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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5, 8-15, 17, and 19-21, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Ellul-197 (US Patent No. 8,653,197 B2).
Regarding claim 1, Ellul-197 teaches a thermoplastic vulcanizate composition (Abstract), comprising:
A multimodal polymer composition (Abstract, col. 3, lines 2-3), comprising:
25 to 55 wt% of a second polymer fraction having a Mooney viscosity ranging between 20 ML and 120 ML (col. 3, lines 11-19), which reads on the claimed “major polymer fraction.” The compositional range and Mooney viscosity range of the second polymer fraction overlap/fall within the respectively claimed ranges within the claimed “major polymer fraction,” establishing prima facie cases of obviousness.
45 to 75 wt% of a second polymer fraction having a Mooney viscosity greater than or equal to 150 ML (col. 3, lines 4-10), which reads on the claimed “minor polymer fraction.” The compositional range and Mooney viscosity range of the first polymer fraction overlap the respectively claimed ranges within the claimed “minor polymer fraction,” establishing prima facie cases of obviousness.
About 10 phr to about 50 phr of an extender oil per 100 parts of dynamically cured rubber (col. 3, lines 19-20, which comprises the multimodal polymer composition, col. 2, line 63 – col. 3, line 4), which overlaps the claimed range of “less than 10 parts by weight,” establishing a prima facie case of obviousness.
(See MPEP 2144.05.I. – ranges including “about” phrasing have been previously adjudicated as overlapping claims limited to “more than” a particular value; the logic of which similarly applies to claims limited to “less than” a particular value).
Wherein the multimodal polymer composition has an average molecular weight distribution ranging from about 2 to about 10 (col. 18, lines 54-59), and a branching index ranging from about 0.3 to 1 (col. 18, lines 60-65). In each case, the ranges of the multimodal polymer composition encompass the respectively claimed ranges, establishing prima facie cases of obviousness.
A paraffinic oil (col. 2, line 67 – col. 3, line 1), which reads on the claimed “at least one other oil”
A thermoplastic resin (col. 2, lines 65-66), which reads on the claimed “at least one thermoplastic polymer”
A curative system (col. 25, line 39) comprising a curing agent (e.g., a peroxide, col. 25, lines 40-56) and a co-agent (col. 25, lines 57-58), which reads on the claimed “curing system comprising at least one curative material and at least one curing agent.”
Regarding the newly added limitations requiring that the “other oil” is added both before and after curing, and that the combined amount of oil added before curing and the amount of the “less than 10 parts by weight oil per 100 parts by weight of the multimodal copolymer rubber” is less than the amount of oil added after curing, Ellul-197 specifically teaches that process oils are added both before (col. 32, lines 39-40) and after (col. 32, lines 53-55) of vulcanization. Furthermore, Ellul-197 specifies that between 0-30 phr of the process oil (the paraffinic oil, described above) is added before vulcanization (col. 32, lines 37-40). Given that the paraffinic oil is added in a final amount ranging from 50 to 200 parts by weight (col. 2, line 67- col. 3, line 1), the total combined amount of the paraffinic oil added before vulcanization and the extender oil ranges from about 10 to 80 parts, whereas the amount of paraffinic oil added after vulcanization (which constitutes the remainder of the 50 to 200 parts of the paraffinic oil after 0-30 parts were added before vulcanization) ranges from about 20 to about 200 parts. Therefore, Ellul-197 teaches circumstances where the combined amounts of the extender oil and the paraffinic oil added before vulcanization are lower than the amount of oil added after vulcanization, as claimed.
Regarding claims 2 and 15, Ellul-197 teaches all of the limitations of claims 1 and 12, as described above. Ellul-197 further teaches that EPDM polymers having the inventive combination of Mooney viscosities may be formed from using metallocene catalysts (col. 2, lines 30-48). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to synthesize the inventive copolymers of Ellul-197 using metallocene catalysts.
Furthermore, Ellul-197 teaches that the copolymers within the inventive rubber comprise about 35 to about 90 mol% of ethylene (col. 9, lines 40-41 and col. 10, lines 42-43), about 10 to about 65 mol% of alpha-olefin (col. 9, lines 47-48 and col. 10, lines 49-50), and about 0.1 to about 10 wt% of diene (col. 9, lines 62-64 and col. 10, lines 64-65). The range of weight percents of diene taught by Ellul-197 encompass and therefore reads on the claimed range of diene-derived units.
