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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 5, 2026 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-5, 7-8, and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, and 7-8 of co-pending Application No. 17/791,019 (reference application) in view of Ota (US 2015/0017364 A1) and Takahashi (US 2012/0107689 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, claim 1 of the reference application teaches a fluororubber composition containing 3 to 20 parts by weight of carbon fibers per 100 parts of fluororubber, identical to the claimed range. Claim 2 of the reference application teaches an average fiber diameter of 5 to 20 microns, identical to the claimed range, and an average fiber length of 10 to 200 microns. The aspect ratio of the fibers within the reference claims therefore ranges from 0.5 to 40, which encompasses the claimed range of “2 to 10,” establishing a prima facie case of obviousness. Claim 4 of the reference application teaches the incorporation of 3 to 20 parts of polytetrafluoroethylene, identical to the claimed range.
The reference claims differ from claim 1 because they are silent with regard to the incorporation of carbon black. In the same field of endeavor, Ota teaches a fluororubber composition (Abstract) containing carbon black ([0011]) and optionally containing carbon fibers ([0131]). Ota teaches the incorporation of 5 to 65 parts of carbon black per 100 parts of fluororubber ([0107]), which encompasses the claimed range of “5 to 25 parts by weight,” establishing a prima facie case of obviousness, and teaches that this amount of carbon black is preferential because it prevents the deterioration of mechanical properties of the inventive composition ([0107]). Ota additionally teaches that the dibutyl phthalate (DBP) absorption number of the carbon black ranges from 40 to 180 ml/100g for the sake of optimizing mechanical properties of the inventive composition ([0104]-[0105]). Finally, Ota exemplifies the use of Seast 3 carbon black, manufactured by Tokai Carbon ([0334]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate 5 to 65 parts of Seast 3 carbon black into the formulation within the claims of the reference application for the purpose of improving the mechanical properties thereof. Seast 3 meets the claimed limitation pertaining to the claimed carbon black’s iodine absorption characteristic because the instant Specification also exemplifies the usage of Seast 3 as a carbon black which possesses an iodine absorption number of 80 mg/g (p. 11, Example 1 of instant Specification) which falls within the claimed range of “70 to 100 mg/g or more,” establishing a prima facie case of obviousness.
The reference claims as modified by Ota further differ from claim 1 because they are silent with regard to the polytetrafluoroethylene being granular.
In the same field of endeavor, Takahashi teaches a binder composition for an electrode, comprising PTFE particles combined with a polymer (Abstract), wherein the polymer may be a fluororubber ([0052]). Takahashi teaches the mixing of the compositional ingredients within a solvent ([0052]), but also teaches the subsequent drying application of the composition to leave behind the inventive composition containing the aforementioned PTFE and fluororubber ([0130]). Takahashi further teaches the incorporation of carbon black ([0122]) and carbon fiber ([0119]) in particular use cases of the inventive composition. Finally, Takahashi teaches that the PTFE particles have a primary particle size of 1 micron or smaller, and may exist as agglomerates with secondary particle sizes of 5 microns or larger ([0047]). In each case, these size ranges of PTFE read on the claimed “granular polytetrafluoroethylene resin” because the instant Specification states that granular resins comprise particle sizes ranging from 1 to 20 microns ([0029]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the PTFE of particle sizes taught by Takahashi into the formulation of the reference claims as Takahashi teaches that these particle sizes are suitable for the formation of fluororubber compositions containing PTFE particles.
Regarding claim 3 the reference application as modified by Ota, above, teaches the use of Seast 3 carbon black, which has a DBP oil absorption number of 101 cm3/g (p. 11, Example 1 of instant Specification), which falls within the claimed range, establishing a prima facie case of obviousness.
Regarding claim 5, as described above, claim 2 of the reference application teaches that the carbon fibers have diameters ranging from 5 to 20 microns and fiber lengths ranging from 10 to 200 microns, and therefore have an aspect ratio ranging from 0.5 to 40, which overlaps the claimed range of “2 to 8,” establishing a prima facie case of obviousness.
Regarding claim 7, Ota teaches the crosslinking of the fluororubber composition ([0126]).
Regarding claim 8, claim 1 of the reference application that the composition is a sealing material.
