DETAILED ACTION
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 .
Amendments to claims 1, 2, 4, 5, 11, 13, 15, and 18, in the response filed August 9, 2025, have been entered.
Claims 1-20 are currently pending in the above identified application.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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.
Claim 13 is 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 13 recites the limitation “wherein the base elastomer in the form of a powder, pellet, bale or block is further mixed with a filler selected from the group consisting of carbon black, clays, pulps, silicas, and combinations thereof, and at least one other ingredient, and the body formed therefrom.” The limitation “the form” in lines 1-2 has insufficient antecedent basis for this limitation in the claim. It is unclear if the claimed belt has the base elastomer in the recited form or if the claim is directed towards how the body comprising the base elastomer is formed. If the latter, it is unclear if the claimed, finally formed body comprises the claimed filler and at least one other ingredient or if the only the intermediate is required to contain the recited materials. For examples, the at least one other ingredient could be a solvent that is removed when the body is formed. For the purpose of compact prosecution and prior art application, Examiner will interpret claim 13 as encompassing the rubber body being formed from a mixture of a filler selected from the group consisting of carbon black, clays, pulps, silicas, and a combination thereof; a powder, pellet, bale or block of the base elastomer; and at least one other ingredient.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-10, 12, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Pub. No. 2012/0151989 to Knox.
Regarding claims 1-10, 12, and 14-20, Knox teaches a power transmission belt (endless belt) necessarily having a front surface and a back surface comprising an elastomeric (rubber, claim 10) belt body, such as cast polyurethane (claim 12), with teeth formed on the front surface (claim 2; endless toothed belt) reinforced with embedded tensile cords (plurality of load carrying cords within the body), such as carbon fiber tensile cords (claim 3) (Knox, abstract, Fig. 1, para 0023, 0026). Knox teaches the cord having 99% penetration of the urethane in the cords, indicating substantially full penetration of the polyurethane (Id., para 0026-0029, Table 1, Fig. 1 and 4), reading on the load carrying cord having an open porosity of 10 vol% or less (claim 4, 15, 18), specifically no more than 5 vol % (claim 5, 16, 19).
Regarding the claimed curvature coefficient of no more than 0.005% (claim 1, 15), specifically no more than 0.004% (claim 6), no more than 0.003% (claim 7), more specifically 0.002% (claim 8, 17), “suited for inhibiting tooth jumping” (claim 1), and the compressibility coefficient being no more than 0.00075 (claim 1, 18), no more than 0.0006 (claim 9, 20), in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art is silent with regards to the curvature coefficient and compressibility coefficient as claimed, the claimed properties are deemed to be inherent to the structure in the prior art since the prior art reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The Knox teaches a belt having a body made of an elastomer (rubber), such as cast polyurethane, with a plurality of carbon fiber load carrying cords within the body that have an open porosity of less than 5% by volume, specifically 1%. The instant disclosure does not teach any additional feature required to achieve the claimed properties and detail embodiments using cast polyurethane and carbon fiber cords with low porosity to achieve the claimed properties. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise. Additionally, the limitation “suited for inhibiting tooth jumping” in the preamble is deems to be a limitation with regards to the intended use of belt. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since the prior art teaches a substantially similar structure and composition as claimed, and since a suitable for inhibiting tooth jumping does not impute a specific structure absent from the prior art, the invention of Knox appears to be capable of the claimed intended use recited.
Claims 1-3, 6-11, and 13-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Pub. No. 2021/0018063 to Noborikawa.
Regarding claims 1-3, 6-11, and 13-14, Noborikawa teaches an endless toothed belt necessarily having a front surface and a back surface comprising tension members formed of a twisted cord containing carbon fiber (claim 3) buried in a back portion (Noborikawa, abstract, Fig. 2 & 3, para 0012-0021, 0085, Table 2), reading on the blet having a body with a plurality of load carrying cords within the body. Noborikawa teaches a plurality of teeth formed on the front surface (claim 2) and a back fabric, such as a knitted fabric that forms a mesh on the back surface that increases rigidity (Id., para 0039-0042, 0082 0090-0102), reading on a reinforcing mesh proximate the back surface (claim 14). Noborikawa teaches the back portion and tooth portion being formed of a rubber composition (claim 10), including styrene-butadiene rubber (SBR), chloroprene rubber (CR), ethylene propylene diene monomer rubber (EPDM), or hydrogenated nitrile butadiene rubber (HNBR) (claim 11) (Id., para 0075-0076). Noborikawa teaches the belt further comprising a filler including carbon black, silica, and clay (claim 13) (Id., para 0077). Noborikawa teaches the density of the tension member influencing the rigidity of the belt (Id., para 0101-0102). Noborikawa teaches the belt balancing suppression of vibration and noise and the difficulty of the occurrence of tooth skipping (jumping) (Id., para 0106), reading on the belt being suited for inhibited tooth jumping.
