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 .
Response to Arguments
First, the examiner would like to thank applicant’s representative Daniel Hsieh for holding many conversations and productive discussions to truly understand applicant’s invention. As a result of these conversations, the examiner withdraws all the rejections of record as they do not reflect what is currently claimed. Specifically, while instant claims are directed to method of kneading a rubber, the true invention is in arriving at new recipe for rubber compositions based on properties required for its intended use. As such new rejections are stated and new references applied.
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 1, 3-6, 8, 9, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Barlow (Rubber Compounding: principles, materials and techniques Ch. 16 and 17) and J.S.D et al. (Rubber technology: compounding and testing for performance Ch. 23).
While patented disclosures and patent publications disclose composition which were already designed featuring couple examples of how a specific component affects the composition, they all have to go through developmental process and testing, none of which are really disclosed in patent literature. Going back to the basics of composition development, which is referred to as “recipe” there are several textbooks that define the applicants process.
The entire development process begins with knowing which properties are detrimental to the final rubber composition based on its intended use.
Applicants disclosure in [0001] recites various end uses for new product which includes tires, antivibration rubber and belts. Tires alone have pretty complicated structure and rubber utilized for tire treads for example will not be the same as the composition for tire beads, plies, sidewalls or belts etc.….. It is further worth mentioning that tires themselves have to have anti-vibration properties to at least have an uneventful ride.
Regardless what the intended use of the new rubber composition is, one of ordinary skill in the art will have to determine the necessary qualities or properties along with acceptable margins or deviations. Barlow in Chapter 16 of his book discloses that selection of compounds and functional materials are needed and specific ingredients as well as their amounts will be used. The functional materials are defined on page 213 of Barlow:
Type of rubber (natural, SBR and the like);
Type and amount of fillers, for desired color and hardness;
Vulcanizing agent (sulfur, sulfur donors, metallic oxides, peroxides and the like. The decision which vulcanizing agents to use depends largely on the type of polymer and the vulcanizing capabilities.
Continued on page 214 the next step is to select curing and service conditions;
Followed by selection of plasticizers and/or softeners which must be compatible with the elastomer and effective with the type of the filler.
Last fundamental issue that needs to be resolved in the age resister package. This would provide protection against environment, and includes compounds such as antioxidants or antiozonants for peroxide cured system.
In this step the selection of material (back to pages 211 and 213 of Barlow), can be based on existing formulation and any recipe or literature provided by the supplier or even competitor. Suppliers and competitors can often recommend substitutions, or alternative and even already existing composition. Existing recipe meets the applicants first lot, newly developed composition meets applicant’s second lot.
In step 4 of Barlow’s process the rubber recipe is compounded and tested along with all the ingredients identified in step 2.
In step 5 of Barlow’s process, if new recipe fails to meet the quality target, it will have to be redesigned to correct the deficiencies. The process is continued until at least one required property is met. Any sequential trial would be third or fourth etc.. lot, until final recipe meeting the established properties is met.
Interestingly Barlow on page 213, step 6 utilizes examples of static and/or dynamic stress. On page 214 through 215, Barlow continues to describe how specific properties are achieved based on what rubber and fillers are obtained. These properties include tensile strength; modulus; elongation including how modulus and elongation are related; hardness and mastication of the rubber and ingredients that affect hardness including fillers; abrasion resistance which dictate performance of for example tire or belts; rubber swelling which is determined by not only type but a loading of carbon black (p. 216); last but not least compression. These properties would be tested for each lot produced and compared to the reference (first lot) until desired composition is created.
Barlow starting page 221 illustrates an example for making a conveyor belt cover and logic with which each ingredient is selected. The recipe is depicted on page 223 and its properties including hardness are obtained after sample is vulcanized. Ingredients in depicted rubber recipe include stearic acid (aliphatic acid), zinc oxide, carbon black and vulcanizates which are sulfur and sulfenamide (AMAX which is vulcanization accelerator). These ingredients meet secondary material of specific configuration.
Second example, which begins on page 224 depicts goals which includes shore hardness of 60 =/- 5, test results of the vulcanized product is on page 225.
Repeating known steps to obtain a desired result is not inventive. Citing the Supreme Court’s teaching in KSR that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” the court found that repetition of previously known steps “is merely the logical result of common sense application of the maxim ‘try, try again.’” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330-31 (Fed. Cir. 2009). Accordingly, one of ordinary skill in the art would have been motivated to repeat the steps of compounding rubber and varying either composition or processing parameters until the desired result is successfully achieved.
In Barlow, the rubber is compounded utilizing extruder, which kneads the rubber utilizing either single screw or double screw (p. 225).
While Barlow discloses technical aspects of developing new compositions and selection of the ingredients, his teachings do not discloses processing aspects that influence compounding of the rubber compositions such as, apparatus utilized, the temperature profiles or residence time that is affected by, for example, speed of the extrusion process.
To properly assess process conditions, one of ordinary skill in the art would already know what is taught in J.S.D reference.
J.S.D in his chapter 23 described various types of equipment utilized in rubber compounding. These include mills; internal mixers; tangential rotor mixers (Banbury mixer); intermeshing rotor type mixers; variable internal clearance mixers; continuous mixers based on extrusion, venting and kneading; and extruders. Extruders and internal mixers including those with variable rotor speeds meet the limitation of the closed kneading machine.
The apparatus disclosed in J.S.D have different mixing cycles, different mixing mechanisms and the like. For the purpose of this rejection, extruders and mixers will be discussed. Having said that in each case, there is an optimal batch subject to trial runs to establish optimum conditions to ensure consistency and quality for subsequent operation. These optimum conditions are dictated by the loading of the filler, viscosity of the composition and the like, based on these variables processing temperatures and residence time are adjusted.
