DETAILED ACTION
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 .
Status of Claims
Claims 1 and 3-22 are pending in the current application.
Claims 20-22 are withdrawn from consideration in the current application.
Claims 1 and 10 are amended in the current application.
Claim 2 is canceled in the current application.
Election/Restrictions
Applicant affirmed the election of Group I (claims 1-19) for prosecution in the remarks filed on August 20, 2025. Claims 20-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
The requirement is still deemed proper, and is therefore made FINAL.
Response to Arguments
Applicant's amendments and remarks filed August 20, 2025 have been fully considered.
Applicant requests withdrawal of the rejection under 35 USC 112(b) set forth in the previous office action.
The rejection under 35 USC 112(b) set forth in the previous office action is withdrawn due to the present claim amendments.
Applicant argues that rejections based on Ellul and Abraham are improper, because, other than both references being in the same field of endeavor of thermoplastic vulcanizates, there is nothing in either reference that can be considered motivation to use Abraham’s coupling agents in Ellul’s compositions.
This is not persuasive for the following reasons. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ellul suggests including curative agents to dynamically crosslink the elastomer rubber (Ellul, [0046], [0050]-[0053]). Therefore, one of ordinary skill in the art would have had ample suggestion to seek out, reasonably try, utilize other curative agents for thermoplastic vulcanizates that are known in the art. Specifically, Abraham teaches that it is well known and well within the abilities of those skilled in the art to utilize curative agents (such as addition type curing agents) within thermoplastic vulcanizates to achieve low oil swell, increased upper service temperature, enhanced melt processability, a thermoplastic phase that will not breakdown, and improved physical properties (Abraham, Abstract, Col 1 Lines 8-17, Col 1 Line 65-Col 2 Line 6). In view of the foregoing, Ellul provides sufficient teaching and suggestion and Abraham provides sufficient teaching and motivation to arrive at the obviousness rejections set forth below with a predictable and reasonable expectation of success.
Applicant argues that Ellul discloses a specific list of curative agents including sulfur, organometallic compounds, radical initiators, and metal oxides; and in one embodiment, the primary curative is the sole component of the cure system, with a metal oxide being a preferred curative (Ellul, [0011]), where Abraham teaches that thermoplastic vulcanizates should not be cured with sulfur, peroxide, or phenolic resins (Abraham, Col 19 Lines 22-24). Therefore, Abraham teaches away from using curing agents disclosed by Ellul.
This is not persuasive for the following reasons. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123, II. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See MPEP 2123, I. Although Ellul suggest specific curative additives and suggests avoiding peroxide (Ellul, [0011], [0051]-[0053]), Ellul provides a broader disclosure that suggests the curative agents can be part of a curative system, where only peroxide appear to be explicitly disparaged (Ellul, [0011], [0051]-[0054]). Similarly, Abraham also suggests avoiding peroxide curative agents (Abraham, Col 19 Lines 22-24) and then provides further insights and guidance regarding curative systems that can be utilized in combination with Abraham’s addition type curing agents (Abraham, Col 4 Line 60-Col 6 Line 29). Abraham’s teachings are not incompatible with Ellul, but rather provide a continuation of analysis pertaining to curative agent systems that should be reasonably considered and applied with the motivation of adjusting, controlling, and improving properties as desired such as oil swell, upper service temperature, melt processability, thermoplastic phase durability, and other physical properties (Abraham, Abstract, Col 1 Lines 8-17, Col 1 Line 65-Col 2 Line 6). Although Ellul suggests sulfur as one type of curative agent component, after reading Abraham, one skilled in the art would know to avoid a curative agent system combination of sulfur with Abraham’s addition type curing agents, and instead experiment with other known curative agent components and combinations. In view of the foregoing, one of ordinary skill in the art would have had ample suggestion to seek out, consider, and apply Abraham’s teachings to Ellul’s curative agent systems with a predictable and reasonable expectation of success.
Claim Interpretations
Claims 1, 3, 4, 5, 6, 11, 13, and 16 recite the term “about.” In determining the range encompassed by the term "about," one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). See MPEP 2173.05(b) III A. The specification as originally filed remains silent regarding a definition for the term “about.” For the purpose of examination limitations preceded by the term “about” are interpreted as including reasonable deviation/error associated with measurement as would be determined by one of ordinary skill in the art.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 and 3-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ellul (US 2012/0035325 A1) in view of Abraham et al. (US 6207752 B1).
