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 .
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 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.
Claims 1-2, 5-14, 17-24 are pending.
Response to Amendment
Applicant’s amendment of 07/21/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 103
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Claim(s) 1-9, 11-20, 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (U.S. 2012/0041113) in view of Shah et al. (U.S. 2001/0011122).
Regarding claims 1-2, 5-9 and 11-14, 17-20, 24, Ikeda teaches an adhesive composition for organic fiber cords in use with tires (as in claims 13 and 14, though the intended use in the composition claims is not given patentable weight) that includes an epoxy compound, a rubber latex overlapping claim 2, and a mixture of blocked isocyanate compounds as in claims 7-8 and 19 (which may also include a urethane as in claims 9 and 20, see description of BN27 in Table 1, page 5) and an amine based curing agent which is disclosed as curing the epoxy compound and improves the adhesive property with respect to the fiber cords (whereas the isocyanate compound improves crosslinking density and strength of the adhesive), (see abstract, [0014]-[0031]) and with the amounts of isocyanate/urethane (depending on whether the ingredient is considered the claimed isocyanate or urethane ingredient, since it is both a blocked isocyanate and urethane, as explained above), amine curing agent, epoxy compound, and rubber overlapping the ranges of claims 11-12 and 24 (based on the disclosed ratio of isocyanate to amine, the ratio of isocyanate and amine to epoxy, and the ratio of isocyanate, amine, and epoxy to rubber latex, [0023], [0030]-[0031]).
In addition to the above amounts overlapping the claimed ranges, each of the above ingredients is also provided with an art-recognized result effective variable (i.e., the epoxy compound allows absorption of the adhesive on the fiber cords, [0022], the isocyanate compound promotes crosslinking density/strength, [0022], the amine curing agent promotes curing of the epoxy and adhesion to the fibers, [0022], and the latex promotes flexibility and ease of processing/application, [0029], [0031]) such that the amount of these ingredients would have been obvious to adjust, including to values within the claimed range, as part of optimizing the effects of the respective ingredients (as explained above) in the overall adhesive.
Ikeda calls for amine curing agents for epoxy but does not disclose the claimed amide/amino compound. However, Shah is also directed to amine based curing agents for epoxy adhesives and teaches that poly amidoamine curing agents, obtained via the reactants of claims 5-6 and 17-18, allow for high epoxy curing reactivity, lower viscosity curing agents (allowing for low/no solvent) with excellent storage stability (see abstract, [0006]-[0014], [0023]), such that it would have been obvious to have used such an amidoamine curing agent from Shah as the amine curing agent in Ikeda because it provides the functionality sought by Ikeda (curing epoxy) and also has high epoxy curing reactivity, lower viscosity curing agents (allowing for low/no solvent) with excellent storage stability.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (U.S. 2012/0041113) in view of Shah et al. (U.S. 2001/0011122), as applied to claim 1 and further in view of Sugano (JP 2013-064037, see machine translation).
Regarding claims 10, modified Ikeda teaches all the above subject matter but does not disclose the oxazoline compound. However, Sugano teaches that an epoxy based organic fiber cord adhesive may include oxazoline compounds as a crosslinking agent for styrene butadiene rubber, polyesters, polyurethanes, and/or polyamides ([0019], each of which is taught in Ikeda, as explained above, with polyesters being the type of organic fiber suggested in Ikeda) in order to provide flexibility (see abstract, [0007]-[0019]) such that it would have been obvious to have included such oxazoline ingredient in the adhesive of Ikeda in order to promote crosslinking with the other ingredients taught by Ikeda, as taught by Sugano, as well as to provide flexibility as taught by Sugano.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (U.S. 2012/0041113) in view of Hanaoka (U.S. 2021/0054135).
Regarding claims 21-22, Ikeda teaches an adhesive composition for organic fiber cords in use with tires (though the intended use in the composition claims is not given patentable weight) that includes an epoxy compound, a rubber latex, and a mixture of blocked isocyanate compounds (which may also include a urethane, see description of BN27 in Table 1, page 5) and an amine based curing agent which is disclosed as curing the epoxy compound and improves the adhesive property with respect to the fiber cords (whereas the isocyanate compound improves crosslinking density and strength of the adhesive), (see abstract, [0014]-[0031]) and with the amounts of isocyanate/urethane (depending on whether the ingredient is considered the present isocyanate or urethane ingredient, since it is both a blocked isocyanate and urethane, as explained above), amine curing agent, epoxy compound, and rubber overlapping the ranges of in the present application (based on the disclosed ratio of isocyanate to amine, the ratio of isocyanate and amine to epoxy, and the ratio of isocyanate, amine, and epoxy to rubber latex, [0023], [0030]-[0031]).
In addition to the above amounts overlapping the present ranges, each of the above ingredients is also provided with an art-recognized result effective variable (i.e., the epoxy compound allows absorption of the adhesive on the fiber cords, [0022], the isocyanate compound promotes crosslinking density/strength, [0022], the amine curing agent promotes curing of the epoxy and adhesion to the fibers, [0022], and the latex promotes flexibility and ease of processing/application, [0029], [0031]) such that the amount of these ingredients would have been obvious to adjust, including to values within the present ranges, as part of optimizing the effects of the respective ingredients (as explained above) in the overall adhesive.
Ikeda calls for amine curing agents for epoxy but does not disclose the claimed amide/amino compound. However, Hanaoka is also directed to amine based curing agents for epoxy adhesives and teaches that poly amidoamine curing agents, obtained via the present reactants, allow for high hydrogen equivalent (overlapping claim 22) for epoxy curing and also can be dissolved in an aqueous solvent (relevant to Ikeda given that Ikeda is aqueous) and suggests commercially available products such as TXS-53-C, the same ingredient from the present examples which inherently meets the limitations of claims 21-22 (see abstract, [0025], [0042]-[0044], [0068]), such that it would have been obvious to have used such an amidoamine curing agent from Hanaoka as the amine curing agent in Ikeda because it provides the functionality sought by Ikeda (curing epoxy) and also has high hydrogen equivalent, and is water soluble.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikeda et al. (U.S. 2012/0041113) in view of Shah et al. (U.S. 2001/0011122), as applied to claim 9 and further in view of Yokokura (U.S. 2014/0020809).
Regarding claims 23, modified Ikeda teaches all the above subject matter but does not disclose the cationic urethane. However, Yokokura is also directed towards epoxy based organic fiber cord compositions and teaches that a hydrophilic (e.g., via cationic group) urethane compound with block isocyanate groups (like the urethane compound in Ikeda) allows for the urethane compound to be aqueous which is preferred to organic solvents while still providing the adhesive improvement and crosslinking property (see abstract, [0069], [0090], [0116], [0121]) such that it would have been obvious to have used a hydrophilic urethane/blocked isocyanate compound from Yokokura as the urethane/blocked isocyanate compound in modified Ikeda in order to allow for the urethane compound to be aqueous (since Ikeda is also aqeous) which is preferred to organic solvents while still providing the adhesive improvement and crosslinking property.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues unexpected results. The prior art does not need to teach the unexpected improvement for prima facie obviousness. As an argument rebutting the prima facie obviousness, the argument is not persuasive. The present examples are not commensurate in scope with the claims because the examples are much narrower in terms of the type and amount of ingredients in the composition. Furthermore, the cited comparative example is not a proper side by side comparison showing the effect of changing the curing agent (the argued critical aspect for the unexpected results) because there are other changes between the comparative and inventive examples (i.e., it is unclear what causes the unexpected improvement).
Applicant also refers to a preferred type of piperazine compound in Ikeda but the reference is not limited to the preferred embodiments.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787