Ellul-197 does not directly disclose the weight percentage of each of these components within the inventive copolymers. However, these mol% ranges correspond to approximately 22.8-85.7 wt% of ethylene and approximately 11.9-73.6 wt% of the alpha-olefin (propylene), which overlaps the claimed compositional range of “about 45 wt% to about 80 wt%.”
Finally, Ellul-197 teaches that the multimodal polymer composition has a Mooney viscosity of less than 90 ML (col. 3, lines 23-24), which overlaps the claimed range of “about 20 ML … to about 90 ML.”
Regarding claim 3, Ellul-197 teaches that the cured rubber in the formulation is in the form of finely-divided and well-dispersed particles within the thermoplastic medium (col. 32, lines 4-6).
Regarding claims 5 and 17, Ellul-197 teaches the incorporation of thermoplastics including, inter alia, crystalline and crystallizable polyolefins including, inter alia, those of ethylene and propylene (col. 24, lines 38-45), which read on the claimed list.
Regarding claim 8-9 and 19, Ellul-197 teaches that the paraffinic oil is included in amounts ranging from 50 to 200 phr (col. 2, line 67- col. 3, line 1), which falls within the claimed range, establishing a prima facie case of obviousness.
Furthermore, Ellul-197 teaches that the curing agent may comprise a phenolic resin (col. 49, lines 33-34), and exemplifies the usage of a phenolic resin in amounts of 5 phr (col. 39, Table 8-continued), which falls within the claimed range of “0.1 to 20.0 phr,” establishing a prima facie case of obviousness.
Regarding claim 10, Ellul-197 teaches the incorporation of additional components including fillers (col. 27, line 54-55), and teaches that the additives can comprise up to about 50 weight percent of the total composition (col. 27, lines 59-60). Since the overall composition (aside from the additional components) contains between about 180 and about 650 parts (col. 2, line 63 – col. 3, line 20), including 100 parts of rubber (hence the use of phr within the composition), the additives (fillers) may be included in amounts ranging from about 90 to about 325 phr, which overlaps the claimed range of “about 0 to about 300 phr,” establishing a prima facie case of obviousness.
Regarding claim 11, Ellul-197 teaches that the inventive composition has an elongation at break ranging from about 100% to about 600% (col. 30, lines 17-24), A ShoreA hardness ranging from about 30 to 100 (col. 30, lines 1-8), a tensile strength ranging from about 5 MPa to about 20 MPa (col. 30, lines 9-16), Teaches example formulations with specific gravities of 0.93, 0.94, 0.95, 0.96, 0.97, 0.98, 1.00, and 1.11, (cols. 41-47, Tables 10a-10c), all of which overlap/fall within their respectively claimed ranges, establishing prima facie cases of obviousness. Ellul-197 is silent with regard to the claimed “apparent viscosity,” “bonding strength,” and “extrusion surface roughness” characteristics. Nevertheless, as described above, Ellul-197 teaches a composition which is structurally identical to the claimed composition, which contains all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed“ apparent viscosity,” “bonding strength,” and “extrusion surface roughness” characteristics will therefore necessarily be present in Ellul-197, as applied above.
Regarding claim 12, Ellul-197 teaches the dynamic vulcanization of the inventive composition, wherein the rubber is simultaneously crosslinked and dispersed within the thermoplastic resin matrix (col. 30, lines 56-67). Ellul-197 further teaches the curative being incorporated therewith (col. 31, lines 4-6), and teaches the addition of the remaining components after phase inversion within the reactor (col. 31, lines 44-52). Furthermore, as described above, Ellul-197 teaches all of the claimed compositional limitations of the claimed “multimodal copolymer rubber.”
Ellul-197 also teaches the newly-added limitation regarding the amounts of process oil added before and after vulcanization, as described in the rejection of claim 1, above.
Regarding claim 13, Ellul-197 teaches that the rubber is usually in the form of finely-divided and well-dispersed particles (col. 31, line 66- col. 32, line 1).
Regarding claim 14, Ellul-197 teaches that the process oil is preferably added in three or more locations, wherein the first two additions may take place prior to the onset of vulcanization (col. 32, lines 34-37). The third addition therefore takes place after vulcanization. Ellul-197 teaches that 30 phr of oil is added before or during the addition of the granular material to the extruder (col. 32, lines 37-40) and, as described above, teaches the incorporation of a total of about 50 to about 200 phr of oil (col. 2, line 67- col. 3, line 1). Therefore, most of the oil is added after vulcanization, which reads on the claimed ratio of “less than about 1.”