Regarding the claimed curvature coefficient of no more than 0.005% (claim 1), specifically no more than 0.004% (claim 6), no more than 0.003% (claim 7), more specifically 0.002% (claim 8), and the compressibility coefficient being no more than 0.00075 (claim 1), no more than 0.0006 (claim 9), in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art is silent with regards to the curvature coefficient and compressibility coefficient as claimed, the claimed properties are deemed to be inherent to the structure in the prior art since the prior art reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The Noborikawa teaches a belt having a body made of an elastomer (rubber), including those claims in claim 11, with a plurality of load carrying cords, specifically carbon fiber within the body. Noborikawa teaches the tension members (load carrying cords) providing rigidity and the belt reducing tooth skipping. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding claim 13, the limitation “wherein the base elastomer in the form of a powder, pellet, bale, or block is further mixed with a filler selected from the group consisting of carbon black, clays, pulps, silicas, and combination thereof, and at least one other ingredient; and the body formed therefrom” has been interpreted as a product-by-process limitation. Absent a showing to the contrary, it is Examiner's position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. The resultant body appears to require the elastomer mixed with a filler as claimed. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Claim Rejections - 35 USC § 103
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Noborikawa, as applied to claims 1-3, 6-11, and 13-14 above, in view of US Pub. No. 2012/0151989 to Knox.
Regarding claims 1-20, in the event that porosity is a key feature for resulting in the claimed coefficients, Noborikawa does not teach the load carrying cords having an open porosity of 10 vol% or less (claim 4, 15, 18), specifically no more than 5 vol % (claim 5, 16, 19). Noborikawa does not teach the belt body being a polyurethane body (claim 12).
However, Knox teaches a power transmission belt comprising an elastomeric belt body with teeth formed on the front surface reinforced with embedded tensile cords (plurality of load carrying cords within the body), such as carbon fiber tensile cords (Knox, abstract, Fig. 1, para 0023, 0026). Knox teaches the cord having 99% penetration of the urethane into the cord, indicating substantially full penetration of the polyurethane (Id., para 0026-0029, Table 1, Fig. 1 and 4), reading on the load carrying cord having an open porosity of 10 vol% or less (claim 4, 15, 18), specifically no more than 5 vol % (claim 5, 16, 19). Knox teaches that if the percentage of voids in the load carrying cords in the rubber power transmission belts is greater than 1.5%, the voids become relatively large and cohesion between the filament decreasing and fraying problems become significant (Id., para 0007). Knox teaches the use of polyurethane in the carbon fiber cord reinforced rubber belt, including power transmission belts (Id., para 0010, 0026-0029).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the belt of Noborikawa, wherein the cords having less than 1.5% voids, such as 1%, as taught by Knox, motivated by the desire of using conventionally known cord predictably suitable for use in load carrying cord in blet applications and by the desire to ensure good adhesion between the filaments and reduce fraying problems. Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing to form the belt of the prior art combination, wherein the body in which the carbon fibers are embedded is polyurethane as taught by Knox, motivated by the desire of using conventionally material predictably suitable for use in toothed belts comprising carbon fiber reinforced used for power transmission.
Regarding the claimed curvature coefficient of no more than 0.005% (claim 1, 15), specifically no more than 0.004% (claim 6), no more than 0.003% (claim 7), more specifically 0.002% (claim 8, 17), and the compressibility coefficient being no more than 0.00075 (claim 1, 18), no more than 0.0006 (claim 9, 20), although the prior art is silent with regards to the curvature coefficient and compressibility coefficient as claimed, the claimed properties are deemed to flow naturally from the teachings of the prior art since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The prior art combination teaches a belt having a body made of an elastomer (rubber), including those claims in claims 11-12, with a plurality of load carrying cords, specifically carbon fiber within the body, having an open porosity less than 5 vol%. The prior art combination teaches the tension members (load carrying cords) providing rigidity and the belt reducing tooth skipping. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Response to Arguments
Applicant's arguments filed August 9, 2025 have been fully considered but they are not persuasive.
