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 .
Claims 1-20 are pending.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the term “carbon ash” in claims 8, 9, and 17 is not found in the specification, which refers repeatedly to “carbon black” in similar context as a conductive filler.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1, 3, 6, 10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 106905889 A (“Zhang”).
A partial machine translation is enclosed.
As an initial matter, it is presumed that the recited weight percentages are on a dry weight basis without solvents. This interpretation is supported by applicant’s specification, para. 0056, stating that water as solvent can be up to 100 wt percent, which only makes sense in the context of the other components being recited on a dry weight basis.
As to claim 1, Zhang teaches a composition, specifically example 15, paras. 0086-0087, which is calculated to contain, on a dry weight basis, 38.5 wt % of 1072 (nitrile rubber, see paras. 0023-0024), 19.2 wt % of GK-390, which is a polyester (para. 0042), and 24 wt % of Bright 8GNR20-MX particles, which is a conductive filler (see para. 0053).
As to claim 3, Zhang teaches uniform mixing (para. 0063), thus a homogeneous composition.
As to claim 6, Zhang teaches nitrile rubber with acrylonitrile content of 27 %, which implies a butadiene content of 77 wt % (para. 0024).
As to claim 10, example 15 of Zhang teaches approximately 19 wt % of tackifying resins and curing agents (paras. 0034, 0035, 0039-0041, teaching components of example 15 as tackifiers, paras. 0029-0030, showing ZnO and NA-22 as curing agents).
As to claim 12, the composition of Zhang is in organic solvent isophorone (para. 0052).
Claim(s) 1-3, 6, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2,625,526 (“Sparks”).
As to claims 1 and 2, Sparks teaches a formulation containing a butadiene-acrylonitrile rubber (nitrile butadiene rubber), a polyester, and carbon black, acknowledged as a conductive filler in applicant’s specification (7:5-25). The composition having 3 parts of polyester is calculated to contain 56 wt % of nitrile butadiene rubber, 11 wt percent polyester, and 28 percent of carbon black, a conductive filler, which are within the range of claims 1 and 2. The composition having 6 parts of polyester is calculated to contain 50 wt % of nitrile butadiene rubber, 20 wt % of polyester, and 25 wt % of carbon black, a conductive filler, as required by claims 1 and 2.
As to claim 3, Sparks teaches that the rubber and polyester and additives are mixed in a kneader type mill, which would be expected to produce a homogeneous mixture (5:14-30).
As to claim 6, Sparks teaches the nitrile butadiene rubber has a 26 wt % acrylonitrile content, and thus would be expected to have a 74 wt % butadiene content.
As to claim 12, Sparks teaches a composition having no water.
Claim(s) 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2,625,526 (“Sparks”) as evidenced by US 5,787,822 (“Hilliard”).
The additional reference is used to show that a characteristic is inherent. See MPEP 2131.01.
As to claim 8, the discussion of Sparks with respect to claim 1 is incorporated by reference. While Sparks does not discuss carbon ash, Sparks exemplifies the use of carbon black, which as evidenced by Hilliard, 9:55-60, is a carbon ash.
Claim(s) 1, 3-6, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0342241 (“Fukumine”).
As to claim 1, Fukumine teaches a rubber composition. Example 4, para. 0128, referring to Example 1, paras. 0120-121, teach a composition containing 70 parts by weight of a nitrile rubber, 30 parts by weight of polyester, 20 parts by weight of carbon black, which is a conductive filler as acknowledged by applicant, and 6.3 parts of other additives. This is calculated to provide approximately 56 weight percent of nitrile butadiene rubber, 24 weight percent polyester, and 16 wt % conductive filler.
As to claim 3, Fukumine teaches kneading the mixture in an extruder, which would be expected by a person of ordinary skill in the art to provide homogeneity.
As to claims 4 and 5, Fukumine example 4 teaches the use of carboxylated nitrile butadiene rubber. The limitation of claim 5 is a modifier to hydrogenated nitrile butadiene rubber, and is optional under claim 4.
