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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 8, 2025 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.
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) 1-2, 4-5 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe
et al. (US 2015/0138907) in view of Hoffman (US 4,812,267), DE 3734328 and Nodono et al. (US
2002/0011688).
Watanabe et al. (US 2015/0138907) discloses a metal member having a surface in contact with a
rubber material, wherein at least a portion of the surface of the metal member in contact with the
rubber material is formed from a metal coating for inhibiting adhesion of the rubber material to the metal member ([0002],[0015], [0028], the apparatus shown in fig. 1 is an example of a metal member in contact with a rubber material, the metal coating is formed of metal such as iron, chromium, nickel or cobalt; as shown in fig. 1, the metal member (in contact with the rubber material) can be calendar rollers (roll) 3 (defining a roller head as shown in fig. 1), housing/barrel 6, or rotors/screws 7).
However, Watanabe et al. (US 2015/0138907) doesn't disclose the metal coating including an
alloy containing cobalt and chromium, OR the metal member comprises a fluid
passage for adjusting a temperature of the at least a portion of the surface of the metal member in
contact with the rubber material.
Hoffman (US 4,812,267) discloses a metal (steel) member (an extrusion die) having a surface in contact with a rubber material (col. 1, line 6, to col. 2, line 40, e.g., butadiene materials and chlorinated rubbers), wherein at least a portion of the surface of the metal member in contact with the rubber
material is formed from a metal coating for preventing extrusion material adhesion to the surface (positively influence adhesion) and for corrosion resistance and/or wear resistance (col. 1, lines 6-34) of the metal member, wherein the metal coating includes an alloy containing cobalt and chromium (col. 2, line 45, to col. 3, line 3, cobalt-chromium-tungsten alloy).
DE 3734328 discloses that surfaces which contact extrusion material, such as the inner surfaces
of a housing/barrel 1 or the outer surfaces of a rotor/screw 2, are coated with an alloy for wear resistance (low wear) and corrosion resistance, the alloy contains cobalt in an amount of 39% by mass or more and 71% by mass or less, chromium in an amount of 8% by mass or more and 35% by mass or less, and one or more elements selected from tungsten, molybdenum, and carbon in an amount of 0.1% by mass or more and 30% by mass or less (See English translation: Abstract, Description and Claim 12, the alloy contains 0.5 to 1.25 wt% (mass %) carbon, 0 to 1 wt% manganese, 0 to 1.5 wt% silicon, 26 to 29 wt% chromium, 4 to 9 wt% tungsten, 0 to 2 wt% molybdenum, 0 to 3 wt% nickel, 0 to 3 wt% iron, 0 to 5 wt% boron, and rest cobalt; note that when the lowest amounts are chosen the cobalt is 69.5 wt% and that when the highest amounts are chosen the cobalt is 45.25 wt%).
Nodono et al. (US 2002/0011688) disclose an extrusion molding machine including members
which come into contact with a rubber material having a temperature-regulating function, the members
including calendar rollers 1 of a roller head comprising a fluid passage (pipes) for adjusting a
temperature of the at least a portion of the surface of the metal member (rollers 1) in contact with the
rubber material (fig. 1; [0050], [0079)).
It would have been obvious to one of ordinary skill in the art, at the time the invention was
made, to modify the metal coating of Watanabe et al. (US 2015/0138907) to include an alloy containing
cobalt and chromium, as disclosed by Hoffman (US 4,812,267), because such a modification is
known in the rubber extrusion art and would provide an alternative metal coating known to be operable
in the art for contact with rubber; to further modify the alloy containing cobalt and chromium to be an
alloy containing cobalt in an amount of 39% by mass or more and 71% by mass or less, chromium in an
amount of 8% by mass or more and 35% by mass or less, and one or more elements selected from
tungsten, molybdenum, and carbon in an amount of 0.1% by mass or more and 30% by mass or less, as
disclosed by DE 3734328, because such a modification is known in the art and would provide an
alternative configuration for coating surfaces which contact extrusion material; and to further modify
the metal member (i.e., the calendar rolls) of Watanabe et al. (US 2015/0138907) with a fluid passage
for adjusting a temperature of the at least a portion of the surface of the metal member in contact with
the rubber material, as disclosed by Nodono et al. (US 2002/0011688), because such a modification is
known in the rubber extrusion art and would enable temperature control of the metal member in
contact with the rubber material.
As to the metal member being a side guide, Nodono et al. (US 2002/0011688) further discloses a side guide of a roller head, the side guide provided at an end of the calendar rollers 1 (figs. 2 and 4 show a side guide (two)(not labeled) which are defined by the downstream ends of molds 3 which define the width of the sheet product S). It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the metal member with a side guide, as disclosed by Nodono et al. (US 2002/0011688), because such a modification is known in the art and would define the width of an extruded product. Note that the side guide of Nodono et al. (US 2002/0011688) contacts the extrusion material and thus would also be coated in view of the combination above.
As to claims 2 and 5, Watanabe et al. (US 2015/0138907) further discloses the metal member:
(Claim 2) wherein the rubber material comprises silica and a silane coupling agent [0018]; and
(Claim 5) wherein the metal member further comprises a metal base material and a covering
layer (coating layer) formed on the metal base material ([0028]; note that the limitation of "the covering
layer is formed from the alloy containing cobalt and chromium and is formed on the at least a portion of
the surface of the metal member in contact with the rubber material" is covered by the combination of
prior art references as mentioned above).