Applicant argues, with regards to the application of Knox, that the curvature coefficient and compressibility coefficient are not parameters recognized in the prior art cited and argues that the instant disclosure teaches additional features that affect these parameters as the belts differ in other ways than open porosity, structure and materials showing the same cord, i.e., the same level of porosity, can have very different curvature coefficient and compressibility coefficients. Examiner respectfully disagrees. While Knox is silent with regards to the curvature coefficient and the compressibility coefficient, the belt of Knox would necessarily have a curvature coefficient and a compressibility coefficient. The instant disclosure does not teach any parameter other than porosity as directly affecting the elongation under load that inhibits tooth jumping (see para 0031 of the originally filed disclosure). Knox establishes a low porosity, including full pentation of the cast urethane, which reads on an open porosity of less than 5 vol %. Therefore, absent evidence to the contrary, the belt of Knox would have a curvature coefficient and a compressibility coefficient within the claimed range.
Applicant argues that Knox only mentions one construction: cast polyurethane between with a 14-mm pitch and 54k carbon fiber tensile cord and the instant spec only mentions 11-mm pitch and 18-21 ends in the cord. Examiner respectfully disagrees. Different parameters affecting tooth jump does not necessitate the curvature coefficient and compressibility coefficients of Knox not being within the claimed range. Pitch is not mentioned in the originally filed disclosure. The cords in the instant disclosure are carbon cords and having 18-21 ends per cord. The first and fourth belt both have carbon cords of 21 intertwined strands or ends in a casted polyurethane body. However, there is no indication to the structural or chemical distinction resulting in the claimed parameters being outside the claimed range apart from porosity. As the materials are substantially similar and the Knox teaches full penetration of the polyurethane, including 99% penetration, the porosity would be low, such as below 5 vol%, the curvature coefficient and compressibility coefficient would also be expected to fall within the claimed range. Applicant has provided no evidence that the curvature coefficient and compressibility coefficients of Knox are outside the claimed range. There are no teachings in the instant disclosure with regards to other parameters or structural consideration leading to the claimed curvature coefficient and compressibility coefficient.
Applicant argues that clearly the same cord, i.e. the same level of porosity, can have different curvature coefficient and compressibility coefficient, point to the first and fourth belts 302 and 308. However, there is no mention of the porosity of these belts being the same with one belt within the claimed range and one outside the claimed range. If porosity is not a key contributing factor, there may be a scope of enablement issue with the claimed as it is unclear what parameters would lead to the belt having the claimed. There are no teachings in the instant disclosure with regards to other parameters or structural consideration leading to the claimed curvature coefficient and compressibility coefficient. The instant disclosure explicitly states “[f]rom this graph, it was determined that belts (e.g., rubber belts) having load carrying carbon cord that has no more than 10% open porosity have an amount of elongation under load that inhibits tooth jump. Belts that have load carrying carbon cord that has no more than 5% open porosity also have an amount of elongation under load that inhibits tooth jump” (see para 0031). The instant disclosure only exemplifies cords of carbon fibers in a polyurethane body. Different elastomer body materials are discussed. However, beside porosity, there is no discussion to guide a person of ordinary skill in the art to selecting or adjusting the material to achieve the ideal correlation claimed.
Applicant points to Noborikawa as teaching tooth height, tooth pitch, cord spacing, elastic modulus, cord material, and rubber compound as affecting tooth jumping. However, it is the curvature coefficient and compressibility coefficient parameters that are being argued as inherent to Knox based on the disclosure of a belt of carbon fiber cord fully penetrated with polyurethane. Applicant has provided no evidence that the belt of Knox would not have the claimed curvature coefficient and compressibility coefficient, merely pointing to an absence. If the cord type and structure are critical to achieving the claimed curvature coefficient and compressibility coefficient, these parameters should be include in the claim.
Applicant argues, with regards to Noborikawa, that Noborikawa does not teach a porosity and balances other parameters to reduce tooth jumping. Contrary to the arguments regarding Knox, Applicant appears to be asserting that porosity is the key feature in achieving the claimed curvature coefficient and compressibility coefficient. Therefore, modification with Knox, who teaches full penetration of the cast polyurethane, would yield a tooth belt as claimed, absent evidence to the contrary. As Applicant has provided no persuasive evidence that the curvature coefficient and compressibility coefficient are not present in Knox nor flow naturally from the teachings of the prior art combination having a very low porosity, Examiner maintains the rejections detailed above.
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 JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789