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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/20/26 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 Per amendment dated 2/20/26, claims 1-12 are currently pending in the application, with claims 10-12 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 § 102 and 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1, 2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hagiwara et al. (US 2004/0048970 A1, of record).
Hagiwara teaches a method of preparing a carboxyl group-containing rubber (Ab., ref. claims). Example 1 is drawn to an acrylic rubber derived from a monomer mixture comprising 7.8 kg of ethyl acrylate, 3.4 kg of n-butyl acrylate and 0.6 of monobutyl maleate (reads on a crosslinking monomer having a carboxyl group) (Example 1). Disclosed mass ratio of ethyl acrylate to n-butyl acrylate is 2.
Although Hagiwara is silent regarding the toluene-insoluble content of the acrylic rubber, disclosed Example 1 teaches a method wherein ethyl acrylate, n-butyl acrylate, monobutyl maleate, a partially saponified polyvinyl alcohol, i.e., an emulsifier, and sodium acetate are charged into a reactor and preliminarily thoroughly mixed to obtain a uniform suspension, and then ethylene is injected into the reactor, pressure adjusted to 20 kg/cm2 and polymerized at 55oC for 6h using t-butyl hydroperoxide as the initiator [0061]. Given that the disclosed method is substantially similar to that of the inventive Examples 1-5 in the disclosure that provide for the claimed toluene-insoluble content, and given that according to the disclosure [0031], preparing a suspension by mixing a monomer mixed liquid with an aqueous solution of an emulsifier in advance tends to reduce the toluene-insoluble content, the claimed toluene-insoluble content must be inherent to Hagiwara’s acrylic rubber of Example 1.
In light of above, presently cited claims are anticipated by the reference.
Claims 1-5, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara et al. (US 2004/0048970 A1, of record).
Regarding claims 1, 2 and 4, the discussion on Hagiwara from paragraph 6 above is incorporated herein by reference.
Hagiwara is silent regarding the toluene-insoluble content of the acrylic rubber as claimed.
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 teaching in Hagiwara on a method of preparing a rubber from claimed monomers by a method that is substantially similar to that of the present invention, 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 an acrylic rubber by the disclosed method and reasonably expect acrylic rubbers of overlapping scope to have the claimed toluene-insoluble content, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. In re Best, 195 USPQ 430, 433 (CCPA 1977). When there is sound basis for believing that the products of the Applicant and the prior art are the same, the Applicant has the burden of showing that they are not. In re Spada, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1990).
When the prior art discloses all limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, basis exists for shifting the burden of proof to the Applicant. In re Fitzgerald et al., 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980). See MPEP 2112-2112.02.
Regarding claims 3, 5, 8, 9, the Hagiwara disclosure teaches a carboxyl group-containing rubber comprising (A) from 0 to 5 mass % of an ethylene monomer unit (C) from 1 to 12 mass % of a monoalkyl/monoalkoxyalkyl maleate (i.e., a crosslinking monomer), and (D) from 99 to 33 mass % of an alkyl acrylate unit, with acrylic rubber of Example 1 consisting of units of ethyl acrylate (7.8 kg) and butyl acylate (3.4 kg), monobutyl maleate (0.6 kg) and ethylene ([0020]-[0027], Example 1), i.e., teaches overlapping ranges.
Claims 1, 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hagiwara et al. (JP 2001-098032 A, machine translation of record).
Hagiwara ‘032 teaches an acrylic rubber comprising 0.1 to 10 wt.% of an ethylene monomer unit, 0 to 10 wt.% of a crosslinking site monomer unit and 99.9 to 80 wt.% of an ethyl acrylate and butyl acrylate monomer unit, wherein the ratio of the ethyl acrylate to the total of the ethyl acrylate and butyl acrylate is 60 to 100 wt.%, i.e., butyl acrylate at 0 to 40 wt.% (Overview, ref. claim 1). Disclosed Examples 2 and 3 comprise units of ethyl acrylate and butyl acrylate, ethylene and glycidyl methacrylate, and meet the claimed mass ratio of ethyl acrylate to butyl acrylate.