As to claim 4, Hoffman (US 4,812,267) further discloses a surface roughness Ra of the at least a portion of the surface of the metal member in contact with the rubber material is 0.1 µm or more and 1.0 µm or less (col. 3, lines 35-42, less than 1 µm).
As to claim 7, Watanabe et al. (US 2015/0138907) further disclose a method for processing the
rubber material using a device comprising the metal member, the method comprising extruding the
rubber material and/or rolling the rubber material (fig. 1; [0015]-[0018]). However, Watanabe et al. (US
2015/0138907) doesn't disclose adjusting, to a predetermined temperature range, a temperature of the
at least a portion of the surface of the metal member in contact with the rubber material by allowing a fluid to pass through a fluid passage. Note that the prior art combination above includes the fluid
passage. Nodono et al. (US 2002/0011688) further discloses that the temperature regulating includes
allowing a fluid (a cooling or heating medium) to pass (circulate) through the fluid passage (pipes)
[0079]. In view of the temperature regulating teachings of Nodono et al. (US 2002/0011688), it would be
well within an artisan of ordinary skill in the art to adjust, to a predetermined temperature range, a
temperature of the at least a portion of the surface of the metal member in contact with the rubber
material.
As to claim 8, Watanabe et al. (US 2015/0138907) further disclose a method wherein an acid is
used in production of the rubber material or a raw material of the rubber material [0068].
As to claim 9 and 10, such temperature ranges would have been found in finding operable
temperature ranges for processing rubber in view of the temperature regulating teachings of Nodono et
al. (US 2002/0011688) above.
Response to Arguments
Applicant's arguments filed December 8, 2025 have been fully considered but they are not persuasive.
Applicant argues, that DE 328 merely discloses coating inner surface of an extrusion channel or outer surfaces of a screw in an extrusion screw press. In other words, DE 328 fails to disclose or suggest coating either a calendar roll of a roller head or a side guide, where the problem of adhesion of rubber material is liable to be particularly serious. Further, DE 328 fails to disclose or suggest preventing adhesion of rubber material to a member.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Watanabe et al. (US 2015/0138907) disclose coating surfaces which contact the rubber to prevent adhesion of rubber thereto, including the surfaces of a roll of a roller head, a housing/barrel, and a rotor/screw, as mentioned in the prior art rejection above. As mentioned above, Hoffman (US 4,812,267) discloses that surfaces in contact with a rubber material are formed from a metal coating for preventing extrusion material adhesion to the surface and for corrosion resistance and/or wear resistance, wherein the metal coating includes an alloy containing cobalt and chromium (col. 2, line 45, to col. 3, line 3, cobalt-chromium-tungsten alloy). Note that the alloy of claim 12 of DE 328 is a cobalt-chromium-tungsten alloy, and thus would be capable of adhesion prevention in view of the teachings of Hoffman (US 4,812,267).
Applicant argues that DE 328 teaches that the coating disclosed therein performs the function of a wear resistance (and corrosion resistance). Therefore, the coating containing cobalt and chromium in amounts specified in DE 328 mentioned by the Office Action differs in its function from the surface of the metal member of the amended claim 1 of the present application, which is formed from an alloy containing cobalt, chromium, and molybdenum or other elements in respective amounts specified therein to thereby perform the function of preventing adhesion of rubber material.
The Examiner respectfully disagrees. As mentioned above, note the alloy of claim 12 of DE 328 is a cobalt-chromium-tungsten alloy, and thus would be capable of adhesion prevention in view of the teachings of Hoffman (US 4,812,267).
Applicant argues that, furthermore, DE 328 discloses, as a coating having a function of wear resistance, not only the above-mentioned coating containing cobalt and chromium in the respectively specified amounts mentioned above, but also various other coatings such as an iron-based coating (claim 8 of DE 328) and a nickel-based coating (claim 10 of DE 328). Thus, DE 328, which is silent on the problem of adhesion of rubber material, provides no motivation to select the coating containing cobalt and chromium in the specified amounts from the various coatings disclosed in DE 328.
The Examiner respectfully disagrees. The coatings of claim 8 and 10 of DE 328 are not used in the prior art rejection above. As mentioned above, note the alloy of claim 12 of DE 328 is a cobalt-chromium-tungsten alloy, and thus would be capable of adhesion prevention in view of the teachings of Hoffman (US 4,812,267).
Furthermore, DE 328 fails to disclose or suggest coating a calendar roll or a side guide, fails to disclose or suggest the problem of adhesion of rubber material, and merely discloses the coating performing the function different from the function of the metal member defined in the amended claim 1 of the present application. Therefore, DE 328 provides no motivation to apply the chemical composition of the alloy disclosed therein to the technologies disclosed in Watanabe and Mizuno. Nodono, CN 222, Hagiwara or Nakano do not remedy these deficiencies. Thus, the metal member of claim 1 would have been conceivable from the combination of the cited references only upon the benefit of hindsight.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See case law above. As mentioned above, note that the side guide of Nodono et al. (US 2002/0011688) contacts the extrusion material and thus would also be coated in view of the combination of the prior art rejection above. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S LEYSON whose telephone number is (571)272-5061. The examiner can normally be reached M-F 8am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Xiao Zhao can be reached at 5712705343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.S.L/Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744