Regarding claims 10 and 11, claims 7 and 8 of the reference application teaches the use of the claimed materials as a sealing member for a continuously variable vehicle pulley, which reads on the claimed “transmission” and “continuously variable vehicle pulley part transmission.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-5 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Higashira (US Patent No. 7,279,530 B2) in view of Ota (US 2015/0017364 A1) and Kurosaki (WO 2019117244 A1, hereinafter referring to US 2021/0071713 A1 as the English language equivalent) and further in view of Takahashi (US 2012/0107689 A1).
Regarding claim 1, Higashira teaches a fluororubber composition including a crosslinkable fluororubber (Abstract), and polytetrafluoroethylene in amounts ranging from 5 to 200 parts per 100 parts of fluororubber (col. 6, lines 40-43 and col. 10, lines 53-57) which may include further ingredients common in the rubber industry such as reinforcing agents including carbon black and carbon fibers (col. 8, lines 61-62). The amount of polytetrafluoroethylene overlaps the claimed range of “ 3 to 20 parts,” establishing a prima facie case of obviousness.
Higashira differs from claim 1 because it is silent with regard to the claimed amounts and characteristics of the carbon black. In the same field of endeavor, Ota teaches a fluororubber composition (Abstract) containing carbon black ([0011]) and optionally containing carbon fibers ([0131]). Ota teaches the incorporation of 5 to 65 parts of carbon black per 100 parts of fluororubber ([0107]), which encompasses the claimed range of “5 to 25 parts by weight, establishing a prima facie case of obviousness, and teaches that this amount of carbon black is preferential because it prevents the deterioration of mechanical properties of the inventive composition ([0107]). Ota additionally teaches that the dibutyl phthalate (DBP) absorption number of the carbon black ranges from 40 to 180 ml/100g for the sake of optimizing mechanical properties of the inventive composition ([0104]-[0105]). Finally, Ota exemplifies the use of Seast 3 carbon black, manufactured by Tokai Carbon ([0334]). 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 to use Seast 3 carbon black in the amounts taught by Ota, within the formulation of Higashira, as Ota teaches it as a suitable carbon black for formulation with fluororubbers. Ota exemplifies Seast 3 carbon black in these amounts as useful for optimizing the mechanical properties of fluororubber compositions. Seast 3 meets all of the claimed limitations pertaining to the claimed carbon black because the instant Specification also exemplifies the usage of Seast 3 as a carbon black which possesses an iodine absorption number of 80 mg/g and a DBP oil absorption number of 101 cm3/g (p. 11, Example 1 of instant Specification), both of which fall within the claimed ranges, establishing prima facie cases of obviousness.
Higashira further differs from claim 1 because it is silent with regard to the claimed amounts and characteristics of the carbon fiber. In the same field of endeavor, Kurosaki teaches a composition consisting of a pitch-based carbon fiber and a fluororesin (Abstract). The carbon fibers are taught as comprising between 10 and 35 wt% of the resin formulation ([0018]), and having fiber diameters ranging from 5 to 20 microns and aspect ratios ranging from 2 to 20 ([0033]). The fiber diameter range is identical to the claimed range, and the aspect ratio range encompasses the claimed range; prima facie cases of obviousness are established in both cases. Kurosaki further teaches that the carbon fibers behave as reinforcing materials within the resin composition ([0053]), which is identical to the aforementioned purpose of the carbon fibers within the teaching of Higashira as mentioned above. Further, Kurosaki exemplifies the usage of DONACARBO S-2404N carbon fibers within the inventive composition ([0076]). 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 10-35 wt% of the carbon fibers of Kurosaki into the formulation of Higashira, as Kurosaki recognizes this as a suitable carbon fiber addition for the purpose of reinforcing fluororesin compositions. Given the incorporation of fluororubber (whose contents are set to 100 parts), 5 to 200 parts of polytetrafluoroethylene, and 5 to 65 parts of carbon black within the composition of Higashira as modified by Ota, above, the incorporation of 10-35 wt% of carbon fibers as taught by Kurosaki corresponds to an addition of between about 12.2 and 196.5 parts of carbon fibers within the composition of Higashira as modified by Ota and Kurosaki, which overlaps the claimed range of “5 to 20 parts,” establishing a prima facie case of obviousness.
Higashira further differs from claim 1 because it is silent with regard to the claimed limitation wherein the polytetrafluoroethylene is granular.
