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 .
Specification
The abstract of the disclosure is objected to because it contains legal phraseology, i.e., “said”, in lines 4, 5, 6, and 7. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
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 dicumyl peroxide, 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]). As Kaiser teaches the dithiophosphate is an addition to the peroxide crosslinker, one of ordinary skill in the art would know the peroxidic crosslinker is the main portion of component (c) and therefore greater than a 1:1 ratio of the peroxide to the dithiophosphate, i.e., the weight ratio between said at least one organic peroxide and said at least one sulfur- containing compound would necessary be >1, which overlaps with the range of the presently claimed.
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).
Alternatively, although there are no disclosures on the weight ratio of peroxide to dithiophosphate being from 1.8 to 20, 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 dicumyl peroxide, 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 dicumyl peroxide, 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 and claims 17-20, 26-27, and 32-33, the previous Specification objection and claim objections are withdrawn from the record. However, due to the amendments to the abstract, a new specification objection is set forth above.
In response to the amendment regarding “wherein the weight ratio between said at least one organic peroxide and said at least one sulfur-containing compound is from 1.8 to 20”, and based on applicant’s remarks filed on pages 8-9 regarding the 35 U.S.C. 103 rejection over Yang, it is agreed that Yang would not meet the present claims. However, the amendment necessitates a new set of rejection as set forth above using Kaiser.
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.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732