DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on August 19, 2025 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include a limitation of
“…the thermally expandable composition after curing has a volume increase compared to the uncured composition in a range of 25-1000%”. This limitation was not previously presented and was taken from instant specification (p. 27, lines 13-16 of instant specification). In light of the amendment, the previous rejections cited below are maintained but suitably framed to better address the current amendment. Thus, the following action is properly made final.
Election/Restrictions
3. Applicant's election with traverse of Group I, claims 1-9, 19 in the reply filed on August 19, 2025 is acknowledged. The traversal is on the ground(s) that the applied prior art Mori et al (US 2001/0016629), Obrecht et al (US 6,127,488), Sauer et al (US 2004/0265560) and CN 102286159 do not disclose all features of the amended claim 1. This is not found persuasive because:
a) the lack of unity of invention and the following an action on the merits were already made based on the originally presented invention and further
b) Mori et al discloses a rubber composition comprising:
A) 100 pbw of a diene rubber, such as natural rubber, butadiene rubber, styrene-butadiene rubber ([0016]);
B) 1-30 pbw of expandable graphite (Abstract) which expands at the time of vulcanization ([0013], [0023]), specifically a commercial product GRAFGuard 160-50N having particle size of 300 micron and expansion onset temperature of 160⁰C ([0045]);
C) vulcanization or cross-linking agent ([0031]);
D) other additives ([0031]),
composition is vulcanized at a temperature of 175C ([0034]).
Since a) the composition of Mori et al in view of Obrecht et al is substantially the same as that claimed in instant invention and b) the expandable graphite is cited as expanding during vulcanization, therefore, said expandable graphite will intrinsically and necessarily act, at least partially, as a blowing agent during said expansion, and thereby the composition of Mori et al in view of Obrecht et al comprising as high as 30 pbw of the expandable graphite, after said vulcanization at 175⁰C will intrinsically and necessarily have, or would be reasonably expected to have volume increase of at least 25% as well, especially since the amount of the expandable graphite in the composition of Mori et al in view of Obrecht et al is as high as 30 pbw, and is about the same as disclosed in instant invention (5-30%wt, see p. 7, lines 4-11 of instant specification) and higher than the amounts exemplified in instant invention (2.5%, 8%wt, 18%wt, as in Tables 2-3 of instant invention). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-18, 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 19, 2025.
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.
4. Claims 1-9, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer et al (US 2004/0265560) in view of CN 102286159 (based on machine translation submitted in IDS on 06/14/23) only, or alternatively in further view of Luo et al (US 9,089,726) and/or Mori et al (US 2001/0016629).
5. The rejection is adequately set forth on pages 8-13 of an Office action mailed on May 6, 2025 and is incorporated here by reference.
6. As to amended claim 1, the composition of Sauer et al in view of CN 102286159 only, or alternatively in further view of Luo et al and/or Mori et al comprises both a vulcanization system and expandable graphite ([0029] of Sauer et al and [0016] of CN 102286159).
7. CN 102286159 further recites that the heating temperature to foam the polymer, i.e. temperature at which the polymer composition will expand by said expandable graphite, is 100-260⁰C ([0013], [0010]).
Luo et al further discloses the use of expandable graphite as blowing agent for expanding elastomer-based compositions (col. 2, lines 23-30; col. 2, lines 45-50), wherein Luo et al explicitly recites the start expansion temperature of said blowing agent being 130-300⁰C (col. 2, lines 29-32).
Mori et al discloses the use of commercial expandable graphite GRAFGuard 160-50N having expansion onset temperature of 160⁰C ([0045])