Regarding claim 20, as described above, Ellul-197 teaches the addition of the remaining components after phase inversion within the reactor (col. 31, lines 44-52), which would include the filler. Furthermore, as described above, Ellul-197 teaches that the additives (including fillers) can comprise up to about 50 weight percent of the total composition (col. 27, lines 59-60). Since the overall composition (aside from the additional components) contains between about 180 and about 650 parts (col. 2, line 63 – col. 3, line 20), including 100 parts of rubber (hence the use of phr within the composition), the additives (fillers) may be included in amounts ranging from about 90 to about 325 phr, which overlaps the claimed range of “about 0 to about 300 phr,” establishing a prima facie case of obviousness.
Regarding claims 21 and 23, Ellul-197 teaches all of the compositional limitations as described above, including the requirement for a “curing agent powder” which is presumably met because Ellul-197 teaches the use of curing agents which overlap with those which are specifically pointed out as suitable in the instant Specification (c.f. Ellul-197 at col. 39, line 29 and instant Specification at [0090]). Ellul-197 further teaches the melt-mixing of the inventive composition and the subsequent curing as described above, but is silent with regard to the formation of a particular pre-mix. However, selecting any order of mixing ingredients is prima facie obvious (see MPEP 2144.04.IV.C.). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to produce the claimed composition according to the claimed sequence.
Ellul-197 also teaches the newly-added limitation regarding the amounts of process oil added before and after vulcanization, as described in the rejection of claim 1, above.
Regarding claim 24, Ellul-197 teaches that the filler may be, inter alia, calcium carbonate, carbon black, and talc (col. 27, lines 59-65), and teaches that the curing agent may include a combination of stannous chloride and metal oxide (col.49, lines 35-40).
Claims 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ellul-197 (US Patent No. 8,653,197 B2) in view of Ellul-609 (WO 2009/123609).
Regarding claims 4 and 16, Ellul-197 teaches all of the limitations of claims 1 and 12, as described above. Ellul-197 teaches that the cured rubber in the formulation is in the form of finely-divided and well-dispersed particles within the thermoplastic medium (col. 32, lines 4-6), but is silent with regard to the claimed particle size range.
In the same field of endeavor, Ellul-609 teaches a thermoplastic vulcanizate (Abstract), containing EPDM polymers (abstract, [0004]), which are multimodal ([0015]). Ellul-609 further teaches that the rubber can be in the form of finely-divided and finely-dispersed particles within a continuous thermoplastic matrix ([0096]), and may separately be in the form of granular multimodal particles. Ellul-609 states that the granular multimodal particles may be characterized by a particle size ranging from 0.5 to 8 mm ([0057]), which falls within the claimed range of “about 0.5 mm to about 15.0 mm,” establishing a prima facie case of obviousness.
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the rubber particles of Ellul-197 as granular multimodal particles having a particle size ranging from 0.5 to 8 mm, as taught by Ellul-609, as Ellul-609 recognizes them as a suitable alternative to the finely-divided and finely-dispersed rubber particles within a continuous thermoplastic matrix.
Claims 6-7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ellul-197 (US Patent No. 8,653,197 B2) in view of Pillai (US Patent No. 6,313,183 B1).
Regarding claims 6-7 and 18, Ellul-197 teaches all of the limitations of claims 5 and 17 as described above. Ellul-197 differs from claims 6-7 and 18 because it is silent with regard to the incorporation of recycled polyethylene or recycled polypropylene.
In the same field of endeavor, Pillai teaches a process for preparing thermoplastic rubbers from vulcanized rubber scrap (Abstract), involving blending rubber scraps with olefinic plastic resins (Abstract). Pillai teaches that the plastic resins, which may include polyethylene and polypropylene may be recycled (col. 4, lines 61-67), and further teaches the specific use of EPDM rubbers within the composition (col. 4, lines 28-31). It is prima facie facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to substitute the polyethylene and/or polypropylene in the formulation of Ellul-197 with recycled versions thereof, as taught by Pillai, as Pillai teaches recycled version of these plastics to be suitable for thermoplastic vulcanizate compositions.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Ellul-197 (US Patent No. 8,653,197 B2) in view of Wu (US 2015/0210838 A1).
