coupling agent that may be vinyltrimethoxysilane (¶510), and 5.1 parts by weight of dicumyl peroxide (organic peroxide) (Table 8, Example 21). Based on the way the specific surface area is measured, the CTAB measurement is typically lower than the BET measurement. Therefore, this range of BET specific surface area will have overlap with the claimed range of CTAB specific surface area. As for the amount of the silane coupling agent, Ichino et al. only teaches an amount in Table 8, Examples 18-21. However, it is well known in the art that the amount of silane coupling agent is based on the amount of silica used within a composition because the purpose of the silane coupling agent is to promote the coupling of the silica to the copolymer/rubber component. Therefore, based on the ratio in of the examples of 45 parts by weight of silica to 1.5 parts by weight of silane coupling agent, the preferred range of silica (20 to 80 parts by weight, ¶476) yields a range of silica of 0.67 to 2.67 parts by weight (calculated by Examiner)1, which overlaps the claimed range.
Koga and Ichino et al. are analogous art because they are from the same field of endeavor as that of the instant application, namely that of ethylene/α-olefin/nonconjugated polyene copolymer compositions useful for molded articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use silica with a specific surface area as claimed, as taught by Ichino et al., as the filler in the composition, as taught by Koga, and would have been motivated to do so because Koga teaches that silica is a suitable filler for the composition and Ichino et al. teaches that similar compositions comprising silica are well balanced between mechanical strength and anti-vibration properties (excellent flexibility) (¶663). Additionally, at the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 0.67 to 2.67 parts by weight of a silane coupling agent such as vinyltrimethoxysilane, as taught by Ichino et al., to the composition, as taught by Koga, and would have been motivated to do so because it is well known in the art to use a silane coupling agent in compositions when silica is used as the filler to promote coupling between the filler and the rubber.
Regarding claims 6 and 10, Koga teaches a molded article obtained by vulcanizing and molding the rubber composition, wherein the molded article is a sealing part (¶56).
Regarding claim 7, Koga and Ichino et al. do not teach that the vulcanized molded article comprising the composition made by the above-described combination of Koga and Ichino et al. 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, Koga and Ichino et al. do not teach that the vulcanized molded article comprising the composition made by the above-described combination of Koga and Ichino et al. 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, Koga and Ichino et al. do not teach that the vulcanized molded article comprising the composition made by the above-described combination of Koga and Ichino et al. 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.
Response to Arguments
Applicant's arguments filed November 21, 2025 have been fully considered but they are not persuasive.
Applicant argues that neither Koga nor Ichino et al. teach a composition comprising a silane coupling agent in an amount of 0.5 to 1.0 parts by weight. This argument is unpersuasive. While it is true that Koga does not teach the inclusion of a silane coupling agent and Ichino et al. does not explicitly teach using a silane coupling agent in the claimed range, as stated above in the rejection of record, the amount of silane coupling agent implicitly disclosed by Ichino et al. does overlap the claimed range. It is very well known in the art of rubber compositions that silane coupling agents are used when silica is used as a filler in order to couple the silica to the rubber and promote good dispersion of the silica throughout the composition. Because of this interaction, the amount of silane coupling agent used is based on the amount of silica used in the composition. By using the ratio of silica to silane coupling agent used in the Examples in Table 8 of Ichino et al. and the preferred range of silica taught by Ichino et al., the range of silane coupling agent could be anywhere from 0.67 to 2.67 parts by weight. This calculated range does overlap with that claimed. Therefore, applicant’s arguments are unpersuasive.
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
1 45/1.5 = 20/x, x = 0.67; 45/1.5 = 80/x, x = 2.67
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