DETAILED ACTION
This Office Action is responsive to the amendment filed on 1/16/2026.
The objections and rejections not addressed below are deemed withdrawn.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.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/16/2026 has been entered.
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 8, and 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Van Duin et al, WO2017/198521.
Van Duin discloses a composition comprising an ethylene/olefin/diene copolymer (EPDM) and extender oil (for claim 1) in an amount of 10 to 40 phr, overlapping the claimed range (for claim 1), wherein the sum of the EPDM and the extender oil is at least 95 wt% of the composition, overlapping the claimed range (for claim 1) (page 4: lines 8-24).
Said EPDM comprises less than 63 wt% ethylene, overlapping the claimed range (for claim 1); an olefin which is most preferably propylene (for claim 1) (page 5: lines 8-9); and 4 to 8 wt% of diene which is a combination of 5-ethylidene-2-norbornene (ENB) (for claim 1) and 5-vinylnorbornene (VNB) (for claim 5) (Page 4: lines 12-20; page 5: lines 4-5). Van Duin further specifies that the VNB content is in the range of 0.05 to 1 wt% (Page 4: lines 19-20), overlapping the claimed range (for claim 5). Based on this value and the total amount of diene in the EPDM (4 to 8 wt%) it is calculated that the prior art EPDM comprises 3 to 7.95 wt% ENB.
Regarding the olefin content: The prior art teaches an EPDM comprising 55 to 63 wt% ethylene and a combined 4 to 8 wt% of ENB and VNB; based on these numbers, it is deduced that the propylene content would be in the range of 29 to 41 wt% (for claim 1).
Regarding the number of ENB units per chain: The prior art EPDM has a weight average molecular weight (Mw) in the range of 400000 to 700000 g/mol and a molecular weight distribution (Mw/Mn) in the range of 3.5 to 6.0 (page 5: lines 18-25); it is therefore calculated that the prior art EPDM has a number average molecular weight (Mn) in the range of about 66,666.7 to 200000 g/mol (i.e., about 66.7 to 200 kg/mol). Given this Mn and the ENB content noted in the previous paragraph, the number of ENB units per chain for the prior art EPDM ranges from [(3 × 10 ×66.7)/120] to [7.95 × 10 × 200)/120]-i.e., about 17 to about 133, overlapping the claimed range (for claims 1, 4).
Regarding claim 2: The prior art EPDM is branched with a difference in phase angle δ in the range of 0 to 30 (page 5: lines 26-32), overlapping the claimed range.
Regarding claim 3: As noted above, Van Duin teaches that the prior art EPDM has a Mw in the range of 400000 to 700000 g/mol.
Regarding claims 8, 10: The prior art teaches a Mooney viscosity ML(1+8) 150 °C ≥ 95 (page 5: lines 15-17).
Regarding claims 11-14: Van Duin further teaches the addition of a vulcanizing agent, corresponding to the claimed curing agent (for claim 11), to form a vulcanizable composition (for claim 12) which is then shaped and cured to form an article (for claims 13, 14) (page 7: lines 10-22).
Regarding claim 15: Van Duin teaches that the prior art rubber composition may comprise a blowing agent (page 10: line 14). An ordinary artisan will recognize that such additives are used to a polymer composition to make a foam.
Regarding claim 17: The prior art rubber composition is prepared via a process comprising the steps of polymerizing the monomers to form the EPDM, adding the extender oil to the EPDM in the reaction mixture , and then removing the volatiles (page 7: lines 3-9).
Van Duin is silent regarding the production of an EPDM having the claimed amounts of each monomer and number of ENB repeating units per chain.
Regarding the amounts of ethylene, propylene, and number of ENB repeating units: It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
As noted earlier in this Action, the prior art teaches the production of an EPDM wherein the ranges for the amounts of ethylene, propylene, and ENB repeating units overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious at the time the invention was effectively filed to prepare an EPDM having the claimed monomer content and number of ENB per chain in view of the teachings of Van Duin (for claims 1, 4, 5).
Regarding the claimed ENB weight percent: It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). As noted earlier in this Action, the prior art EPDM contains ENB in an amount up to 7.95 wt%. The difference between this value and the claimed lower limit of 8 wt% is small-only 0.05. Note that
the prior art teaches the production of a composition comprising an EPDM and extender oil in the same amounts as the claimed invention,
the prior art EPDM contains the same monomers (i.e., ethylene, propylene, ENB, and VNB) as the claimed invention,
the amounts of ethylene, propylene, and VNB in the prior art EPDM are all within the claimed ranges
the prior art EPDM has the same properties of difference in phase angle δ , Mw, Mooney viscosity ML(1+8) 150 °C, and
the prior art composition is used in the same applications such as seals and engine mounts (page 10: lines 17-21) as the claimed invention (specification page 19: lines 14-25).