As to claim 6, Example 4 of Fukumine uses synthesis example 1 (paras. 0111-0114), which has the recited units (para. 0114).
As to claim 12, example 4 of Fukumine is made without water.
Claim(s) 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0342241 (“Fukumine”) as evidenced by US 5,787,822 (“Hilliard”).
The additional reference is used to show that a characteristic is inherent. See MPEP 2131.01.
As to claim 8, the discussion of Fukumine with respect to claim 1 is incorporated by reference. While Fukumine does not discuss carbon ash, Fukumine exemplifies the use of carbon black, which as evidenced by Hilliard, 9:55-60, is a carbon ash.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over CN 106905889 A (“Zhang”).
As to claim 2, the discussion of Zhang with respect to claim 1 is incorporated by reference.
Zhang does not exemplify the recited proportions. However, Zhang generally teaches 10 to 30 wt % of the rubber (which may be nitrile butadiene rubber), 10-30 wt % of thermoplastic (that may be polyester), and 3-25 wt % of conductive filler (para. 0008), which on a dry weight basis, is calculated as 15 to 70 wt % of rubber, 15 to 70 wt % of the thermoplastic (such as polyester), and 5 to 56 wt % of conductive particles, all of which substantially overlap the recited ranges. Given that Zhang suggests the recited proportions within the recited composition, it would be an obvious modification to use the recited components, including the recited amounts, as Zhang teaches these amounts are appropriate for forming a conductive adhesive.
Claim(s) 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0342241 (“Fukumine”).
The discussion of Fukumine with respect to claim 1 is incorporated by reference.
As to claim 2, Fukumine differs from the recitation of claim 2 in that it exemplifies the recited amount of nitrile butadiene rubber (56 wt %) and conductive filler (16 wt %) but discloses polyester in an amount above the recited range. However, Fukumine teaches that the polyester content ranges from 15 to 50 wt % (para. 0053), which overlaps the recited range. Fukumine teaches that the amount is selected to provide processibility, heat resistance, oil resistance, and tensile properties as desired (para. 0053). As such, modifying the content of polyester, including in the recited range, to optimize these properties.
As to claim 10, Fukumine does not exemplify the recited composition, because while the examples contain additives, including crosslinker (curative agent), the total amount of additives is less than 10 weight percent. However, Fukumine teaches use of crosslinking agents in amounts from 0.1 to 20 weight percent of the rubber and resin (polyester) (para. 0070) to optimize fatigue resistance and mechanical characteristics, which range overlaps the recited range. As such, adjusting amounts of additive such as crosslinking agents, including in the recited range, is contemplated by Fukumine to optimize properties.
Claim(s) 1-6, 8, 11, 13, 15-17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0028859 (“LeGrande”).
As an initial matter, it is presumed that the recited weight percentages are on a dry weight basis without solvents. This interpretation is supported by applicant’s specification, para. 0056, stating that water as solvent can be up to 100 wt percent, which only makes sense in the context of the other components being recited on a dry weight basis.
As to claims 1, 2, and 11, LeGrande teaches an aqueous coating formulation containing an emulsion of a conjugated diene resin, and a second aqueous emulsion of a resin including polyester (abstract). LeGrande further includes electrically conductive particles (abstract). LeGrande exemplifies nitrile butadiene rubber as the rubber emulsion (para. 0020).
While LeGrande does not exemplify the recited amounts, LeGrande teaches the amounts of butadiene binder, second binder, carbon and metal coated microspheres (claim 14), which are calculated to provide 1.5 to 59 % of the nitrile butadiene rubber, 12.5-89 wt % of the second resin that may be polyester, and 6 to 82 weight percent of conductive filler, which overlaps the ranges of claims 1 and 2. It would be obvious therefore, to prepare a composition of NBR, polyester, and conductive particles, including in the recited ranges as taught to be appropriate amounts by LeGrande.
