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 .
Response to Amendment
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on May 29, 2026. In particular, claim 40 is newly presented and requires new grounds of rejection. All other rejections remain the same. Thus, the following action is properly made final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
Claim Rejections - 35 USC § 103
Claim(s) 15 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grassi et al (US 2015/034644).
The rejection is adequately set forth in paragraph 4 of the Office Action mailed on March 5, 2026 and is incorporated here by reference.
Claim(s) 26-28, 30 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grassi et al (US 2015/0314644) in view of Peters et al (US 2018/0100057).
The rejection is adequately set forth in paragraph 5 of the Office Action mailed on March 5, 2026 and is incorporated here by reference.
Claim(s) 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grassi et al (US 2015/0314644) with evidence provided by Nahmias Nanni (EP 1 452 342).
The discussion regarding Grassi in paragraph 4 above is incorporated here by reference.
Regarding claim 40, Grassi teaches that the HMMM used is called Cyrez 963 (Table 5). As evidenced by Nahmias Nanni, Cyrez 963 is supported on silica (Table 1). Given this teaching, referring back to Table 5 of Grassi, the amount of the Cyrez used is 1.9 phr which can be calculated to be 1.23 of HMMM without the silica support and is within the claimed range.
Response to Arguments
Applicant's arguments filed May 29, 2026 have been fully considered but they are not persuasive for the reasons set forth below.
Applicant’s argument: In Inventive Mixture 12 in Table 2, the amount of HMMM fails squarely within the claimed invention. The HMMM is supported by silica and is 65% of the amount listed in the data.
Examiner’s response: The examiner acknowledges the incorrect interpretation of the data presented and agrees that Mixture 12 in Table 2 is an inventive example.
Applicant’s argument: Grassi’s donor/acceptor disclosure is broad. The amounts of these components is very large and the ratio is also very large, they do not identify the presently claimed subset of 1.2 to 1.8 phr of the components and a balanced novolac: HMMM ratio of 1:1.5 to 1.5:1.
Examiner’s response: The broad teachings of Grassi do read on the claimed invention absent showing of unexpected results (this will be addressed below).
Applicant’s argument: The office uses hindsight reconstruction from broad lists.
Examiner’s response: The only teachings that are used in the above rejection are taught by the prior art references themselves. No teachings have been taken from the presently claimed invention or the present specification.
Applicant’s argument: Grassi provides no teaching that the particular low-loading, balanced donor/acceptor window now claimed has special value in textile reinforcement compounds. The applicants argue unexpected results, most notably example 12 which improves the properties such as adhesion, coverage, t90 and tan delta.
Examiner’s response: The examiner has considered the data presented in Table 2 and notes that example 12 and example 14 are the two examples which are inventive examples. These two examples show a ratio of 1.4:1 of novolac resin to the HMMM. No other ratios are explored, there are no examples which have ratios which are outside the claimed range of 1.5:1 to 1.5:1. To show unexpected results, applicant would also need to show edge cases – for example at the low end: 1.2 phr for both the novolac resin and the HMMM (within the claimed ranges) and then 1.1 for both the novolac resin and the HMMM (outside the claimed range) to show an unexpected and synergistic behavior of the properties (a step-wise or unexpected change in properties). This would have to be done throughout the range of components of the claimed invention and also at the upper end of the ratio. Criticality of a range based on only two data points is not possible and applicants’ argument of unexpected results over the entire scope of the claimed invention is not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 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 Lanee 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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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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