Regarding claim 22, Ellul-197 teaches all of the limitations of claim 21 as described above. Ellul-197 differs from claim 22 because it is silent with regard to the formation of a premixture in a different location than where the prevulcanization blend is added to the reactor.
In the same field of endeavor, Wu teaches thermoplastic vulcanizates (Abstract), comprising a blend of EPDM rubbers (Abstract), and teaches that the components of the inventive composition may be pre-blended (dry-mixed) prior to adding to the extruder ([0204]). Wu further teaches the use of loss-in-mass feeders containing the pre-blend ([0204]), and therefore the pre-blend must have been formed prior to the addition of the materials into the extruder (reactor) via the feeder.
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate a pre-mixture of the ingredients taught by Ellul-197 into a loss-in-mass feeder before using said feeder to present the mixture into an extruder (reactor) for compounding, as taught by Wu, as Wu recognizes this as a suitable method for introducing the components of a thermoplastic vulcanizate composition into an extrusion process. Doing so would read on the claimed limitation requiring that the premix is formed at a different location, because the location wherein the premixed blend is added to a reactor is different than the premixing which, at least, is occurring before and during the ingredients’ residence time in the loss-in-mass feeder.
Response to Arguments
Applicant's arguments filed November 26, 2025 have been fully considered but they are not persuasive.
Applicant argues that Ellul-197 fails to teach the newly added limitations concerning the amounts of additional processing oil added before and after vulcanization within the manufacturing process. However, as described above, Ellul-197 does teach these characteristics. More specifically, Ellul-197 specifically teaches that process oils are added both before (col. 32, lines 39-40) and after (col. 32, lines 53-55) of vulcanization. Furthermore, Ellul-197 specifies that between 0-30 phr of the process oil (the paraffinic oil, described above) is added before vulcanization (col. 32, lines 37-40). Given that the paraffinic oil is added in a final amount ranging from 50 to 200 parts by weight (col. 2, line 67- col. 3, line 1), the total combined amount of the paraffinic oil added before vulcanization and the extender oil ranges from about 10 to 80 parts, whereas the amount of paraffinic oil added after vulcanization (which constitutes the remainder of the 50 to 200 parts of the paraffinic oil after 0-30 parts were added before vulcanization) ranges from about 20 to about 200 parts. Therefore, Ellul-197 teaches circumstances where the combined amounts of the extender oil and the paraffinic oil added before vulcanization are lower than the amount of oil added after vulcanization, as claimed.
Applicant refers to examples within Ellul-197 that indicate an incorporation of only 30-40 phr of oil as a means to refute the possibility of Ellul-197 incorporating more oil after curing than before curing, however the presence of these examples does not refute the broader disclosure of Ellul-197 which teaches the possibility of doing so, as described above.
Applicant’s remaining arguments are tantamount to allegations of unexpected results. Applicant refers to Examples 1-5 of the present disclosure to support this position. Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Examples 1-5 of the instant disclosure describe compositions containing two types of metallocene-catalyzed EPDM rubber (compared to the scope of claim 1 which is open to virtually polymers of, for instance Zeigler-Natta catalysis, such as is included in the Comparative Examples). Furthermore, while these EPDM polymers have generically-disclosed minor and major fractions, each bearing the Mooney viscosities which presumably fall within the claimed ranges ([00105] if instant Specification), two polymer materials cannot possibly contain sufficient viscosity/polymer fraction values to span the full scope of their respectively claimed ranges. These polymers also have branching indices which are indicated as greater than 0.85 and molecular weight distributions indicated as less than 3.5 ([00105]), however these values are not commensurate in scope with their respectively claimed ranges.
In addition, the thermoplastic polyolefins utilized are indicated as a mixture of polypropylene and polyethylene ([00108]); meanwhile, the claims are open to virtually any thermoplastic polymer, presumably also including blends thereof, as the example formulations include the aforementioned mixture. For at least the foregoing reasons, the scope of the experimental data is not reasonably commensurate with the scope of the claims.
The Applicant need not provide experimental data for every possible embodiment of the claimed composition; however, the scope of the claims and experimental data are not commensurate and therefore the arguments regarding Examples 1-5 of the instant Disclosure are insufficient to rebut prima facie obviousness on the basis of unexpected results.
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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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762