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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/29/2026 has been entered.
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 (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 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.
Claims 17-20, 27, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al. (US 2020/0277473 Al) (Kaiser).
Regarding claims 17-20 and 32, Kaiser teaches vulcanizable compositions comprising 1 to 20 parts by weight of at least one crosslinking agent, preferably a peroxide compound; and 0 to 100 parts by weight, preferably 1 to 80 parts by weight, of one or more customary rubber additives including carbon black and silica (Kaiser Abstract; [0028]; [0032]; [0033]) (i.e., at least one filler; claim 20, said filler is selected from black carbon and silica). Therefore, the weight ratio of filler to peroxide compound overlaps with the range of the presently claimed (i.e., filler is 1 to 80 parts by weight and the peroxide compound is 1 to 20 parts by weight).
Kaiser teaches the at least one crosslinking agent includes peroxidic crosslinkers including 2,5-dimethyl-2,5-di(tert-butylperoxy)hexane and tert-butyl cumyl peroxide (Kaiser, [0104]; [0107]) (i.e., claim 18).
Kaiser further teaches suitable additions by means of which the crosslinking yield may be increased include dithiophosphates including zinc dialkyldithiophosphates (chain length of the alkyl radicals C2 to C16) (Kaiser, [0114]; [0115]) (i.e., at least one sulfur-containing compound selected from the group consisting of dialkyl phosphorodithioic acid and salts thereof), which corresponds to formula (VI), where M2+ is zinc (claim 19), and wherein the alkyl chain length is between C2-C16 which falls within the claimed range for alkyl groups RA, RB, RC, and RD (i.e., claim 32).
Kaiser further teaches the additions and the crosslinking agents may be used either individually or in mixtures (Kaiser, [0117]), and the mixture of peroxidic crosslinker and dithiophosphate, i.e., component (c), is 1 to 20 parts by weight and preferably 2 to 10 parts by weight based on the 100 parts by weight of the rubbers (Kaiser, [0119]).
Although there are no disclosures on the weight ratio of peroxide to dithiophosphate being higher than 0.5, as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of dithiophosphate, including over the amounts presently claimed, in order to increase the crosslinking yield.
Further, as Kaiser does not teach using elemental sulfur (i.e., 0 weight percent), the weight ratio of sulfur under its free form and said at least one organic peroxide is lower than 0.15.
Given that Kaiser discloses the vulcanizable composition that overlaps the presently claimed composition, including 2,5-dimethyl-2,5-di(tert-butylperoxy)hexane and tert-butyl cumyl peroxide as the peroxide compound and zinc dialkyldithiophosphates as the addition to the crosslinker, it therefore would be obvious to one of ordinary skill in the art, to use the 2,5-dimethyl-2,5-di(tert-butylperoxy)hexane or tert-butyl cumyl peroxide as the peroxide compound and zinc dialkyldithiophosphates as the addition to the crosslinker, which is both disclosed by Kaiser and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 27, Kaiser teaches the composition according to claim 17, wherein the rubber additives include antioxidants (Kaiser, [0120]).
Claims 26 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser, as applied to claim 17 above, and further in view of Gijsman (“A review on the mechanism of action and applicability of Hindered Amine Stabilizers”, 2017).
Regarding claims 26 and 33, Kaiser teaches the composition according to claim 17, wherein the rubber additives include stabilizers (Kaiser, [0120]), but does not explicitly teach the stabilizers include at least one hindered amine light stabilizer compound.
With respect to the difference, Gijsman teaches hindered amine stabilizers as UV and heat stabilizers in a number of applications (Gijsman, Abstract), wherein due to their high activity they are used for light stabilization of many organic polymers (Gijsman, p. 2, Col. 1, Paragraph 1). Gijsman further teaches Chimassorb® 944 and Tinuvin® 770 as types of HALS compounds (Gijsman, p. 8), which correspond to the claimed HALS compounds (i.e., claim 33) as disclosed in the Specification (Specification, p. 17, lines 11-15).
