DETAILED ACTION
Applicant’s amendment dated 11 August 2025 is hereby acknowledged. Claims 1-3 and 6-11 as amended are pending. All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
New grounds of rejection set forth below are necessitated by applicant’s amendment filed on 11 August 2025. For this reason, the present action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 and 6-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the polystyrene-equivalent weight average molecular weight” in line 9. It is unclear whether this is a characteristic of the composition or of one of the components.
For the purpose of applying prior art, it is presumed this refers to the modified liquid diene rubber (A).
Claim Rejections - 35 USC § 103
Claims 1-3 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/069904 A1 (“Motoda”).
The citations below refer to English language equivalent document US 2020/0308313.
As to claims 1 and 3, Motoda teaches a modified liquid diene rubber having a functional group derived from an acid anhydride (abstract).
While not exemplified, Motoda teaches that the rubber is preferably butadiene that may be used singly (para. 0030). Further, to the extent the rubber is copolymerized, the non-diene comonomer is preferably used in less than 50 mass percent (para. 0032). As such, the use of rubber having more than 50 mass percent of butadiene units is an obvious modification preferred by Motoda.
While not exemplified with the recited butadiene based rubber, Motoda suggests the use of the modified liquid diene rubber in composition with solid rubber (para. 0088), including in the recited proportions (para. 0089) as a preferred range, which provides good processability and adhesion.
Motoda does not exemplify the recited Mw in the recited butadiene rubber. However, Motoda teaches the Mn ranges from 5000 to 20000, preferably 6000 to 18000, still more preferably 6000 to 16000 (Para. 0074), with polydispersity Mw/Mn preferably in the range of 1.0 to 2.0 (par. 0075). As such, Mw up to 40000, more preferably up to 32000 are noted as being in preferred ranges, which includes values within the range of claims 1 and 3. Motoda teaches that these provide excellent molding properties and elasticity and rigidity (paras. 0074-0075), and thus the use of a butadiene based rubber in the recited Mw is preferred by Motoda for these reasons.
As to claim 2, while not exemplified with the recited butadiene based rubber, Motoda teaches that the modified liquid diene rubber is most preferably a product of a liquid diene rubber modified with unsaturated anhydride and reacted with a compound of formula (2) or (3) (para. 0014).
As to claims 6 and 7, while not exemplified with the recited butadiene based rubber, Motoda teaches the use of fillers, including calcium carbonate, for enhancing mechanical strength, heat resistance, weather resistance, and hardness (para. 0119), and therefore is an obvious modification suggested by Motoda for these reasons.
As to claims 8 and 10, while not exemplified with the recited butadiene based rubber, Motoda teaches that the rubber composition may include crosslinkers for crosslinking the composition (para. 0130), and may be crosslinked depending upon the desired end use (para. 0162). As such, the use of crosslinkers to form crosslinked rubber products is an obvious modification suggested by Motoda.
As to claims 9 and 11, while not exemplified with the recited butadiene based rubber, Motoda teaches using crosslinked products into gaps between flanges (para. 0162), which is a sealing operation. Motoda also generally teaches the use of the composition as a sealing material (para. 0007, 0159, teaching use of crosslinked product for sealing).
Response to Arguments
Applicant's arguments filed 11 August 2025 have been fully considered but they are not persuasive.
Specifically, with regards to MOtoda, while the recited Mw is not exemplified, as set forth above, Motoda clearly suggests that modified liquid diene rubber in the recited Mw are within preferred ranges for the rubber. Applicant’s argument that the comparative examples of Motoda suggest that Mw in the recited range are taught by Motoda to be unsuitable is unpersuasive, because each of these is outside the Mn required by Motoda. Nothing in Motoda suggests the use of modified liquid diene rubber in the recited Mw having the Mn taught by Motoda would be unsuitable.
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 KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764
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