Additionally, the acrylic rubbers of Examples 2 and 3 are prepared by charging liquid n-butyl acrylate and ethyl acrylate, partially saponified aqueous polyvinyl alcohol, sodium acetate and glycidyl methyl acrylate into a pressure reactor and were mixed well in advance with stirring to prepare uniform suspensions, and then injecting ethylene and adjusting the pressure to 5-40kg/cm3, and polymerization was conducted at 55oC for 6h using t-butyl hydroperoxide as the initiator [0023]. Given that the disclosed method is substantially similar to that of the inventive Examples 1-5 in the instant disclosure that provide for the claimed toluene-insoluble content, and given that according to the disclosure [0031], preparing a suspension by mixing a monomer mixed liquid with an aqueous solution of an emulsifier in advance tends to reduce the toluene-insoluble content, the claimed toluene-insoluble content must be inherent to Hagiwara’s acrylic rubber of Example 1.
In light of above, presently cited claims are anticipated by the reference.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara et al. (JP 2001-098032 A, machine translation of record).
The discussion on Hagiwara from paragraph 14 above is incorporated herein by reference.
Hagiwara is silent regarding the toluene-insoluble content of the acrylic rubber as claimed.
As stated in paragraph 10 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.
Given the teaching in Hagiwara on a method of preparing an acrylic rubber from claimed monomers by a method that is substantially similar to that of the present invention, 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 an acrylic rubber by the disclosed method and reasonably expect acrylic rubbers of overlapping scope to have the claimed toluene-insoluble content, absent evidence to the contrary. The discussion on properties from paragraph 11 above are incorporated herein by reference.
Regarding claims 2, 4-9, Hagiwara teaches a genus of crosslinking monomers, including glycidyl methacrylate, acrylic acid, methacrylic acid, maleic acid monoalkyl ester etc. [0009]. Thus, it would have been within the level of ordinary skill in the art to substitute any of the carboxyl-containing crosslinking monomers in the acrylic rubber of the Examples 2 and 3 to provide for claimed units with a reasonable expectation of success, and reasonably expect them to have the claimed toluene-insoluble content, absent evidence to the contrary.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara et al. (US 2004/0048970 A1, of record, referred to as ‘970), in view of Hagiwara et al. (JP 2001-098032 A, machine translation of record, referred to as ‘032).
The discussions on Hagiwara ‘970 from preceding paragraphs as applied to claim 5 are incorporated herein by reference.
Hagiwara ‘970 is silent regarding with regard to acrylic rubbers with ethyl acrylate or butyl acrylate units in amounts as claimed.
The secondary reference to Hagiwara ‘032 is in a related field of endeavor and teaches a proportion of ethyl acrylate units at 60 to 100% by wt. based on total wt. of ethyl acrylate and butyl acrylate monomers, and that when the ethyl acrylate proportion is smaller than 75 wt.%, oil resistance is insufficient [0006]-[0007]. Thus, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to include units of ethyl acrylate and butyl acrylate within the claimed ranges so as to provide for optimal oil resistance.
Response to Arguments
Applicant’s arguments dated 2/20/26 have been duly considered.
Applicant argues that the Office Action's inherency assertions in regard to the cited references are erroneous, that in Table 1 of the specification, Comparative Example 1 has an Ethyl Acrylate/n-Butyl Acrylate ratio of 4.1, which is equal to that of Inventive Example 1 (and falls within Hagiwara et al. '090's disclosure) but comparative Example 1 has a toluene-insoluble content of 43%, whereas Inventive Example 1 has only 2.7% toluene-insoluble content, that the result can vary drastically depending on the conditions of polymerization, which are not disclosed in the cited references, and concludes that contrary to the contention of the Office Action, the claimed toluene-insoluble content is not inherent to the cited references
Applicant further argues that the obviousness rejections also cannot stand, Comparative Examples 2 and 3 in Table 1 of the present specification, where even slight changes in composition result in toluene-insoluble contents of 26% and 6.6%, respectively, demonstrates that the technology is highly sensitive and unpredictable, and that the results show that the claimed low level (of 5% by mass or less) is not an "inevitable" or "inherent" result of any given prior art composition, and because art is unpredictable, the Office Action's contention that a similar process would yield the same result is clearly unfounded and erroneous. Accordingly, the obviousness rejections cannot stand and should be withdrawn.
