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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendments filed on May 28, 2026 have been entered. Claims 1 and 3-14 are pending in the application.
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 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 and 3-14 are rejected under 35 U.S.C. 103 as being unpatentable over Aihara et al (WO 2018/155243 A1, using US 2020/0056019 A1 as the English equivalent for the citations below) in view of Kobayashi et al (US 2010/0204397 A1), as evidenced by PubChem (Compound Summary: Bis(2-hydroxy-3-tert-butyl-5-methylphenyl)methane, 26 March 2005, National Library of Medicine, hereinafter referred to as “PubChem 1”), PubChem (Compound Summary: 4,4'-Methylenebis(2,6-di-tert-butylphenol), 26 March 2005, National Library of Medicine, hereinafter referred to as “PubChem 2”), and PubChem (Compound Summary: Phenol, 4-((4,6-bis(octylthio)-1,3,5-triazin-2-yl)amino)-2,6-bis(1,1-dimethylethyl)-, 26 March 2005, National Library of Medicine, hereinafter referred to as “PubChem 3”).
Regarding Claims 1, 5, 7, and 10-14: Aihara teaches a molded film with a thickness of 80-300 µm (para. 0153, 0.08-0.3 mm), wherein the film is obtained from a latex composition (para. 0001) comprising a carboxy-modified conjugated diene polymer latex (para. 0006), a sulfur-based vulcanizing agent (para. 0142), a xanthogen vulcanization accelerator (para. 0122), and a phenolic antioxidant which may include 2,2′-methylene-bis (4-methyl-6-t-butylphenol) and/or 4,4'-methylenebis(2,6-di-tert-butylphenol) (para. 0146). PubChem 1 teaches that 2,2′-methylene-bis (4-methyl-6-t-butylphenol) has a molecular weight of 340.5 g/mol (p.1, “Molecular Weight”), and PubChem 2 teaches that 4,4'-methylenebis(2,6-di-tert-butylphenol) has a molecular weight of 424.7 g/mol (p.1, “Molecular Weight”). These compounds read on compound (a). Aihara further teaches 2,6-di-t-butyl-4-(4,6-bis(octylthio)-1,3,5-triazin-2-ylamino) phenol, which is an aromatic compound with one phenolic hydroxyl group and one -NH- bond, and which Pubchem 3 teaches as having a molecular weight of 589 g/mol (p.1, “Molecular Weight). This reads on compounds (b) and (b-1). Aihara teaches that 2,6-di-t-butyl-4-(4,6-bis(octylthio)-1,3,5-triazin-2-ylamino) phenol may be used in combination with 2,2′-methylene-bis (4-methyl-6-t-butylphenol) (para. 0146).
Aihara is silent to the ratio between the ratio between antioxidant (a) and antioxidant (b).
Kobayashi teaches a rubber latex films comprising two types of antioxidant (para. 0072), wherein the first antioxidant is preferably 6-di-t-butyl-4-(4,6-bis(octylthio)-1,3-5-triazin-2-ylamino)phenol (para. 0077), reading on compound (b), and the second antioxidant may be 2,2′-methylenebis(4-methyl-6-t-butylphenol) or 4,4′-methylenebis(2,6-di-t-butylphenol) (para. 0087), reading on compound (a).
Kobayashi further teaches that the antioxidant corresponding to compound (b) is present at 0.3-1.5 parts by weight, wherein too large of an amount leads to a decrease in strength and elution of the antioxidant from the dip molded article (para. 0078-0079), and the antioxidant corresponding to compound (a) is present at 0.5-1.5 parts by weight, wherein too small of an amount may decrease the strength of the dip-molded article after heat treatment (para. 0092-0093). Based on calculations, the ratio of compound (a) to compound (b) is 1:3-5:1. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping ratio of the antioxidant (a) to the antioxidant (b), especially a higher ratio wherein the amount of antioxidant (a) is higher than the amount of antioxidant (b), and they would have been motivated to do so to maximize the strength of the dip-molded article.
Kobayashi and Aihara are analogous art because they are directed toward the same field of endeavor, namely latex compositions for dip-molding.
Regarding Claims 3-4: 2,2′-methylene-bis (4-methyl-6-t-butylphenol) and 4,4'-methylenebis(2,6-di-tert-butylphenol) are aromatic compounds with a diphenylmethane skeleton that has two hindered phenolic groups, reading on compounds (a-1) and (a-2).
Regarding Claim 6: Aihara teaches that the conjugated diene latex may comprise synthetic polyisoprene, a styrene-isoprene-styrene block copolymer, or natural rubber (para. 0019).
Regarding Claim 8: Not disclosed is the swelling index of the film. However, Aihara teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification identifies the composition and synthesis conditions of the conjugated diene polymer as contributing factors to the swelling index. The carboxy-modified conjugated diene polymer taught by Aihara is made by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a swelling index of 103-300%, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 9: Aihara teaches that the sulfur-based vulcanizing agent is present at 0.2-3 parts per 100 parts of the conjugated diene polymer latex (para. 0142). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the sulfur-based vulcanizing agent and would have been motivated to do so since Aihara teaches this amount enhances tensile strength and suppresses the onset of allergenic symptoms (para. 0142).
Response to Arguments
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive.
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).
Regarding applicant’s argument that there is no motivation to combine/expectation of success applying the teachings of Kobayashi to the carboxy-modified diene system taught by Aihara: Although Kobayashi does not use carboxy-modified rubbers in the working examples, Kobayashi teaches carboxy-modified conjugated diene rubbers in the broader disclosure (para. 0058), which would lead one of ordinary skill in the art to have a reasonable expectation of success in obtaining a system wherein the two antioxidants are in the forms taught by Kobayashi when combined with the invention of Aihara. The motivation to combine is set forth in the rejection above.
Regarding applicant’s argument that the antioxidants of Kobayashi are present in different phases of the latex, the instant claims are directed toward the final article (a molded film), not the latex itself. As both of the antioxidants of Kobayashi are present in the final article (the ratios of antioxidants in Kobayashi are specifically chosen to prevent their degradation), this argument is not commensurate with the claims.
Regarding applicant’s arguments regarding the surfactants used in Aihara vs. Kobayashi, a surfactant is not claimed in the present invention.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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