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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 April 2026 has been entered.
Response to Arguments
In response to the Office Action dated 23 January 2026, the Applicant submits the following:
Independent Claim 1 and dependent claim 3 have been amended. No new matter has been entered.
Applicant’s arguments (Remarks; dated 30 March 2026) with respect to the rejection of claims 1 & 3 – 5 under 35 U.S.C. § 103 have been fully considered and are ultimately found persuasive in view of the amended claims. However, a thorough search revealed prior art pertinent to the amended claims.
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.
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 & 3 – 5 are rejected under 35 U.S.C. § 103 as being obvious over Kubota et al. (US 2006/0167159 A1) in view of Abe (JP 2012-144714 A).
Regarding claims 1 & 3 – 5, Kubota teaches crosslinked objects formed from an acrylic rubber composition; said acrylic rubber composition comprising 100 parts component (A), 5-200 parts component (B) & 0.05-20 parts component (C), wherein component (A) comprises monomers of (meth)acrylic acid esters (80-99.9 wt.%) and α,β-ethylenically unsaturated carboxylic acid monomer (0.1-20 wt.%), component (B) is silica and component (C) is a crosslinking agent (Abstract). The (meth)acrylic acid monomers include alkyl esters of (meth)acrylic acid and alkoxyalkyl esters of (meth)acrylic acid (p. 1, [0016]).
Examples of the alkyl esters of (meth)acrylic acid include methyl acrylate, ethyl acrylate, n-propyl acrylate, n-butyl acrylate, isopropyl acrylate, isobutyl acrylate, n-hexyl acrylate, 2-ethylhexyl acrylate, cyclohexyl acrylate, ethyl methacrylate, n-butyl methacrylate, isobutyl methacrylate and 2-ethylhexyl methacrylate (p. 1, [0017]).
Examples of the alkoxyalkyl esters of (meth)acrylic acid include methoxymethyl acrylate, ethoxymethyl acrylate, 2-ethoxyethyl acrylate, 2-butoxyethyl acrylate, 2-methoxyethyl acrylate, 2-propoxyethyl acrylate, 3-methoxypropyl acrylate, 2-ethoxyethyl methacrylate and 2-methoxyethyl methacrylate (p. 2, [0018]). The alkyl esters & alkoxyalkyl esters are present in amounts of 30 wt.% - 100 wt.% and 0 wt.% - 70 wt.% (p. 2, [0020]).
The α,β-ethylenically unsaturated carboxylic acid forms a crosslinking site when the invention is crosslinked. Examples of suitable carboxylic acids include α,β-ethylenically unsaturated monocarboxylic acid and α,β-ethylenically unsaturated dicarboxylic acid (p. 2, [0022]). However, Kubota is silent on the invention comprising a residual divalent metal as required by the independent base claim 1.
In the same field of endeavor, Abe teaches acrylic rubber compositions (Abstract). When detailing production processes, Abe discloses the rubber polymer is recovered by salting out via a metal salt. The residual metal content is preferably 800 ppm or less, suppressing the whitening phenomenon occurring in films produced thereof (p. 74, [0126]). A residual divalent metal content of 800 ppm or less overlaps the claimed 75-500 ppm.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the residual divalent metal content of 800 ppm or less taught by Abe, as a guide for the residual divalent metal content in Kubota, as Abe expressly discloses the benefits said residual divalent metal contents in this range, with similar end uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Kubota in view of Abe reads on all limitations established by claims 1 & 3 – 5.
Conclusion
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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