As to claim 3, while not exemplified the recited composition, LeGrande teaches blending the components (see, e.g., para. 0062) with agitation, which would be expected to provide homogeneity.
As to claims 4 and 5, LeGrande teaches the use of carboxylated nitrile butadiene rubber (paras. 0075-0076). The limitations of claim 5 are directed to hydrogenated nitrile butadiene rubber and is optional under claim 4.
As to claim 6, while not explicitly LeGrande teaches 5 to 100 percent of butadiene and 0 to 95 weight percent of a second monomer including acrylonitrile (para. 0019), which includes the range as recited. As such, this composition of nitrile rubber is an obvious modification suggested by LeGrande.
As to claim 8, LeGrande teaches carbon nanotubes as a preferred carbon particle (para. 0015).
As to claim 13, LeGrande teaches an aqueous coating formulation containing an emulsion of a conjugated diene resin, and a second aqueous emulsion of a resin including polyester (abstract). LeGrande further includes electrically conductive particles (abstract). LeGrande exemplifies nitrile butadiene rubber as the rubber emulsion (para. 0020). While not exemplified with the present resin, LeGrande teaches that coating compositions can provide volume resistivity of 2800 mohm-cm, (para. 0083), or conductivity of 0.36 S/cm, which is well above the recited threshold. As such, providing coating compositions of the recited conductivity appears to be an obvious modification, given the desire to obtain a conductive coating.
As to claim 15, LeGrande does not exemplify the recited composition. LeGrande teaches the amounts of butadiene binder, second binder, carbon and metal coated microspheres (claim 14), which are calculated to provide 1.5 to 59 % of the nitrile butadiene rubber, 12.5-89 wt % of the second resin that may be polyester, and 6 to 82 weight percent of conductive filler, which overlaps the ranges of claims 1 and 2. It would be obvious therefore, to prepare a composition of NBR, polyester, and conductive particles, including in the recited ranges as taught to be appropriate amounts by LeGrande.
As to claim 16, LeGrande teaches the use of carboxylated nitrile butadiene rubber (paras. 0075-0076).
As to claim 17, LeGrande teaches carbon nanotubes as a preferred carbon particle (para. 0015).
As to claims 19 and 20, LeGrande does not explicitly discuss a foamed product. However, LeGrande teaches the use of metal containing particles, and teaches the use of metal coated microspheres or microballoons, which are hollow particles (paras. 0025-0026), which would therefore form a syntactic foam. Since LeGrande teaches these microballoons as an alternative to other metal particles such as metal coated fibers (para. 0025), both foamed and nonfoamed compositions are obvious modifications suggested by LeGrande.
Claim(s) 13, 14, 17, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0163063 (“Gao”).
As to claim 13, Gao teaches a conductive composition (abstract) for coating (para. 0027). Gao teaches the use of conductive filler (para. 0034). Gao further teaches the composition comprises an organic matrix including at least one thermoplastic and/or thermoset resin (para. 0038), these resins including combinations or resins, including polyester, and nitrile rubber (polybutadiene-acrylonitrile) (para. 0058). Gao teaches that the use of the conductive particles provides coatings that have a resistivity of less than 0.001 Ohm cm (para. 0042), or a conductivity of at least 1000 S/cm.
It would be obvious to a person or ordinary skill in the art to prepare conductive coating having the recited conductivity, using polyester and nitrile rubber as taught by Gao to be suitable materials for an organic matrix.
As to claim 14, while not exemplified with the recited resins, Gao teaches using conductive filler to achieve EMI shielding of at least 20 dB (para. 0041), and teaches shielding of well in excess of 40 dB (see Fig. 4), and as such obtaining the recited EMI shielding is an obvious modification using the conductive filler of Gao.
As to claim 17, Gao exemplifies the use of metal nanoparticles (see examples), and therefore the use of these particles is obvious as suggested by Gao.