Regarding Claim 1, Ellul teaches a thermoplastic vulcanizate (TPV) that is dynamically vulcanized comprising a continuous thermoplastic resin phase and a dispersed elastomer rubber phase (Ellul, Abstract, [0009]-[0015]). Ellul teaches the thermoplastic resin is a semi-crystalline aliphatic polyamide such as nylon 6/6 or nylon 6/12 having a melting point between 160-260oC (Ellul, [0042]). Ellul’s melting point range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03). Ellul teaches the elastomer rubber is brominated poly(isobutylene-co-p-methylstyrene) (Ellul, [0038]). Ellul teaches the elastomer rubber is crosslinked, and can be dynamically crosslinked with a curative agent (Ellul, [0046], [0050]-[0053]). Ellul teaches the thermoplastic resin is included in an amount of 20-95 wt% and the elastomer rubber is in an amount of 2-90 wt% (Ellul, [0048]-[0049]). Ellul’s thermoplastic resin range encompasses the claimed range of about 30-95 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05). Ellul’s elastomer rubber range encompasses the claimed range of about 5-70 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Ellul teaches the TPV elastomer rubber is crosslinked, and can be dynamically crosslinked with a curative agent (Ellul, [0046], [0050]-[0053]), has has benzylic halide reactive groups (Ellul, [0034]-[0038]), but remains silent regarding an addition type curing agent.
Abraham, however, teaches a thermoplastic vulcanizate of a rubber and plastic blend comprising addition type curing agents of bisoxazolines or bisimideazolines (Abraham, Abstract, Col 1 Lines 8-17, Col 1 Line 65-Col 2 Line 36, Cols 4-6 all).
Since Ellul and Abraham both disclose TPVs comprising a blend of rubber and plastic phases with curing agents, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Abraham’s addition type curing agents as Ellul’s curative agent to yield a TPV that exhibits low oil swell, increased upper service temperature, enhanced melt processability, a thermoplastic phase that will not breakdown, and improved physical properties as taught by Abraham (Abraham, Abstract, Col 1 Lines 8-17, Col 1 Line 65-Col 2 Line 6).
Regarding Claim 3, Ellul teaches a thermoplastic vulcanizate (TPV) that is dynamically vulcanized comprising a melt blend of a continuous thermoplastic resin phase and a dispersed elastomer rubber phase (Ellul, Abstract, [0009]-[0015], [0056]). Ellul teaches the thermoplastic resin is a semi-crystalline aliphatic polyamide such as nylon 6/6 or nylon 6/12 having a melting point between 160-260oC (Ellul, [0042]). Ellul’s melting point range is identical to the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03). Ellul teaches the elastomer rubber is brominated poly(isobutylene-co-p-methylstyrene) (Ellul, [0038]). Ellul teaches the elastomer rubber is crosslinked, and can be dynamically crosslinked with a curative agent (Ellul, [0046], [0050]-[0053]). Ellul teaches the thermoplastic resin is included in an amount of 20-95 wt% and the elastomer rubber is in an amount of 2-90 wt% (Ellul, [0048]-[0049]). Ellul’s thermoplastic resin range encompasses the claimed range of about 30-95 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05). Ellul’s elastomer rubber range encompasses the claimed range of about 5-70 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Ellul remains silent regarding an addition type curing agent.
Abraham, however, teaches a thermoplastic vulcanizate of a rubber and plastic blend comprising addition type curing agents of bisoxazolines or bisimideazolines (Abraham, Abstract, Col 1 Lines 8-17, Col 1 Line 65-Col 2 Line 36, Cols 4-6 all).
Since Ellul and Abraham both disclose TPVs comprising a blend of rubber and plastic phases with curing agents, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Abraham’s addition type curing agents as Ellul’s curative agent to yield a TPV that exhibits low oil swell, increased upper service temperature, enhanced melt processability, a thermoplastic phase that will not breakdown, and improved physical properties as taught by Abraham (Abraham, Abstract, Col 1 Lines 8-17, Col 1 Line 65-Col 2 Line 6).
