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 .
REJECTIONS WITHDRAWN
All previous rejections have been withdrawn.
REJECTIONS REPEATED
There are no rejections repeated.
NEW REJECTIONS
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8, 16-20 and 22-24 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Dharmarajan et al. (WO 2019/112728, provided herein).
Dharmarajan discloses an elastomeric composition comprising: 5 parts by weight per hundred parts by weight rubber (phr) to 80 phr of a propylene-a-olefin-diene (PEDM) terpolymer comprising 55 wt% to 95 wt% propylene, 2.5 wt% to 40 wis a- olefin, and 0.05 wt% to 25 wt% diene, said wt% based on the weight of the PEDM terpolymer, wherein the PEDM terpolymer has Mooney viscosity (ML(1+4)) of 5 MU to 90 MU, and wherein the PEDM terpolymer has a weight average molecular weight of 120,000 9/mol to 320,000 g/mol: 20 phr to 95 phr of an ethylene-based copolymer selected from the group consisting of: (a) a crystalline ethylene-based copolymer comprising 60 wt% to 95 wt% ethylene, 0 wt% to 10 wt% of one or more dienes, and 5 wt% to 40 wt% C3 to C 12 a-Olefin, said wt% based on a total weight of the crystalline ethylene-based copolymer, (b) an amorphous ethylene-based copolymer comprising 40 wt% to 59 wt% ethylene, 0 to 10 wt% of one or more dienes, and 40 wit to 60 wt% C3 to C2 a-olefin, said wt% based on 4 total weight of the amorphous ethylene-based copolymer, and (c) a combination of (a) and (b), and 10 phr to 200 phr of a process oil (paragraphs [0006], [0009-0010], [0015-0016], [0019], [0022], [0025-0027], [0030-0034], [0039], [0050-0057], [0069], Table 1 and Table 3), wherein the elastomeric composition comprises a green strength ranging from 0.4 MPa to 0.9 MPa (see claims 23-24 of Dharmarajan).
Dharmarajan discloses the elastomeric composition comprising 3 phr to 50 phr of the PEDM; 50 phr to 95 phr of the ethylene-based copolymer, and 10 phr to 200 phr of the process oil (paragraphs [0006], [0009-0010], [0015-0016], [0019], [0022], [0025-0027], [0030-0034], [0039], [0050-0057], [0069], Table 1 and Table 3).
With regard to claims 3-8 and 24, the recited properties of green rubber to rubber tack force and rubber to rubber tack force are inherent in Dharmarajan since Dharmarajan discloses the same composition as applicant. Something which is old does not become patentable upon the discovery of a new property (MPEP 2112).
Dharmarajan discloses wherein the crystalline ethylene-based copolymer has a Mooney viscosity (ML(1+4)) at 125°C of 20 MU to 90 MU, wherein the crystalline ethylene-based copolymer has an Hf of 15 J/g or greater, wherein the amorphous ethylene-based copolymer has a Mooney viscosity (ML(1+4)) at 125°C of 20 MU to 90 MU, wherein the amorphous ethylene-based copolymer has an Hf from 0 J/g to 14 J/g (since the Hf is greater than 1, column 11, lines 32-45), wherein the PEDM terpolymer has a number average molecular weight of 50,000 g/mol ta 150,000 g/mol, wherein the PEDM terpolymer has a polydispersity index of 2 to 2.7, further comprising carbon black at 1 phr to 500 phr (paragraphs [0006], [0009-0010], [0015-0016], [0019], [0022], [0025-0027], [0030-0034], [0039], [0050-0057], [0069], Table 1 and Table 3).
Claim Rejections - 35 USC § 103
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.
Claim(s) 3-8 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dharmarajan et al. (WO 2019/112728, provided herein).
With regard to claims 3-8 and 24, the recited properties of green rubber to rubber tack force and rubber to rubber tack force are necessarily present in Dharmarajan since Dharmarajan discloses the same composition as applicant. Something which is old does not become patentable upon the discovery of a new property (MPEP 2112). It would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided applicant’s recited green rubber to rubber tack force and rubber to rubber tack force in order to provide enhanced tack without sacrificing cure and physical properties (column 1, lines 53-61).
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments of 11/17/25 have been carefully considered but are moot in view of the new grounds for rejection set forth above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
January 5, 2026