8. On the other hand, Sauer et al further teaches the composition is cured at a temperature of 170⁰C or 200⁰C ([0046]).
9. Since
a) the composition of Sauer et al in view of CN 102286159 only, or alternatively in further view of Luo et al and/or Mori et al is substantially the same as that claimed in instant invention, i.e. comprises the expandable graphite as blowing agent in amount of 1.5%wt or 2%wt ([0030] of Sauer et al), i.e. more than 0.5%wt as required by instant claim 2, and about the same amount as exemplified in examples of instant invention (Table 3 of instant specification),
b) the composition exemplified in instant invention having 2.5%wt of expandable graphite provides expansion at 180⁰C of 121% (see Ex-5 in Table 3 of instant specification);
c) the temperature of curing of the composition of Sauer et al in view of CN 102286159 only, or alternatively in further view of Luo et al and/or Mori et al is at 170⁰C or 200⁰C, and is the about same or even higher than the expansion onset temperature of expandable graphite,
thereby, upon curing of the composition of Sauer et al in view of CN 102286159 only, or alternatively in further view of Luo et al and/or Mori et al at a temperature of 170⁰C or 200⁰C, the expandable graphite will intrinsically and necessarily start its expansion, thereby at least partially expanding and increasing the volume of the expandable composition, and therefore, the composition of Sauer et al in view of CN 102286159 only, or alternatively in further view of Luo et al and/or Mori et al, comprising 2%wt of the expandable graphite, after curing at a temperature of 170⁰C or 200⁰C will intrinsically and necessarily have, or would be reasonably expected to have volume increase of at least 25% as well (especially since the presence of 2.5%wt of expandable graphite after curing at 180⁰C gives expansion of 121%, as shown in Table 3 of instant specification). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
10. Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al (US 2001/0016629) in view of Obrecht et al (US 6,127,488).
11. The rejection is adequately set forth on pages 13-17 of an Office action mailed on May 6, 2025 and is incorporated here by reference.
12. As to the amended claim 1,
Mori et al discloses a rubber composition comprising:
A) 100 pbw of a diene rubber, such as natural rubber, butadiene rubber, styrene-butadiene rubber ([0016], as to instant claim 7)
B)1-30 pbw of expandable graphite (Abstract) which expands at the time of vulcanization ([0013], [0023]), specifically a commercial product GRAFGuard 160-50N having particle size of 300 micron and expansion onset temperature of 160⁰C ([0045]);
C) vulcanization or cross-linking agent ([0031]);
D) other additives ([0031]),
the composition is used vulcanized at a temperature of 175⁰C ([0034]) and is used for making tires (Abstract).
13. Since
a) the composition of Mori et al in view of Obrecht et al is substantially the same as that claimed in instant invention,
b) the expandable graphite is cited as expanding during vulcanization,
c) the composition exemplified in instant invention having 2.5%wt of expandable graphite provides expansion at 180⁰C of 121% (see Ex-5 in Table 3); the exemplified composition comprising 18%wt of expandable graphite provides expansion at 180⁰C of 164% (Ex-4, Table 2 of instant specification),
d) the composition of Mori et al in view of Obrecht et al comprises as high as 30 pbw of expandable graphite having expansion temperature of 160⁰C and is vulcanized at a temperature of 175⁰C,
therefore, said expandable graphite will intrinsically and necessarily act, at least partially, as a blowing agent during said vulcanization and expansion as well, and thereby the composition of Mori et al in view of Obrecht et al comprising as high as 30 pbw of the expandable graphite after said vulcanization at 175⁰C will intrinsically and necessarily have, or would be reasonably expected to have volume increase of at least 25% as well, especially since the amount of the expandable graphite in the composition of Mori et al in view of Obrecht et al is as high as 30 pbw, and is about the same as disclosed in instant invention (5-30%wt, p. 7, lines 4-11 of instant specification) and higher than the amounts exemplified in instant invention (2.5%, 8%wt, 18%wt, as in Tables 2-3 of instant invention). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Response to Arguments
14. Applicant's arguments filed on August 19, 2025 have been fully considered but they are moot in light of the discussion set forth above.
15. With respect to Applicant’s arguments regarding unexpected results of instant invention, it is noted that the scope of instant claims is significantly broader than the specific examples 1-6 of instant specification (Tables 2-3 of instant specification). Instant claim 1 is silent with respect to the relative amounts of the components, while the expansion after curing is claimed as being as high as 1000%. The highest expansion presented in examples of instant specification (of 411%) is given in Example 4 of Table 2 and belongs to a specific composition comprising 18%wt of expandable graphite. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764