In the same field of endeavor, Takahashi teaches a binder composition for an electrode, comprising PTFE particles combined with a polymer (Abstract), wherein the polymer may be a fluororubber ([0052]). Takahashi teaches the mixing of the compositional ingredients within a solvent ([0052]), but also teaches the subsequent drying application of the composition to leave behind the inventive composition containing the aforementioned PTFE and fluororubber ([0130]). Takahashi further teaches the incorporation of carbon black ([0122]) and carbon fiber ([0119]) in particular use cases of the inventive composition. Finally, Takahashi teaches that the PTFE particles have a primary particle size of 1 micron or smaller, and may exist as agglomerates with secondary particle sizes of 5 microns or larger ([0047]). In each case, these size ranges of PTFE read on the claimed “granular polytetrafluoroethylene resin” because the instant Specification states that granular resins comprise particle sizes ranging from 1 to 20 microns ([0029]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the PTFE of particle sizes taught by Takahashi into the formulation of Higashira as Takahashi teaches that these particle sizes are suitable for the formation of fluororubber compositions containing PTFE particles.
Regarding claim 3, Higashira as modified by Ota and Kurosaki, above, teaches the use of Seast 3 carbon black, which has a DBP oil absorption number of 101 cm3/g (p. 11, Example 1 of instant Specification), which falls within the claimed range, establishing a prima facie case of obviousness.
Regarding claim 5, as described above, Higashira as modified by Ota and Kurosaki teaches the incorporation of carbon fibers whose aspect ratios range from 2 to 20, which encompasses the claimed range of “2 to 8,” establishing a prima facie case of obviousness.
Regarding claim 7, Higashira teaches the crosslinking of the composition to form a crosslinked product (col. 16, lines 1-4), and teaches the molding of the article (col. 17, lines 3-6) which reads on the claimed “crosslinked molded article.”
Regarding claims 8-11, the claims are drawn to intended uses of the claimed “crosslinked molded article” of claim 7 and the claimed “Sealing material” of claim 8,9, or 10, respectively. The intended use limitations do not require steps to be performed or limit the claims to a particular structure. These limitations do not limit the scope of the instant claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02. Therefore, Higashira as modified by Ota and Kurosaki as applied to claim 7 above also reads on claims 8-11.
Response to Arguments
As an initial matter, the Applicant has expressed an intention to consider filing a terminal disclaimer once the claims are otherwise found in condition for allowance. Since the Applicant has not yet filed said terminal disclaimer, the Double Patenting rejection of previous office actions, repeated above, remains appropriate.
Applicant's arguments filed March 5, 2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed invention would not have been reached individually by the cited documents, and asserts that such documents would not have been combined with expectation of success by one of ordinary skill in the art.
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).
Applicant argues that the Examples of Higashira include 2 parts by weight of carbon black, and said amounts differ from the claimed range. However, as described above, the Higashira teaches the incorporation of carbon black. Furthermore, Higashira does not teach away from any particular amounts of carbon black; to the contrary, Higashira states that the amounts of reinforcing agents (including carbon black) may be increased and adjusted (col. 9, lines 36-39), leading one of ordinary skill in the art to understand an amount of carbon black is not particularly limited. As described above, Ota teaches the claimed range of carbon black and renders the incorporation thereof into Higashira obvious.
Applicant’s remaining arguments concern Comparative Examples 1 and 2 of the instant disclosure, which the Applicant states lead to issues of abrasion resistance and rupture strength deterioration; however, these arguments are tantamount to asserting that compositions which fall outside of the claimed range (in this case, a composition whose carbon fibers have an aspect ratio above that which is claimed or a composition whose carbon black whose OAN falls below the claimed range) do not have the properties contemplated by said disclosure. While Kurosaki may teach a range of carbon fibers and carbon blacks which include those falling outside of the claimed ranges (e.g., Kurosaki teaches fibers with aspect ratios ranging from 2 to 20 vs 2 to 10 as claimed), the presence of teachings which fall outside of the claimed composition does not refute the presence of compositions which fall within the claimed composition. The combination of references applied previously and above therefore renders obvious the claimed composition regardless of data derived from the Comparative Examples of the instant disclosure.
Applicant’s final statement is directed towards the combined references not contemplating the Applicant-recognized benefit of improved oil film retention and abrasion resistance in unlubricated conditions; however, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762