Mixing begins with mastication rubber (p. 515-516). J.S.D utilizes natural rubber as an example as it comes to the producer of rubber compositions in large bales, which have to broken down one way or another (ex. Internal mixer). To limit heat generation internal mixer is operated with cooling. The operating conditions (speed and time) are chosen so that rubber temperature of 150-160oC is not exceeded. The temperature and speed will also depend on the type of rubber as well as content and type of filler if utilized. The length of the process depends on the desired degree of mastication.
After mastication the rubber can be subject to masterbatch mixing, which allows incorporation of non-productive additives, and the goal of creating masterbatch are maximum carbon black dispersion and proper final viscosity. Both of these objectives must be accomplished without exceeding the specified temperature limits. The batch can be discharged into mixing extruder beneath internal mixer.
Once in the extruder the composition is subject to the continuous mixing phase with rubber in higher concentration. The barrel of the extruder comprises zones that vary based on polymer characteristics, viscosity differential and manner of blending.
J.S.D disclosed exemplary masterbatch composition comprising ingredients which do not contribute to the crosslinking or vulcanization of the rubber. How many stages the masterbatch and final rubber composition will be subject to is determine such that proper dispersion of the carbon black is achieved. The dispersion can be achieved using, for example, by variable speed mixing (p.518-519). Dispersion of the carbon black can be optimized by extremely high speeds at the beginning of the mixing cycle, which is very effective for rubber mastication as well. The rotor speed is then reduced and the batch is completed at normal mixing speeds. With the high rotors speed, the temperature increases in which case the mixing cycle must be terminated before proper level of dispersion is obtain to avoid reaching critical temperature level. Again the mixing time and rotor speed depend on the type of rubber and loading of the filler.
Upon addition of curatives (p. 519) two reactions have to take place . One is to bind organosilanes to the surface of silica particles the second to bind organosilanes to rubber. First reaction within internal mixer is relatively slow at moderate temperatures and must be maintained for short time (up to 15 minutes) to achieve short reaction time. Second reaction occurs at higher temperatures, which is increased at steady rate, at rotor speed and reaction time to achieve organosilanes bonding to the elastomer.
Final stage, when curatives and vulcanization agents are added mixing times are short and temperatures are set to avoid surface bloom.
Continuous mixing however, plays ever-increasing role in rubber compounding. When compounding carbon black and ESBR masterbatch, the initial shear is higher and uniform dispersion is achieved in shorter amount of time (p. 522) wherein table 23.5 provides sample mixing conditions for master batch vs. dry mix.
The uniform dispersion and viscosity are critical to rubber manufacturing. The two will dictate the loading capacity within the mixer, temperature profile throughout the process, reaction time, the content of carbon black and any oils would also have to be given consideration as they also affect the viscosity of the composition and must be uniformly distributed.
J.S.D further stresses the importance of producing consecutive batches to ensure that the composition or recipe can be reproduced (p. 521). In addition to reproducing composition with desired properties, one of ordinary skill in the art will be able to also determine optimal batch size and establish proper cycle time (p. 522). Recreating consecutive batches also helps to create “heat history” (p. 522), deviations of the properties (these days referred to as six sigma).
Barlow also stresses quality control and reproducing the data obtain from the batches or lot that lead to process control and creating quality limits and establishing proper variations (Ch. 17, p. 230-231). The repeatability and reproducibility against values given by ASTM allows for creation of statistical tools such as Shewhart chart of cause and effect diagram (Ch. 7, p. 235).
In summary, conditions such as temperature, speed of the rotors and residence time are dictated by the type of the rubber, filler content, viscosity and curative temperature. If the viscosity of the composition is too low the processing issues include mold overflow, difficulty to maintain shape, poor strength due to insufficient vulcanization. If processing viscosity is too high, processing issues include poor flow, improper ingredient dispersion, surface imperfection, uneven vulcanization. The speed of the rotor blades is one way to achieve proper filler dispersion. If the dispersion is not uniformed, the curing will be adversely affected leading to poor physical properties and reduced service life due to inconsistencies in filler distribution or presence of agglomerated clumps.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize knowledge described in the rubber compounding books by Barlow and J.S.D and thereby obtain the claimed invention. These books provide basic knowledge which one of ordinary skill in the art would must possess in order to properly develop new recipes with properties tailored to the product and its intended use, which include compositions having anti-vibration properties mentioned in Barlow.
“[A]nalysis [of whether the subject matter of claim would have been obvious] need no seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ.“ KSR Int’l v. Teleflex, Inc. 127 S. Ct 1727, 1740-1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441, F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006)). See DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patric Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”; In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”); In re Hoeschelle, 406 F.2d 1403, 1406-407, 160 USPQ 809, 811-12 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inference which one skilled in the art would reasonable be expected to draw therefrom …”). The analysis supporting obviousness, however, should be made explicit and should “identify reason that would have prompted a person of ordinary skill in the relevant field to combine elements” in manner claimed. KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1396.
The chapters from the textbooks of Barlow and J.S.D outline basic principles behind developing new rubber recipes. One of the ordinary skill in the art who has to possess the text book knowledge would also know how to adjust not only the compositions themselves but also apparatus operating environment such as temperature, residence time and mixing speeds which in turn are dictated by an overall compositions and the loading of the filler but also its properties such as viscosity and the extend of filler dispersion.
One could further say that the rubber composition and processing conditions are result effective variable where in depth understanding of the art would allow one of ordinary skill in the art to try various conditions and substitutions within the compositions and processing conditions until desired result is reached.
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 October 21, 2025