As to claim 18, while not exemplified, Gao teaches up to 40 wt % of organic matrix (paras. 0054-0057), and teaches the use of polymer resins including combinations of polymers including nitrile rubber (butadiene nitrile) and polyester, and combinations of these with others; given the total amounts, it is within the skill of a person of ordinary skill in the art to use the recited amount of another polymer within the recited range, which overlaps the amount of organic matrix materials.
As to claim 20, Gao teaches compositions of organic matrices and fillers, with no suggestion of foaming agents, such that an unfoamed coating is an obvious modification given the components of Gao.
Claim(s) 1-3, 6, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 4,141,863 (“Coran”).
As to claims 1 and 2, Coran teaches a composition of rubber and polyester (abstract). Coran teaches the rubber may be nitrile rubber (abstract), which is acrylonitrile butadiene rubber (6:40-42). Coran teaches compositions of 20 to 50 parts of polyester to 50 to 80 parts of the rubber, more preferably 20 to 45 pars polyester to 55 to 80 parts rubber (2:22-28).
While not exemplified, Coran recommends the use of carbon black, which is a conductive filler as acknowledged by applicant (9:54-56). Coran recommends approximately 20 to 50 parts of oil per 100 parts of rubber and 25 to 60 parts of carbon black per 100 parts of rubber and extender oil (10:9-16). These amounts suggest a composition containing 31 to 57 wt % of the rubber, preferably nitrile rubber, 9 to 35 wt % of polyester, and 13 to 34 wt % of carbon black (conductive filler), which are within the ranges of claim 1, and substantially overlap the range of claim 2. As such, the recited composition is an obvious modification suggested by the preferred ranges disclosed by Coran.
As to claim 3, while not explicitly stated, Coran teaches melt blending the components (10:57-11:5), which suggests a homogeneous mixture.
As to claim 6, while not exemplified explicitly, Coran teaches a preferred amount of 15 to 60 % acrylonitrile (6:40-43), thus 40 to 85 % butadiene, which substantially overlaps the recited range. It would be obvious to use nitrile rubber, including in the recited ranges, as Coran teaches these are within preferred ranges.
As to claim 10, while not exemplified, as discussed with respect to claim 1, Coran suggests the use of extender oil, a plasticizer, in conjunction with carbon black. Based on the preferred amounts, Coran suggests compositions having, in addition to the aforementioned components, 7 to 34 percent of the oil, a plasticizer, which substantially overlaps the recited range. As such, the use of plasticizer, including in the recited amounts, is an obvious modification in the preferred range taught by Coran.
As to claim 12, Coran teaches compositions without water.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 4,141,863 (“Coran”) as applied to claim 1, further in view of US 4,614,682 (“Suzuki”).
As to claim 7, Coran teaches that the thermoplastic polyester may be polycaprolactone (claim 21), which has the general structure of claim 7 where R is a saturated aliphatic group. While Coran does not discuss the number of units n, it is known from Suzuki, 9:37-47, that thermoplastic polycaprolactones range from 100 to 100000 in molecular weight, which includes 1000-5000. Polycaprolactones in this range would have an average n of 9 to 44, which is substantially within the recited range. As such, polycaprolactones, including in the recited range, are among thermoplastic materials contemplated by Suzuki, as Suzuki teaches such resins are thermoplastic.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 4,141,863 (“Coran”) as applied to claim 1, further as evidenced by US 5,787,822 (“Hilliard”).
As to claim 8,while Coran does not discuss carbon ash, Coran, as discussed above, teaches the use of carbon black, which as evidenced by Hilliard, 9:55-60, is a carbon ash.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the aforementioned prior art, while teaching many of the same conductive fillers, does not provide rationale to arrive at the amounts of these five conductive fillers in conjunction with the recited amounts of resin.
Conclusion
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.
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, 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.
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.
/KREGG T BROOKS/ Primary Examiner, Art Unit 1764