As Gijsman expressly teaches, HALS compounds impart long-term heat stability and protect against long-term heat degradation (Gijsman, p. 2, Col. 2, Paragraph 2).
Gijsman is analogous art as it is drawn to polymeric compositions including adhesives (Gijsman, p. 2, Col. 1, Paragraph 1).
In light of the motivation of including HALS compounds in the vulcanizable composition as disclosed by Gijsman, it therefore would have been obvious to one of ordinary skill in the art to modify the vulcanizable composition of Kaiser by including a HALS compound in order to impart long-term heat stability and protect against long-term heat degradation, and thereby arrive at the claimed invention.
Response to Arguments
In response to applicant’s amendments to the abstract, the previous Specification objections are withdrawn from the record.
Applicant primarily argues:
“Applicant submits that the office action has misconstrued the disclosure of Kaiser to be broader than it is. Specifically, Kaiser discloses that within the sulfur vulcanization system, various sulfur-containing crosslinkers and various accelerator additions may be combined with one another. Kaiser does not disclose or suggest that the disclosed sulfur vulcanization accelerators can be combined with the peroxidic crosslinkers discussed separately at paragraphs [0104] through [0108].
Kaiser discloses crosslinking agents at paragraphs [0103] through [0119]. Paragraphs [0104] through [0108] address peroxidic crosslinkers. Paragraph [0109] then transitions to a different category with the statement: "Suitable sulfur-containing and aminic crosslinkers are known to those skilled in the art." Paragraphs [0110] and [0111] describe sulfur-containing crosslinkers, including elemental sulfur and sulfur donors such as DTDM, MBSS, caprolactam disulfide, DPTT, and TMTD.
Paragraph [0112] then introduces the concept of "additions" that can be used in
conjunction with these sulfur-containing crosslinkers. Critically, paragraph [0112] begins with the introductory phrase: "In the sulfur vulcanization of the hydrogenated nitrile-diene-carboxylic ester copolymer according to the invention, it is also possible to use further additions which can help to increase the crosslinking yield." This introductory language expressly limits the discussion that follows to sulfur vulcanization. The "additions" described in paragraphs [0112] through [0117] are presented within, and are limited to, the context of sulfur vulcanization.
The classes of compounds identified as suitable "additions" at paragraphs [0114] and
[0115] confirm this reading. Every class listed, including dithiocarbamates, thiurams, thiazoles, sulfenamides, xanthogenates, guanidine derivatives, caprolactams, thiourea derivatives, and dithiophosphates, is a recognized sulfur vulcanization accelerator family. Not one of these classes is associated with peroxide crosslinking in the art.
The preferred list at paragraph [0117] further reinforces this interpretation. It begins with sulfur itself, followed by 2-mercaptobenzothiazole, tetramethylthiuram disulfide, tetramethylthiuram monosulfide, zinc dibenzyldithiocarbamate, dipentamethylenethiuram tetrasulfide, zinc dialkyldithiophosphate, dimorpholyl disulfide, and other recognized sulfur cure chemicals. A person of ordinary skill in the art would recognize this as a list of sulfur vulcanization accelerators and co-agents, not as a list of additives suitable for use with peroxide crosslinking systems.
The Examiner relies on the statement at paragraph [0117] that "[t]he recited additions and the crosslinking agents may be used either individually or in mixtures." Read in context, however, a person of ordinary skill would understand "the crosslinking agents" in this sentence to refer to the sulfur-containing crosslinking agents discussed at paragraphs [0109] through [0111], which are the crosslinking agents most proximate to, and contextually linked with, the discussion of the "additions." The sentence simply states that within the sulfur vulcanization system, the various sulfur-containing crosslinkers and the various accelerator additions may be combined with one another. It does not state or suggest that these sulfur vulcanization accelerators may be combined with the peroxidic crosslinkers discussed separately at paragraphs [0104] through [0108].