Given that the 1) the prior art EPDM is so similar to the claimed ethylene copolymer and 2) that the difference between the prior art amount of ENB and the claimed lower limit of 8% is so small (i.e. 0.05%), an ordinary artisan would reasonably expect that the properties of the prior art composition comprising an EPDM having an ENB content of 7.95wt% would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range.
Regarding the claimed properties of phase angle minimum δmin (for claim 1), dynamic stiffness (for claim 16), and tan delta (for claim 16): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed above, the prior art renders obvious a composition which appears to be identical to the claimed invention. It is therefore reasonably expected that its properties would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating an unobvious difference between the claimed invention and the prior art (for claims 1, 16).
Response to Arguments
Applicant's arguments filed 1/16/2026 have been fully considered but they are not persuasive.
Applicant argues that Van Duin does not render obvious a polymer that would be expected to have the required phase angle minimum, citing the data presented in Table 1 of the arguments (see arguments page 7).
Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991). Arguments presented by the applicant cannot take the place of evidence in the record; see In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) (MPEP § 716.01(c)(I) and (II)).
Table 1 presented in applicant’s arguments does not appear to be a reproduction of data previously presented in the specification. The sample allegedly according to the invention, for instance, is described as having a different ENB content (%) and # ENB units per chain than the values reported for the sole inventive example, Example 1, reported in the specification (see specification page 27: Table 1). The sample allegedly according to Van Duin similarly does not correspond to any of the comparative examples C1 to C5(A) in the specification (see specification page 27: Table 1), nor is it a reproduction of data reported in Van Duin. The Table 1 in applicant’s arguments therefore appears to present new data; however, applicant has not submitted this new data in the form of an affidavit or declaration as required. The new data therefore does not have probative value and is therefore mere arguments of counsel, not evidence in the record.
Furthermore, it is noted that it is not clear that the data presented in Table 1 of the arguments would demonstrate that the polymer rendered obvious by Van Duin would not have the required phase angle minimum. As discussed earlier in this Action, the prior art renders obvious an EPDM characterized by values of ethylene content, propylene content, ENB content, and number of ENB repeating units/chain all within the claimed ranges. In contrast, the sample according to Van Duin reported in the submitted arguments is disclosed to have ethylene content, ENB content, and number of ENB units/chain which are outside the overlapping portions of the claimed ranges and prior art ranges. The data therefore does not demonstrate that a polymer having these properties in the required ranges-as rendered obvious by the teachings of Van Duin- would not also have the required phase angle minimum.
Regarding applicant’s comparison of the specification’s Example 1 to its Comparative examples (see remarks page 8), the cited evidence must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness (MPEP § 716.02(e)). Note that Van Duin requires that the prior art copolymer has a Mooney viscosity ML(1+8) at 150 C ≥ 85 MU, and a total diene content in the range of 4 to 8 wt%. None of the comparative examples C1 to C5(A) presented in the instant specification satisfy these requirements (see specification page 27: Table 1). Applicant’s comparison of the inventive example to the comparative examples of the specification therefore does not compare the claimed invention to the closest prior art as required.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As discussed above, the prior art renders obvious the production of an EPDM having the required values of ethylene content, propylene content, ENB content, and # ENB units/chain. Contrary to applicant’s argument, impermissible hindsight is not required to optimize these values based on the ranges specifically disclosed by Van Duin.
To the extent that applicant argues that Van Duin does not discuss the phase angle minimum, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable; see In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112(I)). [T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same"; see In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims; see In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP §2112(V)).
As discussed earlier in this action, Van Duin renders obvious a copolymer that appears to be identical to the claimed invention. As such, it is reasonably expected that it would have the same phase angle minimum as required. It is therefore unpersuasive to merely argue that the prior art does not specifically disclose the parameter of a phase angle minimum.
Applicant appears to argue that the claimed invention further demonstrates unexpected results with regards to superior mechanical properties such as tensile strength at break (remarks page 8).
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; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP § 716.02(d)). As currently written, the claimed invention is a composition comprising 5 to 25 phr oil and an ethylene copolymer having ethylene content from 38 up to 52 wt%, 17 up to 57 wt% of a C3-C20 olefin which comprises propylene, and 8 to 20 wt% ENB, wherein the # of ENB units/chain is in the range of more than 80 up to 120. In contrast, the specification discloses a single example wherein the copolymer comprises 44.4 wt% ethylene, 8.5 wt% ENB, and has 111 ENB units/chain. These values are not commensurate with the broad ranges recited in the independent claim. Further note that the copolymer of the inventive example is reported to also contain VNB as an additional diene monomer. It is therefore unclear whether the inclusion of VNB is required to obtain the allegedly unexpected results, or if they would be present in samples wherein the polymer does not contain VNB as allowed by the claimed invention. The data provided therefore is not commensurate in scope with the instant claims.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765