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
Examiner acknowledges applicant’s request for continued examination. Claims are amended to require elastomer content to be at more than 50% of the composition. The prior art of record is overcome and applicants’ arguments are moot. Updated search report resulted in references which do meet new limitations.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims XXXXX are rejected under 35 U.S.C. 103 as being unpatentable over ITO (JPH 11-30666 submitted by the applicants) in view of Doi (JP 2010/024339).
With respect to claims 1, 6, 7, Ito discloses molding composition for components such as o-rings [0026] or other sealing applications which are both cured and molded. The composition comprising, synthetic resin powder, tetrafluoroethylene (TFE) powder encompassed by term “comprising” and a filler (Claim 1). Wherein thermosetting resin powder is utilized in an amount of 5-80 parts per 100 parts of rubber, encompassing claimed range (claim 6).
Rubber is a synthetic rubber and can be either silicone rubber fluororubber [0014], silicon rubber can be also be in liquid form. Fluororubber is viewed as one of the preferred embodiments as it is utilized in example 3 (FKM rubber).
Thermosetting resin powder can be phenolic resin [0018].
Filler includes silica which can be added such that its presence does not impair excellent slidability [0024].
While Ito discloses use of fillers such as silica in addition to carbon black Ito fails to disclose its content.
Doi discloses another type of sealing composition which utilizes mineral fillers. The preferred filler of Doi is silica.
Silica of Doi minimizes swelling and deterioration [0035] and results in improved compression permanent distortion requirements. Silica of Doi when in basic condition also promotes crosslinking [0038] due to content of the OH group on its surface. The content of silica is preferably less than 10%, most preferably less than 7% [0038].
Examples of silicas in [0040] disclose tradenames well known in the industry. The two exemplified silica by virtue of tradename are precipitates silicas with Vulkasil A1 having specific surface area of 160 m2/g and Nip Seal VN3 having specific surface area of 180 m2/g.
In the light of the above disclosure, it would have been obvious to one having ordinary skill the art it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize silica of Ito in the amount disclosed in Doi. Specifically, Ito requires that content of silica to be low in order not to adversely affect the slidability of the sealing component.
With respect to claim 4, the particle size of the phenolic resin powder is 50 microns or left, preferably 25 microns or less which encompasses claimed range of less than 20 microns.
Claims 1, 3, 4, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP H06278153) in view of Doi (JP 2010/024339 supplied by the applicants).
With respect to claims 1, 3 and 7, Tanaka discloses composition for use as a sealing material for printed circuit board and electrical components. The composition is a moldable rubber material comprising fluororubber or silicon rubber [0006, 0007]. The content of the raw rubber is 45-80%, filler content is 15-50% and acid acceptor is 3-30% [0010, 0013].
The filler of Tanaka includes phenolic resin powder, carbon black and minerals.
While Tanaka discloses that the filler in addition to phenolic resin in a mixture with mineral fillers, Tanaka lacks deep dive into the types of mineral fillers that can be used in fluororubber containing sealing composition.
Doi discloses another type of sealing composition which utilizes mineral fillers. The preferred filler of Doi is silica.
Silica of Doi minimizes swelling and deterioration [0035] and results in improved compression permanent distortion requirements. Silica of Doi when in basic condition also promotes crosslinking [0038] due to content of the OH group on its surface. The content of silica is preferably less than 10%, most preferably less than 7% [0038].
Examples of silicas in [0040] disclose tradenames well known in the industry. The two exemplified silica by virtue of tradename are precipitates silicas with Vulkasil A1 having specific surface area of 160 m2/g and Nip Seal VN3 having specific surface area of 180 m2/g.
In the light of the above disclosure, it would have been obvious to one having ordinary skill the art it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize silica of Doi as the mineral filler of Tanaka and thereby obtain the claimed invention.
As disclosed above use of silica in the sealing composition improves properties important to the sealing compositions as discussed above. Additionally, Tanaka further enables one of ordinary skill in the art to utilize mineral fillers and silica is a natural fillers.
With respect to claim 4, the phenolic resin of Tanaka has particle size of 5-50 microns [0014] which encompasses instant range of 20 microns or less.
With respect to claim 6, the composition of Tanaka is vulcanized which meets limitation of crosslinking.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 3, 4, 6 and 7 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3 of prior U.S. Patent No. 12,584,054 to Yasuda. This is a statutory double patenting rejection.
Patented claim 2 discloses a sealing material comprising fluororubber and phenol resin powder. Phenol resin is utilized in amount of 1-10 parts per 100 parts of fluororubber and particle size of 6 microns or less. Composition also comprises silica which can be used in any amount rendering silica content broader than the content of the instant invention.
Claim 2 of Yasuda also comprises all the limitation of his claim 1, therefore claim 2 reads on instant claims 1, 3 and 4.
Patented claim 3, discloses seal material wherein for rubber composition to be a sealing material which is used for semiconducting industry the composition has to be crosslinked (cured) thereby meeting instant claims 6 and 7
Conclusion
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 April 30, 2026
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