Regarding Claim 4, modified Ellul teaches the thermoplastic resin is included in an amount of 20-95 wt% and the elastomer rubber is in an amount of 2-90 wt% (Ellul, [0048]-[0049]). Modified Ellul’s thermoplastic resin range encompasses the claimed range of about 30-70 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05). Modified Ellul’s elastomer rubber range encompasses the claimed range of about 30-70 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 5, modified Ellul teaches the thermoplastic resin is included in an amount of 20-95 wt% and the elastomer rubber is in an amount of 2-90 wt% (Ellul, [0048]-[0049]). Modified Ellul’s thermoplastic resin range overlaps the claimed range of about 70-95 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05). Modified Ellul’s elastomer rubber range encompasses the claimed range of about 5-30 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 6, modified Ellul teaches the thermoplastic resin is included in an amount of 20-95 wt% and the elastomer rubber is in an amount of 2-90 wt% (Ellul, [0048]-[0049]). Modified Ellul’s thermoplastic resin range encompasses the claimed range of about 30-50 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05). Modified Ellul’s elastomer rubber range encompasses the claimed range of about 50-70 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claims 7, 8, 9, and 10, modified Ellul teaches the TPV can further comprise a plasticizer that is blended and combined with the thermoplastic resin and elastomer rubber to provide desirable physical properties (Ellul, [0050], [0056], [0061], Table 1). Modified Ellul teaches the plasticizer includes N-butylbenzene sulfonamide (Ellul, [0061], Table 1). The specification as originally filed discloses sulfonamide plasticizers include N-butylbenzene sulfonamide that is melt miscible with rubber and/or plastic phase, and is capable of functioning as a plasticizer at the plastic phase melting temperature (Spec, [0079]-[0081]). "Products of identical chemical composition can not 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. Id. See MPEP 2112.01, II. In view of the foregoing, modified Ellul’s N-butylbenzene sulfonamide satisfies the plasticizer of claims 7, 8, 9, and 10.
Regarding Claim 11, modified Ellul teaches examples comprising the plasticizer in an amount of 27.04 parts by weight based on 100+63.07 parts by weight of elastomer rubber + thermoplastic resin (Ellul, [0061]-[0062], Tables 1-2). This yields a normalized range of 27.04 / (100+63.07) = X / (100); X = 16.58 parts by weight based on 100 parts by weight of elastomer rubber + thermoplastic resin. Modified Ellul’s plasticizer content falls within the claimed range of about 4-35 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 12, modified Ellul teaches the addition type curing agent includes bisoxazolines (multifunctional oxazolines) or also multifunctional epoxides (Abraham, Abstract, Cols 4-6 all).
Regarding Claim 13, modified Ellul teaches the addition type curing agent is included in an amount of about 1-12 parts by weight for every 100 parts of rubber (Abraham, Col 6 Lines 20-30). Modified Ellul’s content range overlaps the claimed range of about 0.5-15 parts by weight based on 100 parts of thermoplastic and rubber, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 14, modified Ellul teaches addition type curing agent includes 2,2’-bis(oxazoline-2) structures that render obvious the claimed multifunctional oxazoline compounds (Abraham, Cols 5-6 all).
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Abraham - bisoxazolines
Regarding Claims 15 and 16, modified Ellul teaches the TPV can further comprise a compatibilizer (processing aid) that includes maleated ethylene copolymer (maleated polyolefin) added in an amount of about 0.5 to about 10 parts by weight relative to 100 parts by weight of the elastomer rubber (Ellul, [0057]-[0061], Table 1). Modified Ellul teaches examples comprising the maleated ethylene copolymer in an amount of 10.05 parts by weight based on 100+63.07 parts by weight of elastomer rubber + thermoplastic resin (Ellul, [0061]-[0062], Tables 1-2). This yields a normalized range of 10.05 / (100+63.07) = X / (100); X = 6.16 parts by weight based on 100 parts by weight of elastomer rubber + thermoplastic resin. Modified Ellul’s maleated ethylene copolymer content falls within the claimed range of about 4-35 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 17, modified Ellul teaches the TPV elastomer rubber is cured to a degree of 90% (Ellul, [0073]-[0074]). Ellul’s degree of cure falls within the claimed range of greater than 80%, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claims 18 and 19, modified Ellul teaches a hose and a tube formed from the TPV as discussed above for claim 1 (Ellu, [0002], [0099]).
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 ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782