This reading is confirmed by Kaiser's working examples. None of Kaiser's sixteen working examples (Examples A through P) combines a peroxide crosslinker with a dithiophosphate or any other sulfur-vulcanization addition. Every inventive example (Examples C through H and L through P) employs only Perkadox® 14-40, identified as di(tert- butylperoxyisopropyl)benzene supported on silica, as the crosslinking agent, together with synthetic graphite and/or aluminum oxide fillers, silanes, and stabilizers, without any zinc dialkyldithiophosphate or other sulfur-containing addition. Kaiser thus never reduces to practice, and does not exemplify, the combination of an organic peroxide and a dithiophosphate that the Examiner contends would have been obvious.”
Remarks, p. 7-9
The examiner respectfully traverses as follows:
While the applicant argues that Kaiser is only teaching the additions to be combined with sulfur-containing crosslinking agents, the fact remains that Kaiser teaches the “the recited additions and the crosslinking agents may be used individually or in mixtures” (Kaiser, [0117]) and does not state that the additions may only be used with the sulfur-containing crosslinking agents, but rather crosslinking agents in general.
Further, while applicant points to the examples to support the argument that Kaiser does not teach the additions with peroxidic crosslinking agents, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant further argues:
“Even assuming, for the sake of argument, that Kaiser could be read to disclose combining a dithiophosphate with a peroxide crosslinker (which Applicant does not concede), Kaiser provides no teaching regarding the amount of dithiophosphate to be used. The "additions" of paragraphs [0112] through [0117] are not defined as part of component (c) and no concentration or weight range is specified for them. The Examiner's assertion that the weight ratio of peroxide to dithiophosphate would "necessarily" be greater than 1 because the peroxide is the "main portion" of the crosslinking system does not find support in Kaiser's actual disclosure. This deficiency exists regardless of whether the claimed ratio is stated as "from 1.8 to 20" or, as now amended, "higher than 0.5," because Kaiser simply does not teach or suggest any ratio, of any magnitude, between a peroxide and a dithiophosphate.
The Examiner alternatively contends that the weight ratio is a result-effective variable subject to routine optimization. However, a result-effective variable analysis requires some recognition in the prior art that the variable affects a relevant property. Kaiser provides no teaching that varying the ratio of peroxide to dithiophosphate produces any particular result. Because Kaiser does not contemplate combining peroxide with dithiophosphate, there is no basis upon which a skilled person would undertake optimization of the ratio between these two components, whatever numeric range that ratio is claimed to occupy.”
Remarks, p. 9
The examiner respectfully traverses as follows:
While Kaiser does not explicitly teach a ratio, Kaiser does teach additions to the crosslinkers. Therefore, the amount of crosslinker to the additions would necessarily have a ratio and this ratio would be a result effective variable as the additions are taught to increase the crosslinking yield. One of ordinary skill in the art would optimize the amount of additions to crosslinkers, thereby varying the ratio between them, in order to optimize the crosslinking yield.
Applicant further argues:
“Claims 26 and 33 were rejected under 35 U.S.C. 103 as being unpatentable over Kaiser, as applied to claim 17 above, and further in view of Gijsman ("A review on the mechanism of action and applicability of Hindered Amine Stabilizers", 2017). As discussed above, Kaiser does not render obvious the composition of independent claim 17, as amended. Because the primary reference does not establish a prima facie case that a person of ordinary skill would combine an organic peroxide with a dialkyl phosphorodithioic acid or salt thereof in the claimed weight ratio, the further combination with Gijsman does not cure the deficiency of the base rejection. Accordingly, Applicant submits claims 26 and 33 are patentable for at least the same reasons as claim 17 and respectfully requests reconsideration and withdrawal of the rejection.”
Remarks, p. 10
The examiner respectfully traverses as follows:
It is noted that while Gijsman does not disclose all the features of the present claimed invention, Gijsman is used as a teaching reference, namely to teach the stabilizers including at least one hindered amine light stabilizer compound, in order to impart long-term heat stability and protect against long-term heat degradation, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
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/C.M.C./Examiner, Art Unit 1732 /CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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