In response, it is noted that both Hagiwara references teach in exemplified embodiments, monomer compositions for forming the acrylic rubbers comprising claimed monomers in amounts and satisfy the claimed mass ratio (Example 1 in ‘070, Examples 2 and 3 in ‘032). In addition, the disclosed polymerization processes are also substantially the same as those of the Examples 1-5 in the instant disclosure, wherein the monomers (except ethylene), a partially saponified polyvinyl alcohol and sodium acetate are preliminarily thoroughly mixed to obtain a uniform suspension, and then ethylene is injected into the reactor, with polymerization conducted at 55oC for 6h using t-butyl hydroperoxide as the initiator.
In considering the polymerization processes in the Examples of the disclosure, it is noted that Example 1 and comp. Example 1, both have identical monomer compositions. However, the processes differ in that in the preparation method of Example 1, the following initial step is adopted:
A pressure-resistant reactor having an internal volume of 40 liters was charged with 11kg of a monomer mixed liquid containing monomers shown in Table 1 (excluding ethylene), 17 kg of 4% by mass of an aqueous polyvinyl alcohol solution, and 22 g of sodium acetate, and these were thoroughly mixed in advance with a stirrer to prepare uniform suspensions. Then, after the upper portion of the reactor was replaced with nitrogen, ethylene was injected into the upper portion of the reactor by 3 MPa (excluding Example 5). After stirring was continued and the temperature in the reactor was maintained at 55°C, 2 liters of an aqueous t-butyl hydroperoxide solution (0.25% by mass) was added to initiate polymerization.
In contrast, the preparation method of comparative Example 1 (and 2), includes the following steps:
A pressure-resistant reactor having an internal volume of 40 liters was charged with 17 kg of 4% by mass of an aqueous polyvinyl alcohol solution, and 22 g of sodium acetate, and these were thoroughly mixed in advance with a stirrer to prepare uniform suspensions. Then, after the upper portion of the reactor was replaced with nitrogen, ethylene was injected into the upper portion of the reactor by 3 MPa. After stirring was continued and the temperature in the reactor was maintained at 55°C, 11 kg of a monomer mixed liquid containing monomers shown in Table 1 (excluding ethylene), and 2 liters of an aqueous t-butyl hydroperoxide solution (0.25% by mass) was added over 6 hours to initiate polymerization.
That is, in the inventive method, the monomer mixed liquid, sodium acetate and an aqueous polyvinyl alcohol solution are thoroughly mixed in advance to prepare a uniform suspension, prior to injecting ethylene and raising the temperature to 55oC, whereas in the comparative Example 1, the monomer mixed liquid is introduced at a later stage into a uniform suspension of an aqueous polyvinyl alcohol solution and sodium acetate into which ethylene has already been injected and temperature maintained at 55oC. This difference in the method in the latter process of comp. Examples 1 appears to negatively impact the toluene insoluble amount in the isolated acrylic rubber. However, Hagiwara’s polymerization processes are also substantially similar to that of Examples 1-5 in the disclosure.
The data in Table 1 of the disclosure shows that two key elements can alter the toluene insoluble content, one being the mass ratio of ethyl acrylate and butyl acrylate, and the other being variations in the polymerization process. Although applicant asserts that toluene insoluble content can vary drastically depending on the conditions of polymerization, applicant has neither pointed out any key difference in the polymerization process taught in Hagiwara’s examples and that of the inventive examples, nor demonstrated in a proper back-to-back comparative experiment that Hagiwara’s process would necessarily provide for a toluene insoluble content that is mutually exclusive of the claimed range. Therefore, on the basis that Hagiwara’s acrylic rubbers not only meet the claimed compositional limitations, but are also prepared by processes that are substantially similar, Examiner maintains that the claimed toluene insoluble content would be inherent or reasonably expected in Hagiwara’s compositions, absent objective evidence to the contrary.
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
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